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/Restrictions
Applicant's election with traverse of claims 14-30 in the reply filed on 11/18/25 is acknowledged. The traversal is on the ground(s) that the product (claims 14-30) can only be made via applicant’s recited apparatus. This is not found persuasive because Keith et al. (US 6,616,996) discloses microtubes with tapered diameters as low as 127 micrometers made on a mandrel (column 1, lines 57-67, column 3, lines 1-11, column 3, lines 55-67, column 4, lines 4-20, column 5, lines 21-28). Applicant’s microtubes can therefore be made with a different apparatus and different methods.
Claims 1-13 and 31-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/18/25.
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 18-19 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.
Claims 18-19 recite “infinite radius” which is indefinite because the metes and bounds of the claims are not clearly defined. Particularly, there are no metes and bounds to the term “infinite”.
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) 14, 20, 23 and 28-30 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Bunner et al. (US 2011/0107822).
Claim 14 includes all of the method steps A – L from claim 1. However, claim 14 is a product claim and method steps A – L have been given little to no patentable weight since the method by which a product is made is not germane to the patentability of the product in a product claim (MPEP 2113).
Bunner discloses a tapered microtube product comprising a polymer, with internal circular cross section, the tapered microtube having an inner diameter that is smaller at one end increasing to larger at the other end, with the smaller end inner diameter measuring about 500 nm to about 500 um, the larger end inner diameter measuring about 50 um to about 10 mm, the larger end to smaller end inner
diameter ratio about 5:1 to about 100:1 (paragraphs [0023], [0055] and Fig. 4).
Bunner discloses wherein a tapered microtube inner diameter
axis is coaxial with outer diameter axis, wherein an overall length ranges from 5 mm
to about 1 meter, said microtube connecting to biotechnology microfluidic device, wherein said microtube is used in a biotechnology microfluidic device and comprises a micro nozzle, a micro nozzle with in-nozzle mixing effect, a micro flow restrictor, a micro aspiration tip, a micro dispense tip, a reagent, a microsample, a micro nutrient delivery path, a cell aligner, a cell, a protein, a particle sorter, and combinations thereof, wherein said microtube is used in a precision instrument component device and comprises a micro nozzle, a micro nozzle with in-nozzle mixing effect, a micro flow restrictor, a micro aspiration tip, a micro dispense tip, a micro cooling fluid, heating fluid, or lubrication fluid delivery path, and combinations thereof (paragraphs [0023], [0055] and Fig. 4).
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.
Claim(s) 15-17, 24 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunner et al. (US 2011/0107822) in view of Xi et al. (US 2019/0062152).
Bunner does not disclose wherein said tapered microtube comprises an inner surface roughness of from 6 to 20 nm, wherein said polymer is selected from the group consisting of an ultraviolet reactive setting polymer, a chemically reactive
setting polymer, a thermoplastic polymer, a thermoset polymer, a transparent polymer, a translucent polymer, and an opaque polymer, wherein an outer diameter ranges from 10 um to about 20 mm and wherein said microtube includes means for connection at one end, both ends, or along the outer length of the device that enable permanent or separable connection with other devices.
Xi discloses wherein said tapered microtube comprises an inner surface roughness of from 6 to 20 nm, wherein said polymer is selected from the group consisting of an ultraviolet reactive setting polymer, a chemically reactive
setting polymer, a thermoplastic polymer, a thermoset polymer, a transparent polymer, a translucent polymer, and an opaque polymer (since PDMS is disclosed), wherein an outer diameter ranges from 10 um to about 20 mm and wherein said microtube includes means for connection at one end, both ends, or along the outer length of the device that enable permanent or separable connection with other devices (paragraphs [0003], [0025], [0070], [0083]) for the purpose of providing improved mechanical elasticity, transparency and gas barrier properties (paragraph [0060]).
Both references are drawn to microfluidic devices.
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein said tapered microtube comprises an inner surface roughness of from 6 to 20 nm, wherein said polymer is selected from the group consisting of an ultraviolet reactive setting polymer, a chemically reactive setting polymer, a thermoplastic polymer, a thermoset polymer, a transparent polymer, a translucent polymer, and an opaque polymer, wherein an outer diameter ranges from 10 um to about 20 mm and wherein said microtube includes means for connection at one end, both ends, or along the outer length of the device that enable permanent or separable connection with other devices in Bunner in order to provide improved mechanical elasticity, transparency and gas barrier properties as taught or suggested by Xi.
