DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. This is an office action in response to Applicant's arguments and remarks filed on 06/25/2026. Claims 1-7, 10-12, and 14-23 are pending in the application and are being examined herein.
Status of Objections and Rejections
3. All rejections from the previous office action are withdrawn in view of Applicant's amendment.
New grounds of rejection under 35 U.S.C. 103 are necessitated by the amendments.
Response to Arguments
4. In the arguments presented on p.2-6 of the amendment, the Applicant argues that the amended claim limitations are not taught by Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021, cited in prior office action), alone or in combination with the other cited references.
Applicant’s arguments with respect to the rejection(s) of claim(s) 1, 18, and 21 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021, cited in prior office action), further in view of Deshpande (US 20060127270 A1).
Applicant’s arguments with respect to the rejection(s) of claim(s) 4 and 20 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021, cited in prior office action), further in view of Pudasaini (Pudasaini, S. "Microfluidics Based Electroporation for Inactivation of Microorganisms." Nanyang Technological University, (January 19, 2020) pp. 1-163), further in view of Yeung et al. (US 20170029300 A1).
Applicant’s arguments with respect to the rejection(s) of claim(s) 10 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021, cited in prior office action), further in view of Pudasaini (Pudasaini, S. "Microfluidics Based Electroporation for Inactivation of Microorganisms." Nanyang Technological University, (January 19, 2020) pp. 1-163), further in view of Yeung et al. (US 20170029300 A1, cited in prior office action).
The Examiner does not find the arguments for claims 6/19 and 17 persuasive.
Regarding claims 6 and 19, the nanowedges are suspended between the electrodes because each nanowedge of the electrode tips are between other electrode tips having nanowedges, and thus are suspended in relation to the other electrode tips having nanowedges.
Regarding claim 17, Wang teaches a pulse width of 2 us, which is 2000 ns, meaning the pulse width is at a predetermined 2000 ns value (which is a nanosecond pulse width).
Claim Rejections - 35 USC § 103
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
6. Claims 1, 3, 6-7, 10, 18-19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021), further in view of Deshpande (US 20060127270 A1).
Regarding claim 1, Wang teaches a system (LEEFT device having nanowedge-decorated electrodes, figure of abstract) comprising:
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an antimicrobial surface (upward-facing surface, see drawing above) comprising electrodes arranged in a predetermined pattern (electrodes, see drawing above) and configured to generate an electric field capable of inactivating microorganisms (“Rapid bacteria inactivation occurs at the nanowedge tips where the electric field is enhanced due to the lightning-rod effect”, abstract); and
an external power source (voltage source, see figure above) configured to supply electrical power to the electrodes to at least, in part, induce the electric field (voltage source is connected to contact pads having nanowedge-tipped electrodes, see drawing above).
Wang fails to teach an insulative material deposited upon at least a portion of the electrodes, the insulative material deposited via a technique selected from a group consisting of atomic layer deposition and chemical vapor deposition.
Deshpande teaches an electrode arrangement for the disinfection of pathogens present in air (Fig. 1), further teaching a insulative dielectric material such as aluminum dioxide in a thickness from 1-3 nm coating the metal electrode ([0038]) in order to stabilize “the surface against further reactions with its environment” and “act as an electrophilic medium” ([0039]).
Wang and Deshpande are both considered to be analogous to the claimed invention because they are in the same field of electrode-based inactivation of pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrodes of the LEEFT device of Wang by incorporating an aluminum dioxide coating having a thickness between 1-3 nm on each electrode as taught by Deshpande, because doing so would stabilize “the surface against further reactions with its environment” and “act as an electrophilic medium” (Deshpande, [0039]).
The instant combination teaches a insulative material deposited upon at least a portion of the electrodes (Deshpande, aluminum dioxide coating, [0038]), which is capable of being produced by the process of: “deposited via a technique selected from a group consisting of atomic layer deposition and chemical vapor deposition”. The Applicant is advised that this is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on it method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113.
