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 .
Status of Claims
The claim set submitted on 19 NOVMEBER 2025 is acknowledged and considered. In the claim set, Claim 32 is ‘Currently amended’; Claims 33-43 are ‘Previously Presented’; Claims 1-31 and 52 are ‘Canceled’; Claims 43-51 are ‘Withdrawn’.
Current pending claims are Claims 32-43 and are considered on the merits below.
EXAMINER’S COMMENT
It should be noted that the only pending rejections of the pending claims is the double patenting rejection.
In the previous REMARKS on 19 NOVEMBER 2025 regarding the double patenting rejection:
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The double patenting rejection has been maintained and amended below to reflect the cancellation of Claim 52.
The following is an examiner’s statement of reasons for allowance:
Applicant’s invention directed towards a microfluidic device, comprising: at least one first channel train in fluid communication with and associated with a first inlet, the first inlet being configured to receive a continuous phase fluid, at least one second channel train in fluid communication with and associated with a second inlet, the second inlet being configured to receive a dispersed phase fluid; at least one product generator configured to produce a product from the continuous phase fluid and the dispersed phase fluid, the at least one product generator being in fluid communication with the at least one first channel train and the at least one second channel train , the at least one product generator comprising a first channel that receives continuous phase fluid of the first channel train and a second channel that receives dispersed phase fluid of the second channel train, the first channel and the second channel arranged so as to at a contacting region, and the at least one product generator comprising (1)_a velocity reduction section upstream of the contacting region and configured to reduce a velocity of at least one of the continuous phase fluid or the dispersed phase fluid as the at least one of the continuous phase fluid or the dispersed phase fluid approaches the contacting region and (2) a flow resistance increasing section upstream of the velocity reduction section such that fluid passing through the first inlet first traverses the flow resistance section and then the velocity reduction section before arriving at the contacting region; and one or more outlets for delivery of the product, one or more of the first inlet, the at least one first channel train, the second inlet, the second channel train, the at least one product generator, and the one or more outlets optionally being formed in a silicon substrate is not found or suggested in prior art or upon further search and consideration.
The closest prior art of record is to ROMANOWKY, which discloses and teaches many of the structural features of the claimed invention, including the first and second channel trains as well as the product generator, but fails to teach or suggest all the structural features of the product generator including (1) and (2) above. Initially, the Examiner had cited [0064] of the reference, but as Applicant pointed out in the REMARKS, “Romanowsky provides only a general description of a "channel" and provides example channel dimensions, and does not specifically teach a channel train that comprises a flow resistance increasing section upstream of a velocity reduction section that is itself upstream of a contacting region as recited in claim 32.”
Romanowsky provides only example channel cross-sectional dimensions and does not provide any suggestion of a channel or channel train also includes a flow resistance increasing section that is upstream of a velocity reduction section. While Romanowsky teaches an arrangement in which fluid first encounters relatively large channels that would reduce the fluid's velocity followed by relatively small channels that would increase flow resistance, Figure 8. Such an arrangement is, however, opposite to Applicant's arrangement, in which fluid first encounters a flow resistance increasing section and then encounters a velocity reduction section.
Response to Amendment
Applicant’s arguments, see REMARKS, filed 19 NOVEMBER 2025, with respect to the 112(a) and 112(b) rejections have been fully considered and are persuasive. The 112(a) and 112(b) rejection have been withdrawn.
Applicant’s arguments, see REMARKS, filed 19 NOVEMBER 2025, with respect to the art rejections have been fully considered and are persuasive. The art rejections have been withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 32-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 23-31 of U.S. Patent No. 11,097,267 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the ‘267 patent and the instant invention are directed towards a microfluidic device comprising: at least one substrate, the substrate including: a first inlet for receiving a continuous phase fluid; a second inlet for receiving a dispersed phase fluid; a plurality of channels (at least one first and second channel train), the plurality of channels in fluid communication with the first and second inlets; a plurality of droplet generators configured to produce microdroplets, each of the droplet generators in fluid communication with the plurality of channels; and one or more outlets for delivery of the microdroplets, wherein a number of the plurality of droplet generators is more than two greater than a number of the one or more outlets for delivery of the microdroplets, Claim 1, 3.
Furthermore, the ‘267 patent comprises a contact region configured to contact the continuous phase fluid and dispersed phase fluid, Claim 23, and a velocity reduction section, Claims 24-31. However, the ‘267 does not specifically teach where the velocity reduction section, but it would be obvious to one having ordinary skill before the effective filing date to modify the location of the velocity reduction section such that a velocity reduction section upstream of the contacting region and configured to reduce a velocity of at least one of the continuous phase fluid or the dispersed phase fluid as the at least one of the continuous phase fluid or the dispersed phase fluid approaches the contacting region as a matter of design choice to slow the flow of fluid through the device at particular location and the particular placement of a velocity reduction section was held to be an obvious matter of design choice, In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
The instant invention specifically teaches the droplet generator (product generator) is a T-junction droplet maker, a flow focusing droplet maker, a Janus particle droplet maker, a multiple emulsion droplet maker, or any combination thereof. It would be obvious to one having ordinary skill in the art before the effective filing date to modify the ‘267 patent so that the droplet generator is one that is well-known in the art to produce droplets, such as a T-junction droplet maker, a flow focusing droplet maker, a Janus particle droplet maker, a multiple emulsion droplet maker, or any combination thereof, in addition the application of well-known droplet generators to microfluidics device yield a predictable result. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
In addition, the claim limitations regarding the number of elbow turns in the first channel train is an optimizable value, E1 and E2 are an optimizable. The ‘267 patent teaches in Claims 25 and 28, the channels include either two or more elbow turns or at least one elbow turn, respectively, so it would be obvious to one having ordinary skill in the art before the effective filing date to modify the values of E1 and E2 to allow for a longer or shorter processing time for generating droplets.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LYLE ALEXANDER can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797