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 .
Election/Restrictions
Applicant’s election of Group II, claims 11-20 in the reply filed on April 1, 20260 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 102
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.
Claims 11-13 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (US 2020/0032189; hereinafter “Chen”).
Regarding claim 11, Cheng discloses a device configured to render a spheroid encapsulated in a gel, the device comprising: a frame comprising a base and an island protruding from the base (FIG. 5E: plate (528) having a raised pad (512) protruding from a bottom of the base; [0100]); and a substrate (FIG. 5E: cap (530); [0105]), wherein the frame is arrangeable against the substrate with the base distally positioned from the substrate (i) to have the gel confined between the island and the substrate and (ii) to have the gel encapsulate the spheroid (as shown in FIG. 5E, the substrate (530) and bottom of the frame are spaced apart by walls (518); [[0105]). Furthermore, it is noted that the recitation of functional language "e.g., to render a spheroid encapsulated in a gel" is drawn to intended use of the claimed invention. It is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). The prior art discloses all of the structural features of the claimed device and thus since the structure is the same, the claimed functions are apparent.
Regarding claim 12, Cheng further discloses a wherein the frame comprises two supporting structures each configured at opposing edges of the base and extending therefrom (FIG. 5E: frame includes walls (518) extending from the base; [0105])), and wherein the island is (i) configured between the two supporting structures (see FIG. 5E), (ii) extends in the same direction as the two supporting structures from the base (see FIG. 5E), and (iii) is vertically shorter than the two supporting structures (see FIG. 5E).
Regarding claim 13, Cheng further discloses wherein the frame further comprises two depressions each residing between one of the two supporting structures and the island (FIG. 5E: areas (506,514) between raised pad (512) and walls (518)).
Regarding claim 18, Cheng further discloses wherein the island, when viewed from top down, comprises a circular shape, a three-sided shape, a four-sided shape, or a five-sided shape (raised pad (primary area) can have shape of a circle; [0172]).
Therefore, Cheng meets and anticipates the limitations set forth in claims 11-13 and 18.
Claims 11, 15, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bietsch et al (US 2006/0096477; hereinafter “Bietsch”).
Regarding claim 11, Bietsch discloses a device configured to render a spheroid encapsulated in a gel, the device comprising: a frame comprising a base and an island protruding from the base (FIG. 5A: stamp (38) having protrusions (46); [0058]); and a substrate (FIG. 5A: substrate (51); [0058]), wherein the frame is arrangeable against the substrate with the base distally positioned from the substrate (i) to have the gel confined between the island and the substrate and (ii) to have the gel encapsulate the spheroid (see FIG. 5A: base of stamp (38) is spaced from the substrate (51)). Furthermore, it is noted that the recitation of functional language "e.g., to render a spheroid encapsulated in a gel" is drawn to intended use of the claimed invention. It is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). The prior art discloses all of the structural features of the claimed device and thus since the structure is the same, the claimed functions are apparent.
Regarding claim 15, Bietsch further discloses wherein the island comprises: one channel; or more than one channel, wherein the more than one channel has the same or different depth (FIG. 5A: protrusions (46) includes channels (42); [0058]).
Regarding claim 18, Bietsch further discloses wherein the island, when viewed from top down, comprises a circular shape, a three-sided shape, a four-sided shape, or a five-sided shape (FIG. 5B; [0058]).
Regarding claim 19, Bietsch further discloses wherein the channel, or the more than one channel, is linear or curved (see FIG. 5B; [0058]).
Therefore, Bietsch meets and anticipates the limitations set forth in claims 11, 15, 18 and 19.
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, 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.
Claims 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng as applied to claims 11-12 above.
Regarding claim 14, Cheng discloses the device according to claim 12 as set forth above. Cheng discloses wherein the two supporting structures extend from the base of the frame (see FIG. 5E), but does not explicitly disclose wherein the two supporting structures extend at least 150 μm from the base. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the size of the supporting structures of the device of Cheng to comprise the claimed size, since such a modification would involve only a mere change in size of a component. Scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art (See MPEP 2144.04 IV. A.). One would have been motivated to scale the size of the supporting structure in order to accommodate desired volume of fluid within the device. See also [0102]. Furthermore, it’s noted that the courts have held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777).
Regarding claim 17, Cheng discloses the device according to claim 11 as set forth above. Cheng discloses wherein the island protrudes from the base at a height (see FIG. 5E), but does not explicitly disclose wherein the height ranging from 10 μm to 500 μm. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the height of the island of the device of Cheng to comprise the claimed height, since such a modification would involve only a mere change in size of a component. Scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art (See MPEP 2144.04 IV. A.). Furthermore, it’s noted that the courts have held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bietsch as applied to claim 1 above.
Regarding claim 16, Bietsch discloses the device according to claim 11 as set forth above. Bietsch discloses wherein the island comprises at least one channel defined by multiple depressions (FIGS. 5A-5B; [0058]), but does not explicitly disclose wherein each of the multiple depressions has a different depth. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the depth of the depressions of Bietsch to comprise different depth, since such a modification would involve only a mere change in size of a component. Scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art (See MPEP 2144.04 IV. A.). One of ordinary skill in the art would have made said modification in order to achieve desired fluid flow profile and desired fluid volume within the device. Furthermore, it’s noted that the courts have held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777).
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIBAN M HASSAN whose telephone number is (571)270-7636. The examiner can normally be reached on 8:30 AM - 5:00 PM.
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/LIBAN M HASSAN/Primary Examiner, Art Unit 1799
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