Office Action 8: Final Rejection (2021-12-29)
Rejection types: 103 - Obviousness, 112 - Written Description/Enablement

CLAIMS:
SVG {EMBED HERE} 0.7 3.68

1\. (Currently Amended) A method for droplet formation for sample preparation for sequencing, the method comprising:
providing a first aqueous fluid in a first inlet channel p, the first aqueous fluid comprising biological material p;
providing, via a second inlet channel p y pp p, a second aqueous fluid comprising primers
coalescing the first aqueous fluid with the second aqueous fluid to form an aqueous sample fluid;
providing an immiscible carrier fluid via at least one oil supply line p,
g qqp, y g py py ;
applying a pressure to flow the immiscible carrier fluid y pp p into a nozzle disposed within the immiscible carrier fluid and into a \[\[the\]\] main channel within the nozzle; and
adjusting pressure in one or more of the inlet channels, thereby to produce a plurality of droplets comprising the aqueous sample fluid in the main channel g ps, py ps, .
2\. (Currently Amended) The method of claim 1, wherein the nozzle comprises a ferrule immersed within the immiscible carrier fluid pressre n e man cannes ererm p. SVG {EMBED HERE} 0.16 0.75

3\. (Currently Amended) The method of claim 2 \[\[1\]\], wherein surfaces of the nozzle and ferrule are wetted entirely by the carrier fluid pppy g p.

4\. (Currently Amended) The method of claim 1, wherein the nozzle has complete isolation from any continuous aqueous phase ps, g y.

5-11. (Cancelled) 610

12\. (Previously Presented) The method of claim 1, wherein the aqueous fluids further comprise reagents for conducting an amplification reaction.

13\. (Previously Presented) The method of claim 12, wherein the amplification reaction is a PCR reaction and the method comprises performing the PCR reaction in the one of the droplets to yield PCR products and breaking the droplets to release the PCR products from the droplets.

14-20. (Cancelled) 1519

21\. (Currently Amended) The method of claim 1 \[\[9\]\], wherein the oil supply line provides a constant flow of the carrier fluid into the nozzle while the plurality of droplets are formed.

22\. (Previously Presented) The method of claim 21, wherein the nozzle design inhibits the first aqueous fluid from wetting surfaces of the nozzle or the main channel.

23\. (Previously Presented) The method of claim 21, wherein the flow of carrier fluid into the nozzle provides complete isolation of the nozzle from the aqueous phase of the first aqueous fluid.
24-30. (Cancelled) 2529

31\. (Previously Presented) The method of claim I, wherein the immiscible carrier fluid comprises an oil.

32\. (Previously Presented) The method of claim 31, wherein the oil comprises a fluorocarbon oil.

33\. (Previously Presented) The method of claim 31, wherein the oil comprises a surfactant.

34\. (Previously Presented) The method of claim 33, wherein the surfactant is a fluorosurfactant.

