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 . 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 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.
Response to Amendment / Arguments
The response and amendments, filed 7/1/2026, has been entered. Claims 34, 37-52, 56-62 are pending upon entry of this Amendment. Applicant’s arguments have been fully considered:
On pages 8-10 of Remarks, Applicant is arguing that :
1) oscillation-based teaching of Al-Azawi is "inapplicable" to continuous linear dragging:
Response:
This argument mischaracterizes the basis for combination. A reference is not limited to its specific disclosed embodiment — it must be considered for everything it fairly teaches, including the underlying physical principle, not just the particular experimental apparatus used to demonstrate it (In re Keller, 642 F.2d 413; MPEP § 2123). Al-Azawi is not cited for its oscillatory apparatus per se, but for the general technique it teaches: tracking droplet position over time under a known applied force and fitting that position data to a force-balance equation to extract quantitative friction/pinning (retentive) force and viscous dissipation parameters. That technique — measuring position/motion data and solving for retentive force terms — is not inherently tied to sinusoidal motion. The CAH force term (Fμ) in Al-Azawi's model represents a velocity-independent retentive/pinning force at the contact line, conceptually equivalent to a Coulomb friction term, which is a general property of the surface-droplet interface regardless of whether the droplet's trajectory is oscillatory or linear. One of ordinary skill would recognize the applicability of this general force-extraction methodology to HERNANDEZ's continuously dragged droplet, since HERNANDEZ already supplies the continuous linear-drag motion — the combination doesn't require bodily incorporating Al-Azawi's oscillation setup, only its measurement/analysis technique (see In re Sneed, 710 F.2d 1544).
2) Al-Awazi’s reliance on angular frequency of oscillation:
Response:
The angular frequency term in Al-Azawi's model arises specifically from the harmonic restoring force imposed by the parabolic magnetic potential well (the term ω₀² = ... derived from the Hookean magnetic restoring force), not from the retentive/friction force terms themselves. The equation of motion Al-Azawi fits is a standard damped-oscillator differential equation with three separable physical contributions: (1) inertial/mass term, (2) viscous damping term (β, proportional to velocity), and (3) CAH/retentive force term (Fμ, velocity-independent). The angular-frequency-dependent restoring term is an artifact of that particular experimental means of driving the droplet (a magnetic potential well), not a necessary feature of the retentive-force measurement itself. Applying the same general force-balance decomposition to a droplet moving under a different driving profile (continuous linear drag, as in HERNANDEZ) would simply substitute a different driving-force term in place of the Hookean restoring term — an application of a known analytical technique (extracting velocity-independent friction/pinning forces from motion data) to a predictable variation in driving-force type, which is precisely the kind of substitution KSR contemplates as within the level of ordinary skill (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
3) no teaching of measuring retentive force during movement along a linear path by Al-Awazi:
Response:
This limitation is met by the combination, not by Al-Azawi standing alone . HERNANDEZ already teaches continuous linear dragging of the droplet along the surface (¶¶0024–0026, 0185–0190) and even provides its own qualitative force-balance analysis of the retentive/capillary force opposing motion (¶0258, deriving Fᵣ = 2γrJ from measured contact angles during linear drag). What HERNANDEZ arguably lacks is a systematic methodology for measuring the retentive force from motion data at multiple discrete points and using it quantitatively to characterize the surface. Al-Azawi supplies exactly that missing technique: quantitatively extracting a retentive/CAH force from droplet motion tracking and correlating it with surface properties (Table 1, Fig. 3). The rejection therefore doesn't require Al-Azawi to independently disclose a "linear path" — it requires only that Al-Azawi teach the missing measurement/data-collection technique, which HERNANDEZ's linear-drag structure is then modified to incorporate. Applicant's argument attacks Al-Azawi in isolation, which is not the correct standard for an obviousness combination (MPEP § 2141.02(VI); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) — "non-obviousness cannot be established by attacking references individually where the rejection is based on a combination").
There is an explicit motivation to combine — e.g., that a skilled artisan seeking to quantify the qualitative retentive-force observations already present in HERNANDEZ (¶0258's force equations) would look to analogous droplet-friction characterization literature like Al-Azawi for a proven quantitative measurement methodology, and would have a reasonable expectation of success applying that measurement technique to HERNANDEZ's linearly-dragged droplet, since both references address the same underlying physics (contact-angle-hysteresis-driven retentive force at a moving contact line on a hydrophobic/superhydrophobic surface).
