Detailed Office Action
The communication dated 5/18/2026 has been entered and fully considered. Claims 1-45 are cancelled. Claims 57-60 are withdrawn from examination. Claims 46-60 remain pending.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 46-56) in the reply filed on 5/18/2026 is acknowledged. Claims 57-60 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II/III.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 52-53 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 52, the phrase “preferably” in line 23 renders the claim indefinite because it is unclear where the limitations (s) following the phrase are part of claimed invention. See MPEP § 2173.05 (d). Moreover, claim 52 recites, before “preferably”, a broader limitation (broader range) than those recited after “preferably”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claim 52 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 53, the phrase “preferably” in line 23 renders the claim indefinite because it is unclear where the limitations (s) following the phrase are part of claimed invention. See MPEP § 2173.05 (d). Moreover, claim 53 recites, before “preferably”, a broader limitation (at least one of A or B) than those recited after “preferably” (both A and B). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claim 53 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 46 and 48-56 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by SORELLE (US-2022/0379582), hereinafter SORELLE. Note that the italicized text below are the instant claims.
Regarding claim 46, SORELLE discloses A method for forming a bond between two substrates of a device {[abstract] flow cell is the device, note bonding the two substrates}, comprising the steps of:
a. providing a first substrate and a second substrate of a device {[abstract]};
b. providing a first functionalized polyelectrolyte polymer A comprising a plurality of electrolyte repeating units, wherein at least one of the electrolyte repeating units is a functionalized repeating unit G1 comprising a first functional group comprising a first coupling moiety A1 {[abstract] note first covalently-bound ligand is the functional group, [0021] note the first linear organic chain is the repeating units, [0098] note the functional group can be cations or anions thus a polyelectrolyte};
c. providing a second functionalized polyelectrolyte polymer B comprising a plurality of electrolyte repeating units, wherein at least one of the electrolyte repeating units is a functionalized repeating unit G2 comprising a second functional group comprising a second coupling moiety B1 {[abstract] note second covalently-bound ligand is the functional group, [0021] note the second linear organic chain is the repeating units, [0098] note the functional group can be cations or anions thus a polyelectrolyte};
wherein the second coupling moiety B1 is selected to be complementary for forming a covalent bond to the first coupling moiety A1 at a temperature below 100°C {[abstract], [0179] note the disclosed single bonding temperatures that are below 100°C};
d. forming a functionalized surface on an exposed surface of the first substrate having the first functionalized polyelectrolyte polymer A attached to said first substrate {[0023]};
e. forming a functionalized surface on an exposed surface of the second substrate having the second functionalized polyelectrolyte polymer B attached to said second substrate {[0023]};
f. contacting at least a part of the functionalized surface of the first substrate onto at least a part of the functionalized surface of the second substrate thereby forming a contact area between the first functionalized polyelectrolyte polymer A and the second functionalized polyelectrolyte polymer B {[0040] note joining by exerted pressure, thus contact between the two surfaces}; and
g. forming a covalent bond between the first coupling moiety A1 and the second coupling moiety B1 in the contact area between the first substrate and the second substrate for binding the first substrate to the second substrate {[abstract], [0023] note covalent bond between two functional groups}.
Regarding claim 48, SORELLE discloses wherein the temperature during the covalent bond forming step is lower than 80°C {[0179]}.
Regarding claim 49, SORELLE discloses wherein said functionalized surface of the first substrate and/or of the second substrate is a 1D surface, a 2D surface or a 3D surface provided as any one or more from a dot, a rod, a wire, a sheet, a film, a piece, a volume, a layer, a line, a ribbon and a plate {[FIG. 9] note the substrate is a sheet with width going into the page}.
Regarding claim 50, SORELLE discloses wherein the first functionalized polyelectrolyte polymer A is a first poly-cationic polymer A+ having cationic repeating units; and wherein step d. the forming of the functionalized surface on the first substrate is carried out by applying the first poly-cationic polymer A+ to an exposed surface of the first substrate, or wherein the first functionalized polyelectrolyte polymer A is a first poly-anionic polymer A- having anionic repeating units; and wherein the method further comprises the step of: h. forming a polyelectrolyte multilayer on an exposed surface of the first substrate, comprising adhering a poly-cationic polymer to said exposed surface of the first substrate and comprising carrying out step d. thereafter by applying the first poly- anionic polymer A- onto said exposed surface of the first substrate {[0098] note multilayer configuration is optional, [0142] note teaching on multilayer or stacked (in the interest of compact prosecution)}.