35\. (Previously Presented) The method of claim 33, wherein the pressure to flow the immiscible carrier fluid in the main channel by positive displacement pressure driven flow is applied using a pump.
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OFFICE ACTION:
DETAILED ACTION
The present Office Action is responsive to the Amendment received on October 29, 2021.
Notice of Pre-AIA  or AIA  Status
The present application is being examined under the pre-AIA  first to invent provisions.
Preliminary Remark
Claims 5-11, 14-20, and 24-30 are canceled.
Information Disclosure Statement
The IDS received on August 17, 2021, October 27, 2021, October 29, 2021, and December 17, 2021 are proper and are being considered by the Examiner.  All IDSs were received with a fee under 37 CFR 1.17(p).
Claim Rejections - 35 USC § 112
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.
Claim 35 is 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.
Claim 35 recites the phrase, “the main channel by positive displacement pressure driven flow is applied using a pump”.  There is no longer a proper antecedent basis for the limitation, “positive displacement pressure driven flow” in the main channel from the parent claim 1 as the limitation has been deleted therefrom.
Claim Rejections - 35 USC § 103
The rejection of claims 1-3, 5, 12, 13, 19, 31, and 35 under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) in view of Quake et al. (US 2002/0058332 A1, published May 16, 2002), made in the Office Action mailed on August 5, 2021 is withdrawn in view of the Amendment received on October 29, 2021.
Specifically, the nozzle disclosed by Takahashi et al. and Quake et al. is not disposed within the immiscible fluid.
The rejection of claim 4 under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) in view of Quake et al. (US 2002/0058332 A1, published May 16, 2002), as applied to claims 1-3, 12, 13, and 19 above, and further in view of Vogelstein et al. (US 2011/0059435, published March 2011, priority February 7, 2005), made in the Office Action mailed on August 5, 2021 is withdrawn in view of the Amendment received on October 29, 2021.
The rejection of claims 20-23 under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) in view of Quake et al. (US 2002/0058332 A1, published May 16, 2002), as applied to claims 1-3, 12, 13, and 19 above, and further in view of Nobile et al. (US 2005/0227264 A1, published October 13, 2005, priority January 28, 2004), made in the Office Action mailed on August 5, 2021 is withdrawn in view of the Amendment received on October 29, 2021.
The rejection of claims 32-34 under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) in view of Quake et al. (US 2002/0058332 A1, published May 16, 2002), as applied to claims 1-3, 12, 13, and 19 above, and further in view of Dorfman et al. (Analytical Chemistry, 2005, vol. 77, pages 3700-3704), made in the Office Action mailed on August 5, 2021 is withdrawn in view of the Amendment received on October 29, 2021.
Rejection – New Grounds, Necessitated by Amendment
The following is a quotation of pre-AIA  35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-4, 12, 13, 21-23, 31, and 35 under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Link et al. (WO 2004/091763 A2, published October 2004) in view of Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) and Quake et al. (US 2002/0058332 A1, published May 16, 2002).
Link et al. teach a method of generating a plurality of emulsion droplets in a carrier oil, wherein the artisans employ the below configuration (from Figure 11B):
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As seen, the nozzle (the narrow opening) is surrounded by oil which shears off the aqueous reagent flowing from the above.  Therefore, Link et al. teach: a) providing a first aqueous fluid in a first inlet channel; b) providing an immiscible carrier fluid via at least one oil supply line, wherein the flow of the immiscible carrier fluid results in the nozzle being disposed within the oil into a main channel (see the lower larger channel where emulsion droplets are formed).
Link et al. also teach additional channels from which to generate additional droplets which could be coalesced to mix the contents therein:
“method includes a step of producing, in a microfluidic channel, a first droplet comprising a first liquid, where the first droplet is surrounded by a carrying liquid. The method may also include steps of producing a second droplet comprising a second liquid, and allowing the first droplet and the second droplet to coalesce into one combined droplet” (page 3, lines 13-17)
Link et al., while explicitly teaching that the droplets can comprise nucleic acids, such as DNA, do not explicitly teach that the droplets are coalesced for the purpose of performing a PCR reaction.
With regard to claims 2 and 3, the electrode (element 111, see page 34, lines 8-9) that surrounds the nozzle is considered to be a ferrule.
With regard to claims 4 and 23, the nozzle is surrounded by oil and therefore, isolates the nozzle from the aqueous reagent flowing thereto (see above figure).
With regard to claims 21 and 22, the oil supply line provides the constant oil flow and the droplets are formed, wherein because the nozzle is immersed in oil, the aqueous reagent does not wet the nozzle (see above figure).
Link et al. do not teach that a positive displacement pressure driven flow is employed for providing a second aqueous fluid through the second inlet channel.
Takahashi discloses a method of forming droplets for sample preparation for sequencing (“present invention provides methods of using inline automated platform of the invention … to prepare, amplify, detect … and/or optionally select for further analysis (e.g., sequence) genomic material isolated…”, section [0038]), the method comprising:
providing a first aqueous fluid in a first inlet channel, the first aqueous fluid comprising primers (see Figure 1A, the first inlet is channel carrying the primers A/B and Markers A/B);
providing via a second inlet channel, a second aqueous fluid comprising nucleic acid molecules (see Figure 1A, where gene is provided);
providing an immiscible carrier in a main channel in a fluidic chip (see element 6, Figure 1A, where “carrier fluid” is provided; “a sample plug is surrounded by an immiscible nonaqueous fluid (e.g., mineral oil)”, section [0050]), wherein each of the inlet channels is in fluid communication with the main channel (see where the inlet containing the gene and the inlet containing the primer are connected to the channel where the carrier liquid flows (element 5);
coalescing the first aqueous fluid with the second aqueous fluid in the main channel in the fluid chip thereby forming a plurality of droplets surrounded by the immiscible carrier fluid in the main channel (see the gene primer become coalesced into a single emulsion, Figure 1A, area 10; “each sample droplet is further prepared at a junction, e.g., a T-shaped junction (10) to form a sample plug by being mixed with a primer plug comprising amplification reagents (e.g., primer(s), nucleotide, polymerase, etc).”, section [0084]);
applying pressure to flow the immiscible carrier fluid in the main channel (“controlling device … such as pumps, valves … may be used to control the movement and timing of each sample plug and/or DNA sample plug .. such controlling devices are well known to those skilled in the art”, section [0115]); and
annealing one of the primers to one of the nucleic acid molecules within one of the plurality of droplets (“mixed with amplification reagents to form a sample plug, it is drawn along the microfluidic inline reaction channel into an amplification area of a device … only DNA sample plugs will comprise DNA that will be amplified”, section [0085]; “low temperature area (13) may be set to a temperature appropriate to effectuate annealing”, section [0088]) (addressing the limitations of claims 1, 12, and 13).
Quake et al. teach the use of positive pressure driven flow to flow an immiscible oil in a main channel, and generating droplets via first and second inlet channels attached to said main channel, wherein said inlet channels are also taught as being positive pressure driven:
“the device of the invention comprises at least two inlet regions, each connecting to the main channel at a droplet extrusion region.  In particular, the device may comprise a first inlet region in communication with the main channel at a first droplet extrusion region, and a second inlet region in communication with the main channel at second droplet extrusion region.  A fluid containing a first biological material may pass through the first inlet region so that droplets of the fluid containing the first biological materials are sheared into the main channel.  A fluid containing a second biological material may pass through the second inlet region so that droplets of the fluid containing the second biological material are sheared into the main channel.  In various aspects, the droplets of the first material may mix or combine with the droplets of the second biological material, and the first and second biological material may interact with each other upon mixing.” (section [0018])
