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 .
Claim Status
Claims 15-20 and 22-23 are pending and are examined. Claims 1-14 and 21 are cancelled.
Affidavit
The affidavit under 37 CFR 1.132 filed 2/19/26 is insufficient to overcome the rejection of claims 15-20 and 22-23 based upon the 103 rejection as set forth in the last Office action because:
The declaration in paragraph #7 reads as, “when L < 20 mm, the electric field is predominately vertical, and when L > 20 mm, the electric field strength and resulting EHD forces weaken significantly” (Exhibit A #2- Proof of criticality of electrode spacing: Average droplet size) and theoretical calculation of the maximum distance demonstrating criticality (Exhibit A #4 – Finding the limit on horizontal electrode spacing for effective emulsification). The examiner has interpreted the affidavit as trying to establish that providing a distance lesser or greater than 20 mm significantly affects the operation of the claimed invention.
However, the applicant’s alleged criticality is not captured as claimed in claim 15, since claim 15 recites “wherein L is up to 30 mm”, and therefore claims a range overlapping with both L > 20 mm and L < 20 mm.
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.
Claims 15, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Davies (“Formation of liposomes using a 3D flow focusing microfluidic device with spatially patterned wettability by corona discharge.” J Micromech. and Microengineering. 22. 2012.; previously cited), in view of Mahmoudi (WO 2014/172504; previously cited).
Regarding Claim 15, Davies teaches a system for creating a water-in-oil (W/O) emulsion comprising:
a channel configured to receive a fluid (Fig. 1, channel in (A) and (B), To realize the designed device, we employed a two-step soft-lithography process to make a multi-level photoresist pattern with thicknesses of 20 and 30 µm so that when two identical PDMS molds were assembled, channels had heights of 40 and 60 µm.);
a corona emitting electrode disposed at a distance away from the channel and configured to emit a corona discharge (Next, the handheld corona generator with the standard electrode tip was held 3 mm from the channel outlet and the power level adjusted to the minimum level that produced a stable spark. The electrode was pointed directly into the opening and corona applied steadily for 3 s.); and
a source of water droplets in proximity to the corona emitting electrode so as to be configured to provide the water droplets in a space between the corona emitting electrode and the channel.
Davies is silent to a ground electrode disposed in the channel.
Mahmoudi teaches in the related art of corona discharge. [0018] In certain embodiments, step (a) includes providing an emitter electrode (e.g., sharp electrode) and a collector electrode, wherein at least the collector electrode (e.g., blunt electrode) is in physical contact with the mixture and a potential difference is applied between the emitter electrode and the collector electrode at or above a corona discharge threshold. [0019] In certain embodiments, the emitter electrode is not in physical contact with the mixture. [0022] In certain embodiments, the collector electrode is grounded. [0115] The grounded collector electrode is in contact with an oil/water (or other) emulsion.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added a ground electrode disposed in the channel, as taught by Mahmoudi, to the device of Davies, to allow for separating two or more phases of an emulsion or other mixture, as taught by Mahmoudi, in the Abstract.
Modified Davies is silent to the corona emitting electrode and the ground electrode are spaced a horizontal distance (L) apart from one another, and wherein L is up to 30 mm.
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.). Where the general conditions of a claim are disclosed in the prior art (e.g., Warburg’s law), it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the corona emitting electrode and the ground electrode spaced a horizontal distance (L) apart from one another, and wherein L is up to 30 mm in the device, as taught by modified Davies, to allow for controlling droplet size.
Regarding Claim 16, Davies teaches the system of claim 15.
Davies is silent to the corona emitting electrode is offset from the ground electrode.
Mahmoudi teaches in the related art of corona discharge. [0018] In certain embodiments, step (a) includes providing an emitter electrode (e.g., sharp electrode) and a collector electrode, wherein at least the collector electrode (e.g., blunt electrode) is in physical contact with the mixture and a potential difference is applied between the emitter electrode and the collector electrode at or above a corona discharge threshold. [0019] In certain embodiments, the emitter electrode is not in physical contact with the mixture. [0022] In certain embodiments, the collector electrode is grounded. In some embodiments, the collector electrode is biased with the same polarity above the ground level. In some embodiments, the emitter electrode energy is at +15kV, the collector electrode may be ground (0 kV) or the collector electrode can be biased by, e.g., +lkV.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have offset the corona emitting electrode and the ground electrode, as taught by Mahmoudi, in the device of Davies, to allow for separating two phases of a mixture, as taught by Mahmoudi in [0049].
