DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Han, et al. application filed with the Office on 19 June 2024.
Claims 1, 7, 11-13, 15, 17-19, 21, 22, 24, 26-28, 34, and 38-41 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The preliminary amendment filed on 19 June 2024, is acknowledged and has been entered.
Priority
The instant application is a US National Stage Application of an International Patent Application, PCT/US2022/053973, filed on 23 December 2022, which claims priority to a US Provisional Patent Application, 63/293,812, filed on 26 December 2021. Thus, the effective filing date of the instant application is 26 December 2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted regarding the present application filed on 19 June 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the Examiner.
Claim Objections
Claim 34 is objected to because of the following informalities: Claim 34 is drawn dependent upon cancelled claim 33. Appropriate correction is required. The claim will be considered to be dependent from claim 1 for purposes of examination.
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, 7, 11-13, 15, 17-19, 21, 22, 24, 26-28, 34, and 38-41 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.
The terms “high-precision” and “high-efficiency” in claim 1 are relative terms which renders the claim indefinite. The terms “high-precision” and “high-efficiency” are 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. It is unclear how the phrase "droplet manipulation" is modified to be "high-precision" or has "high-efficiency". All other pending claims ultimately depend from claim 1 and are rejected for the same reasoning.
Claim 22 is rejected as being indefinite for failing to particularly point out and distinctly claim the subject matter. Claim 22 depends from claim 21 and further limits the repellent layer, however, the repellent layer is claimed in the alternative in claim 21. Thus, the repellent layer is not positive recited by either of claims 21 and 22. Therefore, claim 22 is rejected under 35 USC 112(b).
The terms “large beads” and “large particles” in claim 24 are relative terms which renders the claim indefinite. The terms “large beads” or “large particles” are 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. It is unclear what constitutes a large bead or a large particle.
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 1, 7, 11-13, 15, 18, 19, 21, 24, 28 and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published paper by K.-H. Han, et al. (“Lateral displacement as a function of particle size using a piecewise curved planar interdigitated electrode array”, Lab on a Chip, 9(20): p. 2958-2964, 2009; hereinafter, “Han”).
Regarding claim 1, Han discloses a droplet system for high-precision and high-efficiency droplet manipulation (5th ¶, Introduction, p. 2958: “… an advanced lateral DEP microseparator …”), the droplet system, comprising:
at least one microfluidic channel or chamber (center area of Figure 1b); and
at least one interdigitated electrode (IDE) that creates a localized electric field below or within at least one fluidic channel or chamber (Electrodes 1 and Electrode 2, Figure 1),
wherein a series of IDEs are used to sort out droplets of a desired size range using a combination of one or more filters selected from the group consisting of highpass, lowpass, bandpass, and combinations thereof (last ¶, 2.2 Design, p. 2960: “Small particles will thus have a small lateral displacement, end up in Region 1, and flow into Outlet 1 as shown in Fig. 2. Medium-size particles will move laterally out from Region 1 and their lateral displacement will be reduced when they reach Region 2. As a result, they will flow along the boundary between Regions 1 and 2, and be separated into Outlet 2. Finally, large particles will move laterally out from Regions 1 and 2 while passing over the planar interdigitated electrodes and their lateral displacement will be somewhat reduced in Region 3. Even if the large particles move laterally in Region 3, they will flow into Outlet 3.”; wherein the Regions 1, 2, and 3 act as bandpass filters).
Regarding claim 7, Han teaches the electrodes are fabricated from Cr and Au (1st ¶, 3.2 Microfabrication process, p. 2960: “The planar interdigitated electrodes were made of Cr/Au …”).
Regarding claim 11, Han teach utilization of 12-V p-p 200-kHz sinusoidal voltage (1st ¶, 3.1. Materials and methods, p. 2960).
Regarding claim 12, Han teach utilization of 12-V p-p 200-kHz sinusoidal voltage (1st ¶, 3.1. Materials and methods, p. 2960).
Regarding claim 13, the utilization of the claimed apparatus does not further limit said apparatus (MPEP 2114 III).
Regarding claim 15, Han teaches the microfluidic channel/chamber is straight shaped (center area of Figure 1b).
Regarding claim 18, Han teaches separation of an admixture of polystyrene (PS) beads (1st ¶, 4.3 Separation of polystyrene beads depending on their size, p. 2962: “An admixture of fluorescent PS beads with three different diameters (3, 5, and 10 mm) were injected through the sample inlet of the lateral DEP microseparator and passed over the piecewise curved planar interdigitated electrode array …”).
Regarding claim 19, Han teaches wherein the at least one IDE is at least one of directly in contact or a proximity to a substance in the at least one fluidic channel or chamber (Figure 3a).
Regarding claim 21, Han teaches wherein the at least one IDE is directly exposed to a solution in the at least one fluidic channel or chamber (Figure 3a).
Regarding claim 24, Han teaches separation of an admixture of polystyrene (PS) beads (1st ¶, 4.3 Separation of polystyrene beads depending on their size, p. 2962: “An admixture of fluorescent PS beads with three different diameters (3, 5, and 10 mm) were injected through the sample inlet of the lateral DEP microseparator and passed over the piecewise curved planar interdigitated electrode array …”).
Regarding claim 28, Han teaches a system of microchannels is comprised of a single layer of microfluidic channels (Figure 3).
Regarding claim 34, Han teaches three outlets (Figure 1b).
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 17 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Han.
Regarding claim 17, Han does not teach a specific height of the at least one fluidic channel or chamber is in a range of several to hundreds of microns.
However, it has been 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 (MPEP 2144.04 IV A).
Regarding claim 38, Han does not teach wherein microfluidic channel height changes for different IDE-based droplet manipulation units along the microchannel so that size-based droplet manipulation is enable.
However, it has been 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 (MPEP 2144.04 IV A).
Other Claims in View of the Prior Art
Claims 22, 26, 27 and 39-41 are not subject to prior art rejections. Han is considered the closest prior art to the instant claims, but does not anticipate nor render obvious i) a repellent layer, as required by instant claim 22; ii) utilization of multi-emulsion droplets, as required by instant claims 26 and 26; iii) use of a droplet diameter quality control system for generation, merging, or splitting, as required by instant claim 39; iv) the IDE merges droplets, as required by instant claim 40; or, v) IDE are used to slow, stop or hold droplets, as required by instant claim 41.
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795