“An inlet region may have an opening such as in the floor of the microfabricated chip, to permit entry of the sample into a device.  The inlet region may also contain a connector adapted to receive a suitable piece of tubing ….through which a sample may be supplied … Such an arrangement facilitates introducing the sample solution under positive pressure in order to achieve a desired pressure at the droplet extrusion region” (section [0081])
“device of the invention may have an additional inlet region, in direct communication with the main channel … through which a pressurized stream or ‘flow’ of a fluid is introduced into the main channel.  Preferably, this fluid is one which is not miscible with the solvent or fluid of the sample …” (section [0082])
“the invention use pressure drive flow control, e.g., utilizing valves and pumps, to manipulate flow of cells virions, particles, molecules, enzymes or reagents in one or more directions and/or into one or more channels of a microfluidic device” (section [0099])
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Link et al. with the teachings of Takahashi et al. and Quake et al., thereby arriving at the invention as claimed for the following reasons.
As discussed above, Link et al. already disclose a method of generating a plurality of aqueous droplets present in an immiscible carrier fluid, wherein the nozzle is formed within the immiscible fluid with explicit teachings that droplets can contain nucleic acid molecules, such as DNA, and that two or more droplets can be coalesced to mix the contents therein.
While Link et al. do not explicitly disclose that their method can be applied for providing a DNA and PCR reactants in droplets, wherein the two droplets are coalesced to form a PCR-ready droplet, in view of Takahashi et al. who teach that emulsion droplets comprising DNA and PCR reagents can be generated within an immiscible carrier fluid and coalesced for PCR reaction therein, said one of ordinary skill in the art would have been motivated to apply the teachings of Link et al. so as to perform PCR reaction.  And while Link et al. did not explicitly teach that the carrier fluid, oil is provided via a pump that generates a positive pressure, said one of ordinary skill in the art would have recognized that other prior art known pressure driven system utilized for generating droplets in a channel would have worked equally well.  Such a capability was demonstrated by Quake et al. who also teach generation of emulsion droplets comprising PCR reaction mixture in a flowing oil, wherein the artisans explicitly teach the use of pumps which provide a positive pressure flow to oil and the respective reagents from inlets in order to generate emulsion droplets in the main channel (see above).
Therefore, one of ordinary skill in the art would have been motivated to combine the teachings of Link et al., with the teachings of Takahashi et al. and Quake et al., thereby arriving at the claimed method based on the nozzle configuration of Link et al.
In KSR International Co v. Teleflex Inc, the supreme court stated that, “A person of ordinary skill in the art is also a person of ordinary creativity, not an automation” (82 USPQ2d at 1397) and that “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” and take into account, “the inference and creative steps that a person of ordinary skill in the art would employ” (82 USPQ2d at 1396).
Lastly, it is respectfully submitted that such “fitting” of the teachings would not have been “beyond [the] ... skill [level]” of one of ordinary skill in the art
In KSR, the Supreme Court stated:
“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.  If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability.  For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” (page 13, emphasis added).
Therefore, the invention as claimed is deemed prima facie obvious over the cited references.
Claims 32-34 are rejected under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Link et al. (WO 2004/091763 A2, published October 2004) in view of Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) and Quake et al. (US 2002/0058332 A1, published May 16, 2002), as applied to claims 1-4, 12, 13, 21-23, 31, and 35 above, and further in view of Dorfman et al. (Analytical Chemistry, 2005, vol. 77, pages 3700-3704).
The teachings of Link et al., Takahashi et al. and Quake et al. have already been discussed above.
Link et al, in view of Takahashi et al., while teaching performing PCR in aqueous droplets in surrounded by an immiscible oil medium, do not teach every possible such medium or variations known in the art.  Consequently, the artisans do not explicitly teach that the oil is fluorinated (claim 32), or that the oil comprises fluorosurfactant (claims 33 and 34).
Dorfman et al. disclose a method of performing a continuous PCR reaction in an aqueous droplets surrounded by an immiscible oil medium (“[p]erformign continuous flow PCR for high-throughput clinical and quantitative applications requires encapsulating the sample and preventing contamination between them … this can be accomplished in two ways: either the sample can be a droplet entrained in an immiscible solvent …”, page 3700, 2nd column).
Dorfrman et al. disclose the use of fluorinated oil as the immiscible medium when performing the continuous emulsion PCR (“an improvement system for performing continuous flow PCR using droplets in an immiscible fluorinated solvent …”, page 3701, 1st column, 2nd paragraph; “primed with either the bulk fluorinated oil FC-40”, page 3701, 1st column, 3rd paragraph) or oil comprising a fluorosurfactant (“or FC-40 containing various amounts of fluoro alcohol surfactant”, page 3701, 1st column, 3rd paragraph).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Link et al., Takahashi et al. and Quake et al. with the teachings of Dorfman et al., thereby arriving at the invention as claimed for the following reasons.
Dorman et al. discuss potential problems associated with performing emulsion droplet PCR in an immiscible medium:
“wall treatment [of the channel] are necessary to prevent adsorption of DNA to the walls and subsequent transfer between samples … wall contamination problem is a significant drawback … bubbles in the stream may introduce irregularities in the thermal history of the droplets, making the technique less attractive … flowing droplet system does not suffer from either of these drawbacks … However, the initial work on this system suffered from contamination between droplets” (page 3701, 1st column, 1st paragraph).
In solving the drawback so identified, Dorman et al. disclose that immiscible solvent, “prevent[ed] the droplet breakage … thereby eliminating the contamination between droplets” (page 3701, 1st column, 2nd paragraph), producing “adequately reproducible amplification between different drops without any detectable contamination between them” (page 3701, 1st column, 2nd paragraph).
Based on such findings, one of ordinary skill in the art would have been motivated to utilize a fluorinate immiscible oil or oil comprising fluorosurfactants into the teachings of Link et al., Takahashi et al. and Quake et al., for the same recognized benefit of producing reproducible amplification reaction between emulsion droplets as well as preventing contamination therebetween.
Given that Link et al., in combination with Takahashi et al., Quake et al. and Dorfman et al. would have performed emulsion amplification reactions in a flowing oil medium, said one of ordinary skill in the art would have also expected that addition of fluorosurfactants or using fluorinated oil in the method produced form the combination of Link et al. and Takahashi et al. would have yielded the same predictable benefit as observed in Dorman et al.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” Id. at 415, 82 USPQ2d at 1395, and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 415-16, 82 USPQ2d at 1395. The Supreme Court stated that there are “[t]hree cases decided after Graham [that] illustrate this doctrine.” Id.  at 416, 82 USPQ2d at 1395. (1) “In United States v. Adams, . . . [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”
Therefore, the invention as claimed is deemed prima facie obvious over the cited references.
Conclusion
No claims are allowed.
Examiner notes that the embodiment depicted on Figure 3, wherein the single oil supply line is designed around the ferrule of the nozzle so as to circulate the ferrule may advance prosecution over the present art of record.  However, any amendment thereto would necessitate a new search and examination and would require a filing of an RCE.
Applicant's amendment necessitated the new ground(s) 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 extension fee 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 date of this final action.
Inquiries

