DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/24/2025 has been entered.
Claims 53-54,56,58-60, 63, 65, 79, 80,-83, filed 11/24/2025, are under examination.
Response to Amendments: 35 USC § 112b and 35 USC § 103 are modified and maintained in view of amendments.
Claim Rejections - 35 USC § 112(b)
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 79 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 79 is indefinite over the recitation of “said plurality of chambers, each having a volume of less than or equal to about 150 pL” because there is ambiguity in the use of “each” which could reference the plurality of chambers in total or an individual chamber. Instead, “wherein each chamber of the said plurality of chambers has a volume of…” or “wherein the plurality of chambers has a total volume of…”, or something similar with explicit reference to what exactly the 150 pL volume references (an individual chamber, or the plurality), is anticipated to remedy the issue.
Claim Interpretation
In evaluating the patentability of the claims presented in this application, the claims will be given their broadest reasonable interpretation, in view of the specification, and as set forth at MPEP§ 2111.
For clarity of the record, sipon apertures are not defined in a “Definitions” section of the specification but are referenced multiple times as “provide the fluid communication between the at least one channel and the plurality of chambers” ([0011], [0014], [0018] and more, Specification 9/22/2020).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 53, 54, 59, 63, 65, and 80-83 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US2019/0351412; filing date: 12/6/17) in view of Hung (US 9845499 B2; filing date 11/29/2106), in view of Gong (US 2016/0107159 A1, 4/21/2016) in view of Handique (US2008/0160601; filing date: 11/14/2007).
Regarding claim 53-54, and 80-81 Xu disclosed: A method for thermal cycling a microfluidic device Para [0006]: “…the present invention provides a multi-flux microfluidic chip for nucleic acid detection and capable of actively controlling a flow path. The microfluidic chip has multiple channels, and can equally distribute a reagent among reaction chambers, enable the temperature of the reagent to rapidly increase/decrease…”.
Para [0032]: “As a further improvement to the present invention, a reaction dry powder reagent required for a PCR is pre-embedded in the reaction chamber, the reagent including an enzyme, primer, probe and buffer solution required for the PCR reaction.”
One of ordinary skill in the art understands that a PCR reaction entails thermal cycling.
comprising: loading a nucleic acid sample comprising at least one nucleic acid molecule into a chamber of a plurality of chambers of the microfluidic device using a pneumatic module, wherein (i) said microfluidic device is in fluid communication with said pneumatic module
Para [0070]: “The sample loading chamber is used to store a sample; and includes, as shown in FIGS. 1, 5 and 6, a sample loading pool. An opening of the sample loading chamber is provided with a plug, and an air path connector 19 is disposed at the opening of the sample loading pool. After completion of sample loading, the sample loading chamber is connected to an air path through the air path connector 19, to deliver, under thrust of an air pump, the sample to the microfluidic channel through the sample output through hole 18 disposed on the bottom of the sample loading pool.”
An air pump constitutes a pneumatic module and is in fluid communication with the microfluidic device after it is connected to the air path connector 19.
Para [0072]: “As shown in FIGS. 1, 7 and 8, the microfluidic channel includes a sample output main channel and several sample distribution channels disposed in one-to-one correspondence to the reaction chambers. In the figures, there are 12 sample distribution channels in one-to-one correspondence to the 12 reaction chambers. The sample distribution channels are separately disposed and include sample distribution chamber sample output channels and reaction chamber sample input channels. One end of the sample output main channel is communicated with the sample output through hole of the sample loading chamber, and the other end is communicated with the sample distribution chamber.”
