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 .
Claim Objections
Claims 3 and 5 are objected to because of the following informalities:
a) in claim 3, line 1, the word – the – should be inserted between “wherein” and “monitoring”; and
b) in claim 5, line 1, the word – the – should be inserted between “wherein” and “monitoring”.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patenting rejections based on U.S. Patent No. 10,695,762 B2
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 4 together of U.S. Patent No. 10,695,762 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 with claim 4 of U.S. Patent No. 10,695,762 B2 meet all of the limitations of claim 1 of the instant application. Note: (1) the Examiner construes “wherein monitoring comprises detecting a change in an electrical property due to the reduction in volume of the reaction droplet...” in claim 4 as implying “monitoring, using one or sensors, . . . .”; (2) the Examiner construes “wherein combining comprises moving the replenishing droplet, . . . .” in claim 2 as implying “driving the replenishing droplet . . . .”; and (3) it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 10 together of U.S. Patent No. 10,695,762 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 with claim 10 of U.S. Patent No. 10,695,762 B2 meet all of the limitations of claim 1 of the instant application. Note: (1) the Examiner construes “optically monitoring, using one or more cameras, a reaction droplet in the air gap . . . .” in claim 10 as implying “monitoring, using one or sensors, . . . .”; (2) the Examiner construes “wherein combining comprises moving the replenishing droplet, . . . .” in
claim 2 as implying “driving the replenishing droplet . . . .”; and (3) it would have been obvious to one of ordinary skill in the art to consider combining together features from claims 2 and 10 of U.S. Patent No. 10,695,762 B2, because these claims are clearly compatible method claims that have the same goal (replenishing a reaction droplet) and overlapping steps to achieve this goal.
4. Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 4 together of U.S. Patent No. 10,695,762 B2. Claim 1, from which clam 3 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because the Examiner construes “ monitoring a reaction droplet in an air gap region of the air-matrix DMF apparatus to determine when a volume of the reaction droplet falls below a threshold, . . . .” in claims 2 and 4 (which incorporate claim 1) of U.S. Patent No. 10,695,762 B2 to imply “monitoring comprises identifying a change in size of the reaction droplet.”
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 4 together of U.S. Patent No. 10,695,762 B2. Claim 1, from which clam 5 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2 and 4 (which incorporate claim 1) of U.S. Patent No. 10,695,762 B2 requires “ monitoring a reaction droplet in an air gap region of the air-matrix DMF apparatus to determine when a volume of the reaction droplet falls below a threshold, . . . .”
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 4, and 7 together of U.S. Patent No. 10,695,762 B2.
Claim 1, from which clam 6 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 7 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 6. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 4, and 8 together of U.S. Patent No. 10,695,762 B2.
Claim 1, from which clam 6 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 8 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 7. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 4, and 9 together of U.S. Patent No. 10,695,762 B2.
Claim 1, from which clam 6 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 9 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 8. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 together of U.S. Patent No. 10,695,762 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 10 together meet all of eh limitations of claim 10 of the instant application. It would have been obvious to one of ordinary skill in the art to consider combining together features from claims 1 and 10 of U.S. Patent No. 10,695,762 B2, because these claims are clearly compatible method claims that have the same goal (replenishing a reaction droplet) and overlapping steps to achieve this goal.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 together of U.S. Patent No. 10,695,762 B2.
Claim 10, from which claim 11 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 11 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 together of U.S. Patent No. 10,695,762 B2.
Claim 10, from which claim 12 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 12 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 together of U.S. Patent No. 10,695,762 B2.
Claim 10, from which claim 15 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because “optically monitoring the reaction droplet in an air gap region of the air-matrix DMF apparatus to determine when a volume of the reaction droplet falls below a threshold, . . . .” in claim 10 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 15 of the instant application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 together of U.S. Patent No. 10,695,762 B2.
Claim 10, from which claim 17 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because “optically monitoring the reaction droplet in an air gap region of the air-matrix DMF apparatus to determine when a volume of the reaction droplet falls below a threshold, . . . .” in claim 10 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 17 of the instant application.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 19 together of U.S. Patent No. 10,695,762 B2.
Claim 10, from which claim 18 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because “wherein the threshold level for triggering reagent replenishment is a loss of reaction droplet volume of 30% or more…” in claims 7 and 19 each implies the additional limitation of claim 17 of the instant application.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 21 together of U.S. Patent No. 10,695,762 B2.