APPLICANT REBUTTAL: Remarks
With entry of this amendment, claims 1-4, 12, 13, 21-23, and 3 1-35 are pending, with claim 1 being the only independent claim. Claims 1-4 and 21 are amended.
Support for the amendments may be found throughout parent U. S. application No.
11/803,104 as-filed, for example, at least at lines 32-33 on page 19, line 18 on page 22 through line 14 on page 23, and in FIG. 4.
No new matter is added.
Rej
ections under 3 5 U.
S.
C. 103
The Office Action on page 4 states that claims 1-3, 5, 12, 13, 19, 31, and 35 are rejected under §103 over U. S. Pub. 2006/0257893 to Takahashi in view of U. S. Pub. 2002/0058332 to Quake. On page 12, claim 4 is so rejected over Takahashi, Quake, and U.S. Pub. 2011/0059435 to Vogelstein. On page 14, claims 20-23 are so rejected over Takahashi, Quake, and U.S. Pub.
2005/0227264 to Nobile. On page 17, claims 32-3 4 are so rejected over Takahashi, Quake, and Dorfman, 2005, Anal Chem 77:3700-3704.
Applicant submits that the pending, amended claims are not obvious.
The Patent Office must establish three basic criteria in order to establish a prima facie case of obviousness. There must be a suggestion to modify a reference or to combine references to lead one of ordinary skill in the art to the claimed invention; the cited references must convey a reasonable expectation of success in arriving at the claimed invention; and the suggestion to modify the references must be found in the prior art, not in the applicant's disclosure. In re Vaeck, 947 F.2d 488 (Fed Cir. 199]). In addition, an obviousness rejection cannot be established in the first place unless each claim element is disclosed in the cited art. In re Royka, 490 F. 2d 98] (CCPA 1974).
Claim 1 is amended to the embodiments represented by FIG. 4. As amended, claim 1 recites:
1.    A method for droplet formation for sample preparation for sequencing, the method comprising:
providing a first aqueous fluid in a first inlet channel, the first aqueous fluid comprising biological material;
providing, via a second inlet channel, a second aqueous fluid comprising primers; coalescing the first aqueous fluid with the second aqueous fluid to form an aqueous sample fluid;
providing an immiscible carrier fluid via at least one oil supply line; applying a pressure to flow the immiscible carrier fluid into a nozzle disposed within the oil and into a main channel within the nozzle; and
adjusting pressure in one or more of the inlet channels, thereby to produce a plurality of droplets comprising the aqueous sample fluid in the main channel.
Features of claim 1 are shown in FIG. 3 and FIG. 4, reproduced in-part here:
Notably, as shown, the claimed method includes applying a pressure to flow the immiscible
carrier fluid into the nozzle
. The nozzle is disposed within oil. The oil flows into a main channel within the nozzle. Pressure adjustments at the inlet channels produces droplets of the aqueous sample fluid in the main channel as shown in the figures above.
The depicted apparatus and droplet formation process cannot be found among the asserted prior art references. Claim 1 cannot be said to be obvious over any combination of Takahashi, Quake, Vogelstein, Nobile, and Dorfman because none of those references show an apparatus in which the ferrule of a nozzle is immersed in, and surrounded by, oil such that droplets are formed by flowing into the nozzle without ever letting any of the aqueous phase touch any surface (interior or exterior) of the nozzle through which the main channel extends.
Takahashi reports a device for preparing and detecting genomic material. Takahashi, [0030]. The device includes a sipper to pick up sample and a microfluidic inline reaction channel that runs through a reagent assembly area, temperature-controlled amplification, and a detection area. Id., [0040]. Detecting includes aspirating a sample droplet into the reaction channel, mixing the sample droplet with a primer plug to form a sample plug, and then heating and cooling for amplification and subsequent detection. Id, [0052]. Takahashi says nothing of a nozzle disposed in oil, where oil is flowed into the nozzle to form droplets in a manner such that the nozzle is NEVER wetted with aqueous liquid.
Quake and Nobile actually both operate by a principle quite opposite of what is claimed.
FIG. 22 in Quake
FIG. 4 in Nobile
In Quake and Nobile it is quite clear that aqueous fluid emerges from an inlet channel into an oil-filled main channel. Neither Quake nor Nobile shows a channel within a nozzle, with the nozzle sitting in oil, with oil being pumped in such that oil flows into the nozzle forming aqueous droplets within a channel in the nozzle. The oil channels in Quake and Nobile do not have any feature or terminus that matches the claimed nozzle or ferrule.
Unlike Quake and Nobile, the invention uses a nozzle that juts out, into the oil. Pressure- driven flow (look again at FIGs. 3 & 4) causes: the oil to flow into the nozzle; droplets to form at the ferrule and flow into the nozzle; and isolation of the nozzle and ferrule completely from the aqueous phase. The as-filed application describes benefits of the invention that are not provided by Quake or Noble. For example, the as-filed application reports that
This nozzle design eliminates the surface wetting issues surrounding the quasi.-21) flow associated with typical nmicro fluidic nozzles trade using soft lithography or oilher standard microfluidic chip manufacturing techniques. This is because the nozzle design is fuilly 3-dimensional, resulting is a complete isolation of the noz'zle section from the continuous aqueous phase. This same Application as-filed, lines 19-23 on page 29; Parent application] 11803,104, lines 8-]] on page 23. Amended claim 1 recites a nozzle design that eliminates surface wetting problems found in prior art designs such as Takahashi, Nobile, and Quake. Nothing in those references teaches or suggests the "complete isolation of the nozzle section from the continuous aqueous phase" benefits provided by the invention.
Vogelstein and Dorfman also do not teach or suggest the claimed nozzle design.
Vogelstein is a U.S. publication of a patent application for BEAMing, which refers to Bead Emulsion Amplification with Magnets. Vogelstein, [0006]. Vogelstein does not mention microfluidics whatsoever, much less using positive pressure. In fact, Vogelstein does not even use any of the terms "microfluidics" or "channel" or "chip" or any synonyms thereof.
Dorfman, like Takahashi teaches using aspiration in a microfluidics system. Dorfinan, 370]. There simply isn't any nozzle, much less one that juts out into the oil phase.
For clarity, applicant notes that, among other things, amended claim 1 recites that the immiscible carrier fluid flows INTO the nozzle. Also, the nozzle is never wetted by aqueous phase liquids. The closest thing to a nozzle in the prior art (FIG. 4 in Nobile) shows PCR solution flowing OUT OF the nozzle. Also, the bore of Nobile's nozzle is fully wetted by aqueous PCR solution.
Claim 1 is amended to recite an invention found nowhere among the asserted references. Accordingly, amended claim 1 cannot reasonably be said to be obvious over those references.
Because the only independent claim is not obvious, none of the claims are obvious.
Applicant believes that the rej ections under § 103 are overcome.
Summary
On the basis of the foregoing amendments and reasons, Applicant submits that the pending claims are in condition for allowance, which is respectfully requested.
Dated: October 29, 2021
Respectfully submitted,BROWN RUnNICK LLP

