DETAILED ACTION
This is in response to communication received on 3/30/36.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 8/13/25 and 12/29/25.
Claim Rejections - 35 USC § 102
The claim rejection(s) under 35. U.S.C. 102(a)(1) as being anticipated by Revol-Cavalier WO2006067317 A2 hereinafter REVOL on claims 1-2, and 16 are maintained. The claim rejection(s) under 35. U.S.C. 102(a)(1) as being anticipated by Revol-Cavalier WO2006067317 A2 hereinafter REVOL on claim 3 is withdrawn because claim 3 has been cancelled and the subject matter has been amended into claim 1. The rejection is updated below to meet that added claim limitations.
As for claim 1, REVOL teaches "The present invention relates to a method for increasing the hydrophobicity of an external coating of a chemical and/or biological analysis device, such as a biochip, such a device and methods for its manufacture" (paragraph 4), i.e. A method for producing a carrier element for receiving a sample liquid.
REVOL Teaches "(i) said substrate is covered by said plate, (ii) a protective layer is deposited on said bottom of each cuvette which is intended to protect said substrate from an organic plasma selected from the group consisting of fluorocarbon plasmas and siloxane group plasmas" (paragraph 25) and "the hydrophilic material used to constitute said coating is based on at least one crosslinked photosensitive polymer'' (paragraph 15), i.e. coating a carrier substrate with a light-sensitive polymer layer in order to obtain a coated carrier substrate.
REVOL teaches "As a substrate usable in said analytical device, one can cite any mineral or organic substrate, biocompatible and typically hydrophilic, which can be of active or passive type (i.e. with or without integrated electronic system, respectively)" (paragraph 13, lines 5-7), i.e. wherein the carrier substrate has a hydrophilic surface quality.
REVOL teaches "said protective layer can be deposited in step (ii) by "spotting"" (paragraph 27, lines 1-2) and "the hydrophilic material used to constitute said coating is based on at least one crosslinked photosensitive polymer, which may be, for example: - a thermoplastic polymer, preferably a polyimide, such as a crosslinked polyimide of the designation "probimide", or a thermosetting polymer, such as a positive or negative photosensitive resin that is sensitive to ultraviolet radiation, advantageously an epoxy resin of the designation "Su8"" (paragraph 15-16), i.e. exposing and developing the coated carrier substrate in order to obtain a structured polymer layer.
REVOL further teaches "(i) said substrate is covered by said plate, (ii) said hydrophobic film is deposited both on said plate and on said bottom of each basin, by a surface treatment carried out using an organic plasma selected from the group consisting of fluorocarbon plasmas" (paragraph 28), i.e. fluorinating the structured polymer layer arranged on the carrier substrate in order to produce the carrier element for receiving the sample liquid, wherein the structured polymer layer obtains a hydrophobic surface quality as a result of the fluorinating step being performed.
REVOL teaches "said device comprises: an organic or mineral substrate, a biocompatible organic or mineral coating, such as a plate, which covers said substrate and has perforations, each perforation defining a cuvette, the side wall and bottom of which are respectively formed by said coating and said substrate" (paragraph 22, lines 1-4), i.e. further comprising structuring the carrier substrate to obtain at least one recess in the carrier substrate.
As for claim 2, REVOL teaches "Examples of materials that can be used to independently constitute said substrate and said coating include materials based ... silicon ... " (paragraph 14), i.e. wherein the carrier substrate is at least partially formed from a semiconductor material.
As for claim 16, "Examples of materials that can be used to independently constitute said substrate and said coating include materials based ... silicon ... " (paragraph 14), i.e. wherein the carrier substrate is at least partially formed from a semiconductor material.
Claim Rejections - 35 USC § 103
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Revol-Cavalier WO2006067317 A2 hereinafter REVOL in view of Colpo et al. US PGPub 200910294404 hereinafter COLPO on claims 4-8 and 17-19 are maintained. The rejection is repeated below for convenience.
As for claim 4, REVOL is silent on the structuring step includes generating a passivation layer on at least one side wall of the at least one recess, and the fluorinating step includes at least partially removing the passivation layer.
