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 .
DETAILED ACTION
Response to Arguments
1. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
2. With respect to applicant’s remarks filed on 06/29/26 regarding rejected claims on pages 7-8, the examiner respectfully disagrees.
Applicants argues “The specification in its entirety provides sufficient teaching for how the droplet sorting module determines the appropriate droplet sort decision unit from the plurality of sort decision units for sorting each droplet. One of ordinary skill in the art would readily recognize that the droplet sort decision unit for sorting a target particle could be unambiguously determined with the components set forth in the claims… Taken together, the particle content, the bit positions of the particles and the particle classification (i.e., target particle or non-target particle) of each of the droplets of a flow stream is determined. As such, one of ordinary skill in the art would readily recognize that this generated data would be sufficient for the processor to execute instructions to determine which of the droplet sort decision units would be appropriate for sorting each droplet of the flow stream. Indeed, having the specific parameters of droplet content of particle content, particle position and particle classification would be sufficient for practicing the full scope of the claims. The claims therefore do not need to explicitly recite "the functions: comparing and ranking" in order to be consistent with and "fulfill the meaning of the specification".”
As indicated in previous office action, According to Applicant’s pub. No. 2024/0402065, paragraphs [0004-0005], for determining an optimal droplet sort decision unit from the plurality of sort decision units for sorting the droplet and sorting the droplet with the determined optimal droplet sort decision unit, the processor needs to compare the target count value and the target match value for each sort decision unit and determine the optimal sort decision unit for sorting the droplet based on the target count value and the target match value of each sort decision unit, and the processor needs to rank each sort decision unit based on the target match values. In the other words, to determine an optimal droplet sort decision, the processor needs to fulfill the functions: comparing and ranking. The claims do not disclose how to determine an optimal droplet sort decision unit. Thus, claims 54, 58, do not fulfil the meaning of the specification.
Further, amended claims also have problem of 101 issue, (please see the following 101 rejection). In order to overcome the Claim Objection and 101 issue, the Examiner suggest that claims should amend to disclose clearly that the step of determining an optimal droplet sort decision unit is done by machine, and cannot be done by human. In the other words, for determining an optimal droplet sort decision unit from the plurality of sort decision units for sorting the droplet and sorting the droplet with the determined optimal droplet sort decision unit, the processor needs to compare the target count value and the target match value for each sort decision unit and determine the optimal sort decision unit for sorting the droplet based on the target count value and the target match value of each sort decision unit, and the processor needs to rank each sort decision unit based on the target match values.
Grounds for the rejection of claims are provided below as necessitated by amendment.
Terminal Disclaimer
3. The terminal disclaimer filed on 06/29/26 disclaiming the terminal portion of any patent granted on this application, which would extend beyond the expiration date of the U.S Patent 12,098,994 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
4. Claims 54-61are objected to because of the following informalities:
Regarding to claims 54, 58, it is not clear how to determine an optimal droplet sort decision unit from the plurality of different sort decision units for sorting each droplet of the flow stream. According to Applicant’s pub. No. 2024/0402065, paragraphs [0004-0005], for determining an optimal droplet sort decision unit from the plurality of sort decision units for sorting the droplet and sorting the droplet with the determined optimal droplet sort decision unit, the processor needs to compare the target count value and the target match value for each sort decision unit and determine the optimal sort decision unit for sorting the droplet based on the target count value and the target match value of each sort decision unit, and the processor needs to rank each sort decision unit based on the target match values. In the other words, to determine an optimal droplet sort decision, the processor needs to fulfill the functions: comparing and ranking. Thus, claims 54, 58, do not fulfil the meaning of the specification. (Please see the explanation in paragraph 2 above).
Claim Rejections - 35 USC § 101
5. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
6. Claims 54-61 rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
7. Claims 54 and 58, will be addressed below according to the 2019 Patent Eligibility Guidelines.
Step 1: Is the Claim to a Process, Machine, Manufacture or Composition of Matter?
The claims droplet sorting module and a method for sorting droplets of a flow stream.
Step 2A Prong One: Does the Claim Recite an Abstract Idea?
Claim 54 recites: “… the processor to determine an optimal droplet sort decision unit from the plurality of different sort decision units for sorting each droplet of the flow stream…”
Claim 58 recites: “… determining an optimal droplet sort decision unit from the plurality of different sort decision units for sorting the droplet; and sorting the droplet with the determined optimal droplet sort decision unit…”
The examiner finds that the foregoing underlined elements recite a mental process because they can be performed in the human mind.
Step 2A Prong Two: Does the Claim Recite Additional Elements That Integrate the Abstract Idea into a Practical Application?
The elements in the claim that are not underlined above are the additional elements.
The examiner finds that each of the following additional elements merely adds insignificant extra-solution activity to the abstract idea: the plurality of different sort decision units for sorting each droplet of the flow stream.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For example, there is no indication that the combination of elements improves the functioning of a processor or improves any other technology.
Step 2B: Does the Claim Recite Additional Elements That Amount to Significantly More Than the Abstract Idea?
The examiner finds that the additional elements do not amount to significantly more than the abstract idea for the same reasons discussed above with respect to the conclusion that the additional elements do not integrate the abstract idea into a practical application.
Therefore, the claimed subject matter does not recite patent eligible subject matter under 35 USC §101.
Allowable Subject Matter
8. Claims 1-53 have been cancelled.
9. Claims 54-61 would be allowable if the 101 rejection and Claim Objection were overcome.
10. The allowable Subject matter was indicated in office Action mailed on 04/29/26.
Conclusion
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Fax/Telephone Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI T TON whose telephone number is (571)272-9064. The examiner can normally be reached on 8am-4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached on (571)270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
July 23, 2026
/Tri T Ton/
Primary Examiner Art Unit 2877
Prosecution Insights