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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 70-84 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,596,523 and USP 11,986,775. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite all the limitations of the instant claims and thus anticipate the instant claims.
Instant claim 1 recites “wherein the first electrode and the second electrode allow a potential difference to be applied across all of the target regions simultaneously,” which is not present in the reference claims. However, this element is an inherent characteristic – when a potential difference is applied across two electrodes, the effect is simultaneous for the entire area between the two electrodes. Elements missing from the dependent claims as identified in the table below in US-775 would have been obvious in combination with the claims of US-523, because they could have been presented in a single application.
Claim correspondences:
Instant
US-523
US-775
*Differences
70
1*
1*
Applying potential “simultaneously” is inherent between two electrodes
71
2
1
72
3
1*
Pore size control is obvious, as desired, + combination with US-523.
73
4
1*
Location of recesses is implicit
74
5, 6
1
75
1
1
76
1
1
77
6
1
78
6
1
79
7
1
80
8
1
81
9
1*
No. of cycles for epitaxial growth depend on thickness, etc., obvious to engineer; combination with US-523
82
10
1*
Alternate Al2O and HfO2; protective layer is only inherent property of a layer. Combination with US-523
83
15
1*
Obvious in combination with US-523.
84
16
1*
Differently sized apertures: combination with US-523
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 only a recess or fluidic passage.
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 2015/018008), with further evidence from Alden et al (US 2017/0315109).
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490
575
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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], 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].
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 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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464
788
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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
Conclusion
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, Vickie Kim 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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