The sample is distributed to 12 reaction chambers (a plurality of chambers).
and (ii) said microfluidic device further comprises at least one channel in fluid communication with said plurality of chambers via a plurality of siphon apertures
Para [0038] the sample in the loading pool, Para [0039] (lines 4-7) passes through the sample output main channel and a distribution chamber, and flows to a reaction pool through sample distribution chamber sample output channels and Para [0045]: …by using a microfluidic channel, a sample can be distributed from one sample chamber to multiple reaction chambers ( a plurality of chambers) at the same time. Para [0061] addresses Fig 7, which shows the output channel (27) that is in fluid communication with the plurality of sample chambers. The sample moves from the sample distribution pool to each of the plurality of chambers through the plurality of reaction pool sample input channels (Fig 7, 28), which can be interpreted as siphon apertures.
and a film or barrier that seals said plurality of chambers and siphon apertures
Para [0071]: “A reaction dry powder reagent required for a reaction is pre-embedded in the reaction chamber, where the dry powder reagent includes an enzyme, primer, probe and buffer solution required for a PCR reaction. As shown in FIGS. 1, 7 and 8, the reaction chamber includes a reaction pool upper cover, a reaction pool, and a reaction pool bottom. The reaction pool upper cover is disposed on the lower surface of the upper-layer chip, the reaction pool is disposed on the lower-layer chip, and the reaction pool bottom is formed by the lower thin film. The three are connected in a sealed manner from top to bottom to form the reaction chamber. During reaction in the reaction chamber, a reaction liquid expands with heat, and the reaction pool bottom formed by the lower thin film deforms to a certain degree for mitigation.”
The lower thin film seals the reaction chambers, forming the bottom of the reaction chambers. The lower thin film is indicated as “7” in Fig. 1. The sample distribution chamber sample output channels and reaction chamber and sample input channels can be communicated through sample distribution connection channels formed through heat sealing processing for a thin film on the chip body (Abstract).
said film or barrier having thermal conductivity and siphon apertures each having a cross-sectional area less than that of at least one channel;
Para [0069]: “The lower thin film is made from a thin-layer polymer material such as PP, PE, or PS.” A thin layer of polymeric material would necessarily have some thermal conductivity. Without the ability to conduct heat, it would not be possible to conduct PCR within the reaction chambers.
applying a pressure to said microfluidic device using said pneumatic module
Para [0070]: “The sample loading chamber is used to store a sample; and includes, as shown in FIGS. 1, 5 and 6, a sample loading pool. An opening of the sample loading chamber is provided with a plug, and an air path connector 19 is disposed at the opening of the sample loading pool. After completion of sample loading, the sample loading chamber is connected to an air path through the air path connector 19, to deliver, under thrust of an air pump, the sample to the microfluidic channel through the sample output through hole 18 disposed on the bottom of the sample loading pool.” A “thrust of an air pump” constitutes pressure from a pneumatic module.
and thermally cycling said plurality of chambers.
Para [0032]: “As a further improvement to the present invention, a reaction dry powder reagent required for a PCR is pre-embedded in the reaction chamber, the reagent including an enzyme, primer, probe and buffer solution required for the PCR reaction.”
Para [0091]: “…no cross contamination is caused to the reagent when it is subjected to PCR reaction in the reaction chambers. After completion of the reaction, fluorescence detection is performed above the 12 reaction chambers to obtain a result.”
One of ordinary skill in the art understands that a PCR reaction entails thermal cycling.
Xu did not disclose a size of siphon apertures (Xu’s sample input channels), such that each had a cross-sectional area less than that of the at least one channel (Xu’s 27, output main channel).
Hung also disclosed a microfluidic device with a plurality of microchambers that were connected to a (micro)channel via siphon apertures (Abstract; 2, 10-14) and the device also had a thermoplastic film that capped the channels, chambers and siphon apertures (2, 15-18).
In Fig 1A-B of Hung’s microfluidic device (presented below, where Fig 1B is cross-section), siphon apertures 101B-109B (4, 10-15) have cross-sectional area less than the microchannel,110 (4, 15).
