DETAILED CORRESPONDENCE
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 I (claim 1-8) in the reply filed on 8/12/26 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)).
Claims 9-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/28/24, 3/28/24 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Status
Claims 1-18 are pending with claims 1-8 being examined and claims 9-18 deemed withdrawn.
Claim Objections
Claims 2-8 are objected to as they do not have a comma “,” after reciting the claim on which they depend.
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 1-8 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 pre-AIA the applicant regards as the invention.
As to claim 1, it is unclear what a hydrophobic fluidic platform is attempting to be defined by as recited in lines 2-3. The hydrophobic platform is just described as having electrodes. However, there is no further structure. When looking to the specification, there are no specific materials used and the specification on [14] appears to state that a hydrophobic platform is any microfluidic platform that includes electrodes. Because there is no further description in the claim or specification, it becomes unclear to a potential infringer what is or is not attempting to be defined and whether some other structure aside from a microfluidic platform with electrodes is required.
As to claim 1, it is unclear what is oscillating with respect to the oscillation source in line 5. The oscillation source is provided, but there is no function so the limitation is not interpreted under 112(f). However, it is unclear what is oscillated.
Claims 2-8 are rejected based on further claim dependency.
As to claim 5, it is unclear what an electrostatic oscillation source is describing. This does not appear to be a term of the art, and it is unclear to a potential infringer what structures are or are not electrostatic sources. Because it is unclear what the oscillation source is or how it could be electrostatic, it is also unclear if the electrodes of claim 1 could serve as the electrostatic oscillation source since electrodes create an electric force.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Langford et al (WO 2023059908 where US 20250085255 is used as the corresponding document; hereinafter “Langford”).
As to claim 1, Langford teaches a microfluidic lab-on-a-chip (Langford teaches; Fig. 1, 13, 37, [80, 173, 205, 257]) comprising: a hydrophobic fluidic platform comprising a plurality of individually controllable electrodes operably connected to a voltage source and a controller for the voltage source (Langford teaches a platform with electrodes; [74, 85, 86, 146, 147, 338]. As best understood, the electrodes create the hydrophobic surface as explained in the 112(b) above. However, Langford also teaches various substrates and films that are hydrophobic; [80-85, 208, 395, 388-399]); a cover slip spaced from and parallel to the platform (Langford teaches a top and bottom where the top is a cover plate/slip; [19, 22, 76, 90, 276]); and an oscillation source operably connected to the platform or the cover slip (Langford teaches that in addition to the electric field that there is a force field that can create oscillations/vibrations; [147-148, 314, 329, 330, 334, 335, 337, 338, 339, 340-342, 344, 346, 347, 351, 355, 356, 387, 433, 436, 440]).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
As to claim 2, Langford teaches the microfluidic lab-on-a-chip of claim 1 wherein the oscillation source is operably connected to the cover slip (Langford teaches that in addition to the electric field that there is a force field that can create oscillations/vibrations, and these would all be operably connected/coupled and joined to the entire device including the cover plate/slip; [147-148, 331, 340, 351, 387], and see also claim 1 above).
As to claim 3, Langford teaches the microfluidic lab-on-a-chip of claim 1 wherein the oscillation source is a piezo-electric device (Langford teaches piezoelectric, acoustic, and ultrasonic devices; [147-148, 249, 340-342, 344, 351, 387]).
As to claim 4, Langford teaches the microfluidic lab-on-a-chip of claim 1 wherein the oscillation source is physically connected to the platform (Langford teaches that in addition to the electric field that there is a force field that can create oscillations/vibrations, and these would all be connected/coupled and joined to the entire device including the platform; [147-148, 331, 340, 351, 387], and see also claim 1 above).
As to claim 5, Langford teaches the microfluidic lab-on-a-chip of claim 1 wherein the oscillation source is an electrostatic source (As best understood, Langford teaches that in addition to the electric field that there is a force field that can be electric or electrophoretic, and also the electric fields produced by the electrodes would serve as electrostatic sources; [147-148, 249, 338, 339, 351, 356, 387]).
As to claim 6, Langford teaches the microfluidic lab-on-a-chip of claim 1 wherein the oscillation source is a magnetic source (Langford teaches magnets; [147-148, 329, 330, 338, 355]).
As to claim 7, Langford teaches the microfluidic lab-on-a-chip of claim 1 wherein the oscillation source is an acoustical source (Langford teaches piezoelectric, acoustic, and ultrasonic devices; [147-148, 249, 340-342, 344, 351, 387]).
As to claim 8, Langford teaches the microfluidic lab-on-a-chip of claim 1 wherein the oscillation source is a microelectromechanical device (Langford teaches eletromechanical devices; [147-148, 340, 341, 351]).
Claim 1 is rejected under 35 U.S.C. 102a1/a2 as being anticipated by Shinoda, M (US 8246805; already of record; hereinafter “Shinoda”).
As to claim 1, Shinoda teaches a microfluidic lab-on-a-chip (Shinoda teaches; Title) comprising: a hydrophobic fluidic platform comprising a plurality of individually controllable electrodes operably connected to a voltage source and a controller for the voltage source; a cover slip spaced from and parallel to the platform; and an oscillation source operably connected to the platform or the cover slip (Shinoda teaches electrodes 41-44 that are connected to the platform, and a piezoelectric oscillation source 5, where the device includes a substrate that includes a base platform and a cover where the materials used are hydrophobic; Fig. 1, col. 15 lines 37-56, col. 16 line 47- col. 17 line 40, col. 19 line 45-47, col. 21 lines 63-65, Fig. 1, 14).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN R WHATLEY whose telephone number is (571) 272-9892. The examiner can normally be reached Mon- Fri 8am-5pm.
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/Benjamin R Whatley/Primary Examiner, Art Unit 1798
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