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 .
This action is in response to applicant’s “Remarks”, filed June 02, 2026. The amendments therein have been thoroughly reviewed and entered. Any previous objection/ rejection not repeated herein has been withdrawn.
Applicant's arguments have been thoroughly reviewed but are deemed moot in view of the amendments, withdrawn rejections, and new and/or modified grounds for rejection, necessitated by the amendments, discussed below.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1, 3, 5-16, 32 and 35-37 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by Soga et al., (US 2003/0230524; hereinafter “Soga”).
Note: The instant apparatus type claims 1 and 6 contain functional/process/intended use language. Functional/process language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function. Therefore, if the prior art structure is capable of performing the function or intended use, then the prior art meets the limitation in the claims. The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim (see MPEP § 2114 & § 2173.05(g)).
Note: it has been held that the recitation that an element is "adapted for" perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense (see MPEP § 2114.04).
Regarding claim 1, Soga teaches chromatographic chip device (see para [0010] et seq.), comprising
a non-porous substrate 1 (formed of silicon, glass, quartz, Si substrates, plastics, and semiconductor substrates, or another material; see para [0025] et seq.) having one or more microchannels (grooves, channels, see para [0031] et seq.), each etched microchannel includes an exposed, homogeneous, monolithic porous silica microband (see para [0056] et seq.,) adapted for fluid flow driven by capillary action.
Note: Soga discloses a chromatography chip and method of fabrication thereof. Soga does not specifically disclose the chromatography chip is a type of thin-layer chromatographic chip, however the chromatographic structure recited in Soga is substantially identical to that of the claimed thin layer chromatography device. Thus, the claimed properties or functions associated with a thin layer chromatograph device are presumed to be inherent in the chromatography chip of Soga. When the claimed invention and prior art products are identical or substantially identical in structure or composition, or are produce by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (MPEP 2112.02). This is further evidenced since the method of fabricating a thin layer chromatography device (see claim 16) is substantially the same as the method for fabricating a chromatography device disclosed in Soga.
Regarding claim 3, this is considered a function/process/intended use recitation and although it is not necessary, Soga does teach the fluid flow is capillary fluid flow combined with electrophoresis (see para [0053] et seq.)
Regarding claim 5, this is considered a function/process/intended use recitation and although it is not necessary, Soga teaches the fluid flow is not driven by hydrodynamic centrifugal force or pressure-driven fluid flow (that is the use of a pump or centrifuge is not required to drive the fluid flow in Soga)
Regarding claim 6, this claim is directed to a step of making the device which does not further limit apparatus type claims for the reasons delineated above.
Regarding claim 7, Soga teaches the at least one microchannel is straight (see Figs. 1 and 2).
Regarding claims 8-9, 11 and 12, Soga teaches the porous microbands (formed in the microchannel) have a width from about 1 to about 1000 micrometers. Specifically Soga teaches the width and depth of the microband is measured in micrometers (see para [0039] et seq.)
Regarding claim 10, Soga teaches the porous microbands 16 has a length co-terminous with the length of the device (the microband extends the entire channel which includes along length of the device, see Fig. 1).
Regarding claim 13, Soga teaches the substrate is glass, quartz, plastic, etc., (see para [0025] et seq.)
Regarding claims 14 and 15, Soga teaches the device comprises from two to about 1,000,000 microchannels (at least four microchannels are shown in the embodiment of Fig. 1 and one microchannel is shown in the embodiment of Fig. 2).
Regarding claim 16, Soga teaches (a) forming one or more microchannels in a non-porous substrate; (b) forming a fully enclosed microchannel using a detachable sealing material; (c) filling the one or more enclosed microchannels with a flowable porous microband precursor composition; (d) subjecting the non-porous substrate having one or more microchannels filled with a flowable porous microband precursor composition to conditions to convert the composition to a porous microband; and (e) detaching the sealing material to expose the porous microbands to provide a thin layer chromatography device, para [0011] et seq.
Claim 32 Soga teaches a method of using the thin layer chromatographic device comprising: (a) applying the contents of the single cell, the group of cells, or the microsample to the one or more microchannels of the device of Claim 1 to provide the contents of the single cell, the group of cells, or the microsample on the one or more microchannels, and (b) contacting the contents of the single cell, the group of cells, or the microsample on the one or more microchannels with a fluid, whereby fluid flow driven by capillary action separates the contents of the single cell, the group of cells, or the microsample on the one or more microchannels into individual components along the one or more microchannels (see para [0054] et seq.)
Claims 35 and 37, Soga teaches the contents are biological analytes selected from the group consisting of fatty acids, amino acids, peptides, lipopeptides, vitamins, hormones, proteins, carbohydrates, enzyme substrates, and metabolites (see para [0054] et seq.)
Claim 36, Soga teaches a method for thin layer chromatography of analytes in a sample having a volume about 100 nL comprising: (a) applying the sample to the one or more microchannels of the device of Claim 1 to provide the sample on the one or more microchannels, and (b) contacting the sample on the one or more microchannels with a fluid, whereby fluid flow driven by capillary action separates the sample on the one or more microchannels into individual analytes along the one or more microchannels (see para [0053] et seq.)
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 5-16, 32, and 35-37 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include:
Piechotta et al., teach a method for producing a miniaturized separation column for chromatographic purposes including a porous stationary phase anchored in the column, including the following steps: (a) preparing a fiat substrate of silicon, glass, glass ceramic or ceramic; (b) etching at least one channel structure into the fiat substrate; (c) introducing a non-porous precursor material for the porous stationary phase into at least one portion of the channel structure(s); (d) forming a porous, three-dimensional network from the precursor material; and (e) fluid-tight covering of the channel structure(s) on the top side of the flat substrate.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached between 9:30am-7pm EST.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached on 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/P. Kathryn Wright/Primary Examiner, Art Unit 1798
Prosecution Insights