The Examiner interprets the deposition methods of the insulative material as being part of the process of manufacture of the electrode device, and since the end result of the electrode device of the claimed invention does not appear to be different from the product of the instant combination, the deposited insulative material does not appear to have an effect on the final product and so this part of the claim is interpreted as a product-by-process limitation. Since secondary reference Deshpande teaches an insulative material deposited on at least a portion of the electrodes, identical to the one as claimed, there is no apparent difference between the apparatus as claimed and the prior art as taught by the instant combination and therefore meets the instant limitations.
Regarding claim 3, modified Wang teaches wherein the antimicrobial surface further comprises one or more contact pads affixed to the electrodes (contact pads, see drawing in claim 1 rejection above) configured to be electrically connected to the external power source (voltage source is connected to conductive contact pads that are attached to electrodes, see drawing above).
Regarding claim 6, modified Wang teaches wherein the induced electric field is at least 1 kilovolt per centimeter (Fig. 3c).
Regarding claim 7, modified Wang teaches one or more nanowedges suspended between the electrodes (see drawing below),
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and having a predetermined horizontal or vertical spacing interval, with respect to each other (each nanowedge is separated at a specific distance, including vertical and horizontally, see drawing above).
Regarding claim 10, the Wang/Deshpande combination teaches wherein the insulative material is Al2O3 (Deshpande, aluminum oxide coating, [0038], for the same modification purpose as stated in claim 1 rejection above).
Regarding claim 18, Wang teaches a system (see drawing below) comprising:
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a substrate (substrate, see drawing above);
electrodes distributed on the substrate (electrodes, see drawing above); and
wherein the electrodes are configured to produce an electric field on at least a portion of the substrate sufficient to achieve an antimicrobial or antifouling result (“Rapid bacteria inactivation occurs at the nanowedge tips where the electric field is enhanced due to the lightning-rod effect”, abstract).
Wang fails to teach an insulative material with a thickness of less than 200 nm coating at least a portion of the electrodes.
Deshpande teaches an electrode arrangement for the disinfection of pathogens present in air (Fig. 1), further teaching a insulative dielectric material such as aluminum dioxide in a thickness from 1-3 nm coating the metal electrode ([0038]) in order to stabilize “the surface against further reactions with its environment” and “act as an electrophilic medium” ([0039]).
Wang and Deshpande are both considered to be analogous to the claimed invention because they are in the same field of electrode-based inactivation of pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrodes of the LEEFT device of Wang by incorporating an aluminum dioxide coating having a thickness between 1-3 nm on each electrode as taught by Deshpande, because doing so would stabilize “the surface against further reactions with its environment” and “act as an electrophilic medium” (Deshpande, [0039]).
Regarding claim 19, modified Wang teaches nanowedges (tip of electrode, see claim 18 rejection drawing above) suspended between the electrodes (each nanowedge is between one electrode and another opposing or adjacent electrode, see drawing above), and having an aspect ratio between 10 and 1,000,000 (p.3, last paragraph: “the nanowedges with 200 nm width (Figure 2c,e) and 8 μm length (Figure 2d,f), which is an aspect ratio of 40).
Regarding claim 21, Wang teaches a system (see drawing below) comprising:
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a substrate (substrate, see drawing above);
electrodes distributed on the substrate (electrodes, see drawing above); and
wherein the electrodes are configured to produce an electric field on at least a portion of the substrate sufficient to achieve an antimicrobial or antifouling result (“Rapid bacteria inactivation occurs at the nanowedge tips where the electric field is enhanced due to the lightning-rod effect”, abstract); and
each of the electrodes has a length of approximately 50 μm (see drawing above, where the electrodes are 8 μm in length, which is approximate to 50 μm) and are separated one from another by a gap of approximately 2 to 5 μm (see drawing above, where the electrodes separated from one another close of approximately 5 μm).