Regarding Applicant’s argument on amended limitation of “linear path” o page 8 of Remarks ,
Examiner holds that HERNANDEZ reads on a "linear path" limitation quite directly, and arguably even more cleanly than on the more general "movement along a surface" limitation. A few specific anchors support this:
¶[00256] literally uses the phrase "linear path" in describing the EPAPS video documentation: "Video 1: controlled movement of a 6 μl drop on a linear path." This is contrasted directly against "Video 2: controlled movement of a 35 μl drop on a circular path (top view)," which confirms HERNANDEZ treats "linear path" as a distinct, deliberately-practiced mode of droplet movement — not an incidental byproduct of some other described motion.
¶[00192] similarly describes measuring droplet movement "along a 2 cm path" in the context of straight-line displacement.
¶[00185] states drop movement was observed "in linear and circular patterns," again using "linear" as an explicit descriptor of the movement type.
Independent claim language:
Claim 87 of HERNANDEZ (and the corresponding method summary at ¶[0008]) is explicitly titled/framed as "A method of inducing linear movement of a fluid droplet on a surface," comprising positioning the droplet, coupling a magnetic field, and varying the magnetic field intensity across the surface. This is about as direct a textual match to "linear path" as you're likely to get from a prior art reference.
Figures reinforcing linear drag:
Figure 6 (¶[0025]) shows a droplet "displaced from position (a) to (c)" by the magnet moving in a straight trajectory.
Figure 26 (¶[0045]) shows a droplet "moving from left to right... by the action of a permanent magnet below the surface" — a straight-line horizontal drag.
Figure 36 (¶[00290]) again shows linear left-to-right movement referenced against a grid for distance measurement.
HERNANDEZ discloses this limitation on its own —since it's HERNANDEZ (not Al-Azawi) that supplies the continuous, linear dragging motion in the primary combination.
Regarding Applicant’s argument on pages 11-12 of Remarks on claim 61 and OKAMATO not being analogous art:
Response:
A reference qualifies as analogous art if it satisfies either prong of the two-part test (In re Bigio, 381 F.3d 1320; In re Clay, 966 F.2d 656; MPEP § 2141.01(a)):
Same field of endeavor as the claimed invention (regardless of the problem addressed), or
Reasonably pertinent to the particular problem with which the inventor was involved, even if not in the same field.
In this case, first: Both HERNANDEZ and OKAMATO address how the ionic strength (dissolved salt content) and protic/aprotic character of a liquid affect that liquid's physicochemical interaction with a solid surface — specifically, control of wetting/retention behavior (HERNANDEZ) and control of liquid-surface exchange/solidification behavior during coagulation OKAMATO. OKAMATO in ¶0023–0024 teaches that dissolved salt concentration is a result-effective variable controlling the liquid's interfacial behavior at a solid surface, a physicochemical principle not limited to film coagulation.
Second: claim 61 depends on claim 43 which has an alternative language: “said dispersion medium being selected from the group consisting of non-polar liquids, protic liquids, and aprotic liquids.”[emphasis added]. But claim 61 recites:” wherein the protic and aprotic liquids comprise dissolved salts”. That's internally inconsistent: the first clause presents protic/aprotic as alternatives (only one need be selected), but the second clause refers to "the protic liquid and the aprotic liquid" as if both are definitely present and both require antecedent basis from the first clause. If only "protic liquid" was selected in the first clause, then "the aprotic liquid" in the second clause has no antecedent basis —this affects how prior art needs to map onto the claim — if "and" really means both are required, that's a much heavier burden on the combination than if it's read (as probably intended) as "wherein the selected liquid comprises dissolved salt." therefore, whichever liquid is selected (protic or aprotic) must contain dissolved salt — since that's almost certainly what was meant, finally, HERNANDEZ itself already discloses about its droplet compositions:
¶0007: the aqueous fluid explicitly includes "sea water" — which is inherently a dissolved-salt-containing aqueous (protic) liquid.
¶0049, 0275, 0277: HERNANDEZ's own working examples use "0.1 M phosphate buffer (pH 7.0)" and "pH 7.0 phosphate buffer solution (PBS)... prepared using sodium phosphate (dibasic and monobasic)" — this is literally a dissolved-salt aqueous solution used as the droplet liquid in HERNANDEZ's own electrochemistry examples.
