DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed 04/20/2026 has been entered. Claims 1 and 4-15 remain pending in the application. Claims 10-15 have been withdrawn. Claims 1 and 4-9 are being examined herein.
Status of Rejections
All rejections of claims 2-3 are obviated by Applicant’s cancellation.
The rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) are being withdrawn in view of Applicant's amendment.
The rejections under 35 U.S.C. 102 and 35 U.S.C. 103 are being withdrawn in view of Applicant's amendment.
New grounds for rejection under 35 U.S.C. 103 are necessitated by Applicant’s amendments.
Claim Objections
Claim 1 objected to because of the following informalities:
lines 7-8, “the gas junction between the …” should read “the gas junction being disposed between” for clarity.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a sealing fluid delivery system to fill the fluid branch” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
In the instant case, the corresponding structure for:
“a sealing fluid delivery system” is a reservoir with an inlet to the fluid analysis system (para. 0034) and equivalents thereof.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Handique et al. (US 20150142186 A1)(provided by Applicant’s IDS of 04/21/2023) in view of Gravesen et al. (US 20180177941 A), and further in view of Biswas et al. (Switchable Hydrophobic Valve for Controlled Microfluidic Processing, ChemPhysChem 2016, 17, 817 – 821).
Regarding claim 1, Handique teaches a fluid analysis system (see annotated Fig. A below), comprising:
an inlet channel (2 and 4) to an analysis chamber (reaction/detection subassembly built from a chamber, para. 0064), wherein the analysis chamber is to receive a fluid sample to be analyzed (para. 0064);
a fluid branch (Passage 1) having a fluidic junction (see annotated Figure A below)(junction is being interpreted as something that joins) along the inlet channel;
a gas chamber (the gas reservoir associated with heater 1 and the channel between heater to passage 1, paras. 0112 and 0187) to house a volume of trapped gas, the gas chamber being in fluid communication with the fluid branch at a gas junction within the fluid branch (Fig. 1);
a sealing fluid delivery system (the “external manual or robotic device” and inlet 1)(the structural equivalent for the “sealing fluid delivery system” is a reservoir with an inlet to the analysis system and equivalent thereof. Para. 0113, fluid introduced into inlet1, for example, by an external manual or robotic device”) to fill the fluid branch with a sealing fluid (interpreted as an intended use. A sealing fluid is not positively recited. The external manual or robotic device connect to inlet 1 meets the structurally limitation of the intended use and is capable of introducing fluid into the system, para. 0113), the gas junction between the sealing fluid delivery system and the fluidic junction (annotated Fig. A);
a first capillary break (h3)(para. 0107, a hydrophobic region) in the fluid branch and between the gas junction and the fluidic junction (annotated Fig. A);
a heater (heater 1) adjacent the gas chamber (the gas reservoir associated with heater 1 and the channel between heater to passage 1)(paras. 0112 and 187) to heat the gas chamber such that the trapped gas expands to push the sealing fluid into the inlet channel (controlled gas pressure generated by heater 1 propels fluid beyond h3 to channel 4) to seal the analysis chamber (interpreted as an intended use. The sealing fluid is not positively recited. The heater, gas chamber and inlet channel meets the structural limitation of the intended use).
Handique teaches the overflow 1 port is connected to a channel in the fluid branch upstream of the gas chamber (see annotated Fig. A above) to allow excess fluid to flow out (para. 0113) which can alleviate backflow of the sealing fluid through the fluid branch, but Handique fails to teach a second capillary break in the fluid branch and between the gas junction and the sealing fluid delivery system;
However, Gravesen teaches a microfluidic device (abstract). Gravesen further teaches the use of inlet check valve to prevent liquid backflow to the inlet (para. 0090). Gravesen further teaches the inlet check valve is disposed adjacent the inlet (724) before the next fluidic junction (Fig. 7).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the portion of Passage 1 adjacent to inlet 1 before the junction that branches to Overflow 1 of Handique to comprise a inlet check valve taught by Gravesen in order to help prevent backflow to the inlet (Gravesen, para. 0090) with a reasonable expectation of success (Gravesen, 0090) (MPEP 2143)(I)(G).
In addition, Biswas teaches the use of hydrophobic patch valve, which is a hydrophobic area formed on the surface of a microchannel (Biswas, p. 817, right col., 2nd para.), instead of a check valve because of hydrophobic valve are simpler to fabricate and integrate (Biswas, p. 817, right col., 1st para.).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the check valve in Passage 1 adjacent to the inlet before the junction that branches to Overflow 1 taught by modified Handique to be a hydrophobic patch valve, hydrophobic valve comprising a hydrophobic area formed on the surface of a microchannel (Biswas, p. 817, right col., 2nd para.), taught by Biwas in order to have for simple fabrication and integration (Biswas, p. 817, right col., 1st para) with a reasonable expectation of success (MPEP 2143)(I)(G).
