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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/27/26 is being considered by the examiner.
Election/Restrictions
Claims 1, 2, 3, 4, 8, 9, 10, 28, 29, and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/27/26.
Applicant's election with traverse of claims 1, 2, 3, 4, 8, 9, 10, 28, 29, and 30 in the reply filed on 9/5/26 is acknowledged. The traversal is on the ground(s) that that it is believed that a single search and examination covering all claims would not be an undue burden. This is not found persuasive because Group I is directed to a method and Group II is directed to a device. Further, the method is 1) not dependent on the device, 2) does not include all of the limitation as the device, and requires additional structures such as at least one intervening fluidic droplet, ionic communication, and an applied voltage at least sufficient to electroporate the one or more cells.
The requirement is still deemed proper and is therefore made FINAL.
Claim Status
Claims 58, 61, 65, 66, 67, 68, 86, 88, 94, and 95 are pending and examined. Claims 1, 2, 3, 4, 8, 9, 10, 28, 29, and 30 are withdrawn and not examined.
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 86, 88, 94, and 95 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Im (US Pub 2020/0122138).
Regarding Claim 86, Im teaches an electroporation system, comprising:
a first ion containment system surrounding a first electrode; a second ion containment system surround a second electrode; and a target fluidic droplet in electrical communication with the first electrode and the second electrode, wherein, when a voltage is applied between the first electrode and the second electrode, ions created at each of the first electrode and the second electrode are contained in the respective first and second ion containment systems ([0034] Fig. 1A illustrates an exemplary electroporation apparatus 100 consistent with the disclosed embodiments. The apparatus 100 includes a sample container 10. The sample container 10 includes an insulator chamber 14, a first electrode 15a, and a second electrode 15b. Within the sample container 10, an interface is formed on the surface of a lower medium layer 12 and below an upper medium layer 13. A cell monolayer 11 across the electric current field may be formed on the interface. The apparatus 100 also includes a pulse generator 18. The sample container 10 may be placed in the pulse generator 18, which delivers an electrical pulse through the first electrode 15a and the second electrode 15b.).
Regarding Claim 88, Im teaches the electroporation system of claim 86, wherein the first ion containment system comprises a first fluidic droplet surrounding the first electrode (Fig. 1A, upper conductive medium layer 13 covers entire terminal of first tubular electrode 15a capable of being considered covered by upper conductive medium layer 13. [0034], [0059]).
Regarding Claim 94, Im teaches the electroporation system of claim 86, wherein the conductivity of the target fluidic droplet is less than the conductivity of the first and second ion containment systems ([0070] For electroporation of most eukaryotic cells, the medium or buffer that forms the two medium layers 12 and 13 usually contains salts to maintain a proper osmotic pressure. The salts in the medium or buffer also render the medium layers 12 and 13 conductive. For electroporation of very small prokaryotic cells such as bacteria, sometimes water is used as a low conductance medium to allow a very high electric field strength. In that case, the charged molecules to be delivered still render water based medium more conductiive than the lipid based cell membranes and the medium may still be roughly considered as conductiive especially compared to cell membranes.).
Regarding Claim 95, Im teaches the electroporation system of claim 86, wherein the conductivity of the first ion containment system is substantially equal to the conductivity of the second ion containment system ([0064] The compact cell monolayer 11 can be formed on the surface of an electrode or anywhere between the two electrodes. To form a cell monolayer 11 that is not directly on an electrode, an interface can be made between the two conductive medium layers 12 and 13 for cells to stay on. The interface is also referred to as the surface of the conductive medium layer. A cell suspension containing an appropriate number of cells is placed on the surface of the lower medium layer 12.).
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.
Claims 58, 61, 65, 66, 67, and 68 are rejected under 35 U.S.C. 103 as being unpatentable over Im (US Pub 2020/0122138), in view of Liu (US Pub 2020/0147612).
Regarding Claim 58, Im teaches a digital microfluidic device, comprising:
a first electrode ([0051] The aqueous solution supply 130 may be connected to the first tubular electrode 110 to supply the aqueous solution containing the cells and the delivery target substance to the inlet of the first tubular electrode 110 such that the solution is discharged in a form of the droplet from the first outlet of the first tubular electrode.);
a second electrode ([0054] second tubular electrode 120);
and a voltage generator able to produce a voltage of at least 10 V between the first electrode and the second electrode ([0057] The power supply 150 applies a voltage to the first tubular electrode 110 and the second tubular electrode 120. [0067] In an embodiment, the voltage 96V may be applied to the second tubular electrode 120 in a form of a pulse (the voltage application is activated for 20 ms and then is deactivated for 20 ms and the application/non-application are repeated)).