Regarding Claim 17, Davies teaches the system of claim 15, wherein the corona emitting electrode is configured for relative movement with respect to a liquid phase in the channel (Figure 2. Novel oil-blocking technique for spatially selective hydrophilic surface modification of PDMS by corona discharge. (A) Oleic acid gradually fills the channel from the oil inlet until the advancing line of contact is pinned at the discontinuity. Scale bar denotes 100 µm. (B) Corona arc travels freely throughout unblocked outer channels, oxidizing the surfaces.).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over (“Formation of liposomes using a 3D flow focusing microfluidic device with spatially patterned wettability by corona discharge.” J Micromech. and Microengineering. 22. 2012.), in view of Mahmoudi (WO 2014/172504), and further in view of Srinivasan (US Pub 2007/0275415).
Regarding Claim 18, Davies teaches the system of claim 15.
Davies is silent to a power source configured to supply a differential potential to the corona emitting electrode.
Mahmoudi teaches in the related art of corona discharge. [0049] (c) a power source configured to apply a potential difference between the emitter electrode and the collector electrode at or above a corona discharge threshold, wherein a gaseous medium (e.g., nitrogen, oxygen, air, argon, helium, etc., or any combination/mixture thereof) is located between the emitter electrode and the mixture.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added a power source, as taught by Mahmoudi, to the device of Davies, to operate or power the device.
Modified Davies is silent to an amplifier.
Srinivasan teaches in the related art of droplets. Digital conditioning electronics (e.g., high input impedance amplifiers) can be used to interface with the potentiometric electrodes. [0544] The detection capabilities may be provided as one or more components of a sensor board. The sensor board may include one or more sensors. The sensor board may include additional electronic circuitry such as amplifiers, A/D converters, read-out circuits and the like for conditioning or amplifying the signal received from a droplet.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added an amplifier, as taught by Srinivasan, to the device of modified Davies, to allow for amplifying a signal from each droplet, as taught by Srinivasan, in [0544].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over (“Formation of liposomes using a 3D flow focusing microfluidic device with spatially patterned wettability by corona discharge.” J Micromech. and Microengineering. 22. 2012.), in view of Mahmoudi (WO 2014/172504), and further in view of Damak (US Pub 2018/0272358).
Regarding Claim 19, modified Davies teaches the system of claim 15.
Modified Davies is silent to the source of water droplets is a humidifier.
Damak teaches in the related art of collections of a species from water in the Abstract. [0161] Samples were placed 4 cm away from the outlet, perpendicularly to the axis, of two concentric cylinders (6.3 cm, 5 cm inner diameters) from which a uniform stream of fog was coming. Fog consisted in a cloud of air-suspended water droplets of radius 3.5 μm, generated using an ultrasonic humidifier (Air-O-Swiss AOS 7146) delivering a volume rate of up to 0.1 L/hour.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected a humidifier, as taught by Damak, as the source of water droplets in the device of modified Davies, to allow for generating water droplets, as taught by Damak in [0161].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over (“Formation of liposomes using a 3D flow focusing microfluidic device with spatially patterned wettability by corona discharge.” J Micromech. and Microengineering. 22. 2012.; previously cited), in view of Mahmoudi (WO 2014/172504; previously cited).
Regarding Claim 20, modified Davies teaches the system of claim 15.
Modified Davies is silent to the channel is circular.
Regarding the channel is circular, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the channel in the device of modified Davies to be circular, so that the flow has a symmetrical pattern.
Claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over (“Formation of liposomes using a 3D flow focusing microfluidic device with spatially patterned wettability by corona discharge.” J Micromech. and Microengineering. 22. 2012.; previously cited), in view of Mahmoudi (WO 2014/172504; previously cited), and further in view of Tirumula (“The assisted corona discharge: The effect of using multi-electrode configurations.” IEEE Intl Conf on Plasma Sci. 2010.; previously cited)
Regarding Claim 22, modified Davies teaches the system of claim 15.
Modified Davies is silent to a second corona emitting electrode and a second ground electrode, wherein the second ground electrode is in the channel, and wherein the second corona emitting electrode is disposed at a position offset from the second ground electrode by a distance that is lesser than a distance from the second corona emitting electrode to the ground electrode.
Tirumula teaches in the related art of corona discharge, electrodes and EHD flow. On page 2, A positive corona discharge generates ions near the sharp electrode which, driven by the electric field, drift towards the counter electrode. Along the way, their collisions with neutral air molecules transfer momentum, generating a bulk flow— an ionic wind (also called a corona or electric wind). In this work, fundamental experiments have been conducted to characterize and understand the physics of the discharge in multi-electrode configurations. Preliminary flow measurements suggest that this multi-electrode approach is inherently more efficient that the traditional two-electrode corona discharge.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have duplicated the corona emitting electrode and the ground electrode, as taught by Tirumula, in the device of modified Davies, to allow for enhancing the corona discharge, as taught by Tirumula.
