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 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 1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is not clear with respect to what applicant is claiming. The claim does not clearly set forth the metes and bounds of the patent protection desired. Claim 1 is unclear reciting “a trap body into which a microfluid is introduced and which separates bubbles, [...] a microfluid inlet connected from a side direction of the trap body and supplying the microfluid; [...] wherein the microfluid is a liquid flowing through a microchannel at a microscale flow rate.” It is unclear if the liquid microfluid and microchannel are part of the claimed invention since these elements have not been positively claimed. Claim 1 is further unclear reciting “wherein the trap body has a circular or stepped internal geometry configured to separate bubbles from the microfluid by gravitational or centrifugal action” because it is unclear what structural configuration is being claimed. Moreover, the recitation “a microfluid outlet installed passing through an upper portion of the trap body and having a channel, an end of which is disposed at a lower portion of the microfluid inlet” is unclear as to which element’s end is disposed at a lower portion of the microfluid inlet. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by McDevitt et al. (US 2006/0257992).
Regarding claim 1, McDevitt et al. teach:
1. A microfluidic bubble trap (i.e., Trap 1000 may be a bubble trap ¶ 0342) comprising:
a trap body (i.e., body of a bubble trap 1000, ¶ 0342 & Fig. 33A; see also e.g., 100) into which a microfluid (e.g., 0.3 mL/min ¶ 0165; ~50 µL ¶ 0298) is capable of being introduced and the trap body is capable of separating bubbles (see i.e., Trap 1000 may be a bubble trap. Trap 1000 may be designed to release air from a fluid passing through it. Trap 1000 may substantially remove air from a sample flowing through a trap ¶ 0342),
wherein the trap body has a circular or stepped internal geometry (see Figs. 1A, 33A for example) capable of separating bubbles from the microfluid (see i.e., Trap 1000 may be a bubble trap. Trap 1000 may be designed to release air from a fluid passing through it. Trap 1000 may substantially remove air from a sample flowing through a trap ¶ 0342);
a microfluid inlet (e.g., fluid inlet 160) connected from a side direction of the trap body (see Fig. 1A for example) and the microfluid inlet is capable of supplying the microfluid (see ¶ 0124 for example) ; and
a microfluid outlet (e.g., 162) installed passing through an upper portion (e.g., 140) of the trap body and having a channel (e.g., 172, 174), an end of the channel (i.e., end of 174) is disposed at a lower portion of the microfluid inlet (see i.e., a channel 172 may be formed in bottom member 150 such that tubing 174 may be inserted into channel 172 ¶ 0125 & Fig. 1A for example),
wherein the microfluid is a liquid (see ¶ 0155 for example) capable of flowing through a microchannel at a microscale flow rate (e.g., 0.3 mL/min ¶ 0165).
With regard to limitations in claim 1 (e.g., [...] into which a microfluid is introduced and which separates bubbles, [...] to separate bubbles from the microfluid by gravitational or centrifugal action; [...] wherein the microfluid is a liquid flowing through a microchannel at a microscale flow rate.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claims 2-3, McDevitt et al. teach:
2. The microfluidic trap of claim 1, wherein an internal cross section of the trap body is formed in a circular shape (see Fig. 1A for example).
3. The microfluidic trap of claim 1, wherein an end of a channel of the microfluid inlet is extended to a position that crosses a center of the trap body and disposed therein (see Fig. 1A for example).
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
The amendments have been considered and 35 USC § 112 rejections have been revised.
The Applicant’s arguments have been considered and have been addressed within the above art rejection(s).
Regarding the process or intended use limitations, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The Courts have held that limitations regarding the contents, intended use or manner of operating an apparatus do not further limit the patentability of apparatus claims. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488,492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the limitations [...] into which a microfluid is introduced and which separates bubbles, [...] to separate bubbles from the microfluid by gravitational or centrifugal action; [...] wherein the microfluid is a liquid flowing through a microchannel at a microscale flow rate, do not further limit the patentability of the instant claims and it is viewed that the apparatus of McDevitt et al. is capable of the intended use of the apparatus.
Applicant is encouraged to amend the claims to include additional structural elements of the trap.
Applicant is thanked for their thoughtful amendments to the claims.
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.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798