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Prior to the effective filing date of the claimed invention it would have been prima facie obvious to one of ordinary skill in the art to have incorporated Hung’s siphon apertures smaller than the channel as depicted in Hung (‘499) into the methods of Xu as the sample input channels’ size, with a cross-sectional area less than the at least one channel. This would be obvious to do given the finite and few combinations of sizes that exist since either these components are of equal size or one is larger than the other. A motivation for the smaller area of the siphon apertures comes directly from Hung, who articulated that microchambers could be used to isolate single cels with siphoning apertures designed to be close to the diameter of the cells to be isolated. Hung also disclosed that siphoning apertures could also be smaller than the size of the blood cells, and embodiments could be used to separate blood plasma from whole blood (6, 45-51).
Xu did not entirely disclose: using a pneumatic module to apply a first pressure to an inlet of the microfluidic device to move the NA sample into at least one channel and to apply a second pressure to said at least one channel to load the nucleic acid sample from the at least one channel into said plurality of chambers, the second pressure being greater than the first pressure;
Xu did disclose (e.g. that prior the amendment, or that which is not underlined above and two pressures): applying pressure with a pneumatic module to at least one channel to load a sample into at least one channel and applying a second pressure to the channel:
Xu taught, [0038] adding a sample to loading pool, Para [0039] mounting an external air path at a sample inlet, connecting to an air source and under air pressure provided by the air source (pneumatic module), the sample in the loading pool passes through a sample output main channel through the distribution chamber multiple output channels to a plurality of reaction pools (chambers) (Fig 7). An instrument stops flow of external air path by detecting pressure. Thus, in Xu, the air path at inlet is under pneumatic pressure so the sample in loading pool moves through channel to reaction pool, all in one step. Xu notes the flow stops by pressure detection.
Xu taught that the [0008] sample loading chamber is communicated with an external air path and in [0039] recited microfluidic chip use steps, including: “mounting an external air path at a sample inlet of the sample loading pool; connecting to an air source, and under an air pressure provided by the air source, the sample in the sample loading pool, passes through a sample output main channel and a sample distribution chamber successively, and flows to a corresponding reaction pool, through output channels, connection channels, and input channels.” [0068] indicates that the flow path can be actively controlled, where communication is with an external air path…..[0070] the opening of the loading chamber has an air path connector Fig 5, 19. After sample loading, the loading chamber is connected to an air path through the air path connector to deliver under thrust of an air pump the sample to the channel. Pg 6 [0087] the sample enters the channel through the thrust of an air pump.
Pg 3 [0039] indicates that after sample flows out of reaction pools enters the filter element passages through overflow passages, an instrument stops flow of the air path by detecting a pressure value. One pressure is applied, and a second pressure occurs when stopping flow of the air when a pressure value is detected (even if the second applied pressure is 0).
Xu did not explicitly teach a first pressure to an inlet to move the sample into a channel and a second pressure to the channel to load the sample from the channel to the chambers, the second pressure being greater than the first.
Gong also disclosed a microfluidic device with at least one well in fluid communication with a space, a channel, and vacuum generating device(s) coupled to the channel (Abstract)(Fig 2). The vacuum generates two pressures, at two regions of the microfluidic device (inlet, outlet), generating differential pressures to control the speed, of fluid, flowing through the space of the device, for filling the well progressively and or facilitating retention of material disposed in the well, or stopping the flow of material (Abstract,[0064]). There is a related thermocycler (Abstract).
Gong disclosed applying pressure using a pneumatic module (vacuum generators that created a differential pressure, Gong claim 2), where a first pressure was applied to an inlet (1081, Fig 1, 114 Fig 1B) for fluid to flow into a channel and connected space adjacent to the well(s)) (Gong, claim 3; Fig 1b, 112 [0058]). The first pressure is generated at the inlet channel (Fig 1b, 114; 0058) and the second pressure at the outlet to control the speed of fluid flow into the space adjacent to the well (Gong claim 4). Para [0060] (line 11) recites the use of the device for nucleic acid amplification. Para [0061] disclosed a pneumatic module (an air pump for generating pressure (1202, Fig 1a) and a first vacuum generator (1081, Fig 2)), and a transfer of fluid sample using a difference in level of pressure of vacuum generator (a vacuum pump , [0061] lines 20, 24) that drives a fluid sample (Fig2, 200) in chamber into the “space” near well, Fig 2, 112) via a vacuum and pressure differential [0059], last 10 lines). The fluid may contain nucleic acids ([0062], first two lines). Para [0063] disclosed a second vacuum generator (Fig4, 1082, with fluid sample, holding chamber, inlet and outlet ([0063], first three lines) where air pressure can be adjusted to a desired amount (Fig 2, 1082e) [0063]. Two vacuum generators enable differential pressure, near and within both inlet and outlet channels (Fig 2) [0064]. Fluid enters the inlet channel, and can move to the space and to the wells (Fig 4), and adjustments can be made to the fluid flow [0065], including stopping the fluid flow [0064, final line] through pressure, such as before it enters the wells.