Regarding claim 51, SORELLE discloses wherein the second functionalized polyelectrolyte polymer B is a second poly-cationic polymer B+ having cationic repeating units; and wherein step e. the forming of the functionalized surface on the second substrate is carried out by applying the second poly-cationic polymer B+ to said exposed surface of the second substrate, or wherein the second functionalized polyelectrolyte polymer B is a second poly- anionic polymer B- having anionic repeating units; and wherein the method further comprises the step of: i. forming a polyelectrolyte multilayer on an exposed surface of the second substrate, comprising adhering a poly-cationic polymer to said exposed surface of the second substrate and comprising carrying out step e. thereafter by applying the second poly- anionic polymer B- onto said exposed surface of the second substrate {[0098] note multilayer configuration is optional, [0142] note teaching on multilayer or stacked (in the interest of compact prosecution)}.
Regarding claim 52, SORELLE discloses wherein a plurality of the functionalized repeating units G1 of the first functionalized polyelectrolyte polymer A comprises the first functional group comprising the first coupling moiety A1, and/or wherein the electrolyte repeating units of the first functionalized polyelectrolyte polymer A comprise non-functionalized repeating units El having one or more non-functionalized electrolyte groups selected from cationic groups and anionic groups, wherein the number-% of non-functionalized repeating units El is in the range of 30% to 99% with respect to all electrolyte repeating units of the first functionalized polyelectrolyte polymer A, and/or the number-% of non-functionalized repeating units El is in the range of 50% to 95% with respect to all electrolyte repeating units, and/or wherein the number-% of functionalized repeating units G1 is in the range of 1% to 50% with respect to all electrolyte repeating units of the first functionalized polyelectrolyte polymer A, and/or wherein a plurality of the functionalized repeating units G2 of the second functionalized polyelectrolyte polymer B comprises the second functional group comprising the second coupling moiety B 1,and/or wherein the electrolyte repeating units of the second functionalized polyelectrolyte polymer B comprise non-functionalized repeating units E2 having one or more non-functionalized electrolyte groups selected from cationic groups and anionic groups, wherein the number-% of non-functionalized repeating units E2 is in the range of 30% to 99% with respect to all electrolyte repeating units of the second functionalized polyelectrolyte polymer B, preferably the number-% of non-functionalized repeating units E2 is in the range of 50% to 95% with respect to all electrolyte repeating units, and/or wherein the number-% of functionalized repeating units G2 is in the range of 1% to 50% with respect to all electrolyte repeating units of the second functionalized polyelectrolyte polymer B, and/or wherein at least a part of the non- functionalized repeating units E1, E2 of the first functionalized polyelectrolyte polymer A and/or of the second functionalized polyelectrolyte polymer B comprises a linking group, wherein the linking group comprises a (poly) alkylene glycol group having from 1 to 25 alkylene glycol units {[abstract] note the teachings of the presence of A1 that was also shown in claim 46, note that the rest of this claim are optional limitations}.
Regarding claim 53, SORELLE discloses wherein the first coupling moieties A1 may be selected from any one or more of tetrazine, trans-cyclooctene, maleimide, dibenzocyclooctyne, diazirine, (4-iodoacetyl)aminobenzoate),disuccinimidyl tartrate or bis(2-succinimidooxycarbonyloxy)ethyl)sulfone, azide, SPDP, [4-(psoralen-8-yloxy)]- butyrate, phosphine, 6-(4'-azido-2'- itrophenylamino)hexanoate, biotin, and/or wherein the first coupling moieties A1 may be selected from any one or more of tetrazine, trans-cyclooctene, maleimide and dibenzocyclooctyne, and/or wherein the functionalized repeating units G2 of the second functionalized polyelectrolyte polymer B are functionalized by the presence of any one or more second coupling moiety B1 independently selected from a thiol group and an amine, when the first coupling moieties Al comprises maleimide, a strained alkyne and a strained alkene, such as trans-cyclooctene, when the first coupling moieties Al comprises tetrazine, tetrazine, when the first coupling moieties Al comprises trans- cyclooctene, and azide, when the first coupling moieties Al comprises dibenzocyclooctyne, and/or wherein the first coupling moieties Al of the first functional group is a single first coupling moiety Al selected from tetrazine, trans- cyclooctene, maleimide and dibenzocyclooctyne, and/or wherein the first coupling moieties A1 of the first functional group is two or more first coupling moieties A1 independently selected from tetrazine, trans- cyclooctene, maleimide and dibenzocyclooctyne, and/or wherein at least one of the first functionalized polyelectrolyte polymer A and the second functionalized polyelectrolyte polymer B comprises a poly-L-lysine (PLL) segment, preferably wherein both functionalized polyelectrolyte polymers A and B comprise a poly-L-lysine (PLL) segment, and/or wherein at least one of the first functionalized polyelectrolyte polymer A and the second functionalized polyelectrolyte polymer B additionally comprises one or more other electrolyte repeating units other than a L-lysine repeating unit, and/or wherein at least a part of the functionalized repeating units G1 of the first functionalized polyelectrolyte polymer A comprises a linking group for bonding the first functional group to the backbone of the corresponding repeating unit, and/or wherein at least a part of the functionalized repeating units G2 of the second functionalized polyelectrolyte polymer B comprises a linking group for bonding the second functional group to the backbone of the corresponding repeating unit, and/or wherein the linking group comprises a (poly) alkylene glycol group having from 1 to 25 alkylene glycol units, and/or wherein the alkylene group moieties comprise ethylene glycol units {note that majority of limitations in this claim are optional, [0098]}.