Xi does not disclose wherein said tapered microtube comprises an inner surface roughness of from 2 to 5 nm. However, discovering the optimum range or value for a result effective variable is obvious and well within the level of one of ordinary skill in the art. It would have been obvious to one ordinary skill in the art to have provided applicant’s recited surface roughness in order to provided improved fluid flow and reduced wear and tear.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunner et al. (US 2011/0107822) in view Mao et al. (US 2017/0029782).
Bunner does not disclose wherein a tapered microtube inner diameter axis is not coaxial with outer diameter axis, wherein a tapered microtube inner diameter axis is coaxial with outer diameter axis in some sections and not coaxial with outer diameter
in other sections.
Mao discloses wherein a tapered microtube inner diameter axis is not coaxial with outer diameter axis, wherein a tapered microtube inner diameter axis is coaxial with outer diameter axis in some sections and not coaxial with outer diameter
in other sections (since a serpentine tapered diameter is disclosed) (paragraphs [0031-0034]) in order to provide improved separation of particulate matter from fluids (paragraph [0004]).
Both references are drawn to microfluidic devices.
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein a tapered microtube inner diameter axis is not coaxial with outer diameter axis, wherein a tapered microtube inner diameter axis is coaxial with outer diameter axis in some sections and not coaxial with outer diameter in other sections in Bunner in order to provide improved separation of particulate matter from fluids as taught or suggested by Mao.
Claim(s) 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunner et al. (US 2011/0107822) in view of CN101000339 (English machine translation provided herein).
The limitations “by flushing with water or water-surfactant mixture heated up to a temperature of 100 C” and “wherein said microtube is reusable by flushing with common solvents or organic compounds” are method limitations in a product claim which have been given little to no patentable weight since the method by which a product is made is not germane to the patentability of the product in a product claim (MPEP 2113).
Bunner does not disclose wherein said microtube is reusable.
CN101000339 discloses reusable microfluidic devices for the purpose of lowering costs.
Both references are drawn to microfluidic devices
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided a reusable microtube in order to provide lower costs.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bunner et al. (US 2011/0107822) in view of Keith et al. (US 6,616,996).
Bunner does not disclose wherein said microtube comprises a tapered microtube inner diameter surface continuously increasing from the small end to the large end with the change of diameter from small to large end generally following a parabolic curve with continuously changing curvature radius, up to a maximum infinite radius at either or both ends, wherein said microtube comprises a tapered microtube inner diameter surface continuously increasing from the small end to the large end with the change of diameter from small to large end generally following a parabolic curve with continuously changing curvature radius, up to a maximum infinite radius at either or both ends, and said tapered microtube smoothly decreasing then increasing again in a single section or a multiplicity of sections, while the overall primary taper shape increases in inner diameter from smaller at one end to larger at the other end.
Keith discloses wherein said microtube comprises a tapered microtube inner diameter surface continuously increasing from the small end to the large end with the change of diameter from small to large end generally following a parabolic curve with continuously changing curvature radius, up to a maximum infinite radius at either or both ends, wherein said microtube comprises a tapered microtube inner diameter surface continuously increasing from the small end to the large end with the change of diameter from small to large end generally following a parabolic curve with continuously changing curvature radius, up to a maximum infinite radius at either or both ends, and said tapered microtube smoothly decreasing then increasing again in a single section or a multiplicity of sections, while the overall primary taper shape increases in inner diameter from smaller at one end to larger at the other end (column 1, lines 57-67, column 4, lines 16-20, column 5, lines 21-28) for the purpose of providing improved flexibility and/or stiffness.
Both references are drawn to microtubes
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein said microtube comprises a tapered microtube inner diameter surface continuously increasing from the small end to the large end with the change of diameter from small to large end generally following a parabolic curve with continuously changing curvature radius, up to a maximum infinite radius at either or both ends, wherein said microtube comprises a tapered microtube inner diameter surface continuously increasing from the small end to the large end with the change of diameter from small to large end generally following a parabolic curve with continuously changing curvature radius, up to a maximum infinite radius at either or both ends, and said tapered microtube smoothly decreasing then increasing again in a single section or a multiplicity of sections, while the overall primary taper shape increases in inner diameter from smaller at one end to larger at the other end in Bunner in order to provide improved flexibility and/or stiffness as taught or suggested by Keith.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
January 9, 2026
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