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 .
Status of the Rejections pending since the
non-final Office Action mailed on April 06, 2026
The rejection of claim 47 under 35 U.S.C. 112(b) is withdrawn.
The rejection of claim 38 under 35 U.S.C. 102(a)(1) is maintained. It is presented again below for Applicant’s convenience.
The rejections of claims 5, 11, 15, 16, 19, 20, 21, 25-31, 34, and 35 under
35 U.S.C. 103 with Zhang as the base refence are withdrawn.
The rejections of claims 5, 12, 13, 15, 16, 19, 20, 21, 25-31, 34, and 35 under
35 U.S.C. 103 with Mira as the base refence are withdrawn.
The rejection of claim 39 under 35 U.S.C. 103 as being unpatentable over Mira in view of Pohl is maintained. It is presented again below for Applicant’s convenience.
Response to Arguments
Applicant's arguments filed August 06, 2026 have been fully considered but they are not persuasive.
Regarding the rejection of claim 38 under 35 U.S.C. 102(a)(1) Applicant argues the following
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However,
A disclosure made within the grace period is not prior art under AIA 35 U.S.C. 102(a)(1) if it is apparent from the disclosure itself that it is an inventor-originated disclosure. Specifically, Office personnel may not apply a disclosure as prior art under AIA 35 U.S.C. 102(a)(1) if the disclosure: (1) was made one year or less before the effective filing date of the claimed invention; (2) names the inventor or a joint inventor as an author or an inventor; and (3) does not name additional persons as authors on a printed publication or joint inventors on a patent. This means that in circumstances where an application names additional persons as joint inventors relative to the persons named as authors in the publication (e.g., the application names as joint inventors A, B, and C, and the publication names as authors A and B), and the publication is one year or less before the effective filing date, it is apparent that the disclosure is a grace period inventor disclosure, and the publication is not prior art under AIA 35 U.S.C. 102(a)(1). If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies.
See MPEP 2153.01(a).
The listed co-authors of the Mira article are
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The listed joint inventors for applicant 18/834945 are
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Thus, the Mira article lists additional persons as authors1 not listed as joint inventors for the patent application.
So, there is no “automatic” grace period inventor-originated exception.
Regarding the rejection of claim 39 under 35 U.S.C. 103 Applicant argues the following
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The Examiner’s remarks above regarding Applicant’s argument against the rejection of claim 38 under 35 U.S.C. 102(a)(1) applies to the rejection of claim 39 under 35 U.S.C. 103 also.
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 38 and 47 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mira et al., “Label-free enrichment of rare unconventional circulating neoplastic cells using a microfluidic dielectrophoretic sorting device,” COMMUNICATIONS BIOLOGY | (2021) 4:1130 with Supplementary Information (hereafter “Mira”).
Addressing claim 38, Mira discloses a method for sorting particles (such as circulating hybrid cells (CHCs) and peripheral blood mononuclear cells (PBMCs)) in fluids (see the title, Abstract, and Figure 1(a)(2)), comprising:
introducing a fluid sample into a microfluidic chamber via a first inlet of the microfluidic chamber of a microfluidic system, the microfluidic chamber being configured to allow the fluid sample to flow therethrough (see Supplementary Figure 1(a) and note the following in Materials and methods - Fabrication and operation of microfluidic DEP sorting device., which is on Mira page 7, “The microfluidic chamber (Supplementary Fig. 1) consists of one sample inlet . . . . The flow is pulled from all three outlets by two flow-driven syringe pumps . . . .”);
introducing sheath flows into the microfluidic chamber via a second inlet and a third inlet of the microfluidic chamber (see Supplementary Figure 1(a) noting therein the arrows labeled Sheath Flow. Also, “Under continuous flow the sample is centrally confined by two sheath flows providing a small variation of initial speed and position.” See Design. on page 2.);
controlling at least one array of electrodes to apply dielectrophoretic (DEP) forces to the fluid sample flowing through the microfluidic chamber (see Figure 1(a)(2) noting “DEP force”. Also see Figure 2 and Optimization of PBMC depletion and hybrid cell line enrichment, which is on pages 3-5 in which the effects of a change in the DEP frequency are discussed.), wherein the at least one array of electrodes are arranged on a substrate in the microfluidic chamber (see Figure 1(a)(2) and Supplementary
Figure 1(a). Also, note “The microfluidic DEP sorting device described here consists of two layers: a silicon chip with an interdigitated patterned electrode layer . . . . [italicizing by the Examiner]“ See the first paragraph of Materials and methods- Fabrication and operation of microfluidic DEP sorting device., which is on page 7.), and a respective electrode of the plurality of the arrays of electrodes is configured to have a V-shape (see Figure 1(a)(2) and Supplementary Figure 1(a). ); and
collecting a plurality of types of particles in the fluid sample at a plurality of outlets of the microfluidic chamber (see Supplementary Figure 1(a). also, note the following “Reconstituted cells were loaded into the center channel inlet and collected for at least 30 min at each specific frequency and voltage combination. In the case of the spiking experiments, 50,000 cells were added per 1 × 106 PBMCs prior to loading into the device. Each outlet was collected, transferred to standard 5ml round bottom polystyrene flow cytometry tubes, stained. [italicizing by the Examiner]” See on page 7 Cell line PBMC DEP analysis.).