Wang fails to teach an insulative material deposited upon at least a portion of the electrodes, the insulative material deposited via a technique selected from a group consisting of atomic layer deposition and chemical vapor deposition.
Deshpande teaches an electrode arrangement for the disinfection of pathogens present in air (Fig. 1), further teaching a insulative dielectric material such as aluminum dioxide in a thickness from 1-3 nm coating the metal electrode ([0038]) in order to stabilize “the surface against further reactions with its environment” and “act as an electrophilic medium” ([0039]).
Wang and Deshpande are both considered to be analogous to the claimed invention because they are in the same field of electrode-based inactivation of pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrodes of the LEEFT device of Wang by incorporating an aluminum dioxide coating having a thickness between 1-3 nm on each electrode as taught by Deshpande, because doing so would stabilize “the surface against further reactions with its environment” and “act as an electrophilic medium” (Deshpande, [0039]).
The instant combination teaches a insulative material deposited upon at least a portion of the electrodes (Deshpande, aluminum dioxide coating, [0038]), which is capable of being produced by the process of: “deposited via a technique selected from a group consisting of atomic layer deposition and chemical vapor deposition”. The Applicant is advised that this is a product-by-process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on it method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113.
The Examiner interprets the deposition methods of the insulative material as being part of the process of manufacture of the electrode device, and since the end result of the electrode device of the claimed invention does not appear to be different from the product of the instant combination, the deposited insulative material does not appear to have an effect on the final product and so this part of the claim is interpreted as a product-by-process limitation. Since secondary reference Deshpande teaches an insulative material deposited on at least a portion of the electrodes, identical to the one as claimed, there is no apparent difference between the apparatus as claimed and the prior art as taught by the instant combination and therefore meets the instant limitations.
Regarding claim 22, modified Wang teaches one or more nanowedges distributed between the electrodes (nanowedges, see claim 21 rejection drawing above); wherein the electric field is concentrated at tips of the one or more nanowedges (gradient indicating electric field density, red being the highest and concentrated at the nanowedge tips, see drawing above) and achieves a strength of approximately 40 kV/cm at the tips (“The lethal electroporation threshold was found to be between 10−35 kV/cm”, to which 35 kV/cm is approximate to 40 kV/cm, p.1, col.1 of “Background”).
7. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021), further in view of Deshpande (US 20060127270 A1), as applied to claim 1 above, further in view of Yeung et al. (US 20170029300 A1).
Regarding claim 2, modified Wang teaches an antimicrobial surface (upward facing surface, see claim 1 rejection drawing above) having a base/substrate that the electrodes are placed on (see claim 1 rejection drawing above), but fails to teach wherein the antimicrobial surface is flexible and configured to be affixed to flat and curved surfaces.
Yeung teaches a pulsed-electric field generating electroporation device for the inactivation of microorganisms (Fig. 5 and [0016]), where the electrodes (electrode pattern B, Fig. 5) are “printed on a flexible substrate” ([0160]) in order to be applicable to a curved surface such as a water purification system (Fig. 23).
Modified Wang and Yeung are both considered to be analogous to the claimed invention because they are in the same field of printed electrodes on substrates for the electroporation and deactivation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate of Wang by incorporating a flexible feature to the substrate in order to be applicable to a curved surface such as a water purification system (Yeung, Fig. 23).
8. Claims 4, 20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021), further in view of Deshpande (US 20060127270 A1), as applied to claims 3, 18, and 22 above, further in view of Pudasaini (Pudasaini, S. "Microfluidics Based Electroporation for Inactivation of Microorganisms." Nanyang Technological University, (January 19, 2020) pp. 1-163), further in view of Yeung et al. (US 20170029300 A1).
Regarding claim 4, modified Wang teaches wherein each of the electrodes are separated by a horizontal spacing interval of at least 10 nm (5 μm, see claim 1 rejection drawing above), but fails to teach wherein the predetermined pattern of the electrodes is an interdigitated pattern.
