DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Amendment filed with the Office on 10 August 2026, regarding the Qing application.
Claims 48-56, 59, 61-64, 66 and 67 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 .
As all the presented limitations have been previously considered on the merits, this Office Correspondence is made a Non-final Rejection.
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 48-56 are rejected under 35 U.S.C. 103 as being unpatentable over a published paper by P. Xie, et al. (“Local electrical potential detection of DNA by nanowire-nanopore sensors”, Nature Nanotechnology, 7: 119-125, Feb 2012; hereinafter, “Xie”) in view of a US Patent Application Publication to Coln, et al. (US 2019/0113476 A1; hereinafter, “Coln”).
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Regarding claim 48, Xie discloses a nanowire-nanopore measurement set-up (Figure 1a; which reads on the instantly claimed, “A chip, comprising a first electronic device”). Xie’s set-up is reproduced below:
wherein is taught a top fluidic chamber, the top fluidic chamber including a first opening at a top of the electronic device (the Trans chamber at top of Figure);
a bottom fluidic chamber, the bottom fluidic chamber including a second opening at a bottom of the electronic device (the Cis chamber at bottom of Figure);
first and second electrodes positioned between the top fluidic chamber and the bottom fluidic chamber (Source and Drain shown in Figure); and a nanogap between the first and second electrodes, wherein a path fluidically coupled between the top fluidic chamber and the bottom fluidic chamber extends through the nanogap (nanopore shown in inset of Figure).
Xie does not recite a plurality of electronic devices, comprising the first electronic device, and arranged into a plurality of different groups; and a multiplexer for collecting signals from electronic devices corresponding to each of the plurality of different groups.
However, Coln discloses sensors for evaluating analytes based on electron tunneling through a nanometric-sized gap between at least a pair of electrodes, and to methods and systems for readout of such sensors ([0002]), wherein is taught pluralities of electronic devices arranged into a plurality of different groups (Channels of ~ 100 sensors, Figure 14). Coln additionally teaches digital signal 308 is for a given channel of the nanogap sensor array 302, and could be combined, e.g., using a multiplexer 310, with digital signals produced by other channels, to provide a total digital output 312 ([0050]).
At the time of the filing of the instant application, it would have been obvious to one of ordinary skill in the art to have adapted the channels comprising groups of sensors and a multiplexer, as taught by Coln, into the chip disclosed by Xie because it would leverage multiple nanogap sensors for detection, which would increase accuracy to the measurement.
Regarding claim 49, Qing teaches the top fluidic chamber is fluidically sealed at the bottom of the electronic device, and the bottom fluidic chamber is fluidically sealed at the top of the electronic device (Figure 2A).
Regarding claim 50, Xie teaches a substrate of a Si chip (Figure 1a).
Regarding claim 51, Xie teaches a substrate of a Si chip having a layer of SiNx thereon (Figure 1a).
Regarding claim 52, Qing teaches the planar substrate may comprise glass or quartz ([0059]).
Regarding claim 53, Qing teaches a passivation layer disposed on the electrodes ([0059]), wherein the passivation layer comprises one of silicon dioxide, silicon nitride, hafnium oxide, zirconium dioxide, aluminum oxide, titanium oxide, SU-8 polymer, or a combination thereof ([0059]).
Regarding claim 54, Qing teaches the distance of the nanogap width is the in the range of about 1 nm to about 20 nm ([0059]).
Regarding claim 55, Xie teaches the chip carrier was sandwiched between mechanically clamped-on PDMS chambers with a tight seal, which were filled with sterilized and filtered buffer solutions (Methods, p. 124).
Regarding claim 56, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI B).
Regarding claim 59, Qing teaches an electrochemical deposition at the electrodes and a feedback control circuit ([0019]).
Allowable Subject Matter
Claims 59, 61, 63, 64, 66 and 67 are allowed.
Claim 62 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The cited references do not anticipate nor render obvious the limitations of the indicated claims.
Interview with the Examiner
If at any point during the prosecution it is believed 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
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