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 § 102/103
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.
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 of this title, 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.
Claims 1, 6, 7, 9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2015/0136601 A1 (“Austin”).
Considering claims 1, 9, and 12, Austin discloses a nanochannel array used for bioassay purposes, the nanochannel array comprising a solid surface material having formed therein a plurality of channels, each of which separated from the others, wherein a sealing material is deposited onto only certain surface(s) of each of the nanochannels. (Austin ¶¶ 0041-0043 and Fig. 1, reproduced infra). Austin is analogous art, for it is directed to the same field of endeavor as that of the instant application (a structure having a plurality of grooves, where only a portion of each groove is coated, and in particular used for bio-assay purposes).
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As shown in Fig. 1 of the reference, the sealing material is located on a continuous upper portion and part of each sidewall; however, the sealing material is absent from each of the bottom surfaces of the nanochannels. Austin discloses that the sealing material is deposited via sputtering or e-beam evaporation, both of which PVD processes. (Id. ¶¶ 0068 and 0069).
Austin discloses usage of a silica, silicon nitride, glass, or ceramics as types of materials suitable for the surface material. (Id. ¶ 0063). As Austin names a sufficiently numerous examples of ceramic or glass materials among its list (six out of thirteen), Austin is considered to have disclosed usage of a glass or ceramic with sufficient specificity as to have anticipated the limitation re: material of the substrate. Alternatively, selecting such materials would have been obvious in view of express disclosures of the reference. Austin anticipates or renders obvious claims 1, 9, and 12.
Considering claim 7, Austin discloses thickness of a few hundred nanometers for the SiO2 sealing layer deposited. (Id. Examples 1-11).
Considering claims 6 and 7, Austin discloses an opaque material such as aluminum can be deposited via sputtering and over the sealing material. (Id. ¶¶ 0065 and 0120). Alternatively, opaque material deposited over the sealing material reads on the claimed first layer, and its thickness at ~50 nm reads on claim 7.
Claims 1, 2, 6, 7, 9, 11, 12, and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2018/0119139 A1 (“Bowen”).
Considering claims 1, 6, 9 and 12, Bowen discloses a microarray used for bioassay purposes, the microarray comprising a solid support having a plurality of cavities, each of which separated from the others, wherein a material is selectively deposited onto only certain surface(s) of each of the cavities. (Bowen ¶ 0161-0179 and Figs. 11-14, with Figs. 12-14 reproduced infra). Bowen discloses usage of a glass/silica-based substrate. (Id. ¶ 0108 and 0163). Bowen is analogous art, for it is directed to the same field of endeavor as that of the instant application (a structure having a plurality of grooves, where only a portion of each groove is coated, and in particular used for bio-assay purposes).
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As clearly shown in the reference, the material separating the cavities is a continuous material that define a continuous upper surface. (Id. Fig. 33). As clearly shown in Figs. 12-14 of the reference, the material deposited from source 540 is formed selectively on only certain parts of each cavity as respective feature material, in particular a plasmon resonant material. (Id. ¶¶ 0164-0169 and Figs. 12-14). In particular, Bowen discloses the deposition of gold as the resonant material deposited via electron beam evaporation (viz. a material capable of being deposited by PVD deposited by a particular PVD method). (Id. ¶¶ 0164 and 0225).
It is noted that in contrast to certain other terms (e.g. glass and ceramic), the term “lower portion” was not given a specific definition by Applicant. As such, in accordance of long standing rules on patent examination, “lower portion” is given its broadest reasonable interpretation, taken here to mean any surface at a low elevation, and not necessarily one that spans an entirety of a contiguous surface coplanar with the lower portion (e.g. an entirety of a surface located between sidewall(s) of a groove). As such, the shadow area 558 of each cavity maps onto the claimed lower portion, and the shadow area 558 is expressly disclosed by Bowen to be free of any coating material deposited by the source 540. (Id. ¶¶ 0170-0172). As such, Bowen anticipates claims 1, 6, 9, and 12.
