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
Ther amendment filed on August 7, 2026 is acknowledged. Claims 1-4, 6-8, 10-14 and 16 remain pending. Applicant amended claims 1, 4, 6-8, 11 and 14.
Response to Arguments
The amendment necessitated the new grounds of prior art rejection set forth below. The new grounds of rejection are deemed to render moot Applicant’s arguments directed to the outstanding prior art rejections.
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-4, 6-8, 10-14 and 16 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The claims are rejected because the amendment made to independent claims 1 and 11 include new matter. According to Applicant’s remarks (Remarks 7), the basis for the amendment is Figures 9 and 10. However, the Figures fail to provide support for the amendment. Presumably, the “three portions” recited in claims 1 and 11 refer to the three laterally separated portions of layer 110 illustrated in Figures 9 and 10. However, as disclosed in [0049] and [0051] of the specification, Figures 9 and 10 illustrate a cross-sectional view of the device. That said, vias 102 do not actually physically separate layer 110 into three distinct portions. Rather, vias 102 are merely holes that traverse through a single, monolithic layer 110 (i.e. like a hole through a donut), and Figures 9 and 10 merely illustrate a cross-sectional view where vias 102 are located. Consequently, the specification provides no basis for amending the claims to recite a silicon device layer that is divided into multiple portions separated by vias, as recited in claims 1 and 11.
Claim 11 is additionally recites that “the one of the plurality of microfluidic elements” is adjacent one of the two buses, one of the sacrificial plugs, the third bus, the sealing layer and the silicon device layer. The specification fails to provide support for the amendment.
Similarly, the specification does not provide support for “each of the plurality of microfluidic elements…positioned between one of the plurality of sacrificial plugs and the third bus” recited in claim 11.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-8, 10-14 and 16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 11 recite “the microfluidic element of the plurality of microfluidic elements”. There is no antecedent basis for the limitation. The claim does not previously refer to a specific microfluidic element.
Claims 1 and 11 are indefinite because the numbering of the buses is indefinite. The claims initially recite “at least two buses”, meaning the limitation encompasses a third bus, a fourth bus, etc. Yet, the claims subsequently recite a separate “third bus” that is locationally distinct from the “at least two buses”. The relationship between the “at least two buses” and the “third bus” is unclear.
Claims 1 and 11 are also indefinite because the scope of the recitation, “the third bus is positioned between the at least two vias”, is unclear. The number of vias encompassed by the limitation “at least two vias” is three, four, five, etc. That said, it is unclear how the third bus is positioned between four vias, for example. The issue is further exacerbated by claim 16, which recites at least 100 vias.
In addition, the scope of the limitation “either side” recited multiple times in claims 1 and 11 is unclear. It is unclear whether the limitation intends to convey one side or both sides.
In claims 1 and 14, it is unclear to which microfluidic element the limitation, “the one of the plurality of microfluidic elements”, refers. Claims 1 and 4 initially refer to “one of the plurality of microfluidic elements” in general terms and in different contexts, rather than a specific microfluidic element. For example, in claim 1, either side of the third bus is connected to “one of the plurality of microfluidic elements”, meaning the limitation, “one of the plurality of microfluidic elements”, collectively refers to two microfluidic elements, one for each side of the third bus. Consequently, it is unclear to which microfluidic element “the one of the plurality of microfluidic elements” refers.
Line 6 of claim 11 recites “respectively”. It is unclear to what it refers. Relatedly, it is unclear whether the claim intends to convey that all of the vias extend from each sacrificial plug, as conveyed by the recitation in line 6.
Claim 12 recites that the sealing layer has a second thickness without reciting a first thickness. It is unclear whether the claim intends to convey that the sealing layer has multiple thicknesses, and it is unclear whether the claim intends to implicitly recite a first thickness.
Claims not explicitly rejected are rejected due to dependency.
Allowable Subject Matter
No claims are considered to include allowable subject matter due to the claims being rejected under 35 U.S.C. 112(a). However, prior art does not disclose or suggest the subject matter of claims 1 or 11.
Foster (US 2009/0212407 A1) remains the closest prior art and Foster discloses an apparatus comprising (see Fig. 10):
a silicon device layer 10 comprising:
a plurality of vias 60 (see Figure 8 for identification of vias using reference numeral 60) extending through the silicon device layer 10; and
a microfluidic element 36 (see Fig. 4 for identification) embedded within and protruding from a first (top) surface of the silicon device layer 10, wherein the silicon device layer 10 has a thickness greater than or equal to about 7 micrometers and less than or equal to about 500 micrometers (see [0084]); and
a sealing layer 20 bonded to the silicon device layer 10, wherein the sealing layer, due to having greater thickness (see Fig. 10), has greater rigidity than the silicon device layer 10, and wherein the vias 60 extend entirely through the silicon device layer from a second (bottom) surface of layer 10 through to the first surface of layer 10, wherein the sealing layer 20 is directly connected to and adjacent a first bus 35 (see Fig. 4 for identification) of a plurality of buses (vias 24), and wherein the first bus 35 is a channel that guides fluid through the apparatus (see Fig. 4) and wherein the first bus 35 is immediately adjacent and fluidly connected to the microfluidic element 36 (see Fig. 4 for identification).
However, Foster does not disclose an apparatus comprising the elements recited in claims 1 and 11 arranged in the manners recited in claims 1 and 11, and there is no motivation to modify the apparatus to arrive at the claimed inventions.
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 PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