NEXT OFFICE ACTION: DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection.  Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.  Applicant's submission filed on March 22, 2022 has been entered.
Notice of Pre-AIA  or AIA  Status
The present application is being examined under the pre-AIA  first to invent provisions.
Preliminary Remark
Claims 5-11, 14-20, 24-30, and 35 are canceled.
Claims 36-38 are new.
Claim Rejections - 35 USC § 112
The rejection of claim 35 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, made in the Office Action mailed on December 29, 2021 is withdrawn in view of the Amendment received on March 22, 2022, canceling the rejected claim.
Claim Rejections - 35 USC § 103
The rejection of claims 1-4, 12, 13, 21-23, 31, and 35 under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Link et al. (WO 2004/091763 A2, published October 2004) in view of Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) and Quake et al. (US 2002/0058332 A1, published May 16, 2002), made in the Office Action mailed on December 29, 2021 is withdrawn in view of the Amendment received on March 22, 2022.
Specifically, none of the artisans teach that a reservoir containing a first aqueous fluid is connected to a first inlet channel of a microfluidic substrate via a “self-aligning fluid interconnect molded into the microfluidic substrate” so as to form a radial seal between the microfluidic substrate and the first reservoir.
The rejection of claims 32-34 under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Link et al. (WO 2004/091763 A2, published October 2004) in view of Takahashi et al. (US 2006/0257893 A1, published November 16, 2006) and Quake et al. (US 2002/0058332 A1, published May 16, 2002), as applied to claims 1-4, 12, 13, 21-23, 31, and 35 above, and further in view of Dorfman et al. (Analytical Chemistry, 2005, vol. 77, pages 3700-3704), made in the Office Action mailed on December 29, 2021 is withdrawn in view of the Amendment received on March 22, 2022.
Rejection – New Grounds, Necessitated by Amendment
The following is a quotation of pre-AIA  35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-4, 12, 13, 21-23, 31, 36, and 38 are rejected under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Link et al. (WO 2004/091763 A2, published October 2004) in view of Takahashi et al. (US 2006/0257893 A1, published November 16, 2006), Quake et al. (US 2002/0058332 A1, published May 16, 2002) and Tai et al. (U.S. Patent No. 6,428,053, issued August 6, 2002).
Link et al. teach a method of generating a plurality of emulsion droplets in a carrier oil, wherein the artisans employ the below configuration (from Figure 11B):
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As seen, the nozzle (the narrow opening) is surrounded by oil which shears off the aqueous reagent flowing from the above.  Therefore, Link et al. teach: a) providing a first aqueous fluid in a first inlet channel; b) providing an immiscible carrier fluid via at least one oil supply line, wherein the flow of the immiscible carrier fluid results in the nozzle being disposed within the oil into a main channel (see the lower larger channel where emulsion droplets are formed).
Link et al. also teach additional channels from which to generate additional droplets which could be coalesced to mix the contents therein:
“method includes a step of producing, in a microfluidic channel, a first droplet comprising a first liquid, where the first droplet is surrounded by a carrying liquid. The method may also include steps of producing a second droplet comprising a second liquid, and allowing the first droplet and the second droplet to coalesce into one combined droplet” (page 3, lines 13-17)
Link et al., while explicitly teaching that the droplets can comprise nucleic acids, such as DNA, do not explicitly teach that the droplets are coalesced for the purpose of performing a PCR reaction.
With regard to claims 2 and 3, the electrode (element 111, see page 34, lines 8-9) that surrounds the nozzle is considered to be a ferrule.
With regard to claims 4 and 23, the nozzle is surrounded by oil and therefore, isolates the nozzle from the aqueous reagent flowing thereto (see above figure).
With regard to claims 21 and 22, the oil supply line provides the constant oil flow and the droplets are formed, wherein because the nozzle is immersed in oil, the aqueous reagent does not wet the nozzle (see above figure).
Link et al. do not teach that a positive displacement pressure driven flow is employed for providing a second aqueous fluid through the second inlet channel.
Link et al. do not explicitly disclose the aqueous reagent is introduced into the microfluidic substrate from a reservoir connected to an inlet channel via a “self-aligning fluid interconnect molded into the microfluidic substrate” so as to form a radial seal between the microfluidic substrate and the first reservoir.
Consequently, the artisans do not explicitly teach that this self-aligning fluid interconnect has a larger diameter than a mating feature of the first inlet channel (claim 36).
Link et al. also do not teach that a second aqueous fluid is provided from a second reservoir into the second inlet via a second self-aligning fluid interconnect as discussed above (claim 38).
Takahashi discloses a method of forming droplets for sample preparation for sequencing (“present invention provides methods of using inline automated platform of the invention … to prepare, amplify, detect … and/or optionally select for further analysis (e.g., sequence) genomic material isolated…”, section [0038]), the method comprising:
providing a first aqueous fluid in a first inlet channel, the first aqueous fluid comprising primers (see Figure 1A, the first inlet is channel carrying the primers A/B and Markers A/B);
providing via a second inlet channel, a second aqueous fluid comprising nucleic acid molecules (see Figure 1A, where gene is provided);
providing an immiscible carrier in a main channel in a fluidic chip (see element 6, Figure 1A, where “carrier fluid” is provided; “a sample plug is surrounded by an immiscible nonaqueous fluid (e.g., mineral oil)”, section [0050]), wherein each of the inlet channels is in fluid communication with the main channel (see where the inlet containing the gene and the inlet containing the primer are connected to the channel where the carrier liquid flows (element 5);
coalescing the first aqueous fluid with the second aqueous fluid in the main channel in the fluid chip thereby forming a plurality of droplets surrounded by the immiscible carrier fluid in the main channel (see the gene primer become coalesced into a single emulsion, Figure 1A, area 10; “each sample droplet is further prepared at a junction, e.g., a T-shaped junction (10) to form a sample plug by being mixed with a primer plug comprising amplification reagents (e.g., primer(s), nucleotide, polymerase, etc).”, section [0084]);
applying pressure to flow the immiscible carrier fluid in the main channel (“controlling device … such as pumps, valves … may be used to control the movement and timing of each sample plug and/or DNA sample plug .. such controlling devices are well known to those skilled in the art”, section [0115]); and
annealing one of the primers to one of the nucleic acid molecules within one of the plurality of droplets (“mixed with amplification reagents to form a sample plug, it is drawn along the microfluidic inline reaction channel into an amplification area of a device … only DNA sample plugs will comprise DNA that will be amplified”, section [0085]; “low temperature area (13) may be set to a temperature appropriate to effectuate annealing”, section [0088]) (addressing the limitations of claims 1, 12, and 13).
Quake et al. teach the use of positive pressure driven flow to flow an immiscible oil in a main channel, and generating droplets via first and second inlet channels attached to said main channel, wherein said inlet channels are also taught as being positive pressure driven:
“the device of the invention comprises at least two inlet regions, each connecting to the main channel at a droplet extrusion region.  In particular, the device may comprise a first inlet region in communication with the main channel at a first droplet extrusion region, and a second inlet region in communication with the main channel at second droplet extrusion region.  A fluid containing a first biological material may pass through the first inlet region so that droplets of the fluid containing the first biological materials are sheared into the main channel.  A fluid containing a second biological material may pass through the second inlet region so that droplets of the fluid containing the second biological material are sheared into the main channel.  In various aspects, the droplets of the first material may mix or combine with the droplets of the second biological material, and the first and second biological material may interact with each other upon mixing.” (section [0018])
“An inlet region may have an opening such as in the floor of the microfabricated chip, to permit entry of the sample into a device.  The inlet region may also contain a connector adapted to receive a suitable piece of tubing ….through which a sample may be supplied … Such an arrangement facilitates introducing the sample solution under positive pressure in order to achieve a desired pressure at the droplet extrusion region” (section [0081])
“device of the invention may have an additional inlet region, in direct communication with the main channel … through which a pressurized stream or ‘flow’ of a fluid is introduced into the main channel.  Preferably, this fluid is one which is not miscible with the solvent or fluid of the sample …” (section [0082])
“the invention use pressure drive flow control, e.g., utilizing valves and pumps, to manipulate flow of cells virions, particles, molecules, enzymes or reagents in one or more directions and/or into one or more channels of a microfluidic device” (section [0099])
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Tai et al. teach a well-known means of providing a mechanism by which to connect a fluidic tubing to a microfluidic substrate in order to make a sealed connection (“[b]y using the uniquely designed couplers, it is possible to easily align capillaries of different sizes to the inlet or outlet of a micro fluidic system”, column 3, lines 28-30), wherein the coupling structure is provided below:
As seen, the fluidic tube (capillary, 12) is connected via a coupler (10) with a microfluidic substrate (chip substrate), wherein the tube is inserted to the coupler and the combined structure then inserts and self-aligns (via the matching shape) onto the microfluidic substrate so as to form a seal between the capillary and the microfluidic substrate.
Also, as shown the opening distance found on upper region is greater than the diameter of the capillary tube, as well as explicitly suggesting that the shape is conical (thus having a radius and achieving a radial seal, “cavity and the body each have a truncated square pyramidal shape, a truncated triangular pyramidal shape, or a truncated conical shape”, column 1, lines 57-59).
Tai et al. teach that the challenge of transferring fluids between microfluidic system result in “tube misalignment” as well as excessive glue which are used to secure the tubes onto the microfluidic device:
“Currently, to achieve coupling, a tube with an inside diameter significantly larger than the size of the inlet or outlet is directly glued to the opening.  The yield of this approach is usually very low due to the tube misalignment and inlet or outlet blockage by excessive glue.” (column 1, lines 26-30)
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Link et al. with the teachings of Takahashi et al., Quake et al., and Tai et al., thereby arriving at the invention as claimed for the following reasons.
As discussed above, Link et al. already disclose a method of generating a plurality of aqueous droplets present in an immiscible carrier fluid, wherein the nozzle is formed within the immiscible fluid with explicit teachings that droplets can contain nucleic acid molecules, such as DNA, and that two or more droplets can be coalesced to mix the contents therein.
While Link et al. do not explicitly disclose that their method can be applied for providing a DNA and PCR reactants in droplets, wherein the two droplets are coalesced to form a PCR-ready droplet, in view of Takahashi et al. who teach that emulsion droplets comprising DNA and PCR reagents can be generated within an immiscible carrier fluid and coalesced for PCR reaction therein, said one of ordinary skill in the art would have been motivated to apply the teachings of Link et al. so as to perform PCR reaction.  And while Link et al. did not explicitly teach that the carrier fluid, oil is provided via a pump that generates a positive pressure, said one of ordinary skill in the art would have recognized that other prior art known pressure driven system utilized for generating droplets in a channel would have worked equally well.  Such a capability was demonstrated by Quake et al. who also teach generation of emulsion droplets comprising PCR reaction mixture in a flowing oil, wherein the artisans explicitly teach the use of pumps which provide a positive pressure flow to oil and the respective reagents from inlets in order to generate emulsion droplets in the main channel (see above).