Claim 10, from which claim 19 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8 and 19 each imply the additional limitation of claim 19.
Double Patenting rejections based on U.S. Patent No. 11,471,888 B2
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 7 together of U.S. Patent No. 11,471,888 B2. Although claim 1 of U.S. Patent No. 11,471,888 B2 is an apparatus claim, it would have been obvious to one of ordinary skill in the art to perform the claimed steps because the claimed apparatus is clearly configured to perform the method of claim 1 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
To wit,
claim 1 of the instant application
PNG
media_image1.png
62
668
media_image1.png
Greyscale
claim 1 of U.S. Patent No. 11,471,888 B21
PNG
media_image2.png
112
304
media_image2.png
Greyscale
claim 1 of the instant application
PNG
media_image3.png
64
570
media_image3.png
Greyscale
claim 1 of U.S. Patent No. 11,471,888 B2
PNG
media_image4.png
40
434
media_image4.png
Greyscale
claim 1 of the instant application
PNG
media_image5.png
60
590
media_image5.png
Greyscale
claim 1 of U.S. Patent No. 11,471,888 B2
PNG
media_image6.png
78
460
media_image6.png
Greyscale
claim 1 of the instant application
PNG
media_image7.png
56
602
media_image7.png
Greyscale
claim 7 of U.S. Patent No. 11,471,888 B2
PNG
media_image8.png
98
424
media_image8.png
Greyscale
claim 1 of the instant application
PNG
media_image9.png
88
626
media_image9.png
Greyscale
claim 1 of U.S. Patent No. 11,471,888 B2
PNG
media_image10.png
78
442
media_image10.png
Greyscale
claim 5 of U.S. Patent No. 11,471,888 B2
PNG
media_image11.png
114
424
media_image11.png
Greyscale
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 5, and 7 together of U.S. Patent No. 10,695,762 B2.
Claim 1, from which claim 3 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 10,695,762 B2 meets the additional limitation of claim 3. Note that the Examiner considers droplet volume to be a type of droplet size.
Double Patenting rejections based on U.S. Patent No. 11,890,617 B2
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,890,617 B2 in view of Gary Wang
US 2014/0054174 A1 (hereafter “Wang”), Marc Feiglin US 2011/0290647 A1 (hereafter “Feiglin”), and Srinivasan et al. US 2007/0242105 A1 (hereafter “Srinivasan”). Claim 1 of U.S. Patent No. 11,890,617 B2 meets all of the limitations of claim 1 of the instant application except for “an air gap region formed between two layers of a microfluidic apparatus [italicizing by the Examiner]” and “introducing a replenishing droplet into the air gap through a top opening into the air gap, . . . . “
As for the claim 1 limitation “an air gap region formed between two layers of a microfluidic apparatus”, as a first matter note that claim 1 of U.S. Patent No.
11,890,617 B2 does disclose
PNG
media_image12.png
118
430
media_image12.png
Greyscale
Wang discloses microfluidic droplet actuators that move droplets based on either liquid electrophoresis or on electrowetting-on dielectric. See the title and paragraphs [0005]-[0007]. Figure 1 illustrates a conventional electrowetting actuator mechanism. It comprises an air gap region formed between two layers of a microfluidic apparatus. See also paragraph [0026](note therein “the filler medium, such as the silicone oil or air, . . . .”). 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 have the air gap region of the microfluidic apparatus of claim 1 of U.S. Patent No. 11,890,617 B2 formed between two layers as taught by Wang because (1) as already noted this is a conventional configuration in the art, (2) it will limit droplet evaporation as the droplet in this air gap will be covered at all times.
As for the claim 1 limitation “introducing a replenishing droplet into the air gap through a top opening into the air gap, . . . .”, Feiglin and Srinivasan each disclose a microfluidic electrowetting apparatus comprising a gap region formed between two layers of the microfluidic apparatus and further a top opening into the gap for introducing liquid, such as sample, or reagent, into the gap2. See in Feiglin the title, Abstract, Figure 1, and paragraphs [0001], [0031], [0034], and [0035]; and in Srinivasan seethe title, Abstract, Figures 6 and 10, and paragraphs [0318] and [0378]. 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 similarly provide a top opening as taught by Feiglin or Srinivasan in the microfluidic apparatus used in the method of claim 1 of U.S. Patent
No. 11,890,617 B2, which may be used to introduce a sample droplet or a replenishing droplet, because (1) neither claim 1 of U.S. Patent No. 11,890,617 B2 nor any of the other claims in the patent indicate how the replenishing droplet is to be introduced into the air gap, so presumably any conventional means may be used. So, it is prima facie obvious as simple substitution of one known element (liquid droplet introducing means) for another to obtain predictable results. See MPEP 2143(I)(B).
