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 .
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.
Claims 73 and 74 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.
Claim 73: “each of one or more of the recesses or fluidic passages” lack antecedent basis. Claim 70 recites “each of a plurality of target regions comprises a recess or fluidic passage in the membrane,” [emphasis by examiner] whereas Claim 73 can be interpreted as reciting one or more fluidic passages in each of the plurality of target regions. Also, plurality excludes “one.”
Claim Rejections - 35 USC § 102 and 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, 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.
Claim(s) 70-79 and 81-84 are rejected under 35 U.S.C. 102(a1) as being anticipated by, or in the alternative, under 35 USC 103 as being unpatentable over, Kwok et al (US 2015/0108008), with further evidence from Alden et al (US 2017/0315109).
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Claims 70-73: Kwok teaches the method as claimed – that is, single nanopores can be formed by dielectric breakdown in membranes. Details in the abstract, figures 4A-D [0032-0033], 6 and 7 [0036]. The potential difference across the target region(s) in the figures are applied simultaneously – inherent (see below,) because when the switch is turned on, the potential difference between the two electrodes is established instantly, all across the membrane 41. Figures 4A-D show a single aperture being formed and grown in size. Precise pore size formed, or pore enlarged – [0036].
It is noted that the middle two paragraphs of claim 70 requires only “an aperture” to be made in a target region. That is anticipated by Kwok. The membrane in claim 70 can have plurality of target regions, and the claim also recites that the electrodes allow a potential difference to be applied across all target regions simultaneously.
Now, in fig. 12, there are 4 [microfluidic] channels 120 (passages or recesses), and a pore is formed in each of these channels. Each of these channels is a target region. While fig. 12. has four electrodes on the microfluidic channel side, each channel has only one electrode on that side, and a second electrode on the opposite side. Thus each of the target regions has one first and one second electrode.
The last line of claim 70, “wherein the first electrode and the second electrode allow a potential difference to be applied across all of the target regions simultaneously” does not say that the single pore in each of the plurality of target regions is formed using a single first electrode and a single second electrode. That line only states ‘allow a potential difference.’ Under the broadest reasonable interpretation, the claim is interpreted as stating that one pore is formed in one target region using one first electrode and one second electrode (as in fig 12 of Kwok-see below;) and the first and the second electrode would allow a potential difference to be applied across all of the target regions simultaneously.
Claim 73: Plurality of layers and the materials – see [0028].
Claims 74-75: Membrane formed in microfluidic channels – [0049]. Figure 4A-D depicts two layers, the first layer being silicon substrate, which is etched to limit the etching to the second layer of SiNx [0036] (to the interface). Dielectric breakdown: [0046], [0048].
Claim 76-79, 81, 82: Regarding atomic layer deposition, Kwok teaches the method of vapor deposition [0032] to deposit membrane 41, which includes ALD. Specific vapor deposition such as ALD would depend on the material deposited and would have been within the capability of one of ordinary skill. Applicant admits on page 20 of the specification that ALD is a known process for depositing thin films. Deposition by sublayers is part of the process of ALD which is not patentable – see Alden, [0033] (page 3, right column, lines 3-8), for evidence, which teaches layer-by layer deposition using ALD. Regarding the non-epitaxial growth, since applicant appears to use the same technology taught by Kwok, the growth would also be the same. Formation of protective layer for etching and removal of the protective layer are well-known process steps for forming micro and nanochannels and are not patentable steps, unless otherwise shown. Kwok teaches the channels as formed by etching [0032]. Four or fewer cycles as in claim 81: this can be optimized based on the thickness required.
Claims 83, 84: Fluidic passage with an aperture – see fig. 12.
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Electric resistance of the aperture with respect to the fluidic passage: this is inherent as the aperture opens up, fluidic passage resistance drops – see abstract and fig. 6. Resistance in the aperture would be aperture size dependent, inherently higher than, and within the claimed range of <10x that of the fluidic passage, unless otherwise shown.
See [0049] for different sized apertures by independently forming nanopores. The control factor is different electrical resistance – which is implied to control dielectric breakdown.
Inherency and inherent property: MPEP 2112: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. See also MPEP § 2112.01 with regard to inherency and product-by-process claims
Response to Arguments
Applicant's arguments filed 9/4/26 have been fully considered but they are not persuasive. They are addressed in the rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached on Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 5712720579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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