DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 1, 11, 13-14 and 19-20 are objected to because of the following informalities:
Claim 1, lines 8-9: “resonate about an excitation frequency of the microfluidic channel” should be changed to “resonate at about an excitation frequency of the microfluidic channel” for more clarity.
Claim 11, line 4: “excite the excite the channel” should be changed to “excite
Claim 11, lines 5-6: “resonate about an excitation frequency of the channel” should be changed to “resonate at about an excitation frequency of the channel” for more clarity.
Claim 13, line 1: “the second region and is aligned” should be changed to “the second region [[and]] is aligned” for more clarity.
Claim 14, line 2: “the width of the channel,” should be changed to “the width of the channel[[,]].” for more clarity.
Claim 19, lines 1-2: “using an adhesive layer the portion of the microfluidic channel with the transducer” should be changed to “using an adhesive layer to couple the portion of the microfluidic channel with the transducer” for more clarity.
Claim 20, line 2: “an second region” should be changed to “a[[n]] second region” to correct the grammatical error.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 6 and 20 are rejected 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.
(1). Claim 6, which depends from claim 1, recites the limitation “the first region” in line 1 and the limitation “the second region” in line 2. There is insufficient antecedent basis for each of these limitations in the claim.
Since claim 5 recites “a first region” and “a second region”, claim 6 may be amended to depend from claim 5 (instead of claim 1) to overcome this rejection.
(2). Claim 20, which depends from claim 10, recites the limitation “adhesive layer” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Since claim 19 recites “an adhesive layer”, claim 20 may be amended to depend from claim 19 (instead of claim 10) to overcome this rejection.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,618,022. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of U.S. Patent No. 11,618,022 teach or render obvious all the features as recited in instant claims 1-20. Specifically, claim 1 of U.S. Patent No. 11,618,022 teaches a microfluidic system that comprises all the structural elements required by the system of instant claim 1; each of claims 12 and 18 of U.S. Patent No. 11,618,022 teaches a microfluidic system that comprises all the structural elements required by the microfluidic system of instant claim 11; and claim 19 of U.S. Patent No. 11,618,022 teaches a method that comprises all the steps and elements required by the method of instant claim 17. In addition, the other features as recited in instant claims 2-10, 12-16 and 18-20 are also taught or rendered obvious by claims 1-19 of U.S. Patent No. 11,618,022.
Claim Rejections - 35 USC § 102
7. 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.
8. 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.
9. Claims 1-5, 10-11 and 14-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fiering et al. (US 2018/0361053 A1).
Regarding claim 1
Fiering et al. disclose, throughout the whole document, a microfluidic system comprising: a microfluidic channel (e.g., microfluidic separation channel) having a thickness of a wall of the microfluidic channel and a width of the microfluidic channel (see paragraphs [0005], [0040]-[0043] and [0053]-[0058]; Figures 1-4); and a transducer (e.g., acoustic transducer) coupled to the microfluidic channel, the transducer configured to operate at a frequency different than a resonant frequency of the transducer to excite the microfluidic channel to impart an acoustic wave onto a fluid within the microfluidic channel, wherein at least a width of the transducer is selected, based at least on a thickness of a wall and a width of the channel, to cause the transducer to resonate at about an excitation frequency of the microfluidic channel (see paragraphs [0005], [0040]-[0043], [0053]-[0058] and [0077]-[0079]; Figures 1-4).
Regarding claim 2
The microfluidic system according to Fiering et al., wherein the width of the transducer is multiple times the width of the microfluidic channel (see Figure 4A).
Regarding claim 3
The microfluidic system according to Fiering et al., wherein the width of the transducer is one of about 2 or 3 times the width of the microfluidic channel including the thickness of the wall (see Figure 4A).
Regarding claim 4
The microfluidic system according to Fiering et al., wherein the microfluidic channel comprises an elastic material (e.g., thermoplastic substrate) (see Abstract; paragraphs [0005] and [0065]).
