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 .
Response to Amendment
The Amendment filed 07/28/2025 has been entered. Claims 1-16 remain pending in the application. Claims 3-16 are withdrawn. Claims 1-2 are being examined herein.
Status of Objections and Rejections
The rejections of claims 1-2 under 35 U.S.C. 103 35 U.S.C. 103 are being withdrawn in view of Applicant’s amendment.
New grounds of rejection under 35 U.S.C. 103 are necessitated by the amendments
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Schoen et al. (US 20120275972 A1) (Provided in the Applicant’s IDS of 09/16/2021).
Regarding claim 1, Schoen teaches a process for manufacturing a micro-fluidic device (paras 0054, 0057, 0059 and 0082), said device comprising a substrate (2)(element 2 is denoted with various names throughout the reference; para. 100, plate-shaped substrate 2) made of thermoplastic polymer (para. 0031, the material of the plate consists of selected from a list of thermoplastics. The examiner interprets the plate as the plate-shaped substrates 1 and 2, paras. 0094, 0100 and claim 1) having an upper face (the top surface of 2 as shown in Fig. 2a) and a lower face (the bottom surface of 2 as shown in Fig. 2b) and a first micro-fluidic circuit that comprises at least one aperture (5) that opens onto said upper face (Fig. 2a), and a component (1) bearing anchoring pads (6) is configured to be anchored in said substrate (2) on a periphery of said aperture (Figs. 1, 2b and 3-5), said process comprising:
heating so that the anchoring pads of the component reach a temperature at least equal to a glass-transition temperature of the component (1) (para. 0066, pin material is heated above the glass transition temperature of plate-shaped substrate 1); and
fastening the component (1) to the substrate (2) by embedding (Fig. 3) and then anchoring the pads (6) within the substrate (2)(Figs. 4- 5, 7 and para. 0118) such that a tip end of each of the anchoring pads (6) remains within the substrate (2) between the upper face and lower face of the substrate after the anchoring (Figs. 5 and 7 and para. 0118, the tip of 6 is remains within 2 between the top surface of 2 and the bottom surfaces of 2)(see annotated figure, Fig. A below).
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Figure A. Annotated Fig. 7 of Schoen.
Schoen fails to explicitly teach plate-shaped substrate 1 (component) and plate-shaped substrate 2 (substrate) have the same glass-transition temperature.
However, Schoen teaches the material of the plate-shaped substrates 1 and 2 is consist of an amorphous or partially crystalline plastic selected from among polystyrene (PS), polymethyl methacrylate (PMMA), polycarbonate (PC), olefin polymers and olefin copolymers such as cycloolefin polymer and cycloolefin copolymer (COC and COP), polyamide (PA), polypropylene (PP), polyethylene (PE) or polyethyl ether ketone (PEEK) (para. 0031).
Before the effective filling date of the claimed invention, there had been a recognized need of choosing the material of the plate-shaped substrates 1 and 2. One of ordinary skill in the art would recognize the options of choosing the same or a different material for plate-shape substrate 1 and 2 in the list of finite options of thermoplastics listed in paragraph 0031.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to try each of the identified thermoplastics (para. 0031). The results would have been predictable since Schoen teaches that there are a known limited number of thermoplastics. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to select the same material for plate-shaped substrates 1 and 2 from the finite number of identified thermoplastics as disclosed by Schoen (para. 0031) with a reasonable expectation of success (MPEP 2143(I)(E)).
The teachings of modified Schoen would yield plate-shaped substrates 1 (component) and 2 (substrate) having the same glass-transition temperature, and thus yield the step of heating so that the anchoring pads of the component reach a temperature at least equal to the glass-transition temperature of the substrate.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Schoen et al. (US 20120275972 A1) (Provided in the Applicant’s IDS of 09/16/2021) as applied to claim 1 above, and further in view of Gao et al. (US 20070267782 A1).