¶0174: HERNANDEZ discloses EDTA as a chemically active agent additive to the droplet — EDTA is typically used and dissolved as a sodium/disodium salt.
This means HERNANDEZ on its own face already teaches a protic (aqueous) liquid droplet containing dissolved salt (phosphate buffer, sea water) — claim may not need OKAMATO as a combination reference for that sub-limitation at all, or at most claim only need it for the "aprotic" alternative, which considerably narrows (and strengthens) the rejection reliance on HERNANDEZ.
Therefore, the arguments are not persuasive.
Claim Objections
Claim 61 is objected.
Claim 61 depends on claim 43 which has an alternative language: “said dispersion medium being selected from the group consisting of non-polar liquids, protic liquids, and aprotic liquids.”[emphasis added]. But claim 61 recites:” wherein the protic and aprotic liquids comprise dissolved salts”. That's internally inconsistent: the first clause presents protic/aprotic as alternatives (only one need be selected), but the second clause refers to "the protic liquid and the aprotic liquid" as if both are definitely present and both require antecedent basis from the first clause.
Appropriate action is required.
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.
Claims 34, 37-41, 43-48, 50-51, 53-60, 62 are rejected under 35 U.S.C. 103 as being unpatentable over HERNANDEZ, WO2007101174A2 in view of Al‐Azawi1, "Friction and wetting transitions of magnetic droplets on micropillared superhydrophobic surfaces." Small 13.38 (2017): 1700860.
Claim 34
HERNANDEZ in e.g., figs.5-6,26,31 teaches:
A method of characterizing surface properties (e.g., hydrophobicity via contact angle behavior) of a surface (e.g., ¶0007: hydrophobic surface), comprising:
- applying a droplet (fig.5 water drop containing aligned paramagnetic particle chains ¶0024,0181) of a magnetic liquid (¶0024) onto a discrete area of the surface (¶0024: superhydrophobic surface, surface has different region with different hydrophobicity e.g., claim 108), said droplet contacting at least a part of the surface in said discrete area (fig.5,26);
- subjecting the droplet to a magnetic field having a maximum (e.g., fig.5¶0024,0067,0183, and magnet has a maximum);
- continuously moving the lateral position of the magnetic field maximum relative to the surface to drag the droplet magnetically along a linear path of the surface (e.g., ¶00256,00192,00185¶0024-0026: magnet is moved to the right and the drop slides along the superhydrophobic surface due to the paramagnetic particle chain's action pushing against the surface tension of the drop also¶0045,0185,0186,0187,0190: Drop movement following the magnet movement);
- a retentive force (e.g., surface tension force which resists droplet motion due the magnets displacement by measuring angles see e.g., ¶0258,0094) exerted on the droplet during its movement along the surface at a plurality of discrete areas of the surface, wherein the retentive force (e.g., surface tension force) is the force exerted on the droplet during its movement along the surface; and
- determining said surface properties (e.g., effective hydrophobicity via measuring contact angles as cited above, measured angles in e.g., ¶00258¶00294, retention strength of the surface).
HERNANDEZ does not teach:
measuring a retentive force in order to collect data on the retentive force, determining said surface properties from the collected data of the retentive force
wherein the lateral position of the magnetic field maximum is moved for at least 5 seconds.
