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 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 1-14 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.
► With respect to claim 1, it is not clear whether or not the claimed porous structure actually comprises "a photoresist material deposited onto the target surface" (see lines 6-7 of claim 1 reciting "the photoresist material is removed through reactive etching"). For purpose of examination, claim 1 is rejected based on the actual porous structure comprising at least one microchannel without the photoresist material since the photoresist material was removed as cited on line
► With respect to claim 2, claim of porous structure cannot be defined since it is not clear whether or not "a gold layer deposited on the metal layer" actually exists (see lines 3-4 reciting the gold layer is removed through the reactive ion etching).
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 1-14, as being best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Cruz et al [US 2024/0240885]
*** Notice: this rejection is based on the scope where process steps of making product does not carry patentability. "Even though product -by[-] process claims are limited by and defined by the process, determination of patentability is based upon the product itself. The patentability of a product does not depend on its method of production. If the product in product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product is made by a different process." In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted}. A "product by process" claim is directed to the product per se, no matter how actually made, In re Hirao and Sato et al., 190 USPQ 15 at 17 (CCPA 1976) (footnote 3). See also in re Brown and Saffer, 173 USPQ 685 (CCPA 1972): In re Luck and Gainer, 177 USPQ 523 (CCPA 1973); In re Fessmann, 180 USPQ 324 (CCPA 1974); and In re Marosi et al., 218 USPQ 289 (CAFC 1983) final product per se which must be determined in a "product by, all of" claim, and not the patentability of the process, and that an old or obvious product, whether claimed in “product by process" claims or not
► With respect to claim 1, Cruz et al (fig 5, text [0001]-[0384]) discloses the claimed porous structure comprising:
a target surface (surface of the substrate)
a metal electrodeposited onto the target surface wherein an electrodeposition of metal generates a metal porous structure (porous metal wick, text [0039], [0099]-[0100], [0125]-[0127])
at least one microchannel generated through the metal porous structure (fig 5)
► With respect to claim 2, as being best understood, Cruz et al (fig 5) disclose a metal layer (layer of the metal porous structure (porous metal wick) deposited onto the target surface. Rejection is based on a scope that the porous structure does not comprises a gold layer since lines 2-3 of claim 2 recites “… the gold layer is removed through the reactive ion etching”.
► With respect to claim 3, Cruz et al (fig 5) discloses the at least one microchannel is closed (the microchannel is closed by the surface of the substrate).
► With respect to claim 4, Cruz et al (fig 5) discloses the at least one microchannel is open (upper portion of the microchannel is open)
► With respect to claim 5, Cruz et al (fig 5) discloses the at least one microchannel is positioned entirely within the metal porous structure.
► With respect to claim 6, Cruz et al (fig 5) discloses a first microchannel is positioned on the target surface; a second microchannel positioned entirely within the metal porous structure.
► With respect to claims 7 and 9-11, the claimed parameters of microchannel width, height, gap, pore size would have been obvious to an ordinary artisan practicing the invention because, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 105 USPQ 233, 235 (CCPA 1955). Furthermore, it appears that these changes produce no functional differences and therefore would have been obvious. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
► With respect to claim 8, Cruz et al (fig 5) discloses the porous structure comprising a plurality of microchannels wherein the microchannels are substantially parallel.
► With respect to claim 12, Cruz et al (text [0127]) discloses the metal is copper or nickel.
► With respect to claim 13, silicon is a known material for target surface. Selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a
known plastic to make a container of a type made of plastics prior to the invention was
held to be obvious).
► With respect to claim 14, rejection is based on the scope where the porous structure comprising no photoresist.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANHHA S PHAM whose telephone number is (571)272-1696. The examiner can normally be reached Monday-Friday.
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/THANHHA S PHAM/Primary Examiner, Art Unit 2812