Examiner does note that REVOL teaches "As a usable material for constituting said coating partially covering said substrate, one can also mention any mineral or organic material, biocompatible and typically hydrophilic" (paragraph 13, lines 8-9), such that the sidewalls are typically hydrophilic.
COLPO teaches "A process for controlling the wettability of a silicon-containing substrate including forming a polymer coating over at least one surface region of the silicon substrate, the wettability of which is to be controlled; inducing a controlled roughness on the at least one surface region by over-etching the polymer coating using a fluorinated plasma; subjecting the at least one surface region to a surface energy modifying treatment" (abstract), wherein the polymer is a passivation layer such that structuring step includes generating a passivation layer on a desired part of the substrate, and the fluorinating step includes at least partially removing the passivation layer
COLPO teaches "It shall be further noted that the present process is also compatible with masking and photolithography, which allows production of micro- and nanostructured surfaces on silicon substrates, in particular on silicon wafers and devices for, e.g., application in biotechnology. In such case, the polymer coating is preferably a photoresist resin, which permits surfaces and pattern preparation by photolithography. This thus implies providing the required photoresist coating over the surface regions, the wettability of which is to be controlled." (paragraph 28).
It would have been obvious to include the process of COLPO to ensure the hydrophilicity of the sidewalls in the process of REVOL such that it includes structuring step includes generating a passivation layer on at least one side wall of the at least one recess, and the fluorinating step includes at least partially removing the passivation layer because COLPO teaches that its process can produce the desired wettability for a surface.
As for claim 5, REVOL is silent on wherein the coating step includes using as the carrier substrate: a substrate having an oxide layer.
REVOL does teach "As a substrate usable in said analytical device, one can cite any mineral or organic substrate, biocompatible and typically hydrophilic, which can be of active or passive type (i.e. with or without integrated electronic system, respectively)" (paragraph 13, lines 5-7).
COLPO teaches "To provide a water wetting character to the etched surface regions, a hydrophilic coating can be deposited thereon. Hydrophilic coatings can comprise polyethyleneglycol, acrylic acid or silicon oxide and can be formed by conventional Plasma Enhanced Physical Vapor Deposition technique" (paragraph 22), i.e. a substate having an oxide layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the coating step includes using as the carrier substrate: a substrate having an oxide layer in the process of REVOL because COLPO teaches that such layer provides hydrophilicity.
As for claim 6, REVOL is silent on applying a further light-sensitive polymer layer, and further exposing and developing the further light-sensitive polymer layer thereby obtaining a further structured polymer layer.
COLPO teaches "It shall be further noted that the present process is also compatible with masking and photolithography, which allows production of micro- and nanostructured surfaces on silicon substrates, in particular on silicon wafers and devices for, e.g., application in biotechnology. In such case, the polymer coating is preferably a photoresist resin, which permits surfaces and pattern preparation by photolithography. This thus implies providing the required photoresist coating over the surface regions, the wettability of which is to be controlled." (paragraph 28), i.e. applying a further light-sensitive polymer layer, and further exposing and developing the further light-sensitive polymer layer thereby obtaining a further structured polymer layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include applying a further light-sensitive polymer layer, and further exposing and developing the further light-sensitive polymer layer thereby obtaining a further structured polymer layer in the process of REVOL because COLPO teaches that such a process, photolithography, allows for the production of micro-and nanostructure surfaces on silicon substrates.
As for claim 7, REVOL is silent on further structuring after the further exposing and developing thereby obtaining at least one further structure.
COLPO teaches "It shall be further noted that the present process is also compatible with masking and photolithography, which allows production of micro- and nanostructured surfaces on silicon substrates, in particular on silicon wafers and devices for, e.g., application in biotechnology. In such case, the polymer coating is preferably a photoresist resin, which permits surfaces and pattern preparation by photolithography. This thus implies providing the required photoresist coating over the surface regions, the wettability of which is to be controlled." (paragraph 28), i.e. further structuring after the further exposing and developing thereby obtaining at least one further structure.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include further structuring after the further exposing and developing thereby obtaining at least one further structure in the process of REVOL because COLPO teaches that such a process, photolithography, allows for the production of micro-and nanostructure surfaces on silicon substrates.