Pudasaini mentions that coplanar-electrode electroporation devices on microchips known in the art tended to show a fast decay of the electric field strength away from the electrodes (decreasing electroporation efficiency), but mentions that an interdigitated electrode structure resolved this issue (p.52, 2nd paragraph).
Modified Wang and Pudasaini are both considered to be analogous to the claimed invention because they are in the same field of microchip assemblies having electrodes for the electroporation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrode array of modified Wang by incorporating an interdigitated pattern of the electrodes as taught by Pudasaini in order to minimize the fast decay of the electrical field strength when the distance from the electrode increased (Pudasaini, p.52, 2nd paragraph).
The instant combination still fails to teach wherein the interdigitated pattern comprises a branched interdigitated configuration having subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes.
Yeung teaches a pulsed-electric field generating electroporation device for the inactivation of microorganisms (Fig. 5 and [0016]), where the electrodes (electrode pattern B, Fig. 5) are configured in an interdigitated pattern (Fig. 5), further citing subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes (Fig. 5, C embodiment) in order to disinfect pathogens present in water (abstract).
The instant combination and Yeung are both considered to be analogous to the claimed invention because they are in the same field of interdigitated-electrode-based systems for the disinfection of pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the interdigitated electrode arrangement of the instant combination by further incorporating the conventional configuration of the interdigitated, interdigitated electrode arrangement as taught by Yeung, because doing so predictably disinfects pathogens present in water (Yeung, abstract).
Regarding claim 20, modified Wang teaches electrodes (see claim 18 rejection drawing above), but fails to teach wherein the electrodes are arranged in an interdigitated pattern comprising a branched interdigitated configuration having subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes.
Pudasaini mentions that coplanar-electrode electroporation devices on microchips known in the art tended to show a fast decay of the electric field strength away from the electrodes (decreasing electroporation efficiency), but mentions that an interdigitated electrode structure resolved this issue (p.52, 2nd paragraph).
Wang and Pudasaini are both considered to be analogous to the claimed invention because they are in the same field of microchip assemblies having electrodes for the electroporation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrode array of Wang by incorporating an interdigitated pattern of the electrodes as taught by Pudasaini in order to minimize the fast decay of the electrical field strength when the distance from the electrode increased (Pudasaini, p.52, 2nd paragraph).
The instant combination still fails to teach wherein the interdigitated pattern comprises a branched interdigitated configuration having subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes.
Yeung teaches a pulsed-electric field generating electroporation device for the inactivation of microorganisms (Fig. 5 and [0016]), where the electrodes (electrode pattern B, Fig. 5) are configured in an interdigitated pattern (Fig. 5), further citing subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes (Fig. 5, C embodiment) in order to disinfect pathogens present in water (abstract).
The instant combination and Yeung are both considered to be analogous to the claimed invention because they are in the same field of interdigitated-electrode-based systems for the disinfection of pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the interdigitated electrode arrangement of the instant combination by further incorporating the conventional configuration of the interdigitated, interdigitated electrode arrangement as taught by Yeung, because doing so predictably disinfects pathogens present in water (Yeung, abstract).
Regarding claim 23, the Wang/Deshpande combination teaches a power source (voltage source, see claim 21 rejection drawing above) to provide the electrodes to induce the electrical field (abstract) with one or more predetermined nanosecond pulse widths to the electrodes to at least, in part, induce the electric field (Wang teaches 500,000 electrical pulses at 18 V with 2 μs pulse width (equaling 2000 ns) and 100 μs period, p.2 3rd paragraph),
the one or more nanowedges are suspended between the electrodes (each nanowedge is between one electrode and another opposing or adjacent electrode, see claim 21 rejection drawing above); and
wherein the insulative material is Al2O3 (Deshpande, aluminum oxide coating, [0038], for the same modification purpose as stated in claim 1 rejection above).
The Wang/Deshpande combination fails to teach wherein the external power source is further configured to provide direct current electrical power.