Therefore, one of ordinary skill in the art would have been motivated to combine the teachings of Link et al., with the teachings of Takahashi et al. and Quake et al., thereby arriving at the claimed method based on the nozzle configuration of Link et al.
With regard to the providing the self-aligning fluid interconnect as taught by Tai et al., such would have also been obvious for the following reasons.
Link et al. explicitly teach that the aqueous reagents forming emulsion droplets are provided by pressure into a channel carrying an immiscible carrier fluid (also provided by pressure).
The artisans, however, do not specifically or disclose all means by which the aqueous reagents are provided into the channel.
Similarly, Takahashi et al. teach an overview of the design where various reservoirs containing reagents for PCR are connected into the inlet channel which is further connected to a channel flowing with immiscible carrier fluid (see Figure 1A), but do not teach every possible means of connection by which the reservoirs are connected to the inlet channels.
However, Quake et al. suggest that such a connection can be established by means known in the art:
“An inlet region may have an opening such as in the floor of the microfabricated chip, to permit entry of the sample into a device.  The inlet region may also contain a connector adapted to receive a suitable piece of tubing ….through which a sample may be supplied … Such an arrangement facilitates introducing the sample solution under positive pressure in order to achieve a desired pressure at the droplet extrusion region” (section [0081])
One of ordinary skill in the art would have been already motivated to ensure that the connections established between the reagent reservoirs to the microfluidic device are leak-free, and by combining the teachings of Tai et al., said one of ordinary skill in the art would have been able to achieve a secure connection without misalignment which easily couples the reagent reservoirs to the inlet channels which lead into the channel carrying the immiscible carrier fluid within the device produced from the combination of Link et al. and Takahashi et al.
In KSR International Co v. Teleflex Inc, the supreme court stated that, “A person of ordinary skill in the art is also a person of ordinary creativity, not an automation” (82 USPQ2d at 1397) and that “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” and take into account, “the inference and creative steps that a person of ordinary skill in the art would employ” (82 USPQ2d at 1396).
Lastly, it is respectfully submitted that such “fitting” of the teachings would not have been “beyond [the] ... skill [level]” of one of ordinary skill in the art
In KSR, the Supreme Court stated:
“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.  If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability.  For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” (page 13, emphasis added).
Therefore, the invention as claimed is deemed prima facie obvious over the cited references.
Claims 32-34 are rejected under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Link et al. (WO 2004/091763 A2, published October 2004) in view of Takahashi et al. (US 2006/0257893 A1, published November 16, 2006), Quake et al. (US 2002/0058332 A1, published May 16, 2002) and Tai et al. (U.S. Patent No. 6,428,053, issued August 6, 2002), as applied to claims 1-4, 12, 13, 21-23, 31, 36, and 38 above, and further in view of Dorfman et al. (Analytical Chemistry, 2005, vol. 77, pages 3700-3704).
The teachings of Link et al., Takahashi et al., Quake et al., and Tai et al. have already been discussed above.
Link et al, in view of Takahashi et al., while teaching performing PCR in aqueous droplets in surrounded by an immiscible oil medium, do not teach every possible such medium or variations known in the art.  Consequently, the artisans do not explicitly teach that the oil is fluorinated (claim 32), or that the oil comprises fluorosurfactant (claims 33 and 34).
Dorfman et al. disclose a method of performing a continuous PCR reaction in an aqueous droplets surrounded by an immiscible oil medium (“[p]erforming continuous flow PCR for high-throughput clinical and quantitative applications requires encapsulating the sample and preventing contamination between them … this can be accomplished in two ways: either the sample can be a droplet entrained in an immiscible solvent …”, page 3700, 2nd column).
Dorfrman et al. disclose the use of fluorinated oil as the immiscible medium when performing the continuous emulsion PCR (“an improvement system for performing continuous flow PCR using droplets in an immiscible fluorinated solvent …”, page 3701, 1st column, 2nd paragraph; “primed with either the bulk fluorinated oil FC-40”, page 3701, 1st column, 3rd paragraph) or oil comprising a fluorosurfactant (“or FC-40 containing various amounts of fluoro alcohol surfactant”, page 3701, 1st column, 3rd paragraph).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Link et al., Takahashi et al., Quake et al., and Tai et al., with the teachings of Dorfman et al., thereby arriving at the invention as claimed for the following reasons.
Dorman et al. discuss potential problems associated with performing emulsion droplet PCR in an immiscible medium:
“wall treatment [of the channel] are necessary to prevent adsorption of DNA to the walls and subsequent transfer between samples … wall contamination problem is a significant drawback … bubbles in the stream may introduce irregularities in the thermal history of the droplets, making the technique less attractive … flowing droplet system does not suffer from either of these drawbacks … However, the initial work on this system suffered from contamination between droplets” (page 3701, 1st column, 1st paragraph).
In solving the drawback so identified, Dorman et al. disclose that immiscible solvent, “prevent[ed] the droplet breakage … thereby eliminating the contamination between droplets” (page 3701, 1st column, 2nd paragraph), producing “adequately reproducible amplification between different drops without any detectable contamination between them” (page 3701, 1st column, 2nd paragraph).
Based on such findings, one of ordinary skill in the art would have been motivated to utilize a fluorinate immiscible oil or oil comprising fluorosurfactants into the teachings of Link et al., Takahashi et al. and Quake et al., for the same recognized benefit of producing reproducible amplification reaction between emulsion droplets as well as preventing contamination therebetween.
Given that Link et al., in combination with Takahashi et al., Quake et al., Tai et al., and Dorfman et al. would have performed emulsion amplification reactions in a flowing oil medium, said one of ordinary skill in the art would have also expected that addition of fluorosurfactants or using fluorinated oil in the method produced form the combination of Link et al. and Takahashi et al. would have yielded the same predictable benefit as observed in Dorman et al.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” Id. at 415, 82 USPQ2d at 1395, and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 415-16, 82 USPQ2d at 1395. The Supreme Court stated that there are “[t]hree cases decided after Graham [that] illustrate this doctrine.” Id.  at 416, 82 USPQ2d at 1395. (1) “In United States v. Adams, . . . [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”
Therefore, the invention as claimed is deemed prima facie obvious over the cited references.
Claim 37 is rejected under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Link et al. (WO 2004/091763 A2, published October 2004) in view of Takahashi et al. (US 2006/0257893 A1, published November 16, 2006), Quake et al. (US 2002/0058332 A1, published May 16, 2002) and Tai et al. (U.S. Patent No. 6,428,053, issued August 6, 2002), as applied to claims 1-4, 12, 13, 21-23, 31, 36, and 38 above, and further in view of Inamura et al. (US 2003/0038865 A1, published February 2003).
The teachings of Link et al., Takahashi et al., Quake et al., and Tai et al. have already been discussed above.
Link et al., Takahashi et al., Quake et al. and Tai et al. do not explicitly teach all different means of providing fluidic connection.
Inamura et al. teach a method of providing fluidic connection wherein the coupling means is greater than the receiving end, wherein the fluidic connection is achieved via insertion of the fluidic interconnect end into the receiving end which widens to accept said fluidic interconnect:
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It would have been prima facie obvious to ordinary skill in the art at the time the invention was made to combine the teachings of Link et al., Takahashi et al., Quake et al., and Tai et al., with the teaching of Inamura et al., thereby arriving at the invention as claimed for the following reasons.
As discussed above, Link et al. already disclose a method of generating a plurality of aqueous droplets present in an immiscible carrier fluid, wherein the nozzle is formed within the immiscible fluid with explicit teachings that droplets can contain nucleic acid molecules, such as DNA, and that two or more droplets can be coalesced to mix the contents therein.
While Link et al. do not explicitly disclose that their method can be applied for providing a DNA and PCR reactants in droplets, wherein the two droplets are coalesced to form a PCR-ready droplet, in view of Takahashi et al. who teach that emulsion droplets comprising DNA and PCR reagents can be generated within an immiscible carrier fluid and coalesced for PCR reaction therein, said one of ordinary skill in the art would have been motivated to apply the teachings of Link et al. so as to perform PCR reaction.  And while Link et al. did not explicitly teach that the carrier fluid, oil is provided via a pump that generates a positive pressure, said one of ordinary skill in the art would have recognized that other prior art known pressure driven system utilized for generating droplets in a channel would have worked equally well.  Such a capability was demonstrated by Quake et al. who also teach generation of emulsion droplets comprising PCR reaction mixture in a flowing oil, wherein the artisans explicitly teach the use of pumps which provide a positive pressure flow to oil and the respective reagents from inlets in order to generate emulsion droplets in the main channel (see above).
Therefore, one of ordinary skill in the art would have been motivated to combine the teachings of Link et al., with the teachings of Takahashi et al. and Quake et al., thereby arriving at the claimed method based on the nozzle configuration of Link et al.
With regard to the providing the interconnect as taught by Inamura et al., such would have also been obvious for the following reasons.
Link et al. explicitly teach that the aqueous reagents forming emulsion droplets are provided by pressure into a channel carrying an immiscible carrier fluid (also provided by pressure).
The artisans, however, do not specifically or disclose all means by which the aqueous reagents are provided into the channel.
Similarly, Takahashi et al. teach an overview of the design where various reservoirs containing reagents for PCR are connected into the inlet channel which is further connected to a channel flowing with immiscible carrier fluid (see Figure 1A), but do not teach every possible means of connection by which the reservoirs are connected to the inlet channels.
However, Quake et al. suggest that such a connection can be established by means known in the art:
“An inlet region may have an opening such as in the floor of the microfabricated chip, to permit entry of the sample into a device.  The inlet region may also contain a connector adapted to receive a suitable piece of tubing ….through which a sample may be supplied … Such an arrangement facilitates introducing the sample solution under positive pressure in order to achieve a desired pressure at the droplet extrusion region” (section [0081])
Therefore, one of ordinary skill in the art would have had a reasonable expectation that the other prior art known means of providing fluidic connection, such as those of Inamura et al. would have provided the same predictable outcome to achieve a secure connection of the reagent reservoirs to the inlet channels which lead into the channel carrying the immiscible carrier fluid within the device produced from the combination of Link et al. and Takahashi et al.
In KSR International Co v. Teleflex Inc, the supreme court stated that, “A person of ordinary skill in the art is also a person of ordinary creativity, not an automation” (82 USPQ2d at 1397) and that “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” and take into account, “the inference and creative steps that a person of ordinary skill in the art would employ” (82 USPQ2d at 1396).
Lastly, it is respectfully submitted that such “fitting” of the teachings would not have been “beyond [the] ... skill [level]” of one of ordinary skill in the art
In KSR, the Supreme Court stated:
“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.  If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability.  For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” (page 13, emphasis added).
Therefore, the invention as claimed is deemed prima facie obvious over the cited references.
Conclusion
No claims are allowed.
Inquiries