As for claim 8, REVOL is silent on depositing a layer after the fluoroinating step thereby altering ... a surface of the carrier substrate.
COLPO teaches "To provide a water wetting character to the etched surface regions, a hydrophilic coating can be deposited thereon. Hydrophilic coatings can comprise polyethyleneglycol, acrylic acid or silicon oxide and can be formed by conventional Plasma Enhanced Physical Vapor Deposition technique" (paragraph 22).
COLPO teaches "It shall be further noted that the present process is also compatible with masking and photolithography, which allows production of micro- and nanostructured surfaces on silicon substrates, in particular on silicon wafers and devices for, e.g., application in biotechnology. In such case, the polymer coating is preferably a photoresist resin, which permits surfaces and pattern preparation by photolithography. This thus implies providing the required photoresist coating over the surface regions, the wettability of which is to be controlled." (paragraph 28).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include depositing a layer after the fluoroinating step thereby altering ... a surface of the carrier substrate in the process of REVOL because COL PO teaches that such a process allows for tuning the wettability of a surface for biotechnology applications.
As for claim 17, REVOL is silent on wherein the at least one further structuring includes structuring of an oxide layer present on the carrier substrate.
REVOL teaches "Examples of materials that can be used to independently constitute said substrate and said coating include materials based ... silicon ... " (paragraph 14),
COLPO teaches "The present invention generally relates to a process for controlling the surface wettability of silicon containing substrates, such as mono- or polycrystalline silicon, quartz, glass or other materials having a high silicon content" (paragraph 1 ), wherein quartz is formed of silicon oxide, and "It shall be further noted that the present process is also compatible with masking and photolithography, which allows production of micro- and nanostructured surfaces on silicon substrates, in particular on silicon wafers and devices for, e.g., application in biotechnology" (paragraph 28, lines 1-5), i.e. wherein the at least one further structuring includes structuring of an oxide layer present on the carrier substrate.
It would have been obvious to wherein the at least one further structuring includes structuring of an oxide layer present on the carrier substrate in the process of REVOL because COLPO teaches that a carrier substrate made of silicon oxide, quartz, is well known in the process of biotechnology as a silicon-containing substrate.
As for claim 18, REVOL is silent on the depositing the layer after the fluorinating step comprises depositing the layer on a sidewall of a recess; and the layer on the sidewall of the recess is hydrophilic.
Examiner does note that REVOL teaches "As a usable material for constituting said coating partially covering said substrate, one can also mention any mineral or organic material, biocompatible and typically hydrophilic" (paragraph 13, lines 8-9), such that the sidewalls are typically hydrophilic.
COLPO teaches "A process for controlling the wettability of a silicon-containing substrate including forming a polymer coating over at least one surface region of the silicon substrate, the wettability of which is to be controlled; inducing a controlled roughness on the at least one surface region by over-etching the polymer coating using a fluorinated plasma; subjecting the at least one surface region to a surface energy modifying treatment" (abstract).
COLPO teaches "It shall be further noted that the present process is also compatible with masking and photolithography, which allows production of micro- and nanostructured surfaces on silicon substrates, in particular on silicon wafers and devices for, e.g., application in biotechnology. In such case, the polymer coating is preferably a photoresist resin, which permits surfaces and pattern preparation by photolithography. This thus implies providing the required photoresist coating over the surface regions, the wettability of which is to be controlled." (paragraph 28).
COLPO further teaches "To provide a water wetting character to the etched surface regions, a hydrophilic coating can be deposited thereon. Hydrophilic coatings can comprise polyethyleneglycol, acrylic acid or silicon oxide and can be formed by conventional Plasma Enhanced Physical Vapor Deposition technique" (paragraph 22).
