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 .
Drawings
Figure 2 is objected to because text labeling a portion of this figure does not comport with the figure portion it is said to describe. In Figure 2 the figure portion labeled “Dielectrophoresis decreasing microelectrode” does not appear to show a feature of the microelectrode as actually decreasing.
The figures are objected to because the figure numeral is repeated below each figure numeral. For example,
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In Figure 3 did Applicant forget to label the rightmost encircled portion as was done in the other figures?
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Claim Objections
Claim 5 is objected to because of the following informality: in line 4 “25 µm,and” should be replaced with – 25 µm, and --, that is, a space should be inserted between the comma and the word “and”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Note that dependent claims will have the deficiencies of base and intervening claims.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 is
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The “contact pad” in claim 1 is understood by the Examiner to be an electrical contact pad. Whether it is or not and electrical contact pad, arranging a dielectrophoretic actuator and an impedance sensor upon a contact pad as claimed is not enabled. Addressing now the Wands undue experimentation factors (MPEP 2164.01(a).
(A) The breadth of the claims
The claims are narrow in breadth due to the specified structural features of the dielectrophoretic microelectrode actuator and the impedance sensor chip.
(B) The nature of the invention
The invention is for “[a] method for designing and fabricating a dielectrophoretic microelectrode actuator with an impedance sensor chip”.
(C) The state of the prior art
The “contact pad” of claim 1 is ether an electrical contact pad as conventionally known in the art (see, for example, Lee et al. US 2007/0125941 A1 (hereafter “Lee 1”) Figure 1 and paragraph [0032] noting therein contact pad 30) or it is something else.
If the contact pad is an electrical contact pad, then the state of art is that while a dielectrophoretic microelectrode actuator connected to an output channel and three input channels on a chip, and further arranging an impedance microelectrode sensor with one input channel and one output channel on the same chip, wherein the impedance microelectrode sensor is arranged adjacent to the dielectrophoretic microelectrode actuator, a contact pad is arranged on the chip, is known, as shown by the title, Abstract, Figure 1, and paragraphs [0002] and [0004]-[0011] in Lee et al.
US 2020/0086320 A1 (hereafter “Lee 2”), the Examiner is not aware of any disclosure of an electrical contact pad in not only the dielectrophoresis art, but related arts, such as electrophoresis and electrochemical sensing, as ever having upon it a dielectrophoretic or other type of microelectrode actuator or an impedance microelectrode sensor, let alone having both upon it and moreover fluidic input and/or output channels arranged on the contact pad.
If the contact pad of claim 1 is not an electrical contact pad, but something else, then the state of the prior art is unknown, because Applicant has provided not any information as to the structure and properties of this “something else”.
(D) The level of one of ordinary skill
One of ordinary skill in this art would hold an advanced degree in engineering or a science such as biology, chemistry, or clinical chemistry, and would have an understanding of electrode-based analytical and separation devices, especially electrophorese and electrophoresis deices.
(E) The level of predictability in the art
If the contact pad in claim 1 is an electrical contact pad, the level of predictability in the art of how it would be affected by any structures arranged upon it is high.
If the contact pad in claim 1 is not an electrical contact pad, but something else, then the level of predictability in the art is low, if non-existent, as what this “something else” may be is unknown.
(F) The amount of direction provided by the inventor
The inventor has provided no information as how to arrange a dielectrophoretic microelectrode actuator connected to an output channel and three input channels on a semiconductor chip, and further arranging an impedance microelectrode sensor with one input channel and one output channel on the same semiconductor chip, wherein the dielectrophoretic microelectrode actuator and the impedance microelectrode sensor are arranged on the contact pad.
(G) The existence of working examples
The inventor has not provided any working example of arranging a dielectrophoretic microelectrode actuator connected to an output channel and three input channels on a semiconductor chip, and further arranging an impedance microelectrode sensor with one input channel and one output channel on the same semiconductor chip, wherein the dielectrophoretic microelectrode actuator and the impedance microelectrode sensor are arranged on the contact pad.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
ad
Based on the discussion of the Wands factors above, the quantity of experimentation needed to make or use the invention based on the content of the disclosure is undue. This is especially so because, on the one hand, such a configuration is not only inconsistent with the purpose of an electrical contact pad, which is simply to provide an electrical connection between an end of an electrode lead and a power supply or electrical property measurement meter, and, on the other hand, if Applicant’s contact pad is not an electrical contact pad, there is no indication in Applicant's specification or drawings as to what its structure and properties may be
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 1-5 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:
a) claim 1 is “A method for designing and fabricating a dielectrophoretic microelectrode actuator with an impedance sensor chip, . . . .[italicizing by the Examiner]” However, there is no mention of an impedance sensor chip in the body of the claim.