CITED REFERENCE SUMMARIES: Ref WO2004091763A2: Claims:
A method, comprising: producing a fluidic stream comprising a first fluid surrounded by a second, liquid fluid by expelling the first fluid from an outlet of a channel, wherein the fluidic stream has an average cross-sectional dimension perpendicular to its direction of travel that is smaller than an average cross-sectional dimension ofthe outlet ofthe channel.
The method of claim 1 , wherein the fluidic stream comprises droplets.
The method of claim 2, wherein, in at least some ofthe droplets, the second fluid completely surrounds the first fluid.
The method of claim 1 , wherein the fluidic stream is continuous.
The method of claim 1, wherein the average cross-sectional dimension ofthe outlet ofthe channel is less than about 5 mm.
The method of claim 1, wherein the average cross-sectional dimension ofthe outlet ofthe channel is less than about 1 mm.
The method of claim 1, wherein the average cross-sectional dimension ofthe outlet ofthe channel is less than about 100 microns.
The method of claim 1, wherein the average cross-sectional dimension ofthe outlet ofthe channel is less than about 10 microns.
The method of claim 1, wherein the first fluid is liquid.
The method of claim 1 , wherein at least a portion of the fluidic stream has an electric charge.
The method of claim 1 , further comprising hardening the fluidic stream to form a solid article.
The method of claim 1 , wherein the second, liquid fluid is expelled from an outlet of a second channel.
The method of claim 12, wherein the second channel contains the first channel.
The method of claim 1, wherein the fluidic stream is directed through a dimensional restriction.
The method of claim 1 , further comprising surrounding at least a portion ofthe fluidic stream with a sheathing fluid.
The method of claim 15, wherein the sheathing fluid decreases the average cross- sectional dimension ofthe fluidic stream, relative to the average cross-sectional dimension ofthe fluidic stream in the absence ofthe sheathing fluid.
The method of claim 1 , further comprising applying an electric field to at least a portion ofthe fluidic stream.
An apparatus, comprising: a channel; a reduction system constructed and arranged to reduce an average cross-sectional dimension of a fluidic stream exiting an outlet ofthe channel; and a second channel constructed and arranged to surround at least a portion ofthe fluidic stream with a second, liquid fluid.
The apparatus of claim 18, wherein the reduction system comprises an electric field generator.
The apparatus of claim 18, wherein the reduction system comprises a dimensional restriction.
The apparatus of claim 18, wherein the reduction system comprises the second, liquid fluid.
The apparatus of claim 18, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 5 mm.
The apparatus of claim 18, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 1 mm.
The apparatus of claim 18, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 100 microns.
The apparatus of claim 18, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 10 microns.
A method, comprising: surrounding a first fluid with a second fluid by action at least in part of an electric field.
The method of claim 26, wherein the surrounding step comprises encapsulating the first fluid in the second fluid using an electric field.
The method of claim 26, wherein the surrounding step comprises encapsulating the first fluid in the second fluid using a sheathing fluid.
The method of claim 26, wherein the surrounding step comprises encapsulating the first fluid in the second fluid to form a droplet.
The method of claim 29, wherein the droplet has an average cross-sectional dimension of less than about 5 mm.
The method of claim 29, wherein the droplet has an average cross-sectional dimension of less than about 1 mm.
The method of claim 29, wherein the droplet has an average cross-sectional dimension of less than about 100 microns.
The method of claim 29, wherein the droplet has an average cross-sectional dimension of less than about 10 microns.
The method of claim 26, wherein the surrounding step comprises encapsulating the first fluid in the second fluid to form a tube.
The method of claim 26, wherein the first fluid is gaseous.
The method of claim 35, wherein the first fluid comprises air.
The method of claim 26, wherein the first fluid is liquid.
The method of claim 37, wherein the first fluid comprises water.
The method of claim 26, wherein the second fluid is liquid.
The method of claim 39, wherein the second fluid comprises water.
The method of claim 39, wherein the second fluid has a viscosity of at least 1.2 cp.
The method of claim 39, wherein the second fluid has a viscosity of at least 2 cp.
The method of claim 39, wherein the second fluid has a viscosity of at least 5 cp.
The method of claim 39, wherein the second fluid has a viscosity of at least 10 cp.
The method of claim 39, wherein the second fluid has a viscosity of at least 50 cp.
The method of claim 39, wherein the second fluid has a viscosity of at least 100 cp.
The method of claim 26, further comprising encapsulating the first fluid and the second fluid in a third fluid.
The method of claim 47, further comprising encapsulating the first fluid, the second fluid, and the third fluid in a fourth fluid.
The method of claim 26, wherein the second fluid comprises substantially aligned molecules.
The method of claim 26, further comprising hardening the first fluid.
The method of claim 26, further comprising hardening the second fluid.
An apparatus, comprising: a first channel having an outlet for expelling a first fluid; a second channel having an outlet for expelling a second fluid, the second channel positioned to allow the second fluid to surround at least a portion ofthe first fluid at a predetermined location; and an electric field generator positioned to generate an electric field proximate the predetermined location.
The apparatus of claim 52, wherein the second channel is positioned to allow the second fluid to completely surround droplets ofthe first fluid.
The apparatus of claim 52, wherein the second channel is position to allow the second fluid to surround a tube ofthe first fluid.
The apparatus of claim 52, wherein the second channel contains the first channel.
The apparatus of claim 52, further comprising a dimensional restriction proximate the predetermined location.
The apparatus of claim 52, wherein an average cross-sectional dimension ofthe outlet of the first channel is less than about 5 mm.
The apparatus of claim 52, wherein an average cross-sectional dimension ofthe outlet of the first channel is less than about 1 mm.
The apparatus of claim 52, wherein an average cross-sectional dimension ofthe outlet of the first channel is less than about 100 microns.
The apparatus of claim 52, wherein an average cross-sectional dimension ofthe outlet of the first channel is less than about 10 microns.
A method, comprising: producing a fluidic stream of droplets, the droplets having an average diameter of less than about 60 microns and a distribution of diameters such that no more than about 5% ofthe droplets have a diameter greater than about 10% ofthe average diameter.
The method of claim 61, wherein no more than about 5% ofthe droplets have a diameter greater than about 5% ofthe average diameter.
The method of claim 61 , wherein no more than about 5% of the droplets have a diameter greater than about 3% ofthe average diameter.
The method of claim 61 , wherein no more than about 5% of the droplets have a diameter greater than about 1% ofthe average diameter.
The method of claim 61, wherein no more than about 5% ofthe droplets have a diameter greater than about 0.1% of the average diameter.
The method of claim 61, wherein no more than about 5% ofthe droplets have a diameter greater than about 0.01% ofthe average diameter.
The method of claim 61, wherein no more than about 3% ofthe droplets have a diameter greater than about 10%> ofthe average diameter.
The method of claim 61, wherein no more than about 1% ofthe droplets have a diameter greater than about 10% ofthe average diameter.
The method of claim 61 , wherein no more than about 0.1 % of the droplets have a diameter greater than about 10% ofthe average diameter.
The method of claim 61, wherein no more than about 0.01% ofthe droplets have a diameter greater than about 10% ofthe average diameter.
-71. The method of claim 61 , wherein the fluidic stream of droplets is produced from a channel.
The method ' of claim 61, wherein the droplets have an average diameter of less than about 50 microns.
The method of claim 61 , wherein the droplets have an average diameter of less than about 40 microns.
The method of claim 61 , wherein the droplets have an average diameter of less than about 25 microns.
The method of claim 61, wherein the droplets have an average diameter of less than about 10 microns.
The method of claim 61 , wherein the droplets have an average diameter of less than about 5 microns.
The method of claim 61, wherein the droplets have an average diameter of less than about 1 microns.
The method of claim 61 , wherein the droplets have an average diameter of less than about 0.3 microns.
The method of claim 61 , wherein the droplets have an average diameter of less than about 0.1 microns.
The method of claim 61 , wherein the droplets have an average diameter of less than about 0.01 microns.
The method of claim 61 , further comprising adding at least a portion of the fluidic stream of droplets to a liquid.
