Application No. 15/323,001
`Amendment dated August 15, 2019
`Reply to Office Action of June 3, 2019
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`Introduction
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`REMARKS
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`Docket No; 096534-0014
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`Claims 1—13 and 15—21 were pending at the time of the Office Action dated June 3, 2019.
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`By this response, claims 1—4, 8—11, and 17 are amended, and claims 5—7 and 12 are cancelled,
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`without prejudice, reserving right to prosecution in a continuation/divisional application. Care has
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`been exercised to avoid the introduction of new matter. Support for the amendments to the claims
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`can be found in, for example, Figs. 1A—1 C, and relevant description thereof in the specification.
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`Claims 1—4, 8—11, 13, and 16—20 are now pending in this application, all of which claim 1 is
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`independent.
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`Entry of various comments regarding the claims and/or the art, in the Office Action, should
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`not be construed as any acquiescence or agreement by Applicant with the stated reasoning,
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`regardless of whether or not these remarks specifically address any particular comment from the
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`Office Action.
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`Reconsideration of this application for allowance of all pending claims is hereby respectfully
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`requested in view of the amendments to the claims and following remarks.
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`Interview
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`Applicant acknowledges, with appreciation, Examiner Nagpaul’s courtesy and
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`professionalism in conducting a telephone interview on July 29, 2019, during which the present
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`Amendment was discussed.
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`It is Applicant’s understanding that the present Amendment would
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`overcome the present rejection of the claims.
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`Claim Rejection under 35 U.S.C. § 103
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`Claims 1—13 and 15—21 are rejected under 35 U.S.C. § 103 as being unpatentable over
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`Burtis (US. Patent No. 5,173,262) in view of Saiki (US. Patent Application Publication No.
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`2010/0255589). However, Burtis and Saiki, individually or in combination, do not disclose or
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`suggest a substrate including all the limitations as recited in independent claim 1. Specifically the
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`applied combination of the references does not teach, among other things, the following limitations
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`as recited in independent claim 1:
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`DMMUS 161821643—1,096534.0014
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`

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`Application No. 15/323,001
`Amendment dated August 15, 2019
`Reply to Office Action of June 3, 2019
`
`Docket No.: 096534-0014
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`the base substrate further includes (1) a second chamber at the first position, and (2) a
`third chamber at the second position, the second chamber having a first opening in a
`surface of the base substrate, the third chamber having a second opening in the surface of
`the base substrate,
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`the at least one magnet is removably inserted into the second chamber through the first
`opening, and
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`the balancer is removably inserted into the third chamber through the second opening.
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`The Office Action identifies Burtis’s magnet assembly 226 as the claimed magnet. As
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`shown in Fig. 25 of Burtis, the magnet assembly 226 includes an electromagnet 254 that is mounted
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`on a horizontal track 256 located above the rotor body 222. Voltage and current is supplied to the
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`electromagnet 254 to generate a magnetic field, which moves and positions a shuttle 224 within the
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`rotor body 222. By moving the magnet 254 back and forth on the track 256, positioning of the
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`magnetic field relative to the rotor body 222 and the shuttle 224 is accomplished. See column 19,
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`lines 53-63. Applicant believes that the magnet 254 is provided to move the shuttle 224, not to
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`capture magnetic particles in the chamber. See claim 1 reacting, “the magnetic particles are
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`captured in the first chamber by the magnet.”
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`During the interview, the Examiner stated that (1) Burtis’s assembly is capable of
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`performing the same functions as claimed in claim 1; and (2) Saiki shows that it was well known in
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`the art to use a balancer to balance the rotating body. Only to expedite the prosecution of the
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`present application, Applicant amends claim 1, as set forth above, in consideration of the
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`Examiner’s suggestion that the claimed substrate need to structurally (not functionally) be defined
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`to overcome the current rejection.
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`Applicant submits that Burtis’s magnet assembly 226 does not teach the above-cited
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`limitation regarding the second chamber and the at least one magnet, and Saiki’s balancer does not
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`teach the above—cited limitation regarding the third chamber and the balancer.
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`Based on the foregoing, Burtis and Saiki, individually or in combination, do not disclose or
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`suggest a substrate including all the limitations as recited in independent claim 1. Dependent claims
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`2—4, 8—1 1, 13, and l6~20 are also patentably distinguishable over Burtis and Saiki at least because
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`these claims respectively include all the limitations as recited in independent claim 1. Applicant,
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`DMHUS 16182164340965340014
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`Application No. 15/323,001
`Amendment dated August 15, 2019
`Reply to Office Action of June 3, 2019
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`Docket No.: 096534-0014
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`therefore, respectfully solicits withdrawal of the rejection of the claims and favorable
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`reconsideration thereof.
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`Conclusion
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`In view of the above amendment, applicant believes the pending application is in condition
`for allowance.
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`Applicant believes no fee is due with this response. However, if a fee is due, please charge
`our Deposit Account No. 50-0417, under Order No. 096534-0014 from which the undersigned is
`authorized to draw.
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`Respectfully submitted,
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`MCDERMOTT
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`ILL
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`MERY LLP
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`Tmoki Tan‘ a
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`x’Registration No. 60,453
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`Please recognize our Customer No. 20277 as
`our correspondence address.
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`The McDermott Building
`500 North Capitol Street, NW
`Washington, DC 20001-1531
`Phone: (202) 756-8196 Ttht
`Facsimile:
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`Date: August 15, 2019
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`DM_US 161821643.l.096534.00l4
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