b) claim 1 requires the steps of “arranging a dielectrophoretic microelectrode actuator connected to an output channel and three input channels on a semiconductor chip, and further arranging an impedance microelectrode sensor with one input channel and one output channel on the same semiconductor chip, . . . .” None of Applicant’s figures, Figures 1-4, which are said to illustrate four different examples of the disclosed invention1, show or suggest in any way the dielectrophoretic microelectrode actuator and an impedance microelectrode sensor of these “arranging” steps. Applicant’s Figures 1-4 show a very different resulting device, one in which an impedance microelectrode is side-by-side with a dielectrophoresis microelectrode on the same surface of a substrate with no input or output channel present for either the impedance microelectrode or for the dielectrophoresis microelectrode. The figures, in fact appear to have little, if any, relevance to the claimed method. Applicant is requested to explain how the application figures are relevant to the claimed method and whether he is using phrases such as “input channel” and “output channel” in an unconventional manner. If Applicant is being his own lexicographer, please heed MPEP2173.05(a).
c) claim 1 requires “a contact pad is arranged on the semiconductor chip, the contact pad has a size of 1650 μm ×1650 μm, and the dielectrophoretic microelectrode actuator and the impedance microelectrode sensor are arranged on the contact pad.[italicizing by the Examiner]” One of ordinary skill in the dielectrophoresis art would understand a “contact pad” to an electrically conducting portion at an end of an electrical lead whose other end is connected to an electrode. The contact pad is designed and intended to make electrical contact with a power supply or electrical meter so that a voltage or other electrical signal may be applied by the power supply to the electrode or so that an electrical signal may be recorded by the meter from the electrode. See, for example, Lee 2 Figure 1 and paragraph [0032] noting therein contact pad 30. As such, one of ordinary skill in the dielectrophoresis art would understand the identified elements in Applicant’s Figure 1 (and similarly for Figures 2-4) to be contact pads:
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Moreover, a conventional electrical contact pad would not have one or more fluidic input and/or output channels. So, a conventional understanding of “a contact pad”, though, is not compatible with claim 1, particularly not with the limitation “and the dielectrophoretic microelectrode actuator and the impedance microelectrode sensor are arranged on the contact pad.[italicizing by the Examiner]” Applicant is requested to explain what he means by “a contact pad” As Applicant is being his own lexicographer, please heed MPEP2173.05(a).
d) claim 2 requires “wherein the dielectrophoretic microelectrode actuator has a size of 900 μm×900 μm, a gap of 20 μm, . . . . [italicizing by the Examiner]” It is not clear what structural features of the microelectrode actuator relate to this gap. Put another way, between what structural features of the microelectrode actuator is this gap?
e) claim 2 requires “wherein the dielectrophoretic microelectrode actuator has a size of 900 μm×900 μm, a gap of 20 μm, . . . . [italicizing by the Examiner]” How, if at all, is the gap of 20 μm in claim 2 related to the “Critical dimension: Fixed 20 µm” in Applicant’s Figure 1?
f) claim 2 requires “wherein the dielectrophoretic microelectrode actuator has a size of 900 μm×900 μm, a gap of 20 μm, and an internal microelectrode length of 800 μm; . . . .[italicizing by the Examiner]” Applicant’s Figure 1, which shows a detailed view of a dielectrophoresis fixed electrode is reproduced below.
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As the dielectrophoresis fixed electrode includes associated leads and what one of ordinary skill in the dielectrophoresis art would understand to be contact pads, it is not clear what of any structural elements may be present in the dielectrophoretic microelectrode actuator beyond the dielectrophoresis fixed electrode, yet within the 100 µm difference in length between 800 µm and 900 µm.
g) claim 2 requires “and the impedance microelectrode sensor has a size of 500 μm×500 μm, a gap of 20 μm, . . . .[italicizing by the Examiner]” Between what structural elements is this impedance microelectrode sensor gap between?
h) claim 3 requires “wherein the dielectrophoretic microelectrode actuator has a size of 2000 μm× 2000 μm, a gap of 80, . . . 20 or 10 μm, . . . . [italicizing by the Examiner]” It is not clear what structural features of the microelectrode actuator relate to this gap. Put another way, between what structural features of the microelectrode actuator is this gap?