Pudasaini teaches a pDEP (positive dielectrophoresis) microchip device for the electroporation and subsequent deactivation of bacterial pathogens (p.31), where “300 V DC pulses were used for electroporating cells”, p.32, 1st paragraph).
Modified Wang and Pudasaini are both considered to be analogous to the claimed invention because they are in the same field of microchip devices for the electroporation and deactivation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the voltage source of modified Wang by incorporating a pulsed DC voltage source as taught by Pudasaini in order to electroporate and deactivate bacterial pathogens (Pudasaini, p.31) via generation of an electric field (Wang, abstract).
The Wang/Deshpande/Pudasaini combination still fails to teach wherein the electrodes are arranged in a predetermined interdigitated pattern comprising a branched interdigitated configuration having subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes.
Pudasaini further mentions that coplanar-electrode electroporation devices on microchips known in the art tended to show a fast decay of the electric field strength away from the electrodes (decreasing electroporation efficiency), but mentions that an interdigitated electrode structure resolved this issue (p.52, 2nd paragraph).
Wang and Pudasaini are both considered to be analogous to the claimed invention because they are in the same field of microchip assemblies having electrodes for the electroporation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrode array of Wang by incorporating an interdigitated pattern of the electrodes as taught by Pudasaini in order to minimize the fast decay of the electrical field strength when the distance from the electrode increased (Pudasaini, p.52, 2nd paragraph).
The instant combination still fails to teach wherein the interdigitated pattern comprises a branched interdigitated configuration having subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes.
Yeung teaches a pulsed-electric field generating electroporation device for the inactivation of microorganisms (Fig. 5 and [0016]), where the electrodes (electrode pattern B, Fig. 5) are configured in an interdigitated pattern (Fig. 5), further citing subsequent interdigitated patterns of electrodes extending from one or more primary interdigitated patterns of electrodes (Fig. 5, C embodiment) in order to disinfect pathogens present in water (abstract).
The instant combination and Yeung are both considered to be analogous to the claimed invention because they are in the same field of interdigitated-electrode-based systems for the disinfection of pathogens.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the interdigitated electrode arrangement of the instant combination by further incorporating the conventional configuration of the interdigitated, interdigitated electrode arrangement as taught by Yeung, because doing so predictably disinfects pathogens present in water (Yeung, abstract).
9. Claims 5 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021), further in view of Deshpande (US 20060127270 A1), as applied to claims 1 and 3 above, further in view of Pudasaini (Pudasaini, S. "Microfluidics Based Electroporation for Inactivation of Microorganisms." Nanyang Technological University, (January 19, 2020) pp. 1-163).
Regarding claim 5, modified Wang teaches wherein each of the contact pads are separated by a vertical spacing interval of at least 10μm (50 μm, Fig. 1a), but fails to teach wherein the predetermined pattern of the electrodes is an interdigitated pattern.
Pudasaini mentions that coplanar-electrode electroporation devices on microchips known in the art tended to show a fast decay of the electric field strength away from the electrodes (decreasing electroporation efficiency), but mentions that an interdigitated electrode structure resolved this issue (p.52, 2nd paragraph).
Modified Wang and Pudasaini are both considered to be analogous to the claimed invention because they are in the same field of microchip assemblies having electrodes for the electroporation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrode array of modified Wang by incorporating an interdigitated pattern of the electrodes as taught by Pudasaini in order to minimize the fast decay of the electrical field strength when the distance from the electrode increased (Pudasaini, p.52, 2nd paragraph).
Regarding claim 14, modified Wang teaches a power source (voltage source, see claim 1 rejection drawing above) to provide the electrodes to induce the electrical field (abstract), but fails to teach wherein the external power source is further configured to provide direct current electrical power.
Pudasaini teaches a pDEP (positive dielectrophoresis) microchip device for the electroporation and subsequent deactivation of bacterial pathogens (p.31), where “300 V DC pulses were used for electroporating cells”, p.32, 1st paragraph).