[0064] “Importantly, the first and second vacuum generators are in cooperative arrangement to enable a differential pressure (as appropriate) to be generated with the space (Fig 4, 112) and the wells (110 a, b, c). Particularly, cooperative arrangement for generating a differential pressure is achieved through adjustment of regulators (1082e) to control the speed of flow of fluid sample through the space (112), via a first pressure near the inlet channel, and a second one near the outlet channel (Pg 8 [0064] first 10 lines), where the differential pressure can be adjusted to precisely control the rate of fluid flow within the microfluidic device, such that the fluid flow may be stopped” ([0064], last 5 lines).
[0066] disclosed use of the microfluidic device by introducing the sample into the space to fill the wells (and sealing the wells so PCR thermal cycling can be performed) ([0066], lines 1-10). In this version of the method, the wells were preloaded with primers for PCR, then the vacuum generator chamber was loaded with sample (and sealant that floats atop sample) ([0066], lines14-18). A first pressure was applied to the inlet of the vacuum generator, and a second higher pressure was applied to the intake port of the other vacuum generator where the second pressure is higher than the first and is adjustable [0066]. The position within the inlet channel (114) of the space (112), where the sample is stopped can be controlled [0066]. The first pressure is applied to inlet of vacuum and the second, higher pressure is applied using air pump (Fig 4, 1202) via the intake port that goes to the inlet channel of the space (Fig 4B 112, 114) (Fig 4, 1081). The fluid sample is driven to the inlet, and inlet channel, stopping prior to entering the space, (112) [0069]. The pressure may be adjusted and differential pressure causes the fluid sample (200) to move into the wells. [0069].
As stated by the Supreme court in KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007): “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 35 USC § 103 likely bars its patentability”. In this case, the use of Gong’s differential pressures that were obtained through use of a low and high pressures, and that were valuable for providing an ability to load samples in stages, could have been prompted by a reasonable expectation of success in improving a more rudimentary sample loading mechanism of Xu.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date to use low and high pneumatic pressures of Gong, to establish differential pressures that allowed for greater control of the loading of the sample into the channel and wells, in the device of Xu, given that Xu considered PCR in his microfluidic device and thus would have been motivated to, and have benefitted from, controlled loading of nucleic acid samples.
Xu did not disclose that the microfluidic device, or the film sealing the reaction chambers, was in thermal contact with a thermal module.
Handique also disclosed a microfluidic device for performing PCR, in which the microfluidic device was placed in contact with the heater unit; Abstract: “The present technology provides for a heater substrate that contains networks of heater elements configured to controllably and selectively deliver heat to one or more PCR reaction chambers in a microfluidic substrate with which the heater substrate makes contact. In exemplary embodiments, the heater substrate can deliver heat to 12, 24, 48, or 96 chambers independently of one another, or simultaneously. The heater substrate is located in a heater unit that may be introduced into a diagnostic apparatus that can receive and position a microfluidic substrate, such as in a cartridge, in contact with the heater unit, receive one or more polynucleotide containing samples into one or more lanes in the microfluidic substrate, and cause amplification of the polynucleotides to occur, and detect presence of absence of specified polynucleotides in the amplified samples.” Handique disclosed a thermal cycling protocol in an example of a rapid thermal cycling protocol; para [0102].