It would have been obvious to include the process of COLPO to ensure the hydrophilicity of the sidewalls in the process of REVOL such that it includes depositing the layer after the fluorinating step comprises depositing the layer on a sidewall of a recess; and the layer on the sidewall of the recess is hydrophilic because COLPO teaches that its process can produce the desired wettability for a surface.
As for claim 19, REVOL is silent on the depositing a layer on a sidewall of the recess after the fluorinating step wherein the layer on the sidewall of the recess is hydrophilic.
Examiner does note that REVOL teaches "As a usable material for constituting said coating partially covering said substrate, one can also mention any mineral or organic material, biocompatible and typically hydrophilic" (paragraph 13, lines 8-9), such that the sidewalls are typically hydrophilic.
COLPO teaches "A process for controlling the wettability of a silicon-containing substrate including forming a polymer coating over at least one surface region of the silicon substrate, the wettability of which is to be controlled; inducing a controlled roughness on the at least one surface region by over-etching the polymer coating using a fluorinated plasma; subjecting the at least one surface region to a surface energy modifying treatment" (abstract).
COLPO teaches "It shall be further noted that the present process is also compatible with masking and photolithography, which allows production of micro- and nanostructured surfaces on silicon substrates, in particular on silicon wafers and devices for, e.g., application in biotechnology. In such case, the polymer coating is preferably a photoresist resin, which permits surfaces and pattern preparation by photolithography. This thus implies providing the required photoresist coating over the surface regions, the wettability of which is to be controlled." (paragraph 28).
COLPO further teaches "To provide a water wetting character to the etched surface regions, a hydrophilic coating can be deposited thereon. Hydrophilic coatings can comprise polyethyleneglycol, acrylic acid or silicon oxide and can be formed by conventional Plasma Enhanced Physical Vapor Deposition technique" (paragraph 22).
It would have been obvious to include the process of COLPO to ensure the hydrophilicity of the sidewalls in the process of REVOL such that it includes depositing a layer on a sidewall of the recess after the fluorinating step wherein the layer on the sidewall of the recess is hydrophilic because COLPO teaches that its process can produce the desired wettability for a surface.
Response to Arguments
Applicant's arguments filed 3/30/26 have been fully considered but they are not persuasive.
(a) Applicant argues that REVOL doesn't disclose exposing a coated carrier, and quotes certain sections of the art asserting that this supports their argument. Applicant also notes that anticipation must disclose all elements of the claim.
Examiner respectfully points out that in the quotations of REVOL that Applicant themselves quotes includes "said coating is based on at least one crosslinked photosensitive polymer" (paragraph 150) and "SU8 is sensitive to ultraviolet radiation". The coating is formed on the surface of the substrate, meaning that in order to form a crosslinked polymer, it needed to be exposed to the radiation it was photosensitive to in order to form. Simply because REVOL uses past tense to describe the process of developing the coating doesn't mean it doesn't teach those steps. Even if Examiner were to accept the assertion that REVOL is silent on exposing and developing a coated carrier substrate, such steps would necessarily have to happen in order for the photosensitive polymer to be crosslinked to form a coating. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
(b) Applicant alleges that REVOL does not structure the substrate to obtain a recess.
Examiner notes that Applicant's entire argument hinges on the idea that REVOL's substrate ALONE is analogous to the carrier substrate. However, if one looks at REVOL, its carrier substrate is made of two parts--the plate which is structed to form holes and the substrate onto which the plate is placed. Examiner has provided the Fig. 1-3, which shows that item 3 is the plate which has been structured, is placed on substrate 2 in order to form the structure analogous to the carrier substrate of the claims. The plate of REVOL is structured and when paired with the substrate forms carrier substrate with recesses.
Applicant's arguments are not persuasive as they do not consider the art as a whole and the broadness of the claims.
(c) Applicant alleges that COLPO only teaches applying its coating to horizontal surfaces.
Examiner respectfully points Applicant to Figs. 1 a-c, wherein COLPO specifically shows coating multiple vertical surfaces as well as horizontal surfaces. COLPO even specifically states applying its process to micro- and nanostructured surfaces.
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 KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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