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 .
Election/Restrictions
Applicant's election with traverse of claims 1-9 in the reply filed on November 11, 2025 is acknowledged. The traversal is on the ground that all of the claims were been amended to incorporate the subject matter of previously pending claim 3 such that the inventions no longer lack unity (i.e. they share a common special technical feature). Remarks 7. This is not found persuasive. Despite the amendment, the common technical feature shared by the inventions does not make a contribution over the prior art in view of Chen et al. (“Chen”) (US 2018/0264834 A1). Specifically, Chen discloses an insert for a micro-nozzle, the insert comprising (see Figs. 2A and 2B):
a microfabricated (see [0033] disclosing dimensions of die 202) fluidic chip 202 having a chip inlet, a chip outlet and a microfluidic channel connecting the chip inlet and the chip outlet (Fig. 2B illustrates a channel formed at the bottom of the chip 202, the channel going into and out of the page; naturally the channel comprises an inlet and an outlet);
an overmold casing 203 overmolded around the microfabricated fluidic chip 202 so as to substantially encase the microfabricated fluidic chip (see Fig. 2A), and comprising an inlet in fluid communication with the chip inlet and an outlet in fluid communication with the chip outlet (Figs. 2A and 2B illustrate a channel formed in the middle of the overmold casing 203 that corresponds in shape and direction of the microfluidic channel of the chip 202),
wherein the microfabricated fluidic chip comprises one or more side walls, and the overmold casing 203 comprises at least one pressure transferring window arranged to transfer pressure at an inlet side of the overmold casing 203 to the one or more sidewalls of the fluidic chip 202 (in the annotation below, if pressure is applied to the inlet side of the casing 203, i.e. if downward pressure is applied to the assembled insert, pressure would be transferred to the sidewall of the fluidic chip 202).
PNG
media_image1.png
262
610
media_image1.png
Greyscale
Because the common technical feature shared by independent claims 1 and 10 is well-known in the art, the technical feature is not a SPECIAL technical feature. Consequently, claims 1 and 10 lack unity.
Regarding Applicant’s remarks directed to the inventive features of the claimed “pressure transferring window” (Remarks 8), the structure of Chen corresponding to the claimed “pressure transferring window” (see above) anticipates all of the claimed limitations attributed to the “pressure transferring window” even if said structure is not intended to serve the function(s) of the claimed “pressure transferring window” discussed in the remarks.
For the foregoing reason, the restriction requirement is still deemed proper and is therefore made FINAL. In summary, claims 1, 2 and 4-9 will be examined on the merits, and claims 10-14 are withdrawn from further consideration.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application 18/284,900 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the reference application anticipates claim 1 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claim 6 is 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.
Claim 6 recites “the inlet side of the insert”. There is no antecedent basis for the limitation. Claim 1 previously recites an inlet side of the overmould casing.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US 2018/0264834 A1).
With respect to claim 1, Chen discloses an insert for a micro-nozzle, the insert comprising (see Figs. 2A and 2B):
a microfabricated (see [0033] disclosing dimensions of die 202) fluidic chip 202 having a chip inlet, a chip outlet and a microfluidic channel connecting the chip inlet and the chip outlet (Fig. 2B illustrates a channel formed at the bottom of the chip 202, the channel going into and out of the page; naturally the channel comprises an inlet and an outlet);
an overmold casing 203 overmolded around the microfabricated fluidic chip 202 so as to substantially encase the microfabricated fluidic chip (see Fig. 2A), and comprising an inlet in fluid communication with the chip inlet and an outlet in fluid communication with the chip outlet (Figs. 2A and 2B illustrate a channel formed in the middle of the overmold casing 203 that corresponds in shape and direction of the microfluidic channel of the chip 202),
wherein the microfabricated fluidic chip 202 comprises one or more side walls (see annotation below), and the overmold casing 203 comprises at least one pressure transferring window arranged, in use, to transfer pressure at an inlet side of the overmold casing 203 to the one or more sidewalls of the fluidic chip 202 (in the annotation below, if pressure is applied to the inlet side of the casing 203, i.e. downward pressure is applied to the assembled insert, pressure would be transferred to the sidewall of the fluidic chip 202).
PNG
media_image1.png
262
610
media_image1.png
Greyscale
With respect to claim 2, the overmold casing 203 further comprises a retainer 204 for mounting the insert in a housing 207 of a micro-nozzle (see Fig. 2A) such that, in use, pressure at the inlet side of the overmold casing 203 is isolated from pressure at an outlet side (bottom) of the overmould casing 203 (because the inlet side is closed by the presence of the chip 202, pressure at the inlet side is isolated from pressure at the outlet side).