An apparatus, comprising: a channel having an outlet, through which a fluid can be expelled, the channel being positioned to allow the fluid to be directed at a reduction system; wherein the reduction system is constructed and arranged to produce, from the  fluid, a fluidic stream of droplets having an average diameter of less than about 60 microns and a distribution of diameters such that no more than about 5% ofthe droplets have a diameter greater than about 10% ofthe average diameter.
The apparatus of claim 82, wherein the reduction system comprises an electric field generator.
The apparatus of claim 82, wherein the reduction system comprises a dimensional restriction.
The apparatus of claim 82, further comprising a second channel positioned to allow the fluid to be encapsulated by a sheathing fluid.
The apparatus of claim 82, further comprising a second channel positioned to allow at least some ofthe droplets to be encapsulated by a sheathing fluid.
The apparatus of claim 82, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 5 mm.
The apparatus of claim 82, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 1 mm.
The apparatus of claim 82, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 100 microns.
The apparatus of claim 82, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 10 microns.
A method comprising: reducing a cross-sectional dimension of a fluidic stream exiting an outlet of a channel using an electric field.
The method of claim 91 , wherein the fluidic stream is continuous.
The method of claim 91 , wherein the fluidic stream comprises droplets.
The method of claim 91 , wherein the reducing step comprises reducing the cross- sectional dimension by producing a Taylor cone.
The method of claim 91, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 5 mm.
The method of claim 91, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 1 mm.
The method of claim 91, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 100 microns.
The method of claim 91, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 10 microns.
The method of claim 91 , wherein the fluid exiting the channel comprises at least one component having a viscosity of at least about 1.2 cp.
The method of claim 91 , further comprising surrounding at least a portion of the fluidic stream with a sheathing fluid.
The method of claim 91 , further comprising hardening at least a portion of the fluidic stream.
An apparatus, comprising: a channel having an outlet; and  an electric field generator constructed and arranged to reduce a cross-sectional dimension of a fluid exiting the outlet ofthe channel.
The apparatus of claim 102, wherein the electric field generator is constructed and arranged to allow the fluid to produce a Taylor cone.
The apparatus of claim 102, further comprising a second channel positioned to allow the fluid to be encapsulated by a sheathing fluid.
The apparatus of claim 102, wherein an average cross-sectional dimension of the outlet of the channel is less than about 5 mm.
The apparatus of claim 102, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 1 mm.
The apparatus of claim 102, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 100 microns.
The apparatus of claim 102, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 10 microns.
A method, comprising: encapsulating a cell in a fluid droplet.
The method of claim 109, wherein the fluid has a cross-sectional dimension of less than about 1 mm.
The method of claim 109, wherein an average cross-sectional dimension of the outlet of the channel is less than about 100 microns.
The method of claim 109, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 10 microns.
The method of claim 109, further comprising encapsulating the fluid in a second fluid.
The method of claim 109, wherein the encapsulating step comprises encapsulating the cell in a droplet.
The method of claim 109, wherein the encapsulating step comprises encapsulating the cell in the fluid droplet using an electric field.
The method of claim 109, wherein the encapsulating step comprises encapsulating the cell in the fluid droplet using a Taylor cone.
The method of claim 109, wherein the encapsulating step comprises charging the cell with an electric charge and charging the fluid with an opposite electric charge.
A method, comprising: producing a fluid Taylor cone within a liquid.
The method of claim 118, wherein the producing step comprises: inducing a charge in a first fluid exiting an outlet of a channel sufficient to cause the first fluid to form a Taylor cone; and sheathing the Taylor cone within a second, sheathing liquid.
The method of claim 119, further comprising: stabilizing the Taylor cone by passing the first fluid through a dimensional restriction downstream ofthe outlet ofthe channel.
The method of claim 120, comprising passing at least one of the first fluid and the second, sheathing liquid through the dimensional restriction.
The method of claim 121, wherein the dimensional restriction has a cross-sectional dimension smaller than an inner diameter ofthe channel outlet.
The method of claim 121, comprising passing both the first fluid and the second, sheathing liquid through the dimensional restriction.
The method of claim 118, wherein the first fluid comprises a liquid having a viscosity greater than about 1.2 cp.
The method of claim 118, further comprising allowing the Taylor cone to produce a fluidic stream of droplets.
The method of claim 118, furtlier comprising allowing the Taylor cone to produce a tube of fluid.
An apparatus, comprising: a channel having an outlet; an electric field generator positioned to induce an electric field in proximity ofthe outlet ofthe channel; and a dimensional restriction having a cross-sectional dimension smaller than an average cross-sectional dimension ofthe outlet ofthe channel, the dimensional restriction in fluidic communication with the channel.
The apparatus of claim 127, wherein the dimensional restriction is substantially aligned with the channel.
The apparatus of claim 127, wherein the electric field generator is positioned to create a Taylor cone in a fluid exiting the channel outlet.
The apparatus of claim 127, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 5 mm.
The apparatus of claim 127, wherein an average cross-sectional dimension of the outlet of the channel is less than about 1 mm.
The apparatus of claim 127, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 100 microns.
The apparatus of claim 127, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 10 microns.
An apparatus, comprising: a channel having an outlet; an electric field generator positioned to create a Taylor cone in a fluid exiting the outlet ofthe channel; and a stabilization system able to restrict motion ofthe Taylor cone.
The apparatus of claim 134, wherein the stabilization system comprises a dimensional restriction.
The apparatus of claim 134, wherein the stabilization system is substantially aligned with the channel.
The apparatus of claim 134, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 5 mm.
The apparatus of claim 134, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 1 mm.
The apparatus of claim 134, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 100 microns.
The apparatus of claim 134, wherein an average cross-sectional dimension ofthe outlet of the channel is less than about 10 microns.
An apparatus, comprising: a first channel having an outlet; a second channel having an outlet; and an electric field generator positioned to create a first Taylor cone in a first fluid exiting the outlet ofthe first channel and a second Taylor cone in a second fluid exiting the outlet ofthe second channel.
The apparatus of claim 141 , wherein the second Taylor cone contains the first Taylor cone.
The apparatus of claim 141, further comprising a third channel having an outlet, wherein the electric field generator is positioned to create a third Taylor cone in a third fluid exiting the outlet ofthe third channel.
The apparatus of claim 143, wherein the third Taylor cone contains the first Taylor cone and the second Taylor cone.
The apparatus of claim 141, further comprising a dimensional restriction that at least one ofthe first fluid and the second fluid passes through.
The apparatus of claim 145, wherein the dimensional restriction is substantially aligned with at least one ofthe first channel and the second channel.
The apparatus of claim 141, wherein an average cross-sectional dimension ofthe outlet of at least one ofthe first channel and the second channel is less than about 5 mm.
The apparatus of claim 141, wherein an average cross-sectional dimension ofthe outlet of at least one ofthe first channel and the second channel is less than about 1 mm.
The apparatus of claim 141, wherein an average cross-sectional dimension ofthe outlet of at least one ofthe first channel and the second channel is less than about 100 microns.
The apparatus of claim 141, wherein an average cross-sectional dimension ofthe outlet of at least one ofthe first channel and the second channel is less than about 10 microns.
A method, comprising : producing a first fluid Taylor cone and a second fluid Taylor cone within the first fluid Taylor cone.
The method of claim 151, wherein the first fluid Taylor cone is liquid.
The method of claim 152, wherein the first fluid Taylor cone comprises water.
The method of claim 151, wherein the second fluid Taylor cone is gaseous.
The method of claim 154, wherein the second fluid Taylor cone comprises air.
The method of claim 15
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