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 Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claim 1, the Examiner is interpreting the synthetic quartz glass substrate as the only structural limitation in the claim, and contends that the claimed cyclic average power spectral density is not a structural element of the claim. Claim 1 recites the parameters by which the cyclic average power spectral density is determined; however, the claim does not recite a structural element, or chemical composition that generates the cyclic average power spectral density. As such, the Examiner is unable to determine what structural elements, if any contribute to the claimed cyclic average power spectral density. If Applicant’s intent is to claim a property of the synthetic quartz glass, the claim should recite a structural element of chemical composition that generates the claimed cyclic average power spectral density.
For claim 2, the Examiner is interpreting the synthetic quartz glass substrate as the only structural limitation in the claim, and contends that the arithmetic average roughness is not a structural element. Claim 2 recites the parameters by which the arithmetic average roughness is determined; however, the claim does not recite a structural element, or chemical composition that generates the arithmetic average roughness. As such, the Examiner is unable to determine what structural elements, if any contribute to the claimed arithmetic average roughness. If Applicant’s intent is to claim a property of the synthetic quartz glass, the claim should recite a structural element of chemical composition that generates the claimed arithmetic average roughness.
For claims 6 and 7, the Examiner is interpreting the synthetic quartz glass substrate, laminate, and channel as the structural elements of the claim, and contends that the claimed cyclic average power spectral density is not a structural element of the claim. Claims 6 and 7 recites the parameters by which the cyclic average power spectral density is determined; however, the claims do not recite a structural element, or chemical composition that generates the cyclic average power spectral density. As such, the Examiner is unable to determine what structural elements, if any contribute to the claimed cyclic average power spectral density. If Applicant’s intent is to claim a property of the synthetic quartz glass, the claim should recite a structural element of chemical composition that generates the claimed cyclic average power spectral density.
For claims 8 and 9, the Examiner notes that the arithmetic average roughness is not a structural element of the claimed device. Claims 8 and9 recites the parameters by which the arithmetic average roughness is determined; however, the claims do not recite a structural element, or chemical composition that generates the arithmetic average roughness. As such, the Examiner is unable to determine what structural elements, if any contribute to the claimed arithmetic average roughness. If Applicant’s intent is to claim a property of the synthetic quartz glass, the claim should recite a structural element of chemical composition that generates the claimed arithmetic average roughness.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 9 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.
For claims 8 and 9, the phrase “the device” is inconsistent with the “synthetic quartz glass microfluidic device” recited in claims 6 and 7, from which claims 8 and 9 depend. The Examiner requests Applicant amend the claims so that consistent language with respect to the synthetic quartz glass microfluidic device is utilized.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greenstein et al., (US 2006/0165559).
For claims 1 and 2, Greenstein et al., teach a microfluidic chip made of fused silica (synthetic quartz glass, paragraph 0035). The Examiner notes the claim is being interpreted as described in the claim interpretation section detailed above in which the synthetic quartz glass is the only structural element recited in claims 1 and 2 as the cyclic average power spectral display and arithmetic average roughness are not structural elements of the claim.
For claim 3, Greenstein et al., teach a method for making a microfluidic chip comprising preparing two fused silica substrates (paragraph 0035), forming a channel in at least one of the substrates (paragraph 0035), and bonding the two substrates (paragraph 0035) wherein UV curing is recited as a suitable bonding technique (paragraph 0003).
For claims 6 and 8, Greenstein et al., teach a fused silica microfluidic device comprising two fused silica substrates bonded to each other (paragraph 0035), and a channel formed in at least one of the surfaces (paragraph 0035). Greenstein et al., also teach bonding substrates with UV curing (paragraph 0003) which reads on the claimed optical contact.
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.
Claim(s) 4, 5, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenstein et al., (US 2006/0165559) in view of Yanagisawa et al., (US 2009/0260990).
Regarding claim 4, Greenstein et al., teach a method for making a microfluidic chip comprising preparing two fused silica substrates (paragraph 0035), forming a channel in at least one of the substrates (paragraph 0035), and bonding the two substrates (paragraph 0035) wherein UV curing is recited as a suitable bonding technique (paragraph 0003). Greenstein et al., do not teach thermally fusing the microfluidic chip.
Yanagisawa et al., teach a microfluidic chip (paragraphs 0083, 0084) wherein the microfluidic chip is formed by thermal fusion of first and second substrates (paragraph 0084). The Examiner is reading this combination as combining prior art elements according to known methods to yield predictable results which would have been obvious to one of ordinary skill in the art (MPEP 2141 C III). Reference to Yanagisawa et al., teach that thermal fusion is a suitable technique for bonding two surfaces, thus one of ordinary skill in the art would have found it obvious to utilize thermal fusion to bond two substrates. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Greenstein et al., wherein the fused silica substrates are bonded by thermal fusion as taught by Yanagisawa et al., as combining prior art elements according to known method to yield predictable results requires only routine skill in the art.
Regarding claim 5, Greenstein et al., in view of Yanagisawa et al., do not explicitly teach thermal fusion at a temperature ranging from 1000 to 1600°C. The Examiner is reading this limitation as optimization which would have been obvious to one of ordinary skill in the art (MPEP 2144.05 II A). The MPEP states that differences in temperature will not support patentability of subject matter encompassed by the prior art absent evidence showing the temperature to be critical. Additionally, the MPEP stats that where the general conditions of a claim are taught by the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. The instant specification does not provide any evidence showing the claimed temperature range to be critical, and the Examiner contends that the combination of Greenstein et al., in view of Yanagisawa et al., teach that general conditions of claim 5, thus the claimed temperature range can be arrived at by routine experimentation. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Greenstein et al., in view of Yanagisawa et al., to perform thermal fusion at a temperature ranging from 1000 to 1600°C as optimization requires only routine skill in the art.
Regarding claims 7 and 9, Greenstein et al., teach a fused silica microfluidic device comprising two fused silica substrates bonded to each other (paragraph 0035), and a channel formed in at least one of the surfaces (paragraph 0035). With respect to claim 8, the Examiner notes that the average roughness is not a structural element, thus the microfluidic device of Greenstein et al., meets the limitations of the claim. Greenstein et al., also teach bonding substrates with UV curing, but do not teach bonding the substrates by thermal fusion.
Yanagisawa et al., teach a microfluidic chip (paragraphs 0083, 0084) wherein the microfluidic chip is formed by thermal fusion of first and second substrates (paragraph 0084). The Examiner is reading this combination as combining prior art elements according to known methods to yield predictable results which would have been obvious to one of ordinary skill in the art (MPEP 2141 C III). Reference to Yanagisawa et al., teach that thermal fusion is a suitable technique for bonding two surfaces, thus one of ordinary skill in the art would have found it obvious to utilize thermal fusion to bond two substrates. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Greenstein et al., wherein the fused silica substrates are bonded by thermal fusion as taught by Yanagisawa et al., as combining prior art elements according to known method to yield predictable results requires only routine skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797