Regarding limitation 1:
First of all, it is well known to determine retentive force, from net force models and knowing different type of restoring and dissipative forces and movement of particles, for example, In the similar field of endeavor, Al‐Azawi discloses:
A method of characterizing surface properties (wetting properties/ characterizing superhydrophobic surfaces and extracted important parameters like contact angle hysteresis force and viscous damping coefficient page 5 col.2 section 3) of a surface (page 6/section 4/col.1: superhydrophobic surfaces), comprising :
applying a droplet (page 6/section 4/col.2: A 5 μL magnetic droplet) of a magnetic liquid (section 4/page6/col.1: ferrofluid: Superparamagnetic iron oxide nanoparticles were synthesized in water) onto a discrete area (e.g., page 2 col.1 : magnetic droplet is dispensed on a micropillared superhydrophobic surface, which is located above a permanent magnet creating a magnetic potential well for the droplet/Abstract micropillared surfaces) of the surface (a micropillared superhydrophobic surface), said droplet contacting at least a part of the surface in said discrete area (page 6/section 4/col.2: dispensed on the superhydrophobic surface using a fixed needle);
measuring a retentive force ( in section 2.2 it measures angles and produce oscillation movement using force from magnet and fit position of droplet with solution of movement and measure the retaining forces: page 2 col.1 forces including force from magnet/ friction and viscous damping forces/oscillations are captured with a high-speed camera and analyzed to measure viscous dissipation as well as friction of the moving droplet) exerted on the droplet during its movement (e.g., page 2 col.1 : conducting transverse droplet oscillations on superhydrophobic surfaces under controlled lateral and normal forces/fig.2b : x per time) along the predetermined length of the surface in order to collect data on the retentive force at a plurality of discrete areas of the surface (page 2/col.2 last para: Fig 1a/1b In order to determine the exact contribution from these forces, the harmonic oscillations are analyzed by tracking the droplet position with time and fitting the data with the solution of the general harmonic oscillator); and determining said surface properties from the collected data of the retentive force (at least page 3 col.1 both ACA/RCA are related to/determined by force and fig.3 and results given in table 1/ also CA are related to the surface energy that are determined from retentive forces).
Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Al-Azawi‘s method of measuring a retentive force for HERNANDEZ‘s retentive force in order to collect data on the modified retentive force, determining said surface properties from the modified HERNANDEZ‘s collected data of the retentive force. One of ordinary skill in the art knows characterization of wetting properties is essential for the development and optimization of superhydrophobic surfaces would have been motivated to make this modification in order to study the dynamics of super hydrophobicity to obtain energy dissipation parameters such as contact angle hysteresis force and viscous damping coefficients, which indicate pinning and viscous losses and using findings to optimize micro pillared surfaces for low-friction droplet transport(Al-Azawi e.g., Abstract).
Regarding limitation 2:
HERNANDEZ teaches most aspects of the instant invention. HERNANDEZ changes the droplet movement by changing magnetic field that can be obtained by moving magnets (e.g., ¶0024-0026). However, HERNANDEZ does not explicitly teach wherein the lateral position of the magnetic field maximum is moved for at least 5 seconds. Nonetheless, the skilled artisan would know too that controlled displacing magnets would move droplet relying on controlled wetting behavior and this study is based on moving magnet to overcome retentive forces. The specific claimed the lateral position of the magnetic field maximum is moved for at least 5 seconds, absent any criticality, is only considered to be the “optimum” time window disclosed by HERNANDEZ that a person having ordinary skill in the art would have been able to determine using routine experimentation (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) based, among other things, on the desired information about wetting or hydrophobicity of surface, manufacturing costs, etc. (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and neither non-obvious nor unexpected results, i.e. results which are different in kind and not in degree from the results of the prior art, will be obtained as long as the 5 seconds is used, as already suggested by HERNANDEZ. Since the applicant has not established the criticality (see next paragraph) of the (velocity of 7 cm/s for droplet can be correlated to the time window of magnet movements e.g., ¶0076,0266) stated and since these time windows are in common use in similar devices in the art, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to use these values of 5 seconds in the device of HERNANDEZ. Please note that the specification contains no disclosure of either the critical nature of the claimed 5 seconds or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 37
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the retentive force is determined from the distance between the center of the droplet and the magnetic field maximum (e.g., page 2, col.2/ movement x or oscillation of droplet is based on the forces on droplet and for magnetic force when magnet is stopped it is measured based on distance between magnetic field or its maximum axis and droplet), for the same reason and motivation as cited above for claim 34.
Claim 38
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the retentive force is determined optically via a video camera and image analysis (e.g., page 2 a high-speed camera and analyzed to measure viscous dissipation as well as friction of the moving droplet/page 6: Harmonic magnetic droplet oscillations were investigated using micromanipulator and high speed camera (Phantom Miro 310)), for the same reason and motivation as cited above for claim 34.
Claim 39
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the collected data on the retentive force comprises data obtained by continuous measurement of the distance between the droplet and the magnetic field maximum (movement x or oscillation of droplet is based on the forces on droplet and for magnetic force when magnet is stopped it is measured based on distance between magnetic field or its maximum axis and droplet ) for the same reason and motivation as cited above for claim 34.
