DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 4-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bocchi et al. (Dielectrophoretic trapping in microwells for manipulation of single cells and small aggregates of particles).
Regarding claim 1, Bocchi discloses a system for capturing an analyte particle from a liquid (Fig. 2), the system comprising:
i) a reservoir for holding the liquid (see: Cell dispenser); and
ii) one or more capture devices (see: Microwell array), each of the one or more capture devices comprising:
a well having a top opening up to the reservoir (see: opening in Hydrophobic coating of each microwell), a bottom (see: bottom opening or each microwell), and a depth (D) extending from the top to the bottom (see: thickness of each microwell), and
a first set of electrodes at least 50%, at least 65% or at least 75% of the well's depth (D) below the top opening, for generating an electric field (see: each microwell comprises three electrode layers dispersed in the thickness of each microwell, the middle electrode layer being located at approximately 50% of the thickness of the microwell and the bottom electrode layer being located at greater than 75% of the thickness of the microwell).
Claims 4 and 5 are directed towards materials worked upon by the instantly claimed apparatus. The Applicants are advised that a material or article worked upon does not limit apparatus claims. In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See: MPEP 2115.
Regarding claim 6, Bocchi further discloses one or more arrays of the one or more capture devices (Fig. 2, see: Microwell array).
Regarding claim 7, Bocchi further discloses the system is a sensor probe and wherein the reservoir is defined by an impermeable barrier having a semi-permeable portion (pg. 1179/3.4. Particle delivery, see: microdispenser based on an MJ-A dispensing device which comprises a porous dispensing outlet).
Regarding claim 8, Bocchi further discloses the well is at least partially delineated by a surface comprising a dielectric material (pg. 1179/3.2. Microwell fabrication, see: polyimide dielectric substrates).
Regarding claim 9, Bocchi further discloses a surface of the well is modified so as to control an electric double layer formed thereon (pg. 1179/3.2. Microwell fabrication, see: hydrophobic layer and laminated electrode configuration which is fully capable of controlling an electric double layer created when the microwell array is in use).
Regarding claim 10, Bocchi further discloses the one or more capture devices comprises a second set of electrodes of at most 50% of the well's depth (D) below the top opening (Fig. 2, see: each microwell comprises three electrode layers dispersed in the thickness of each microwell, the top electrode layer being located at approximately less than 25% of the thickness of the microwell).
Regarding claim 11, Bocchi further discloses the capture device comprises a second set of electrodes of at most 35% of the well's depth (D) below the top opening (Fig. 2, see: each microwell comprises three electrode layers dispersed in the thickness of each microwell, the top electrode layer being located at approximately less than 25% of the thickness of the microwell).
Regarding claim 12, Bocchi further discloses the capture device comprises a second set of electrodes of at most 25% of the well's depth (D) below the top opening (Fig. 2, see: each microwell comprises three electrode layers dispersed in the thickness of each microwell, the top electrode layer being located at approximately less than 25% of the thickness of the microwell).
Regarding claim 13, Bocchi discloses a method for capturing an analyte particle from a liquid, the method comprising:
a) providing a system as defined in claim 1 with the liquid in the reservoir (see: rejection of claim 1 above); and
b) operating at least the first set of electrodes of at least one of the one or more capture devices so as to generate a non-uniform electric field such that there is an attractive dielectrophoretic force acting on the analyte particle (pg. 1181/4.1. Microwell operation, see: applying electric fields with three annular electrode to trap and levitate/maintain a cell in the microwell; Fig. 3, see: different electric fields applied for the different operational configurations).
Regarding claim 14, Bocchi further step b comprises applying to the first set of electrodes an alternating voltage, optionally combined with a direct voltage (pg. 1179/3.3. Electronics and microfluidics, see: sinusoidal signals; Fig 3., see: 180° phase-shifted signal).
Regarding claim 15, Bocchi further the well is at least partially lined with an electric double layer and wherein there is a repulsive force between the electric double layer and the analyte particle (Fig. 3, see: repulsive forces provided by the electric fields levitating the cell in the microwell).
Regarding claim 16, Bocchi further capturing the analyte particle from the liquid comprises selectively capturing the analyte particle with respect a further analyte or a contaminant (pg. 1181/4.1. Microwell operation, see: applying electric fields with three annular electrode to trap and levitate/maintain a cell in the microwell).
Regarding claim 17, Bocchi further capturing the system comprises at least two of the one or more capture devices (Fig. 2, see: Microwell array) and wherein step b comprises operating the at least first set of electrodes of the at least two capture devices so as to generate two different non-uniform electric fields for capturing two dissimilar analyte particles (pg. 1181/4.2. Experimental DEP trapping, see: trapping polystyrene beads; pg. 1183/4.4. Cell trapping, see: trapping K562 cells; see: different signal amplitude and frequency for each trapped particle).
Regarding claim 18, Bocchi further capturing step b comprises modulating the operation of the at least first set of electrodes to tune the attractive dielectrophoretic force to the analyte particle (Fig. 3, see: different electric fields applied for the different operational configurations).
Regarding claim 19, Bocchi further capturing detecting whether the analyte particle is captured by the well (Fig. 4, see: optical detection of trapped/levitated beads/K562 cells); analysing the captured analyte particle (optional limitation); and/or separating the captured analyte particle from the liquid (pg. 1181/4.2. Experimental DEP trapping, see: trapping polystyrene beads; pg. 1183/4.4. Cell trapping, see: trapping K562 cells).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bocchi et al. (Dielectrophoretic trapping in microwells for manipulation of single cells and small aggregates of particles), in view of Cordovez et al. (Trapping and storage of particles in electroactive microwells).
Regarding claims 2 and 3, Bocchi does not explicitly disclose the top opening having a width (W) ranging from 100 nm to 1 µm.
Cordovez teaches that it was well known in the art, before the effective filing date of the claimed invention, that decreasing the well diameter will increase the field concentration and the trapping force in analogous electroactive microwell arrays (pg. 024102-2/col. 1/para. 2).
Therefore the electric field concentration and trapping force strength are variables that can be modified, among others, by varying the width of the top opening of the instantly claimed well. For that reason, the width of the top opening of the instantly claimed well would have been considered a result effective variable by one having ordinary skill in the art, before the effective filing date of the claimed invention. As such, without showing unexpected results, the width of the top opening of the instantly claimed well cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the claimed invention, would have optimized, by routine experimentation, the width of the top opening of the instantly claimed well in the apparatus of Bocchi to obtain the desired electric field concentration and trapping force strength (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J EOM whose telephone number is (571)270-7075. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM).
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/ROBERT J EOM/ Primary Examiner, Art Unit 1797
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