DETAILED ACTION
Notice of Pre-AIA or AIA Status and Status of the Claims
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-20 are under prosecution.
Specification
3. The use of trade names or marks used in commerce (including but not necessarily limited to Novec-7500 and the others listed on page 2 of the instant specification) has been noted in this application. Any trade names or marks should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Information Disclosure Statement
4. The Information Disclosure Statements filed 3 February 2023 and 29 August 2023 are acknowledged and have been considered.
It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Interpretation
5. The claims are subject to the following interpretation:
A. I. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
II. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a sample reservoir adapted to contain a reservoir fluid that is immiscible in water” as found in in claim 1 (upon which claim 2-7 depend), claim 8 (upon which claims 9-16 depend), and claim 17 (upon which claims 18-20 depend).
While the claims describe the physical structure of the sample reservoir, they do not contain sufficient structural information to describe how the reservoir is “adapted to” contain the fluid. In addition, a review of the specification yields no limiting definition as to how the reservoir is “adapted to” contain the fluid
However, due to the lack of any definition or guidance regarding how the reservoir is “adapted,” these claim limitations are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
If Applicant does intend to have this/these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may present a sufficient showing that the specification recites a limiting definition of sufficient structure to perform the claimed function so as to require interpretation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
B. It is noted that the courts have held that “while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In addition, “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Therefore, the various uses recited in the claims (e.g., forming microdroplets, containing a reservoir fluid, loading solutions, etc.) fail to define additional structural elements of the claimed generators. Thus, any prior art that teaches the structural elements of the claim either anticipates, or renders obvious, the claimed generators. See MPEP § 2114.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-20 ae 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.
A. Claim 1 (upon which claims 2-7 depend) and claim 17 (upon which claims 18-20 depend) are each indefinite in the recitations of “the microchannels,” which lacks antecedent basis in the previous recitation of “one or more microchannels.” This limitation is also found in claims 6,7 and 20.
B. Claim 8 (upon which claims 9-16 depend) in indefinite in the recitations of “the microchannels,” which lacks antecedent basis in the previous recitation of “a plurality of microchannels.” This limitation is also found in claims 9, 14, and 15.
C. Claim 9 is indefinite as it is unclear how the sample reservoir is connected to both the inlet ends and the reservoir ends of the microchannels can be connected to the sample reservoir and still be connected to anything else.
For the purposes of examination, the claimed inlet ends are interpreted as being connected to the instantly claimed chamber (rather than the sample reservoir) of claim 9, as depicted in Figure 6 of the instant specification.
Claim Rejections - 35 USC § 103
9. 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.
10. 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.
11. Claims 1-3, 8, 10-11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013).
Regarding claim 1, Baroud et al. teach a microfluidic droplet generator (Title) comprising body 2 having an inlet, in the form of connection orifice 9, adjacent to the upper surface of the body (Figures 1-2 and paragraph 0059). Baroud et al. further teach a reservoir, in the form of chamber 3, having a floor (i.e., bottom wall; paragraph 0061l) and four side walls (paragraph 0061). The reservoir (i.e., chamber 3) is adapted to contain a fluid that is immiscible with water (e.g., oil; paragraph 0069). Baroud et al. also teach the end of microchannel 8 connected to inlet 9 (i.e., where narrow channel 8 meets wide inlet 9 in Figures 1 and 2) and the other end of microchannel 8 intersects sidewall 5 at a location beneath the upper surface of body 2 (paragraph 0059 and Figures 1-2; compare these figures to Figure 1 of the instant specification). It is further noted that Baroud et al. also teach a plurality of microchannels 8 fluidically connected to the sample reservoir 3at a common side (i.e., wall) of the chamber (Figures 9-10 and paragraphs 0064-0065); thus it would have been obvious to have inlet 9 connected to more than one microchannel, each of which intersects the sidewall of the reservoir as discussed above.
It is noted that the courts have found that changes in shape are obvious (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). Thus, the claimed substantially perpendicular walls are obvious variants of the walls of the cited prior art. See MPEP 2144.04 IV B.
MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, counsel’s mere arguments cannot take the place of evidence in the record.
Regarding claim 2, the generator of claim 1 is discussed above. Baroud et al. teach reservoir 3 is open to a surface of the body that is on the same side as inlet 9 (Figure 7). Thus, it would have been obvious to have chamber 3 open on the same side as inlet 9 of the device in Figure 2, which is the upper surface.
Regarding claim 3, the generator of claim 1 is discussed above. Baroud et al. teach the inlet is a recess arranged in the upper surface of the body (Figure 2).
Regarding claim 8, Baroud et al. teach a microfluidic droplet generator (Title) comprising body 2 having an inlet, in the form of connection orifice 9, adjacent to the upper surface of the body (Figures 1-2 and paragraph 0059). Baroud et al. further teach a reservoir, in the form of chamber 3, having a floor (i.e., bottom wall; paragraph 0061l) and four side walls (paragraph 0061). The reservoir (i.e., chamber 3) is adapted to contain a fluid that is immiscible with water (e.g., oil; paragraph 0069). Baroud et al. also teach the end of microchannel 8 connected to inlet 9 (i.e., where narrow channel 8 meets wide inlet 9 in Figures 1 and 2) and the other end of microchannel 8 intersects sidewall 5 at a location beneath the upper surface of body 2 (paragraph 0059 and Figures 1-2; compare these figures to Figure 1 of the instant specification). Baroud et al. also teach a plurality of microchannels 8 fluidically connected to the sample reservoir at a common side (i.e., wall) of the chamber (Figures 9-10 and paragraphs 0064-0065); thus it would have been obvious to have inlet 9 connected to more than one microchannel, each of which intersects the sidewall of the reservoir as discussed above.
It is noted that the claim does not require the inlet ends of the microchannels to be directly connected to the inlet.
Alternatively, Figure 9 of Baroud et al. shows multiple microchannels 8 connected to the reservoir 3, and Figure 1 shows microchannel 8 connected to inlet 9; thus, it would have been obvious for each of the microchannels of Figure 9 to be connected to inlet 9 at their ends, while each of the other ends are connected to reservoir 3.
Regarding claim 10, the generator of claim 8 is discussed above. Baroud et al. teach reservoir 3 is open to a surface of the body that is on the same side as inlet 9 (Figure 7). Thus, it would have been obvious to have chamber 3 open on the same side as inlet 9 of the device in Figure 2, which is the upper surface.
Regarding claim 11, the generator of claim 8 is discussed above. Baroud et al. teach the inlet is a recess arranged in the upper surface of the body (Figure 2).
Regarding claim 16, the generator of claim 8 is discussed above.
It is reiterated that the courts have found that changes in shape are obvious. Thus, the claimed substantially perpendicular walls are obvious variants of the walls of the cited prior art.
12. Claims 2, 4-5, 10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013) as applied to claims 1 and 8 above, and further in combination with Ness et al. (U.S. Patent Application Publication No US 2015/0307919 A1, published 29 October 2015).
It is noted that while claims 2 and 10 have been rejected as described above, the claims are also obvious using the interpretation outlined below.
Regarding claims 2, 4-5, 10, and 12-13, the generators of claims 1 and 8 are discussed above in Section 11.
Baroud et al. also teach the generators have the added advantage of providing droplets that have a constant and controlled size (paragraph 0014). Thus, Baroud et al. teach the known techniques discussed above.
While Baroud et al. teach the inlet (i.e., connection orifice 9) is connected to a pipette (paragraph 0060), Baroud et al. do not teach an air displacement pipette (i.e., claims 5 and 13).