Modified Wang and Pudasaini are both considered to be analogous to the claimed invention because they are in the same field of microchip devices for the electroporation and deactivation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the voltage source of modified Wang by incorporating a pulsed DC voltage source as taught by Pudasaini in order to electroporate and deactivate bacterial pathogens (Pudasaini, p.31) via generation of an electric field (Wang, abstract).
Regarding claim 15, modified Wang in view of Pudasaini teaches wherein the external power source is configured to provide DC electrical power with a voltage range between 1-500 volts (Pudasaini, voltage of 300V, Fig. 1), for the same modification purpose as stated in claim 14 rejection above.
Regarding claim 16, modified Wang in view of Pudasaini teaches wherein the external power source is configured to provide DC electrical power periodically in alternating polarities (Pudasaini, p.32, 1st paragraph, where pulsed DC voltage means the voltage fluctuates between positive and negative values (i.e., polarities), where Wang similarly teaches a pulsed applied voltage of 18V in Fig. 1), for the same modification purpose as stated in claim 15 rejection above.
Regarding claim 17, modified Wang teaches wherein the external power source (voltage source, Wang) is configured to provide DC electrical power (Pudasaini, p.32, 1st paragraph) with one or more predetermined nanosecond pulse widths (Wang teaches 500,000 electrical pulses at 18 V with 2 μs pulse width (equaling 2000 ns) and 100 μs period, p.2 3rd paragraph).
10. Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Nano Letters, 22, 2, pp. 860-867, 2021), further in view of Deshpande (US 20060127270 A1), as applied to claim 1 above, further in view of Wang et al. (US 20090000948 A1) (hereinafter Wang ‘948).
Regarding claim 11, modified Wang teaches a power source (voltage source, see claim 1 rejection drawing above) to provide the electrodes to induce the electrical field (abstract), but fails to teach wherein the external power source is further configured to provide alternating current electrical power. It is important to note that Wang mentions that a dielectrophoretic force is induced by the non-uniform electrical field generated by the nanowedges, pushing cells to said nanowedges (p.4, 1st paragraph).
Wang ‘948 teaches a microchip-based cell electroporation device (abstract) utilizing dielectrophoresis to localize the cells and cause increased electroporation efficiency ([0011]), where “an AC voltage wave, such as a sine wave, is applied across electrodes to produce an alternating electric field” ([0021]).
Modified Wang and Wang ‘948 are both considered to be analogous to the claimed invention because they are in the same field of microchip devices utilizing dielectrophoresis for cell localization and electroporation of cells.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the voltage source of modified Wang by incorporating an AC voltage source to localize the cells and subsequently increase electroporation efficiency (Wang ‘948, [0011] and [0021]) via generation of an electric field (Wang ‘948, abstract).
Regarding claim 12, modified Wang teaches applied voltages being from “0.5 to about 10 V” (Wang ‘948, [0041]).
Consequently, it would have also been obvious to one of ordinary skill in the art to select an AC voltage of 10 volts as taught by Wang, yielding the predictable result of generating a dielectrophoretic electric field (Wang ‘948, [0041]), thus reading on the claim limitation of “1-500 volts”.
Regarding the limitation of “a corresponding frequency range of 10-3-109 Hertz”, Wang ‘948 further mentions that the specific voltage, frequency, and duration of the sine wave depends on the specific cell types” ([0021]). Therefore, in view of the modified Wang combination, it would have also been obvious to one of ordinary skill in the art to have had a reasonable expectation of success to formulate the claimed frequency range of 10-3-109 Hertz through routine optimization by adjusting the frequency of the AC voltage based on specific cell types, yielding the predictable result of generating a dielectrophoretic electric field.
Conclusion
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aham Lee whose telephone number is (703)756-5622. The examiner can normally be reached Monday to Thursday, 10:00 AM - 8:00 PM EST.
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/Aham Lee/Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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