Claim 40
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the magnetic liquid comprises a ferrofluid comprising superparamagnetic nanoparticles (page 6 section 4: Superparamagnetic iron oxide nanoparticles.), It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Al-Azawi‘s ferrofluid comprising superparamagnetic nanoparticles for the modified HERNANDEZ s droplet. One of ordinary skill in the art would have been motivated to make this modification in order to because it allows for the precise, non-contact, and reversible control of droplet shape, position, and wetting state using external magnetic fields.
Claim 41
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 40, Al‐Azawi teaches wherein the magnetic liquid comprises a ferrofluid comprising superparamagnetic nanoparticles, and wherein the superparamagnetic nanoparticles comprise a ferromagnetic or ferrimagnetic material (page 6 section 4 col.1 superparamagnetic iron oxide nanoparticles) for the same reason and motivation as cited above for claim 40.
Claim 43
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, HERNANDEZ and Al‐Azawi further teaches wherein the magnetic liquid comprises a suspension of a dispersion medium and dispersed particles, said dispersion medium being selected from the group consisting of the protic liquids (see water is a protic liquid¶0007, also ¶0049,0275,0277,0174).
Claim 44
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the magnetic liquid comprises a stable suspension of magnetite nanoparticles in a carrier liquid at a concentration of (4 vol% : page 2 col.2) but does not specifically teach up to 25 vol-%. However, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to stable suspension of magnetite nanoparticles in a carrier liquid at a concentration of up to 25 vol%, since such a modification would have involved a mere change in the dimension which is generally recognized as being within the level of ordinary skill in the art.
Claim 45
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the magnetic liquid comprises a ferrofluid containing a stabilizer for reducing or preventing aggregation of the nanoparticles and promoting their dispersion in the magnetic liquid. (page 6 col.1).
Claim 46
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the magnetic liquid comprises a ferrofluid comprising particles having an average particle size in the range of nano (section 4, col.1 e.g., nanoparticles iron oxide nanoparticles) but does not specifically teach from ca. 5 nm with a geometric standard deviation of 2 nm to ca. 15 nm with a geometric standard deviation of 5 nm, It would have been an obvious matter of choice to choose from ca. 5 nm with a geometric standard deviation of 2 nm to ca. 15 nm with a geometric standard deviation of 5 nm, since such a modification would have involved a mere change in the size of the component. A change of size is generally recognized as being within the level of ordinary skill in the art.
Claim 47
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi further teaches wherein the magnetic liquid comprises an aqueous ferrofluid having an average surface tension of (FN = 113 ± 11 μN) (at least fig.4) not 65±0.1 mN/m to 75±0.1 mN/m. However, it would have been an obvious matter of choice average surface tension of 65±0.1 mN/m to 75±0.1 mN/m, since such a modification would have involved a mere change in the size of the component. A change of amount is generally recognized as being within the level of ordinary skill in the art.
Claim 48
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the magnetic liquid is subjected to a magnetic field but it does not specifically teach of 500 to 2400 Oe, at room temperature. However, it would have been an obvious matter of choice to magnetic field of 500 to 2400 Oe, since such a modification would have involved a mere change in the size of the component, specifically claiming 500 to 2400 Oe, absent any criticality, is only considered to be the “optimum” oe disclosed by Al‐Azawi or HERNANDEZ that a person having ordinary skill in the art would have been able to determine using routine experimentation (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) based, among other things, on the desired movement, manufacturing costs, etc. (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and neither non-obvious nor unexpected results, i.e. results which are different in kind and not in degree from the results of the prior art, will be obtained as long as the 500 to 2400 Oe is used, as already suggested by theses prior arts.
Claim 50
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches comprising measuring as a maximum retentive force a dissipative force related to a contact angle hysteresis FCAH at a three-phase contact line L of the droplet when the droplet is pinned to the surface (fig.3 is Contact angle hysteresis (CAH) force Fμ and viscous dissipation coefficient β as a function of the three-phase contact line length L) for the same reason and motivation as cited for claim 34.
Claim 51
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 50, Al‐Azawi teaches wherein the contact angle hysteresis is determined as the difference between the advancing contact angle (θAdv) and the receding contact angle (θRec), when subjecting the drop with a volume of V to the relative movement of the magnetic field H inducing magnetic force Mx according to formula I 0=M x −F CAH=μ0 VM∇H−kLγ(cos(θRec)−cos(θAdv)) wherein μ0 is the vacuum permeability M is the average droplet magnetization, k is a constant related to droplet shape and γ is the surface tension (page 3 col.1 col.2 given Fµ and terms gE as FCAH and Mx that is the claimed limitation) Ø for the same reason and motivation as cited for claim 34.