Regarding claim 2, modified Schoen teaches all of the elements of the current invention as stated above with respect to claim 1. Schoen further teaches there are holes (7) in the substrate (2)(Fig. 2b), these holes each being configured to receive one separate anchoring pad (6) of the component (1)(Figs. 3), with a view to facilitating the embedment of each anchoring pad of the component in the fastening step (Figs. 4-5).
Schoen fails to explicitly teach the process includes a prior step of creating holes in the substrate.
However, Gao teaches a method of creating microfluidic structure (abstract) with manufacturing considerations (para. 0005). Gao discloses a process and apparatus for efficiently, effectively, and inexpensively creating through holes in microfluidic parts made of thermoplastics (paras. 0009, 0118).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Schoen with an additional step of creating through holes taught by Gao in order to create holes in substrate 2 taught by Schoen (Schoen, Fig. 2a) in an efficient, effective and inexpensive manner with a reasonable expectation of success. (Gao 0009) (MPEP 2143)(I)(G).
Response to Arguments
Applicant's arguments filed 07/28/2025 with respect to the rejection under 35 U.S.C. 103 have been fully considered but they are not persuasive.
In the arguments presented on pages 5-6, the applicant argues Schoen does not teach or render obvious the features of the claimed invention. In particular, the Applicant argues that the recitation in claim “heating so that the anchoring pads of the component reach a temperature at least equal to a glass-transition temperature of the substrate” is not the same as the heating of pins 6 as taught in Schoen. In addition, the Applicant also argues that Schoen does not teach “a tip end of the anchoring pads remains within the substrate between an upper and lower surface after the step of anchoring, as claimed.”
The examiner respectfully disagrees. Schoen does teach “heating so that the anchoring pads of the component reach a temperature at least equal to a glass-transition temperature of the substrate” as the discussed in above in the 35 U.S.C. 103 section. Schoen teaches that pins 6 (the anchoring pads) of substrate 1 (the component) are heated to above its glass-transition temperature in paragraph 0066. Since substrate 1 and substrate 2 are made of the same material in modified Schoen as discussed above in the 35 U.S.C. 103 section, substrate 1 and substrate 2 have the same glass-transition temperature, and thus pins 6 are heated to above the glass-transition temperature of substrate 2, which is mapped to the substrate of the instant. Therefore, Schoen teaches the limitation, and thus this argument is unpersuasive.
In regard to Schoen does not teach “a tip end of the anchoring pads remains within the substrate between an upper and lower surface after the step of anchoring, as claimed, ” Figure 7 of Schoen shows the anchoring pad (6) is within the substrate (2) and between the upper and lower surfaces of the substrate as more clearly illustrated with annotations in Fig. A above. Therefore, Schoen does teach a tip end of the anchoring pads remains within the substrate between an upper and lower surface after the step of anchoring, as claimed. Schoen does teach all the features of the claimed invention as discussed in the 103 section above. Therefore, the argument is unpersuasive.
The Applicant also states “… Schoen teaches with respect to Figs. 3-5, a plate-shaped substrate 1 which in cross section has a channel structure 4 covered by a film 3 and the cover elements 2 are stacked on one another on a support 13. The substrate 1, particularly the base element 1, has conical pins 6 which protect from the surface of the substrate 1 and are connected therewith.” However, the statement does not point out particular errors of the Non-Final Office Action.
In response to Applicant’s argument on page 8, that “Gao does not make up for the deficiencies of Schoen discussed above,” since Schoen does teach all the limitations of amended claim 1 as discussed above, there is no deficiency in amended claim 1 to be make up for. Therefore, this argument is unpersuasive.
Conclusion
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 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 MAY CHIU whose telephone number is (571)272-1054. The examiner can normally be reached 9 am - 5 pm.
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/M.L.C./ Examiner, Art Unit 1758
/MARIS R KESSEL/ Supervisory Patent Examiner, Art Unit 1758