Furthermore, even were Applicant’s alleged interpretation of lower portion were to be interpreted as to mean an entirety of a contiguous surface coplanar with the lower portion (which is not conceded, given that the lack of a specific definition subjects the term to BRI), it is noted that Bowen states that “the shadow area 558 includes at least a portion of the wall surface 550 and at least a portion of the bottom surface 532”. (Id. ¶ 0170, emphasis added). “[At] least a portion of” encompasses an entirety of, thereby overlapping on Applicant’s unduly narrow interpretation. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
It is hereby noted that the instantly recited limitation of “each lower portion is free of the first layer” never appeared in haec verba in the specification as filed, and that it has support from “at least a portion of each lower portion is free of the first layer” by striking out “at least a portion of”. Here Applicant takes the position that at least a portion of encompasses an entirety of; the same treatment shall thus apply likewise to the disclosure of the prior art. Therefore, even under the unduly and unsupported interpretation of “lower portion”, Bowen renders obvious claims 1, 6, 9, and 12.
Considering claim 2, more broadly, Bowen discloses that the plasmon resonant material can also be a polymeric material deposited via vapor deposition, including via PVD. (Id. ¶¶ 0093 and 0094).
Considering claim 7, Bowen discloses thickness of 10 – 200 nm, which is within the recited range.
Considering claims 15-17, Bowen discloses formation of a passivation layer over the initial layer deposited, the passivation layer made from silane. (Id. ¶ 0145). Silane material forms a siloxane (viz. silicone), which is biologically inert.
Considering claim 18, Bowen additionally discloses the deposition of a “gel material” covering the various other layers already deposited. (Id. ¶¶ 0095 and 0179). The gel material is in particular PAZAM, which can be used to bind various biomolecules. (Id. ¶ 0117).
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen, as applied to claim 1 above, and further in view of U.S. 2014/0243224 A1 (“Barnard”).
Considering claim 10, Bowen is analogous art, for it is directed to the same field of endeavor as that of the instant application (microfluidic devices that is selectively coated). While Bowen does not disclose oblique sidewalls, such features are well known in microfluidics. (Barnard ¶ 0053 and Fig. 2B).
Considering claim 11, Bowen refers to the disclosure of 61/920,244 re: formation of the cavities. (Bowen ¶ 0105). This provisional application published as U.S. 2018/0073065 A1, and it discloses cavities having diameters of upwards of 4000 nm (radius of 2 µm). The surface area is thus 4πh µm3, with h being depth of cavity. Although this value is not disclosed, it is noted that volume used for microfluidic devices ranges from 10-3 to 100 µm3. (Barnard ¶ 0055). The resulting volume thus overlaps the claimed range. Furthermore, the area of the cavities taught at ¶ 0056 of Barnard is in line with what is disclosed in Bowen. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Bowen as applied to claim 1 above, and further in view of U.S. 2019/0185328 A1 (“Humpal”).
Considering claim 13, though Bowen discloses usage of a silica-based substrate, Bowen does not disclose a substrate meeting the requirement of claim 13.
The composition per se recited is known, per the teachings of Humpal. (Humpal claim 1). Humpal notes that a sintered shaped article produced allows the formation of well-replicated substrate containing sub-millimeter groove structures, wherein the substrate is additionally strong and transparent. (Id. ¶¶ 0198-0201 and 0326-0328). Humpal is analogous art, for it is directed to the same field of endeavor as that of the instant application (substrate containing sub-millimeter depressions). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to make the silica-based substrate of Bowen using the sintered composition of Humpal for the advantages mentioned above.
Response to Arguments
In view of cancellation of claim 8, the 35 U.S.C. 112(d) rejection of claim 8 has been withdrawn.
Applicant’s arguments against the 35 U.S.C. 102(a)(2) rejection over Hautala is persuasive, and the rejection has been withdrawn.
Applicant’s arguments against all rejections over at least Bowen has been considered, but they are not persuasive, as Applicant takes an unduly narrow interpretation of “lower portion”. Furthermore, Bowen renders obvious even the unduly narrow limitation.
Concluding Remarks
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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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