In an alternative rejection, regarding the second corona emitting electrode and a second ground electrode and wherein the second ground electrode is in the channel, and wherein the second corona emitting electrode is disposed at a position offset from the second ground electrode by a distance that is lesser than a distance from the second corona emitting electrode to the ground electrode, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.). See MPEP 2144.04 VI. B.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have duplicated the corona emitting electrode and the ground electrode, in the device of modified Davies, wherein the second ground electrode is in the channel, and wherein the second corona emitting electrode is disposed at a position offset from the second ground electrode by a distance that is lesser than a distance from the second corona emitting electrode to the ground electrode, to allow for enhancing the corona discharge.
Regarding Claim 23, modified Davies teaches the system of claim 22.
Modified Davies is silent to comprising a second source of water droplets configured to provide water droplets in proximity to the second corona emitting electrode.
Regarding a second source of water droplets, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.). See MPEP 2144.04 VI. B.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have duplicated a second source of water droplets (humidifier), in the device of modified Davies, to allow for more enhanced droplet formation.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Davies (“Formation of liposomes using a 3D flow focusing microfluidic device with spatially patterned wettability by corona discharge.” J Micromech. and Microengineering. 22. 2012.; previously cited), in view of Mahmoudi (WO 2014/172504; previously cited), and further in view of Tirumala et al. "Corona discharges in sub-millimeter electrode gaps." J Electrostatics. 69: 36-42 (2011).
Regarding Claim 15, Davies teaches a system for creating a water-in-oil (W/O) emulsion comprising:
a channel configured to receive a fluid (Fig. 1, channel in (A) and (B), To realize the designed device, we employed a two-step soft-lithography process to make a multi-level photoresist pattern with thicknesses of 20 and 30 µm so that when two identical PDMS molds were assembled, channels had heights of 40 and 60 µm.);
a corona emitting electrode disposed at a distance away from the channel and configured to emit a corona discharge (Next, the handheld corona generator with the standard electrode tip was held 3 mm from the channel outlet and the power level adjusted to the minimum level that produced a stable spark. The electrode was pointed directly into the opening and corona applied steadily for 3 s.); and
a source of water droplets in proximity to the corona emitting electrode so as to be configured to provide the water droplets in a space between the corona emitting electrode and the channel.
Davies is silent to a ground electrode disposed in the channel.
Mahmoudi teaches in the related art of corona discharge. [0018] In certain embodiments, step (a) includes providing an emitter electrode (e.g., sharp electrode) and a collector electrode, wherein at least the collector electrode (e.g., blunt electrode) is in physical contact with the mixture and a potential difference is applied between the emitter electrode and the collector electrode at or above a corona discharge threshold. [0019] In certain embodiments, the emitter electrode is not in physical contact with the mixture. [0022] In certain embodiments, the collector electrode is grounded. [0115] The grounded collector electrode is in contact with an oil/water (or other) emulsion.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added a ground electrode disposed in the channel, as taught by Mahmoudi, to the device of Davies, to allow for separating two or more phases of an emulsion or other mixture, as taught by Mahmoudi, in the Abstract.
Modified Davies is silent as to the corona emitting electrode and the ground electrode being spaced a horizontal distance (L) apart from one another, wherein L is up to 30 mm.
However, Tirumula teaches, in the Abstract, electrode gaps between 0.3 mm to 5 mm. Reductions in the gap distance and wire diameter resulted in a significant increase in discharge currents.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the corona emitting electrode and the ground electrode spaced a horizontal distance (L) apart from one another, wherein L is up to 30 mm, in the device of modified Davies, as taught by Tirumula, to allow for controlling droplet size.
Response to Arguments
Applicant's arguments, see pages 4 and 5, filed 2/19/26 have been fully considered but they are not persuasive.
First, Applicant argues on page 4 that claim 15 has been amended to recite L is up to 30 mm and that the prior art does not teach or suggest a horizontal spacing between the corona emitting electrode and the ground electrode of up to 30 mm. The Sojoudi affidavit establishes that increasing the horizontal distance reduced the EHD force angle, but this trend only holds for horizontal distances up to 20 mm, and beyond 20 mm droplet sizes increase again.
In response, the examiner notes that the spacing between the electrodes based on the experimental data submitted in the Sojoudi affidavit is significant when L < 20 mm or L > 20 mm. However, as mentioned above, applicant’s amendment to claim 15 recites distance L values both above and below 20 mm.
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 JACQUELINE BRAZIN whose telephone number is (571)270-1457. The examiner can normally be reached M-F 8-5.
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/JB/
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798