Regarding claim 54, SORELLE wherein the exposed surface of the first substrate and/or the exposed surface of the second substrate is the surface of a material selected from the group of materials comprising a glass, silicon, silicon oxide, silicon/silicon oxide, titanium oxide, a metal oxide, a polymer material, an activated polymer, a cyclic olefin (co)polymer, and a metal, and/or wherein the exposed surface of the first substrate and/or the exposed surface of the second substrate is the surface of a polymer, and/or wherein the functionalized surface of the first substrate and the functionalized surface of the second substrate comprise a respective contact part for forming the contact area in the contacting step f {[0018]}.
Regarding claim 55, SORELLE discloses wherein at least one of the first substrate and the second substrate additionally comprises a receptor area, which is arranged outside the contact area, for receiving functionalized receptor molecules, and/or wherein the functionalized receptor molecules comprise one or more receptor coupling moieties R1 independently selected from any one or more of tetrazine, trans-cyclooctene, maleimide and dibenzocyclooctyne, and/or wherein the receptor area is part of the functionalized surface of the first substrate and/or the receptor area is part of the functionalized surface of the second substrate, and/or wherein the receptor area is formed by attaching a third functionalized polyelectrolyte polymer C to an exposed surface of said first substrate or an exposed surface of said second substrate, respectively, wherein the third functionalized polyelectrolyte polymer R comprises a plurality of electrolyte repeating units, wherein at least one of the electrolyte repeating units is a functionalized repeating unit G3 comprising a third functional group comprising a third coupling moiety C1, wherein the third coupling moiety C1 is selected from tetrazine, trans-cyclooctene, maleimide and dibenzocyclooctyne, and/or wherein receptor area is located to be exposed to at least one enclosed space of the device selected from a chamber and a channel, which is formed after bonding the first substrate to the second substrate (step g) {[0094] note channels or chambers that are the receptor area, [0041] note forming the enclosure from non-contact area, note the rest of limitations are optional}.
Regarding claim 56, SORELLE discloses wherein the method comprises at least one further step of: j. binding functionalized receptor molecules comprising one or more receptor coupling moieties R1 to at least a part of the first coupling moieties A1 attached to the functional area of the functionalized surface of the first substrate; k. binding functionalized receptor molecules comprising one or more receptor coupling moieties R1 to at least a part of the second coupling moieties B1 attached to the functional area of the functionalized surface of the second substrate;1. binding functionalized receptor molecules comprising one or more receptor coupling moieties R1 to at least a part of the third coupling moieties C1 attached to the first substrate; and m. binding functionalized receptor molecules comprising one or more receptor coupling moieties R1 to at least a part of the third coupling moieties C1 attached to the second substrate; and/or wherein the functionalized receptor molecule is selected from any one or more of an antibody or fragment or derivative thereof such as a Fab, scFv, one or more Vh domains, a nucleotide, a nucleic acid, such as DNA, RNA or PNA, a peptide, a protein, a cell-surface receptor or extra-cellular fragment thereof, a carbohydrate, a lipid, a ligand for an antibody or a cell surface receptor, and complexes, multimers, modified forms thereof, of natural origin and/or of synthetic origin {[0149] note capture agent that is the receptor coupling moiety, note the rest of limitations are optional}.
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 47 is rejected under 35 U.S.C. 103 as being unpatentable over SORELLE, in view of DIA (click chemistry – of record), hereinafter DIAZ. Note that the italicized text below are the instant claims.
Regarding claim 47, SORELLE discloses all the limitations of claim 46 as discussed above. SORELLE further discloses that pressure is exerted to the two substrates during bonding {[0183]}. SORELLE, however, is silent on the magnitude of this pressure.
In the same field of endeavor that is related to bonding two substrates with functional groups through click rection, DIAZ discloses wherein the covalent bond forming step comprises maintaining a contact between first functionalized polyelectrolyte polymer A and the second functionalized polyelectrolyte polymer B at a pressure higher than 1 MPa, wherein the pressure is lower than 100 MPa, and/or wherein the covalent bond forming step comprises maintaining a contact between first functionalized polyelectrolyte polymer A and the second functionalized polyelectrolyte polymer B for at least 0.5 minutes at said pressure {[P 4395, right col] note 25 lb/in2 is 804.35 lbf/in2 or 5 MPa}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of DIAZ in the method of SORELLE and have used a pressure of 5 MPa, since as shown by DIAZ is in its experiment, this is an appropriate pressure to successfully implement the click chemistry between function groups that SORELLE uses as well (azides/alkyne) {[0017]}.
Conclusion
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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