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date to configure a heating device such as Handique’s to accept the microfluidic device of Xu, as Xu clearly contemplated performing PCR in the reaction chambers of his device. Therefore, one of ordinary skill in the art would have understood that a thermal module would be required. By placing Xu’s microfluidic device into a heating device such as one modeled on Handique’s, where the microfluidic device was placed in contact with the heating device, one would have arrived at the situation where the film sealing the reaction chambers of Xu’s device were in thermal communication with the heating device (since the film formed the bottom of the reaction chambers). Moreover, it would have been obvious to perform the PCR according to Handique’s protocol to obtain PCR results.
Regarding claim 59 and 83 optical module in communication with chambers to image
Xu, commented, Para [0087]: After completion of the reaction, data is read through fluorescence detection. Para [0091]: After completion of the reaction, fluorescence detection is performed above the 12 reaction chambers to obtain a result. While this implies optical-chamber communication, it is not explicitly recited.
Handique taught that [0135]: “The processor can be programmable to operate the detector to detect one or more polynucleotides or a probe in a microfluidic cartridge located in the receiving bay.” [0136] “The detector can be, for example, an optical detector.” “…[T]he detector can include a light source that selectively emits light in an absorption band of a fluorescent dye and a light detector that selectively detects light in an emission band of the fluorescent dye, wherein the fluorescent dye corresponds to a fluorescent polynucleotide probe…”Alternatively the optical detector can include a bandpass-filtered diode that selectively emits light in the absorption band of the fluorescent dye…the optical detector can be configured to independently detect a plurality of fluorescent dyes at a plurality of different locations on a microfluidic cartridge wherein each dye corresponds to a fluorescent polynucleotide probe in a different sample. “The detector can also be configured to detect the presence or absence of a sample in a PCR reaction chamber…”
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date, to use Handique’s heating device and optical sample detection method, capable of having been configured for PCR sample detection in the reaction chamber followed by initiation of thermocycling, with Xu’s microfluidics device, since Xu embedded reagents in preparation for performing PCR, and discussed PCR as explicated above. This would have allowed for sample detection, which would have triggered the thermocycling of Xu’s microfluidics device in Handique’s heating device. Handique recited additional detail regarding optical detection, beyond Xu’s recitation of optical fluorescence detection, post-PCR in a plurality of chambers, that indicated programmability of the optical device to detect one or more polynucleotides, which could ensure optical detection of one or more polynucleotides. Use of the equipment as described would allow for rapid PCR, some automation in method steps and sensitive detection of product that would have been valuable for rapid diagnostics for medical purposes.
Regarding claim 63, a chamber of said plurality of chambers has a depth of less than or equal to 50 um
Handique stated that [0046] channels of a microfluidic network have a least one submillimeter cross-sectional dimension. “For example, channels of such a network may have a width and/or depth of 1mm or less… 250 um or less.”
Regarding claim 65, using said pneumatic module to apply pressure to microfluidic device prevents warping during thermal cycling…
Handique indicated [0080] that “The application of pressure to contact the cartridge to the heater unit assists in achieving better than normal thermal contact between the heater and the heat-receivable parts of the cartridge, and also prevents the bottom laminate structure from expanding, as would happen if the PCR channel was partially filled with liquid and the entrapped air would be thermally expanded during thermal cycling.”
Claim 60, 79 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US2019/0351412; filing date: 12/6/17) in view of Hung (US 9845499 B2; filing date 11/29/2106), in view of Gong (US 2016/0107159 A1, 4/21/2016, in view of Handique (US2008/0160601; filing date: 11/14/2007) further in view of Pasko (US2019/0344280 A1; filing date: 12/22/2017).
The contributions of Xu, Hung, Gong and Handique have been discussed regarding claim 53.
Regarding Claim 60: a film thickness <260 um
Xu recited a thin film, but did not disclose the film thickness.
