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 with traverse of Group I, claims 1-6, and species A1. Fig. 4a and B1. 5a in the reply filed on 08/04/2026 is acknowledged. The traversal is on the ground(s) that: 1. “it is not considered unduly burdensome to examine these groups of claims together, and such would promote compact prosecution.”; 2. “Figures 4a and 4b illustrate aspects of short and long axis magnetization, and Figures 5a and 5b illustrate switching between the two types of magnetization. It is not always necessary to consider these drawings as representing separate embodiments.” This is not found persuasive because: 1. there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention; and (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph; and 2. each species of A (Figures 4a and 4b) represents a distinct magnetization configuration, not shared by the other species; each species of B (Figures 5a and 5b) represents a distinct axis magnetization, not shared by the other species.
The requirement is still deemed proper and is therefore made FINAL.
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 2 and 5-6 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.
Claims 2 and 5-6 do not clearly set forth the metes and bounds of the patent protection desired. Claim 2 is unclear since the claim does not set forth any steps involved in the method. For example, the claim appears to recite a descriptive statement defining the result to be achieved, without providing method steps. In addition, it is unclear what “strong field” is. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claims 5-6 are unclear because the phrase “when applying [...]” appears to be an optional element making the claims indefinite and unclear whether the limitation(s) following the phrase are part of the claimed invention.
The term “high enough” in claim 2 is a relative term which renders the claim indefinite. The term “high enough” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “strong field” in claim 2 is a relative term which renders the claim indefinite. The term “strong field” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jaiswal et al. (Journal of Magnetism and Magnetic Materials, Volume 427, 2017, Pages 7-13) in view of Rampini et al. (Lab Chip. 2016 Oct 7;16(19):3645-63).
Regarding claim 1, Jaiswal teaches:
1. A method comprising:
capturing and releasing magnetically activated cells using micromagnets placed within a microfluidic device (see Abstract, we have designed and fabricated a microfluidic channel with patterned micromagnets which can temporarily immobilize the cells during analysis and release them after measurements), and
controlling magnetization states of the micromagnets (see Abstract, the micromagnets are made of soft magnetic material (Ni), they released cells when external magnetic field was turned off from the channel) using one or more external magnetic field sources underneath the micromagnets (see i.e., at P7/RC/¶ 2 a microfluidic channel include dielectrophoresis (DEP), [...] Dielectrophoresis can selectively capture cells; see also P8/LC/¶ 1 In order to magnetize these patterns within the microchannel, an external magnetic field source is applied such as … solenoids. These external magnetic field sources either surround the channel or are placed directly on top or bottom of the channel).
Jaiswal does not expressly teach that the external magnetic field is generated by one or more wires.
Rampini teaches current-carrying microfabricated wires (see i.e., P3646/LC/¶ 3 Electromagnets have also been microfabricated in LOC microchannels for magnetic manipulation. These structures are capable of producing magnetic field gradients of 104–105 T m−1 in localised areas, producing sufficient force for SPM bead control. Several designs have been developed for microelectromagnets, such as current-carrying microfabricated wires, high aspect ratio trenches, and arrays of coils. These microfabricated electromagnets have proven to be an effective solution for enabling on-chip transport and separation of SPM beads. Electromagnet transport of magnetically labelled cells has also been demonstrated with nanometre precision as well as the separation of viable from non-viable cells).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use current-carrying wires that change the capturing (trapping) sites, as taught by Rampini, for capturing and releasing magnetically activated cells.
Regarding claim 2, modified Jaiswal teaches: 2. The method of claim 1 wherein a current is run in the wires underneath the micromagnets to produce a magnetic field (see Jaiswal at P7/RC/¶ 2 a microfluidic channel include dielectrophoresis (DEP), [...] Dielectrophoresis can selectively capture cells; and P8/LC/¶ 1 In order to magnetize these patterns within the microchannel, an external magnetic field source is applied such as [...] solenoids. These external magnetic field sources either surround the channel or are placed directly on top or bottom of the channel).
Regarding claim 3, Jaiswal does not expressly teach: 3. The method of claim 1, further comprising: configuring a pair of wires that intersect underneath each of the micromagnets.
Rampini teaches various wire configurations, including zigzag wires, rings, squares, straight wires with periodic indentations, and curvilinear tracks (P3649/RC/¶ 3); where the magnetic field can change the nature of the trapping sites from attractive to repulsive, depending on its relative orientation with respect to the local field generated (P3649/RC/¶ 3 - P3650/LC/¶ 1, Figs. 5-6 and Table 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to configure the wires of Rampini that intersect underneath the micromagnets of Jaiswal, thus enabling the two magnetic fields to change the nature of the trapping sites from attractive to repulsive (for capture and release) of cells or particles (see Rampini P3650/RC/3 Transport and separation on micromagnets & Table 1).
Regarding claim 4, Jaiswal teaches: wherein the micromagnets are rectangular in shape (see micromagnet (Fig. 2, inset) is in a shape of a diamond with an edge size of 64 μm. P8/RC, ¶ 2), and selectively controlling a current (Dielectrophoresis can selectively capture cells P7/RC/¶ 2). However, Jaiswal does not explicitly teach that controlling the magnetization includes selectively applying a current in only one of the pair of wires.
Rampini teaches various wire configurations, including zigzag wires, rings, squares, straight wires with periodic indentations, and curvilinear tracks (P3649/RC/¶ 3); where the magnetic field can change the nature of the trapping sites from attractive to repulsive, depending on its relative orientation with respect to the local field generated (P3649/RC/¶ 3 - P3650/LC/¶ 1, Figs. 5-6 and Table 1); and the electromagnetic field allowed the local magnetic field at the T-junction to be modulated, [...] it was possible to selectively separate SPM beads by synchronising the applied current. (P3657/LC/¶ 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to provide wires beneath each micromagnet configured to capture or release cells or particles by applying a field generating current in only one of the pair of wires.
Regarding claims 5 and 6, modified Jaiswal teaches:
5. The method of claim 4, wherein the micromagnets are configured to capture the magnetically activated cells (see Rampini at P3649/RC/¶ 3 - P3650/LC/¶ 1, Figs. 5-6 and Table 1 where the magnetic field can change the nature of the trapping sites from attractive to repulsive, depending on its relative orientation with respect to the local field generated; and P3657/LC/¶ 2 the electromagnetic field allowed the local magnetic field at the T-junction to be modulated, [...] it was possible to selectively separate SPM beads by synchronising the applied current).
6. The method of claim 5, wherein the micromagnets are configured to release the magnetically activated cells (see Rampini at P3649/RC/¶ 3 - P3650/LC/¶ 1, Figs. 5-6 and Table 1 where the magnetic field can change the nature of the trapping sites from attractive to repulsive, depending on its relative orientation with respect to the local field generated; and P3657/LC/¶ 2 the electromagnetic field allowed the local magnetic field at the T-junction to be modulated, [...] it was possible to selectively separate SPM beads by synchronising the applied current).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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