With respect to claim 5, the overmold casing 203 comprises one or more chip locating windows (see annotation below), through which the microfabricated fluidic chip can be located when the overmold casing 203 is overmolded around the microfabricated fluidic chip 202.
PNG
media_image2.png
177
348
media_image2.png
Greyscale
With respect to claim 6, the overmold casing 203 comprises one or more chip locating windows on an inlet side of the insert (see annotation below).
PNG
media_image2.png
177
348
media_image2.png
Greyscale
With respect to claim 7, the overmold casing 203 comprises one or more chip locating windows on an outlet side of the insert (see annotation below).
PNG
media_image2.png
177
348
media_image2.png
Greyscale
Claims 1, 2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kladders et al. (“Kladders”) (US 2004/0164186 A1).
With respect to claim 1, Kladders discloses an insert for a micro-nozzle, the insert comprising (see Figs. 1A, 2A and 2B):
a microfabricated (see [0055]) fluidic chip 55 having a chip inlet, a chip outlet and a microfluidic channel connecting the chip inlet and the chip outlet (see [0056]);
an overmold casing 78 overmolded around the microfabricated fluidic chip* 55 so as to substantially encase the microfabricated fluidic chip (see Fig. 2A), and comprising an inlet (left side of Fig. 2a) in fluid communication with the chip inlet and an outlet (right side) in fluid communication with the chip outlet,
wherein the microfabricated fluidic chip 55 comprises one or more side walls (see annotation below), and the overmold casing 78 comprises at least one pressure transferring window 81 arranged, in use, to transfer pressure at an inlet side (left side in Fig. 2A) of the overmold casing 78 to the one or more sidewalls of the fluidic chip 55 (in the annotation below, if pressure is applied to the inlet side of the casing 78 via window 81, pressure would enter the interior of the chip 55 and be transferred to the sidewall of the chip 55).
*This is a product-by-process limitation. For a device claim, the patentability of the invention is based on the device itself, not how it is made. In this case, the limitation “overmolded around the microfabricated fluidic chip” merely conveys a casing that surrounds/encases the chip.
PNG
media_image3.png
396
630
media_image3.png
Greyscale
With respect to claim 2, the overmold casing 78 further comprises a retainer 79 for mounting the insert in a housing 80 of a micro-nozzle such that, in use, pressure at the inlet side (left side in Fig. 2A) of the overmold casing 78 is isolated from pressure at an outlet side (opposite the inlet side) of the overmold casing 78 (see annotation below).
PNG
media_image4.png
382
584
media_image4.png
Greyscale
With respect to claim 4, the overmold casing 78 comprises a sub-housing at least partially encasing a porous filter adjacent to the chip inlet (right side in Fig. 2A) of the microfabricated fluidic chip (see [0060] disclosing that a base of the chip 55 defines filter routes, and [0064] disclosing the presence of a filter associated with the filter routes).
With respect to claim 5, the overmold casing 78 comprises one or more chip locating windows (opening in the overmold 78 on right side of Fig. 2A), through which the microfabricated fluidic chip can be located when the overmold casing 78 is overmolded around the microfabricated fluidic chip 55.
With respect to claim 6, the overmold casing 78 comprises one or more chip locating windows (opening in the overmold 78 on right side of Fig. 2A) on an inlet side (right side on Fig. 2A) of the insert.
With respect to claim 7, the overmold casing 78 comprises one or more chip locating windows (opening in the overmold 78 on right side of Fig. 2A) on an outlet side (right side on Fig. 2A) of the insert.
With respect to claim 8, the microfabricated fluidic chip comprises at least a first layer and a second layer (see [0056]), wherein at least one pressure transferring window 81 in the overmold casing 78 is arranged (see Fig. 2A), in use, to transfer hydraulic pressure against the microfabricated fluidic chip 55 so as to clamp the first layer and the second layer of the microfabricated fluidic chip together (based on the structure illustrated in Fig. 2A, application of hydraulic pressure via window 81 would apply axial pressure that would press the layers together).
With respect to claim 9, the first layer comprises glass and the second layer comprises silicon (see [0056]).
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached at 571-272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAUL S HYUN/Primary Examiner, Art Unit 1796