Claim 56
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, HERNANDEZ teaches further the droplet is dragged along a linear path on the surface (linear movement in e.g., fig.5).
Claim 57
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, HERNANDEZ teaches wherein the magnetic field maximum is moved laterally along the surface at constant velocity (e.g., ¶0076,0266) but does not specifically teach in the range of 0.1 to 10 mm/s. However, it would have been an obvious matter of choice constant velocity in the range of 0.1 to 10 mm/s, since the specific claimed 0.1 to 10 mm/s, absent any criticality, is only considered to be the “optimum” m/s disclosed by HERNANDEZ that a person having ordinary skill in the art would have been able to determine using routine experimentation (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) based, among other things, on the desired movement, manufacturing costs, etc. (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and neither non-obvious nor unexpected results, i.e. results which are different in kind and not in degree from the results of the prior art, will be obtained as long as the of 0.1 to 10 mm/s is used, as already suggested by HERNANDEZ.
Claim 58
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, but does not teach comprising dragging the droplet along several essentially parallel linear paths on the surface to allow for spatial scanning of the surface for its properties, but AL-Azawi teaches the surface properties or superhydrophobicity is attributed to the surface topographies (page 1 col.1), therefore, It would have been obvious to one of ordinary skill in the art at the time the invention was made to repeat Al‐Azawi’s method of dragging the droplet for along several essentially parallel linear paths on the surface to allow for spatial scanning of the surface for its properties , since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co. v. Bemis Co., 193 USPQ 8 (1977).
Claim 59
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the surface properties are selected from the group consisting of wetting of the surface (At least Abstract/Introduction also recites offering surface properties of superhydrophobic surfaces such as wetting, self-cleaning, anti-icing), for the reason cited in claim 34.
Claim 60
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, HERNANDEZ teaches wherein the surface is a superhydrophobic surface (e.g., fig.5 Superhydrophobic Surfaces).
Claim 62
HERNANDEZ in e.g., figs.5-6,26,31 teaches:
A method of characterizing properties (e.g., hydrophobicity via contact angle behavior) of a surface (e.g., ¶0007: hydrophobic surface), comprising:
- applying a droplet (fig.5 water drop containing aligned paramagnetic particle chains ¶0024,0181) of a magnetic liquid (¶0024) onto a discrete area of the surface (¶0024: superhydrophobic surface), said droplet contacting at least a part of the surface in said discrete area (fig.5,26);
- subjecting the droplet to a magnetic field having a maximum (e.g., fig.5¶0024,0067,0183);
- continuously moving the lateral position of the magnetic field maximum at constant velocity relative to the surface to drag the droplet magnetically along a surface (e.g., ¶0024-0026: magnet is moved to the right and the drop slides along the superhydrophobic surface due to the paramagnetic particle chain's action pushing against the surface tension of the drop also¶0045,0185,0186, 0187,0190: Drop movement following the magnet movement);
- a retentive force (e.g., surface tension force which resists droplet motion due the magnets displacement by measuring angles see e.g., ¶0258,0094) exerted on the droplet during its movement along the surface at a plurality of discrete areas of the surface, wherein the retentive force (surface tension force) is the force exerted on the droplet during its movement along the surface; and
- determining said surface properties (e.g., effective hydrophobicity via measuring contact angles as cited above, measured angles in e.g., ¶00258¶00294, retention strength of the surface).