The teachings of modified Handique would yield a second capillary break (hydrophobic patch valve in Passage 1 disposed adjacent to the inlet before junction that branches to Overflow 1) in the fluid branch and between the gas junction and the sealing fluid delivery system (annotated Fig. A).
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Figure A. Annotated Fig. 1 of Handique et al.
Regarding claim 4, Modified Handique teaches all of the elements of the current invention as stated above with respect to claim 3. Modified Handique further teaches wherein the second capillary break (modified Handique has a hydrophobic patch valve at the portion of passage 1 by inlet 1) has a smaller opening than the first capillary break (Fig. 1 and para. 0113, h3 is located in the widened part of the channel and the hydrophobic patch valve in modified Handique is at portion of passage 1 by inlet 1 which is narrower, Fig. 1).
Regarding claim 5, modified Handique teaches all of the elements of the current invention as stated above with respect to claim 3. Modified Handique further teaches wherein the second capillary break has different characteristics as compared to the first capillary break (first capillary breaks has a wider opening since the hydrophobic patch in modified Handique is at the portion of passage 1 by inlet 1 which is narrower, Fig. 1).
Regarding claim 6, modified Handique teaches The fluid analysis system of claim 5, wherein a characteristic that is different between the second capillary break and the first capillary break is selected from the group consisting of:
a width (h3 is at a widen part of the channel, the hydrophobic patch in modified Handique is at the portion of passage 1 by inlet 1 which is narrower)
(The strike-out parts are not required).
Regarding claim 7, modified Handique teaches all of the elements of the current invention as stated above with respect to claim 1. Handique further teaches the fluid analysis system comprising a gas chamber capillary break (h1)(para. 0107, a hydrophobic region) to prevent the sealing fluid from entering the gas chamber (interpreted as an intended use. The sealing fluid is not positively recited. h1 meets the structural limitation of the intended use. Moreover, para. 0113).
Regarding claim 8, modified Handique teaches all of the elements of the current invention as stated above with respect to claim 1. Regarding the limitation “the sealing fluid has a lower vapor pressure than the fluid sample and is immiscible with the fluid sample,” the sealing fluid is not positively recited and thus not part of the invention. Since the limitation is directed to the sealing fluid, the limitation does not further limit the structure of the instant invention.
Regarding claim 9, modified Handique teaches all of the elements of the current invention as stated above with respect to claim 1. Handique further teach the fluid analysis system comprising a number of pumps (paras. 0113 and 208, manual/robotic devices, e.g., syringes/pipettes, for introducing fluid into inlet 1 and 2) to transport the sealing fluid and the fluid sample throughout the fluid analysis system (interpreted as an intended use. sealing fluid and fluid sample are not positively recited. Syringes/pipettes meet the structural limitation of the intended use).
Response to Arguments
Applicant’s arguments, see p.5, filed 04/202/2026, with respect to the rejection under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of has been withdrawn.
Applicant’s arguments, see p. 5- 8 with respect to the rejection of claims 1, 7 and 8 under 35 U.S.C. 102 as anticipated by Wang et al. (CN 108855260 A) and the rejection of claims 2 under 103 being unpatentable over Wang et al. (CN 108855260 A) in view of McBride et al. (US 6444106 B1) have been considered but are moot because the new ground of rejection does not rely on Wang or McBride for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see pp. 5-8, filed 04/202/2026, with respect to the rejection under 35 U.S.C. 102 and under 35 U.S.C. 103 with Handique et al. (US 20150142186) as the primary reference have been fully considered and are not persuasive.
The applicant argues that Handique does not suggest or teach amended claim features, specifically “a gas chamber connected at a gas junction between two capillary break in a fluid branch,” and Gravesen et al. (US 20180177941) and/or Biswas et al. (Switchable Hydrophobic Valve for Controlled Microfluidic Processing, ChemPhysChem 2016, 17, 817 – 821) do not cure the deficiencies of Handique.
The examiner respectfully disagrees. Handique in view of Gravesen and further in view of Biswas does teach a gas junction between two capillary breaks in a fluid branch and all the amended limitations in claim 1 as discussed above in the 35 U.S.C. 103 section and annotated Fig. A. Therefore, this argument is unpersuasive.
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 MAY CHIU whose telephone number is (571)272-1054. The examiner can normally be reached 9 am - 5 pm.
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/M.L.C./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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