www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/052,990
`
`11/04/2020
`
`Emre Ozer
`
`P00497US. family
`
`1047
`
`Leveque Intellectual Property Law,P.C.
`241 E. 4th Street, #102
`Frederick, MD 21701
`
`BOYER, RANDY
`
`PAPER NUMBER
`
`ART UNIT
`
`1771
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`11/09/2023
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`eofficeaction @appcoll.com
`michelle @ levequeip.com
`uspto @levequeip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/052 ,990
`Examiner
`Randy Boyer
`
`Applicant(s)
`Ozer etal.
`Art Unit
`1771
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 27 October 2023.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-11 and 13-24 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 13-23 is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-11 and 24 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[4) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)¥) All
`1.(.) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.4 Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 4 November 2020 and 12 January 2022.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231103
`
`

`

`Application/Control Number: 17/052,990
`Art Unit: 1771
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Election/Restrictions
`
`2.
`
`Applicant’s election without traverse of claims 1-11 and 24 in the reply filed on 27
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`October 2023 is acknowledged.
`
`

`

`Application/Control Number: 17/052,990
`Art Unit: 1771
`
`Page 3
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`3.
`
`Claims 13-23 are withdrawnfrom further consideration as being drawn to a non-
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`elected invention.
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`Claim Objections
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`Claim 10 is objected to for improper English grammar.
`
`With respect to claim 10, the language “wherein in the inlet and outlet ports
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`4.
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`5.
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`include a seal” is improper English grammar. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 102
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`6.
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`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 madein this Office Action:
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`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 effectivefiling date of the claimed
`invention.
`
`7.
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`Claims 1-11 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Wikswo (US 2014/0356849).
`
`8.
`
`With respect to claims 1-11 and 24, Wikswodisclosesa fluid delivery device (see
`
`Wikswo, paragraph [0220]) comprising an inlet portal (851, 852, 853) to allow fluid
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`passage into a chamber(“organ N”); an outlet portal to allow fluid passage from the
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`chamber (see Wikswo, paragraph [0221]); a biosensor (870); an actuator, wherein the
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`actuator unambiguously derivable from the disclosure of “selectively operable valves”
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`(see Wikswo, paragraphs [0223] and [0227]); wherein the biosensor (870) is in fluid
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`communication with the fluid (see Wikswo, paragraph [0224]) and is associated with a
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`valve having actuator capability,
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`the valve being in communication with the sensor
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`

`

`Application/Control Number: 17/052,990
`Art Unit: 1771
`
`Page 4
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`measured conditions upon which the valve permits or inhibits delivery of fluid from the
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`chamber (see Wikswo, paragraphs [0234]-[0236] and [0285]). The valve having actuator
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`capability may be a single unit which respondsto a selected fluid parameter (see Wikswo,
`
`paragraphs [0223] and [0227]). The device may comprise a plurality of fluidic switches
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`(i.e. valves) (see Wikswo, paragraphs [0223] and [0227]). The device may beintegral to
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`a microfluidic chip (see Wikswo, Abstract), the chip being associated with a pump for
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`assisting fluid flow (see Wikswo, Abstract). The biosensor may detect changes in
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`electrochemical or fluorescent signals (see Wikswo, paragraph [0103]). The biosensor
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`may be linked to molecules detectable by light sensors (see Wikswo, paragraph [0311]).
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`The inlet and outlet ports may include a seal (see Wikswo, paragraph [0347]). The valve
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`may be linked to a control system capable of processing data which permits or inhibits
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`delivery of fluid (see Wikswo, paragraph [0296]). Examiner notes that the specific
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`limitations of claims 9 and 24 do notstructurally limit the claimed device over that
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`disclosed by Wikswo. Claims directed to an apparatus must be distinguished from the
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`prior art on the basis of structural differences. Hewlett-Packard Co. v. Bausch & Lomb
`
`Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a deviceis,
`
`not what a device does.”) (emphasis in original).
`
`Conclusion
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`9.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Randy Boyer whose telephone number is (571) 272-7113.
`
`The examiner can normally be reached Mondaythrough Friday from 10:00 A.M. to 7:00
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`P.M. (EST).
`
`

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`Application/Control Number: 17/052,990
`Art Unit: 1771
`
`Page 5
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the
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`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
`
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`
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`
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`
`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.
`
`/Randy Boyer/
`
`Primary Examiner, Art Unit 1771
`
`