i) claim 3 requires “wherein the dielectrophoretic microelectrode actuator has a size of 2000 μm × 2000 μm, a gap of 80, . . . or 10 μm, . . . . [italicizing by the Examiner]” How, if at all, is the dielectrophoretic microelectrode actuator gap in claim 3 related to the “Critical dimension: minimum: 10 µm maximum 80 µm” in Applicant’s Figure 2?
j) claim 3 requires “wherein the dielectrophoretic microelectrode actuator has a size of 2000 μm × 2000 μm, a gap of 80, . . . or 10 μm, and an internal microelectrode length of 405 μm; . . . .[italicizing by the Examiner]” Applicant’s Figure 2, which shows a detailed view of a dielectrophoresis decreasing electrode is reproduced below.
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As the dielectrophoresis decreasing electrode includes associated leads and what one of ordinary skill in the dielectrophoresis art would understand to be contact pads, it is not clear what, if any, structural elements may be present in the dielectrophoretic microelectrode actuator beyond the dielectrophoresis fixed electrode, yet within the 1595 µm difference in length between 405 µm and 2000 µm.
k) claim 3 requires “and the impedance microelectrode sensor has a size of 2000 μm × 505 μm, a gap of 80, . . . ., 20 or 10 μm, . . . .[italicizing by the Examiner]” Between what structural elements is this impedance microelectrode sensor gap between?
l) claim 4 requires “wherein the dielectrophoretic microelectrode actuator has a size of 800 μm × 800 μm, a gap of 25 μm, . . . . [italicizing by the Examiner]” It is not clear what structural features of the microelectrode actuator relate to this gap. Put another way, between what structural features of the microelectrode actuator is this gap?
m) claim 4 requires “wherein the dielectrophoretic microelectrode actuator has a size of 800 μm × 800 μm, a gap of 25 μm, . . . . [italicizing by the Examiner]” How, if at all, is the dielectrophoretic microelectrode actuator gap in claim 4 related to the “Critical dimension: Fixed: 25 µm” in Applicant’s Figure 3?
n) claim 4 requires “wherein the dielectrophoretic microelectrode actuator has a size of 800 μm × 800 μm, a gap of 25 μm, and an internal microelectrode length of 700 μm; . . . .[italicizing by the Examiner]” Applicant’s Figure 3, which shows a detailed view of a dielectrophoresis fixed electrode, is reproduced below.
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The figure portion D3 is assumed to be a dielectrophoresis microelectrode, similarly as D1 in Figure 1, D2 in Figure 2, and D4 in Figure 4. As the dielectrophoresis fixed electrode includes associated leads and what one of ordinary skill in the dielectrophoresis art would understand to be contact pads, it is not clear what of any structural elements may be present in the dielectrophoretic microelectrode actuator beyond the dielectrophoresis fixed electrode, yet within the 100 µm difference in length between 700 µm and 800 µm.
o) claim 4 requires “and the impedance microelectrode sensor has a size of 200 μm × 200 μm, a gap of 25 μm, . . . .[italicizing by the Examiner]” Between what structural elements is this impedance microelectrode sensor gap between?
p) claim 5 requires “wherein the dielectrophoretic microelectrode actuator has a length of 5000 μm on one side . . . ., a gap of 25 µm, . . . . [italicizing by the Examiner]” It is not clear what structural features of the microelectrode actuator relate to this gap. Put another way, between what structural features of the microelectrode actuator is this gap?
q) claim 5 requires “wherein the dielectrophoretic microelectrode actuator has a length of 5000 μm on one side . . . ., a gap of 25 µm, . . . . [italicizing by the Examiner]” How, if at all, is the dielectrophoretic microelectrode actuator gap in claim 5 related to the “Critical dimension: minimum 25 µm maximum 1425 µm: µm” in Applicant’s Figure 5?
r) claim5 requires “and the impedance microelectrode sensor has a length of 5000 μm on one side and 16700 μm on the other side, with a gap of 25 μm. [italicizing by the Examiner]” ]” Between what structural elements is this impedance microelectrode sensor gap between?
s) claim5 requires “and symmetrical V-shaped microelectrodes formed on both sides; . . . .[italicizing by the Examiner]” The portion labeled “Diectrophoresis decreasing microelectrode” in Applicant’s Figure 5 is understood by the Examiner as illustrating this feature. However, “microelectrode” in the label “Diectrophoresis decreasing microelectrode” is singular.
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.
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 on 571 272-8521. 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.
/ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
1 See originally filed specification paragraphs [0017]-[0020] and [0025]-[0034].
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