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 .
Election/Restriction
Applicant’s election of the second species or the embodiment characterized by each of the plurality of grooves being oriented in a seemingly random fashion on the at least one external surface of the substrate in the reply filed on August 4, 2025 as supplemented via the reply filed on November 20, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Relating to claims 7 and 17, applicant’s election without traverse of the third subspecies or the embodiment where the substrate is comprised of dielectric in the reply filed on February 28, 2025 was previously acknowledged via the Requirement for Restriction/Election mailed on June 3, 2025. Note, however, that upon further examination, the restriction requirement relating to claims 7 and 17 as set forth in the aforementioned Requirement for Restriction/Election is being withdrawn by the examiner because examination of all of the alternatives was found to not be burdensome.
Relating to claims 8 and 18, applicant’s election without traverse of the first subspecies or the embodiment where the infusing liquid is comprised of a hydrocarbon in the reply filed on February 28, 2025 was also previously acknowledged via the Requirement for Restriction/Election mailed on June 3, 2025. Note, however, that upon further examination, the restriction requirement relating to claims 8 and 18 as set forth in the aforementioned Requirement for Restriction/Election is being withdrawn by the examiner because examination of all of the alternatives was found to not be burdensome.
Claims 4, 5, 15, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to the nonelected first species or the embodiment characterized by each of the plurality of grooves being oriented in a first direction on the at least one external surface of the substrate and not in a random fashion, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 4, 2025 as supplemented via the reply filed on November 20, 2025.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s): a sensor or circuity in thermal communication with the infusing liquid as recited in claim 12; note that the drawings only show a semiconductor (such as a processor) 140 in thermal communication with the infusing liquid 130 as recited in claim 12, but fail to show either a sensor or circuitry as recited in claim 12. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it does not avoid phrases which can be implied (i.e., “Disclosed are”), because it does not avoid referring to the purported merits of the invention (i.e., “for increasing heat transfer”), because it fails to summarize the salient elements of the invention (i.e., all of the cited elements appear to be optional in that the abstract states that that “may” be present and are not necessarily present, and because it is not clear how the working fluid (or any fluid) is to be specifically “configured to flow parallel to the external surface of the substrate”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1 through 3, 6 through 14, and 17 through 20 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.
Each of base claims 1 and 13 recite the limitations “a plurality of grooves or cavities” but it is not clear whether the term “cavities” is recited as being synonymous with the term “grooves” (and thus unnecessarily repetitive) or whether the term “grooves” and the term “cavities” are intended to refer to two different configurations of channels, thus rendering indefinite the metes and bounds of protection sought by the claims. If the former is the intent, then recommend simply deleting “or cavities” from these limitations in order to avoid improper double recitation. If the latter is the intent, then the dependent claims need to be corrected in order to correct further antecedent basis issues created by the limitations as written, both later in each of claims 1 and 13 as well as throughout the dependent claims where the limitations “the plurality of grooves” lack proper antecedent basis because only one of “grooves” and “cavities” are necessarily present as currently written.
There is insufficient antecedent basis for the limitation “the external surface” in the last line of claim 1; however, there would be enough antecedent basis for “the at least one external surface”.
With regard to base claim 1 as written, it is also not clear how a working fluid is to be “configured to flow parallel to the external surface”, thus further rendering indefinite the metes and bounds of protection sought by the claim and by all claims depending therefrom. Generally, a fluid’s composition or configuration does not affect how it flows; rather, an external structure is needed to guide the fluid. It is recommended that applicant amend claim 1 to instead recite either “a working fluid provided to flow parallel to the at least one external surface” or recite a particular structure or structures allowing the working fluid to flow parallel to the at least one external surface.
Each of claims 2, 7, 12, and 17 recite elements in the alternative but are not written in proper Markush format as required. Furthermore, each of claims 7 and 17 improperly recites “metal” as an alternative twice per claim, thus resulting in an improper double recitation of the same. Additionally, upon reconsideration, some polymers are also dielectric, so there is overlap between these two alternatives in claims 7 and 17 which further renders the metes and bounds of protection sought by the claims indefinite.
The term “seemingly random” in claim 6 is a relative term which renders the claim indefinite. The term “seemingly random” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, as used to qualify the disposition of the grooves, this term renders the same indeterminate and the metes and bounds of protection sought by claim 6 and all claims depending therefrom indefinite. For examination purposes, the term “seemingly random” will be interpreted as being readable on any pattern which is not fully symmetric.
The term “minimal” in claim 13 is a relative term which renders the claim indefinite. The term “minimal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, as used to qualify the amount of frictional losses, this term renders the same indeterminate and the metes and bounds of protection sought by claim 13 and all claims depending therefrom indefinite.
With regard to claim 20 as written, it is not clear which temperature is being measured, thus further rendering indefinite the metes and bounds of protection sought by the claim.
Any claim not specifically mentioned is at least rejected as being dependent on a rejected claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
As best can be understood in view of the indefiniteness of the claims, claims 1 through 3, 6 through 8, 11 through 14, and 17 through 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fu et al. (Publication No. US 2016/0122677 A1).
With regard to claim 1, Fu et al. {i.e., see Figure 2a and Figure 2(b)} discloses a system for increasing heat transfer from a substrate to a working fluid comprising: a bottom substrate comprising a plurality of grooves or cavities 10 (i.e., “liquid-infused pattern”) on at least one external surface of the substrate; an infusing liquid filling at least a majority of the plurality of grooves; a working fluid {i.e., which flows in through the inlet port and out through the outlet slot; see parallel flow arrows in Figure 2(a) which are parallel to the substrate} “configured to flow parallel to the external surface”.