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 2 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 2. Note in claim 1, “ monitoring a reaction droplet in the air gap of the microfluidic apparatus for a change in an optical intensity; . . . .”
18. Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 3 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 3. Note that the Examiner considers a change in droplet to be a type of change in droplet size.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 4 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 11,890,617 B2 meets all of the additional limitations of claim 4 except for having the moving be by electrowetting. 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 having the moving be by electrowetting because (1)
claim 2 of U.S. Patent No. 11,890,617 B2 does require “moving the replenishing droplet, the reaction droplet, or both the replenishing droplet and the reaction droplet by applying energy to electrodes adjacent to the replenishing droplet, . . . . [italicizing by the Examiner]“ and (2) Wang discloses
PNG
media_image13.png
312
452
media_image13.png
Greyscale
PNG
media_image14.png
206
452
media_image14.png
Greyscale
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 3 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 5.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 6 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 6.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 7 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 7.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 8 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 8.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 1, from which claim 9 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 9.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,890,617 B2 in view of Wang, Feiglin, and Srinivasan. Claim 11 of U.S. Patent No. 11,890,617 B2 meets all of the limitations of claim 11 of the instant application except for “an air gap region formed between two layers of a microfluidic apparatus [italicizing by the Examiner]” and “introducing a replenishing droplet into the air gap through a top opening into the air gap, . . . . “
As for the claim 1 limitation “an air gap region formed between two layers of a microfluidic apparatus”, as a first matter note that claim 1 of U.S. Patent No.
11,890,617 B2 does disclose
PNG
media_image12.png
118
430
media_image12.png
Greyscale
Wang discloses microfluidic droplet actuators that move droplets based on either liquid electrophoresis or on electrowetting-on dielectric. See the title and paragraphs [0005]-[0007]. Figure 1 illustrates a conventional electrowetting actuator mechanism. It comprises an air gap region formed between two layers of a microfluidic apparatus. See also paragraph [0026](note therein “the filler medium, such as the silicone oil or air, . . . .”). 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 have the air gap region of the microfluidic apparatus of claim 11 of U.S. Patent No. 11,890,617 B2 formed between two layers as taught by Wang because (1) as already noted this is a conventional configuration in the art, (2) it will limit droplet evaporation as the droplet in this air gap will be covered at all times.
As for the claim 10 limitation “introducing a replenishing droplet into the air gap through a top opening into the air gap, . . . .”, Feiglin and Srinivasan each disclose a microfluidic electrowetting apparatus comprising a gap region formed between two layers of the microfluidic apparatus and further a top opening into the gap for introducing liquid, such as sample, or reagent, into the gap3. See in Feiglin the title, Abstract, Figure 1, and paragraphs [0001], [0031], [0034], and [0035]; and in Srinivasan seethe title, Abstract, Figures 6 and 10, and paragraphs [0318] and [0378]. 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 similarly provide a top opening as taught by Feiglin or Srinivasan in the microfluidic apparatus used in the method of claim 10 of U.S. Patent
No. 11,890,617 B2, which may be used to introduce a sample droplet or a replenishing droplet, because (1) neither claim 10 of U.S. Patent No. 11,890,617 B2 nor any of the other claims in the patent indicate how the replenishing droplet is to be introduced into the air gap, so presumably any conventional means may be used. So, it is prima facie obvious as simple substitution of one known element (liquid droplet introducing means) for another to obtain predictable results. See MPEP 2143(I)(B).
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 11 together of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 11 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 11. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 11 together of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 12 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 12. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 13 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 13 except for having the moving be by electrowetting. 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 having the moving be by electrowetting because (1) claim 2 of U.S. Patent No. 11,890,617 B2 does require “moving the replenishing droplet, the reaction droplet, or both the replenishing droplet and the reaction droplet by applying energy to electrodes adjacent to the replenishing droplet, . . . . [italicizing by the Examiner]“ and (2) Wang discloses
PNG
media_image13.png
312
452
media_image13.png
Greyscale
PNG
media_image14.png
206
452
media_image14.png
Greyscale
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 11 together of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 14 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 14. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features for claims 7 and 11 because these claims are clearly compatible method claims that have the same goal (replenishing a reaction droplet) and overlapping steps to achieve this goal.
30. Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 15 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 13. Note that the Examiner considers droplet volume to be a type of droplet size.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 16 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 16 except for having the moving be by electrowetting. 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 having the moving be by electrowetting because (1) claim 2 of U.S. Patent No. 11,890,617 B2 does require “moving the replenishing droplet, the reaction droplet, or both the replenishing droplet and the reaction droplet by applying energy to electrodes adjacent to the replenishing droplet, . . . . [italicizing by the Examiner]“ and (2) Wang discloses
PNG
media_image13.png
312
452
media_image13.png
Greyscale
PNG
media_image14.png
206
452
media_image14.png
Greyscale
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 17 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 17.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 11 together of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 18 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 18. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 11 together of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 19 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 19. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 11 together of U.S. Patent No. 11,890,617 B2 in view Wang, Feiglin, and Srinivasan. Claim 10, from which claim 20 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,890,617 B2 meets the additional limitation of claim 20. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features for claims 7 and 11 because these claims are clearly compatible method claims that have the same goal (replenishing a reaction droplet) and overlapping steps to achieve this goal.
Other Relevant Prior Art
Jebrail et al., “A solvent replenishment solution for managing evaporation of biochemical reactions in air-matrix digital microfluidics devices,” Lab Chip, 2015, 15, 151-158 (hereafter “Jebrail”)4 discloses a method of replenishing a reaction droplet within an air gap region formed between two layers of a microfluidic apparatus to correct for evaporation that is substantially the same as that set forth in Applicant's independent claims 1 and 10 expect for “monitoring, using one or more sensors, a reaction droplet in the air gap of the microfluidic apparatus; . . . . [italicizing by the Examiner]” as required by claim 1, and “the method comprising: optically monitoring, using one or more cameras, a reaction droplet in the air gap of the microfluidic apparatus; . . . .” See in Jebrail the title, Figure 1, Abstract; page 153, Evaporation management solution, especially the last two sentences; and page 153, last full paragraph, noting especially “six droplets of solvent” and “270 ng of RNA and 1x fragmentation buffer”.
Jebrail, though, discloses visually monitoring the droplet, although Jebrail does also disclose, “Future devices could be fitted with a sensing and feedback control
System22,26 in which the reaction droplet's volume or concentration is monitored and, upon reaching a pre-determined threshold, the volume automatically reconstituted through addition of a replenishing droplet.” Endnotes 22 and 26 are respectively, J. Gong and C. J. Kim, Lab Chip, 2008, 8, 898–906 (hereafter “Gong”), and S. C. Shih, R. Fobel, P. Kumar and A. R. Wheeler, Lab Chip, 2011, 11, 535–540 (hereafter “Shih”). Neither Gong nor Shih discloses one or more sensors for monitoring a reaction droplet or optically monitoring, using one or more cameras, a reaction droplet. In Gong the capacitance between opposing top and bottom electrodes between which the reaction droplet happen to be located is used to determine the reaction droplet volume. See in Gong the abstract and 3.1 Real-time capacitive measurement of droplet volume, which is on page 900-901. Shih optically monitors droplets, but not with one or more cameras , instead a PheraStar multiplate reader for fluorescence detection is used. See in Shih Enzyme assay, which is on page 537, and Figures 4(a) and 4(b). Also, Shi does not determine droplet volume, but droplet location and concentration of analyte within the droplet.
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 Note that claims 5 and 7 of U.S. Patent No. 11,471,888 B2 each depend from claim 1 of this patent and so includes all of the limitations in claim 1.
2 Note that at least Srinivasan implicitly discloses that the gap may an air gap. See Srinivasan paragraphs [0403] and [0404], which discloses that a gas such as air may be used as a filler.
3 Note that at least Srinivasan implicitly discloses that the gap may an air gap. See Srinivasan paragraphs [0403] and [0404], which discloses that a gas such as air may be used as a filler.
4 Note: (1) that Jebrail was first published on October 01, 2014, which is before Applicant’s earliest claimed priority date of June 05, 2015, and (2) Jebrail lists five authors who are not also listed as coinventors of the instant application.
Prosecution Insights