Im is silent to a plurality of pixels, including a first pixel, a second pixel, and at least one pixel between the first pixel and the second pixel, a first electrode in contact with the first pixel, and a second electrode in contact with the second pixel.
Liu teaches in the related art of microfluidics. See Abstract. The microfluidic device includes a first substrate, and the first substrate includes a base substrate and a pixel array. The pixel array includes a plurality of pixels and is on the base substrate, and each of the plurality of pixels includes a driving electrode. Driving electrodes of two adjacent pixels are in different layers. [0047] In this way, the first driving electrodes 61 of the first pixels are in a same layer (i.e., the first electrode layer), the second driving electrodes 62 of the second pixels are in a same layer (i.e., the second electrode layer), and the first driving electrodes 61 and the second driving electrodes 62 are in different layers, i.e., the driving electrodes of the two adjacent pixels are in different layers. For example, in four pixels forming a 2*2 matrix, driving electrodes of two pixels on the diagonal line are in a same layer.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added a plurality of pixels, including a first pixel, a second pixel, and at least one pixel between the first pixel and the second pixel, a first electrode in contact with the first pixel, and a second electrode in contact with the second pixel, as taught by Liu, in the device of Im, to allow for common microfluidic devices where a thin film transistor in a pixel drives an electrode to apply a voltage to the electrode, and the voltage applied to the electrode causes different contact angles between a droplet and a contact surface, so that the droplet can be moved to a designated position, as taught by Liu, in [0034].
Regarding Claim 61, modified Im teaches the digital microfluidic device of any one of claim 58, wherein the second electrode ([0054] second tubular electrode 120. [0052] In this connection, the second inlet 121 of the second tubular electrode 120 may face away the first outlet 112 of the first tubular electrode 110 in a predetermined spacing. The spacing between the first outlet 112 and the second inlet 121 may be sized such that a portion of the droplet can contact the second inlet 121. The second inlet 121 means an inlet into which the droplet is sucked, and the second outlet 122 means an outlet through which the sucked droplet is discharged.
Im is silent to the second electrode is separated from the first electrode by at least 40 micrometers.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, 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.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the spacing in the device of modified Im such that the second electrode is separated from the first electrode by at least 40 micrometers to allow for the droplet being contacted by both the first electrode and the second electrode.
Regarding Claim 65, modified Im teaches the digital microfluidic device of claim 58, wherein the first electrode and the second electrode are in a common substrate ([0058] a container 161. The first outlet 112 of the first tubular electrode 110 and the first inlet 111 of the second tubular electrode 120 may be inserted into the container 161 of the oil storage 160 and may face away with each other therein.).
Regarding Claim 66, modified Im teaches the digital microfluidic device of claim 58, wherein the first electrode is in a first substrate and the second electrode is in a second substrate ([0047] In this way, the first driving electrodes 61 of the first pixels are in a same layer (i.e., the first electrode layer), the second driving electrodes 62 of the second pixels are in a same layer (i.e., the second electrode layer), and the first driving electrodes 61 and the second driving electrodes 62 are in different layers, i.e., the driving electrodes of the two adjacent pixels are in different layers.).
Regarding Claim 67, modified Im teaches the digital microfluidic device of any one of claim 58, wherein the first electrode has a first interface ([0050] The first tubular electrode 110 may be embodied in a form of a hollow cylinder, and include a first inlet 111 at one end thereof and a first outlet 112 opposite to the first inlet 111. The first inlet 111 refers to an inlet into which an aqueous solution including a cell and a delivery target substance is introduced.) and the second electrode has a second interface ([0052] The second tubular electrode 120 may be embodied in a form of a hollow cylinder, and include a second inlet 121 at one end thereof and a second outlet 122 opposite to the second inlet 121. The second tubular electrode 120 is coaxial with the first tubular electrode 110. In this connection, the second inlet 121 of the second tubular electrode 120 may face away the first outlet 112 of the first tubular electrode 110 in a predetermined spacing.).
Regarding Claim 68, modified Im teaches the digital microfluidic device of claim 67, wherein the first interface is circular ([0050] The first tubular electrode 110 may be embodied in a form of a hollow cylinder. The face (top or bottom portion of the cylinder) would be circular.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE BRAZIN whose telephone number is (571)270-1457. The examiner can normally be reached M-F 8-5.
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/JB/
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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