Addressing claim 47, for the additional limitation of this claim see the Mira abstract noting “We report the development of a label-free dielectrophoretic microfluidic platform facilitating enrichment of CHCs in a high-throughput and rapid fashion by depleting healthy peripheral blood mononuclear cells (PBMCs). [italicizing by the Examiner]” Also, “PBMCs are mainly comprised of lymphocytes and monocytes.” See the right column on Mira page 3.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Mira in view of Herbert Pohl US 4,326,934 (hereafter “Pohl”).
Addressing claim 39, as a first matter, Mira alone meets all of the limitations of underlying claim 38. See the rejection of claim 38 under 35 U.S.C. 102(a)(1) above.
Mira as modified by Mpholo, Muller, Fuhr, Wang, or Benecke does not disclose a first array of electrodes, a second array of electrodes, and a third array of electrodes2; however, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to provide a second array of electrodes and a third array of electrodes because this additional arrays of electrodes could be configured to each generate a different dielectrophoresis field from that generated by the first array of electrodes so that a second type of particle and a third type of particle may be selectively separated out from the sample so as to flow in the central outlet channel along with the particle type separated out by the first electrode array.
As for the claim limitations “controlling a first array of electrodes of the at least one array of electrodes to operate based on a first set of parameters at a first frequency between 1 Mhz and 20 Mhz and a first voltage between 5 V and 20 V; and controlling a second array of electrodes of the at least one array of electrodes to operate based on a second set of parameters at a second frequency between 4 Mhz and 9 Mhz and a second voltage between 5 V and 20 V; and controlling a third array of electrodes of the at least one array of electrodes to operate at a third frequency between 9 Mhz and 14 Mhz and a third voltage between 5 V and 20 V…”, as shown by Pohl the physical theory of dielectrophoresis has been known for decades now. In particular, mathematical equations for describing and predicting the dielectrophoresis force that may be generated upon cells had been developed. See Pohl col. 2:67 – col. 7:35. Pohl also discloses that particles have characteristic dielectrophoresis spectra with varying electrophoresis field frequency, and that an optimum frequency for sorting the particle may be sought. See Pohl Figure 8, col. 11:38-46, and col. 9:53-61. Additionally, Pohl discloses that the dielectrophoresis field voltage must be controlled within certain limits. See Pohl col. 7:47-57 and col.2:56-60. Thus, in light of these teachings by Pohl the specified frequency ranges and voltage ranges in 39 are prima facie obvious as routine optimization of known result-effective variables in order to sort a first particle type, a second particle type, and third particle type of a sample mixture into the central outlet channel (that is, there are three particle types of primary interest to be sorted out). See MPEP 2144.05(II).
Final Rejection
Applicant's amendment necessitated the new ground 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 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.
Allowable Subject Matter
Claims 5, 11-16, 19-21, 25-31, 34, and 35 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: see Applicant’s remarks in the Amendment of August 06, 2026 and see pages 53-55 (Other Relevant Prior Art and Allowable Subject Matter) in the non-final Office Action mailed on April 06, 2026.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER STEPHAN NOGUEROLA whose telephone number is (571)272-1343. The examiner can normally be reached on Monday - Friday 9:00AM-5:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached on 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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. /ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
1 Brett S. Walker, Jesus Bueno Alvarez, Eugene Tu, Jared M. Fischer, Melissa H. Wong, and Sadik Esener
2 Although, it should be noted, Supplementary Figure 1(a) does appear to show a first array of electrodes and a second array of electrodes.
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