Regarding claim 5
The microfluidic system according to Fiering et al., wherein an adhesive layer (e.g., coupling adhesive) couples the transducer with a portion of the microfluidic channel, the adhesive layer patterned to define a first region that couples the transducer with the microfluidic channel and a second region in which a gap exists between the transducer and the substrate (see paragraphs [0040], [0055] and [0057]).
Regarding claim 10
The microfluidic system according to Fiering et al., wherein the transducer is mechanically coupled to a substrate forming the microfluidic channel (see paragraphs [0005], [0040] and [0055]; Figure 4A).
Regarding claim 11
Fiering et al. disclose, throughout the whole document, a microfluidic system comprising: a channel (e.g., microfluidic separation channel) having a thickness of a wall of the channel and a width of the microfluidic channel (see paragraphs [0005], [0040]-[0043] and [0053]-[0058]; Figures 1-4); a transducer (e.g., acoustic transducer) configured to excite the channel to impart an acoustic wave onto a fluid within the channel and to cause the transducer to resonate at about an excitation frequency of the channel (see paragraphs [0005], [0040]-[0043], [0053]-[0058] and [0077]-[0079]; Figures 1-4); and an adhesive layer (e.g., coupling adhesive) to couple the transducer with a portion of the channel, the adhesive layer patterned to define a first region that couples the transducer with the channel and a second region in which a gap exists between the transducer and the channel (see paragraphs [0040], [0055] and [0057]).
Regarding claim 14
The microfluidic system according to Fiering et al., wherein at least a width of the transducer is selected, based at least on the thickness of the wall and the width of the channel (see paragraphs [0005], [0040]-[0043], [0053]-[0058] and [0077]-[0079]; Figures 1-4).
Regarding claim 15
The microfluidic system according to Fiering et al., wherein the width of the transducer is multiple times the width of the microfluidic channel (see Figure 4A).
Regarding claim 16
The microfluidic system according to Fiering et al., wherein the width of the transducer is one of about 2 or 3 times the width of the microfluidic channel (see Figure 4A).
Regarding claim 17
Fiering et al. disclose, throughout the whole document, a method comprising: establishing a microfluidic channel (e.g., microfluidic separation channel) having a first set of dimensions defining a thickness of a wall of the channel (see paragraphs [0005], [0040]-[0043] and [0053]-[0058]; Figures 1-4); selecting a transducer (e.g., acoustic transducer) to operate at a frequency different from a resonant frequency of the transducer to excite the microfluidic channel in a selected oscillatory mode to impart an acoustic wave onto a fluid contained in the microfluidic channel, wherein a thickness and a width of the transducer are selected based on the first set of dimensions defining the thickness of the wall of the microfluidic channel, such that the width of the transducer is a predetermined multiplier of the width of the microfluidic channel, and the transducer resonates at about an excitation frequency of the microfluidic channel (see paragraphs [0005], [0040]-[0043], [0053]-[0058] and [0077]-[0079]; Figures 1-4); and coupling at least a portion of the microfluidic channel with the transducer (see paragraphs [0005], [0040]-[0043], [0053]-[0058] and [0077]-[0079]; Figures 1-4).
Regarding claim 18
The method according to Fiering et al., wherein the width of the transducer is one of about 2 or 3 times the width of the channel (see Figure 4A).
Regarding claims 19-20
The method according to Fiering et al., further comprising using an adhesive layer (e.g., coupling adhesive) to couple the portion of the microfluidic channel with the transducer, wherein adhesive layer is patterned to define a first region that couples the transducer with the portion of the microfluidic channel and a second region in which a gap exists between the transducer and the channel (see paragraphs [0040], [0055] and [0057]).