With regard to claims 2 and 3, Fu et al. also discloses that the plurality of grooves or cavities 10 are micro-scaled {i.e., see paragraphs [0014], [0015], [0065]} or nano- scaled {i.e., see at least paragraph [0065]}, and that the grooves are rectangular {i.e., see Figure 1(b) and 1(c ) at least}.
With regard to claim 6, Fu et al. also shows the plurality of grooves as being oriented in at least a somewhat random fashion on the at least one external surface {i.e., see at least paragraphs [0010] and [0013], which refer to Figure 1(d) and Figure 1(g)}. Figure 1(d) shows the pattern as including channels of different heights and Figure 1(g) shows the pattern as including channels with offset transverse barriers, with each of these aforementioned features being at least broadly readable (as required for pending claims) on the indefinite limitations relating to the grooves being oriented “in a seemingly random fashion” as recited by claim 6.
With regard to claim 7, Fu et al. discloses that the substrate can be a polymer {i.e., see at least paragraphs [0078] and [0079]}, an electro-active polymer {i.e., see at least paragraph [0079]}, acrylic {i.e., see at least paragraphs [0030], [0031], [0032], [0124], [0125], [0127]}, or metallic {i.e., see at least paragraph [0075]}. Note that electro-active polymers are a subset of dielectric materials and/or are inherently at least somewhat dielectric.
With regard to claim 8, Fu et al. discloses that the infusing liquid can be a hydrocarbon oil or a liquid metal {i.e., see at least paragraph [0060]}.
With regard to claim 11, Fu et al. discloses that the working or external fluid can be water or an aqueous mixture {i.e., see at least paragraphs [0059], [0098], [0111], [0116]}.
With regard to claim 12, Fu et al. discloses circuitry (i.e., fluid circuits) in thermal communication with the infusing liquid {i.e., see at least paragraph [0050]}.
With regard to claim 13, Fu et al. discloses a method for providing increased heat transfer with minimal increase in frictional losses, comprising: flowing a working fluid parallel to an external surface of a substrate, the external surface comprising a plurality of grooves or cavities and an infusing liquid filling at least a majority of the plurality of grooves or cavities such that the working fluid thermally communicates with the infusing liquid and the plurality of grooves.
With regard to claim 14, Fu et al. discloses the method of claim 13 wherein the plurality of grooves or cavities 10 are micro-scaled {i.e., see paragraphs [0014], [0015], [0065]} or nano- scaled {i.e., see at least paragraph [0065]}.
With regard to claim 17, Fu et al. further discloses the method of claim 13 wherein the substrate is comprised of a polymer {i.e., see at least paragraphs [0078] and [0079]}, an electro-active polymer {i.e., see at least paragraph [0079]}, acrylic {i.e., see at least paragraphs [0030], [0031], [0032], [0124], [0125], [0127]}, or metallic {i.e., see at least paragraph [0075]}. Note that electro-active polymers are a subset of dielectric materials and/or are inherently at least somewhat dielectric.
With regard to claim 18, Fu et al. further discloses the method of claim 13 wherein the infusing liquid is comprised of a hydrocarbon or a liquid metal {i.e., see at least paragraph [0060]}.
With regard to claim 19, Fu et al. further discloses the method of claim 13 wherein the working or external fluid can be water or an aqueous mixture {i.e., see at least paragraphs [0059], [0098], [0111], [0116]}.
The reference thus reads on the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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.
As best can be understood in view of the indefiniteness of the claims, claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Fu et al. (Publication No. US 2016/0122677 A1) in view of Singh et al. (“Self-healing atypical liquid-infused surfaces: Superhydrophobicity and superoleophobicity in submerged conditions”).
As noted in greater detail above with regard to claim 8 from which claims 9 and 10 depend, Fu et al. discloses a heat transfer system wherein the infusing liquid is comprised of a hydrocarbon, but does not specify that the hydrocarbon is either an alkane as recited in claim 9 or an alkane with a carbon chain of 6 to 18 carbons in length. However, it is known in the art of liquid-infused surfaces and taught by Singh et al. to specifically use alkanes of various carbon chains as the hydrocarbons of choice in liquid-infused surfaces to facilitate self-healing properties of the liquid-infused surfaces, thus enhancing thermal performance of the same. Therefore, it would have been obvious to one skilled in the art at or before the effective filing date of the instant application to modify the liquid-infused substrate and heat transfer system of Fu et al. by specifically using hydrocarbons which are multi-carbon alkane compounds as taught by Singh et al. in order to promote self-healing and thermal performance of the heat transfer system of Fu et al.
As best can be understood in view of the indefiniteness of the claims, claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fu et al. (Publication No. US 2016/0122677 A1).
As noted in greater detail above with regard to claim 13 from which claim 20 depends, Fu et al. discloses a heat transfer method whereby an aqueous working fluid flows over an inventive liquid-infused patterned substrate, but while Fu et al. does suggest {i.e., see paragraph [0020]} that the flow rate of the working fluid is a results-effective variable that affects the performance of the inventive apparatus, Fu et al. does not specify that the flow rate is controlled based on a measured temperature. Nevertheless, it is well-known in the art of heat transfer in general to control the working fluid flow rate based on a measured temperature in order to optimize the heat transfer rate for any given application. Therefore, it would have been obvious to one skilled in the art at or before the effective filing date of the instant application to modify the heat transfer method of Fu et al. by specifically modifying the flow rate based on a measured temperature in order to optimize the heat transfer effected by convection, for example.
Conclusion
The prior and/or related art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LJILJANA V CIRIC whose telephone number is (571)272-4909. The examiner can normally be reached Monday-Saturday, flexible.
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/Ljiljana V. Ciric/Primary Examiner, Art Unit 3763
LJILJANA (Lil) V. CIRIC
Primary Examiner
Art Unit 3763