HERNANDEZ does not teach:
velocity in the range of 0.1 to 10 mnm/s
measuring a retentive force in order to collect data on the retentive force, determining said surface properties from the collected data of the retentive force
Regarding limitation 1:
HERNANDEZ teaches most aspects of the instant invention. HERNANDEZ changes the droplet movement by changing magnetic field that can be obtained by moving magnets (e.g., ¶0024-0026). However, HERNANDEZ does not explicitly teach velocity in the range of 0.1 to 10 mnm/s.. Nonetheless, the skilled artisan would know too that controlled displacing magnets would move droplet relying on controlled wetting behavior and this study is based on moving magnet to overcome retentive forces.. The specific claimed range of 0.1 to 10 mnm/s, absent any criticality, is only considered to be the “optimum” velocity disclosed by HERNANDEZ that a person having ordinary skill in the art would have been able to determine using routine experimentation (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) based, among other things, on the desired information about wetting or hydrophobicity of surface, the dissipation forces, manufacturing costs, etc. (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)), and neither non-obvious nor unexpected results, i.e. results which are different in kind and not in degree from the results of the prior art, will be obtained as long as the of 0.1 to 10 mnm/s is used, as already suggested by HERNANDEZ. Since the applicant has not established the criticality (see next paragraph) of the (velocity of 7 cm/s for droplet can be correlated to the velocity of magnet movements e.g., ¶0076,0266) stated and since these velocities are in common use in similar devices in the art, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to use these values of 5 seconds in the device of HERNANDEZ. Please note that the specification contains no disclosure of either the critical nature of the claimed 0.1 to 10 mnm/s or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding limitation 2:
First of all, it is well known to determine force, from net force models and knowing different type of restoring and dissipative forces, for example, In the similar field of endeavor, Al‐Azawi discloses:
A method of characterizing surface properties (wetting properties/ characterizing superhydrophobic surfaces and extracted important parameters like contact angle hysteresis force and viscous damping coefficient page 5 col.2 section 3) of a surface (page 6/section 4/col.1: superhydrophobic surfaces), comprising :
applying a droplet (page 6/section 4/col.2: A 5 μL magnetic droplet) of a magnetic liquid (section 4/page6/col.1: ferrofluid: Superparamagnetic iron oxide nanoparticles were synthesized in water) onto a discrete area (e.g., page 2 col.1 : magnetic droplet is dispensed on a micropillared superhydrophobic surface, which is located above a permanent magnet creating a magnetic potential well for the droplet/Abstract micropillared surfaces) of the surface (a micropillared superhydrophobic surface), said droplet contacting at least a part of the surface in said discrete area (page 6/section 4/col.2: dispensed on the superhydrophobic surface using a fixed needle);
measuring a retentive force ( in section 2.2 it measures angles and produce oscillation movement using force from magnet and fit position of droplet with solution of movement and measure the retaining forces: page 2 col.1 forces including force from magnet/ friction and viscous damping forces/oscillations are captured with a high-speed camera and analyzed to measure viscous dissipation as well as friction of the moving droplet) exerted on the droplet during its movement (e.g., page 2 col.1 : conducting transverse droplet oscillations on superhydrophobic surfaces under controlled lateral and normal forces/fig.2b : x per time) along the predetermined length of the surface in order to collect data on the retentive force at a plurality of discrete areas of the surface (page 2/col.2 last para: Fig 1a/1b In order to determine the exact contribution from these forces, the harmonic oscillations are analyzed by tracking the droplet position with time and fitting the data with the solution of the general harmonic oscillator); and determining said surface properties from the collected data of the retentive force (at least page 3 col.1 both ACA/RCA are related to/determined by force and fig.3 and results given in table 1/ also CA are related to the surface energy that are determined from retentive forces).
Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Al-Azawi‘s method of measuring a retentive force for HERNANDEZ‘s retentive force in order to collect data on the modified retentive force, determining said surface properties from the modified HERNANDEZ‘s collected data of the retentive force. One of ordinary skill in the art knows characterization of wetting properties is essential for the development and optimization of superhydrophobic surfaces would have been motivated to make this modification in order to study the dynamics of superhydrophobicity to obtain energy dissipation parameters such as contact angle hysteresis force and viscous damping coefficients, which indicate pinning and viscous losses and using findings can help to optimize micropillared surfaces for low-friction droplet transport(Al-Azawi e.g., Abstract).
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over HERNANDEZ, WO2007101174A2 in view of Al‐Azawi2, "Friction and wetting transitions of magnetic droplets on micropillared superhydrophobic surfaces." Small 13.38 (2017): 1700860 in view of ““Nishijima”, US 20140014559 A1.
Claim 42
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 40, but does not specifically teach wherein the magnetic liquid comprises a solution of paramagnetic salts, and wherein the paramagnetic salts are selected from the group consisting of holmium nitrate, gadolinium nitrate, and combinations thereof.