Pasko, Pg18 (lines 2-4) recited: In the example of PCR, film laminates composed of polyester of about 0.1219mm (which is equal to 121 um) and polypropylene films of 0.025-0.076 mm (which is equal to 25-76 um) thick, perform well.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date to have selected one of the polymers recited in Pasko for the thin film used by Xu since Pasko literally speaks to the performance quality of the films he recited after discussing the physical property of thickness. The state of the field of molecular biology at the time was such that identifying films that benefitted PCR reactions, was relevant, and Xu’s equipment would have benefitted from Pasko’s deductions regarding the physical properties of these polymers and the impact of this on their performance.
Regarding claim 79, a chamber volume of less than or equal to 150 picoliters.
Pasko [0150] recites stationary PCR chips and PCR droplet systems (54) may benefit from increased primer and probe concentrations, as the volumes may be as small as 1nl or smaller and may be low enough to permit very fast cycling. A volume of 1nl or smaller, includes 0.15nl and 150 pl is 0.15 nl.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date to have used a chamber volume as recited in Pasko of 150 picoliters or less in the method of Xu to perform the PCR of Handique since Handique’s PCR protocol was rapid and as such, improved efficiency.
Claims 56-58, 82 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US2019/0351412; filing date: 12/6/17) in view of Hung (US 9845499 B2; filing date 11/29/2106), in view of Gong (US 2016/0107159 A1, 4/21/2016, in view of Handique (US2008/0160601; filing date: 11/14/2007) further in view of Pasko (US2019/0344280 A1; filing date: 12/22/2017) as applied to claims 53, 54, 60, 63, 65, 67 above, and further in view of Wieme (Polym Eng Sci, 58: 466-478, Table 1) first published 7 Oct 2017).
The teachings of Xu and others except Wieme have been discussed. These references did not disclose any particular thermal conductivity of the film.
Claim 56: film with thermal conductivity of 0.5 W/m-K, and Claim 57, film with thermal conductivity of 0. 2W/m-K, and claim 58 and 82 film is polymer
Regarding Claim 56, Xu disclosed, Para [0069]: “The lower thin film is made from a thin-layer polymer material such as PP, PE, or PS.”.
Xu did not disclose these materials’ thermal conductivity.
Wieme disclosed thermal conductivity of polymers that could be used in Xu’s device.
Wieme et al. taught the specific thermal conductivities of several thermoplastic polymers including high-density polyethylene, polypropylene (PP, in Xu), polystyrene (PS in Xu) and polyvinyl chloride). This list recites polymers with thermal conductivity ≤ about 0.5 W/m-K, including HDPE with thermal conductivity of ≤ 0.5 W/m-K, and if both PP and PS, PS, which are both < 0.5 W/m-K as well as < 0.2 W/m-K (Table 1), meeting claims 57 and 58.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the methods of Xu, to incorporate the use of one of the low thermal conductivity polymers listed in Wieme et al. (e.g. polystyrene with thermal conductivity of 0.14 W/m-K, Table 1) to meet the thermal conductivity recited in the claims (≤ about 0.5 W/m K; ≤ about 0.2 W/m K) with the thermoplastic film taught in Hung. Xu literally recited PS as a viable option, but did not explicitly discuss it’s thermal conductivity.
A person of ordinary skill in the art would have a reasonable expectation of success using a low thermal conductive polymer in the method of Xu, after recognizing the low thermal conductivity of the polymer as presented in Wieme since the range of thermal conductivity in the instant claims for the polymeric film was satisfied by this and other thermoplastic polymers presented in Wieme, such as PP (Table 1), also mentioned in Xu, and because the claimed range of thermal conductivity overlaps with the range disclosed in the prior art (e.g. for polystyrene 0.14 W/m K), a prima facie case of obviousness exists.
Conclusion
All claims rejected. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lisa Horth whose telephone number is (703)756-4557. The examiner can normally be reached Monday-Friday 8-4 EST.
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/LISA HORTH/Examiner, Art Unit 1681
/GARY BENZION/Supervisory Patent Examiner, Art Unit 1681