10. Claims 1, 4-5, 10-11, 14, 17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Broyer et al. (US 2017/0241878 A1).
Regarding claim 1
Broyer et al. disclose a microfluidic system (e.g., microfluidic acoustophoresis device) comprising: a microfluidic channel (e.g., microfluidic separation channel) having a thickness of a wall of the microfluidic channel and a width of the microfluidic channel; a transducer (e.g., acoustic transducer) coupled to the microfluidic channel, the transducer configured to operate at a frequency different than a resonant frequency of the transducer to excite the microfluidic channel to impart an acoustic wave onto a fluid within the microfluidic channel; wherein at least a width of the transducer is selected, based at least on a thickness of a wall and a width of the channel, to cause the transducer to resonate at about an excitation frequency of the microfluidic channel (see the whole document, particularly paragraphs [0032], [0148]-[0186] and [0215]-[0217]; Figures 1-4, 6 and 8).
Regarding claim 4
The microfluidic system according to Broyer et al., wherein the microfluidic channel comprises an elastic material (e.g., flexible material such as plastic, polymer or silicone material) (see paragraphs [0174], [0186] and [0217]).
Regarding claim 5
The microfluidic system according to Broyer et al., wherein an adhesive layer (e.g., ultrasound gel) couples the transducer with a portion of the microfluidic channel (see paragraph [0247]), the adhesive layer patterned to define a first region that couples the transducer with the microfluidic channel and a second region in which a gap exists between the transducer and the substrate (see paragraphs [0148]-[0199], [0206], [0211], [0215], [0218], [0247] and [0261]).
Regarding claim 10
The microfluidic system according to Broyer et al., wherein the transducer is mechanically coupled to a substrate forming the microfluidic channel (see paragraphs [0161], [0167], [0173]-[0176] and [0247]).
Regarding claim 11
Broyer et al. disclose a microfluidic system (e.g., microfluidic acoustophoresis device) comprising: a channel (e.g., microfluidic separation channel) having a thickness of a wall of the channel and a width of the microfluidic channel; a transducer (e.g., acoustic transducer) configured to excite the channel to impart an acoustic wave onto a fluid within the channel and to cause the transducer to resonate at about an excitation frequency of the channel; and an adhesive layer (e.g., ultrasound gel. See paragraph [0247]) to couple the transducer with a portion of the channel, the adhesive layer patterned to define a first region that couples the transducer with the channel and a second region in which a gap exists between the transducer and the channel (see the whole document, particularly paragraphs [0032], [0148]-[0186] and [0215]-[0217]; Figures 1-4, 6 and 8).
Regarding claim 14
The microfluidic system according to Broyer et al., wherein at least a width of the transducer is selected, based at least on the thickness of the wall and the width of the channel (see paragraphs [0150] and [0167]).
Regarding claim 17
Broyer et al. disclose a method comprising: establishing a microfluidic channel (e.g., microfluidic separation channel) having a first set of dimensions defining a thickness of a wall of the channel; selecting a transducer (e.g., acoustic transducer) to operate at a frequency different from a resonant frequency of the transducer to excite the microfluidic channel in a selected oscillatory mode to impart an acoustic wave onto a fluid contained in the microfluidic channel, wherein a thickness and a width of the transducer are selected based on the first set of dimensions defining the thickness of the wall of the microfluidic channel, such that the width of the transducer is a predetermined multiplier of the width of the microfluidic channel, and the transducer resonates at about an excitation frequency of the microfluidic channel; and coupling at least a portion of the microfluidic channel with the transducer (see the whole document, particularly paragraphs [0032], [0148]-[0186] and [0215]-[0217]; Figures 1-4, 6 and 8).
Regarding claims 19-20
The method according to Broyer et al., further comprising using an adhesive layer (e.g., ultrasound gel. See paragraph [0247]) to couple the portion of the microfluidic channel with the transducer, wherein adhesive layer is patterned to define a first region that couples the transducer with the portion of the microfluidic channel and a second region in which a gap exists between the transducer and the channel (see paragraphs [0148]-[0199], [0206], [0211], [0215], [0218], [0247] and [0261]).
Conclusion
11. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAIJIANG ZHANG whose telephone number is (571)272-5207. The examiner can normally be reached Monday - Friday, 8:30 am - 5 pm.
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/KAIJIANG ZHANG/Primary Examiner, Art Unit 1684
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