In the similar field of endeavor, Nishijima teaches magnetic liquid comprises a solution of paramagnetic salts, and wherein the paramagnetic salts are selected from the group consisting of holmium nitrate, gadolinium nitrate, and combinations thereof (¶0128).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Nishijima’s solution of paramagnetic salts selected from the group consisting of holmium nitrate, gadolinium nitrate for the modified HERNANDEZ’s solution of paramagnetic. One of ordinary skill in the art would have been motivated to make this modification in order to use a known element (Nishijima’s solution of paramagnetic salts) for another (the modified HERNANDEZ with AI-Azawi’s paramagnetic solutions) to obtain predictable results (magnetic liquid).
Claim 49 rejected under 35 U.S.C. 103 as being unpatentable over HERNANDEZ, WO2007101174A2 in view of Al‐Azawi3, "Friction and wetting transitions of magnetic droplets on micropillared superhydrophobic surfaces." Small 13.38 (2017): 1700860, and “Latikka”4, ( Latikka, Mika, et al. "Wetting of ferrofluids: Phenomena and control." Current opinion in colloid & interface science 36 (2018): 118-129).
Claim 49
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, Al‐Azawi teaches wherein the magnetic field exerts horizontal forces on the droplet, (magnetic force and friction forces) but does not explicitly teach while exerting essentially no vertical magnetic forces such that the normal force and droplet shape are left unaffected. But Al‐Azawi in section 2.1 teaches Droplet oscillations are conducted with increasing normal force at different vertical distances above a permanent magnet and
In the similar field of endeavor, Latika in page 120 col.2 section 2.2 teaches the equilibrium droplet shape is determined by balancing the magnetic, gravity, and surface energies., and it would have been obvious for an ordinary skill in the art to change the distance and orientation of magnet so that essentially no vertical magnetic forces (considering mg of droplet) such that the normal force and therefore droplet shape are left unaffected. One of ordinary skill in the art would have been motivated to make this modification in order to determine surface properties and contact angles without changing the droplet shape.
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over HERNANDEZ, WO2007101174A2 in view of Al‐Azawi5, "Friction and wetting transitions of magnetic droplets on micropillared superhydrophobic surfaces." Small 13.38 (2017): 1700860 and “Laborde”, US 20190317167 A1.
Claim 52
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 34, but does not specifically teach further comprising providing two magnets, one on each opposite side of the surface, and subjecting the drop to the magnetic field extending between the magnets.
In the similar field of endeavor, Laborde in e.g., Fig.11A teaches further comprising providing two magnets (32 and 32’), one on each opposite side of the (analytical region in the chip 20), and subjecting the drop to the magnetic field extending between the magnets (fig.11A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Laborde’s method comprising providing two magnets, one on each opposite side of the modified HERNANDEZ’s surface, and subjecting the modified HERNANDEZ’s drop to the magnetic field extending between the magnets. One of ordinary skill in the art would have been motivated to make this modification in order to apply different forces to nanoparticles and expanding the advantages of the magnetic sensing techniques. Furthermore, based on MPEP 2143 (D), courts have ruled that applying a known technique to a known product to yield predictable results is within the purview of a skilled artisan. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421,82 USPQ2d 1385, 1395-97 (2007).
Claim 61 rejected under 35 U.S.C. 103 as being unpatentable over HERNANDEZ, WO2007101174A2 in view of Al‐Azawi6, "Friction and wetting transitions of magnetic droplets on micropillared superhydrophobic surfaces." Small 13.38 (2017): 1700860 and OKAMOTO, JP 4048417 B2 .
Claim 61
HERNANDEZ in view of Al‐Azawi teaches the method according to claim 43, the modified HERNANDEZ does not teach wherein the protic and aprotic liquids comprise dissolved salts.
In the similar field of endeavor, OKAMOTO teaches wherein the protic and aprotic liquids comprise dissolved salts (e.g., ¶0022), and based on MPEP 2143 (B), courts have ruled that Simple substitution of one known element (OKAMOTO’s metal salt aqueous solution, polyhydric alcohol, aprotic polar solvent, and protic polar solvent.) for another (Al‐Azawi’s ferrofluids including water) to obtain predictable results (determine properties of surface), is within the purview of a skilled artisan. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421,82 USPQ2d 1385, 1395-97 (2007).
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 Fatemeh E. Nia whose telephone number is (469)295-9187. The examiner can normally be reached 9:00 am to 4:00 pm. 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, Kristina DeHerrera can be reached at (303) 297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FATEMEH ESFANDIARI NIA/ Examiner, Art Unit 2855
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