However, Ness et al. teach droplet generators utilizing pipette tips (paragraph 0613) as well as manual air displacement pipettes, in the form of pipettes with bulbs (i.e., claims 5 and 13; paragraph 0637). Ness et al. also raised inlets, in the form of wells (i.e., claims 4 and 12), and that the droplet chamber (i.e., 1290 of Figure 29) is open to the upper surface of the body, via emulsion well 1278 (i.e., claims 2 and 10; paragraph 0285 and Figure 29). Ness et al. also teach the generators have the added advantage of allowing complex samples to be converted into a plurality of simpler, more easily analyzed samples (paragraph 0129). Thus, Ness et al. teach the known techniques discussed above.
It is also noted that the courts have held that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)). See MPEP §2144.04. Thus, any arrangement of the pipette tip, pipette and bulb is obvious.
The courts have held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” (Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). See MPEP 2144.04, IVA. Thus, the claimed micropipette is an obvious variant of the pipette of the cited prior art.
Applicant is again cautioned to avoid merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Baroud et al. and Ness et al. to arrive at the instantly claimed generators with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in generators having the added advantages of providing droplets that have a constant and controlled size as explicitly taught by Baroud et al. (paragraph 0014) and allowing complex samples to be converted into a plurality of simpler, more easily analyzed sample as explicitly taught by Ness et al. (paragraph 0129). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of cited prior art predictably result in structures useful for forming droplets.
13. Claims 6-7 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013) as applied to claims 1 and 8 above, and further in combination with Panagiotou et al. (U.S. Patent Application Publication No. US 2015/0343402 A1, published 3 December 2015).
Regarding claims 6-7 and 14-15, the generators of claims 1 and 8 are discussed above in Section 11.
Baroud et al. also teach the generators have the added advantage of providing droplets that have a constant and controlled size (paragraph 0014). Thus, Baroud et al. teach the known techniques discussed above.
Baroud et al. do not teach the channels have a change in height (i.e., claims 6 and 14), so that the point at which the channel end reaches the reservoir is above the floor of the reservoir (i.e., claims 7 and 15), as shown in Figure 14 of the instant specification.
However, Panagiotou et al. teach formation of droplets (paragraph 0107), wherein microchannels are received above the bottom of a chamber (paragraph 0009; see also paragraph 0081), which has the added advantage of reducing cavitation, which reduced the chances of high local temperatures that can damage heat sensitive material (paragraphs 0002-0004). Thus, Panagiotou et al. teach the known techniques discussed above.
It is reiterated noted that the courts have found that changes in shape are obvious and that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device. Thus, any changes to the shape of the reservoir and channels (i.e., including a step height) and/or arrangement of the channel entrance relative to the reservoir is obvious.
Applicant is again cautioned to avoid merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Baroud et al. and Panagiotou et al. to arrive at the instantly claimed generators with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in generators having the added advantages of providing droplets that have a constant and controlled size as explicitly taught by Baroud et al. (paragraph 0014) and reducing the chances of high local temperatures that can damage heat sensitive material by reducing cavitation, which reduced the chances of high local temperatures that can damage heat sensitive material as explicitly taught by Panagiotou et al. (paragraphs 0002-0004). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of cited prior art predictably result in structures useful for forming droplets.
14. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013) as applied to claim 8 above, and further in combination with Quake et al. (U.S. Patent Application Publication No. US 2002/0034748 A1, published 21 March 2002).
Regarding claim 9, the generators of claim 8 is discussed above in Section 11.
Baroud et al. also teach the generators have the added advantage of providing droplets that have a constant and controlled size (paragraph 0014). Thus, Baroud et al. teach the known techniques discussed above.
Baroud et al. do not teach a chamber between the inlet and the inlet ends of the channels (as depicted in Figure 6 of the instant specification.
However, Quake et al. teach devices having inlets (i.e., opening 68) connected to a chamber 60, which is connected to a plurality of channels (e.g., 64), and that the arrangement facilitate a desired flow rate through the channels (Figure 2 and paragraph 0152). Thus, Quake et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Baroud et al. and Quake et al. to arrive at the instantly claimed generators with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in generators having the added advantages of providing droplets that have a constant and controlled size as explicitly taught by Baroud et al. (paragraph 0014) and facilitating a desired flow rate through the channels as explicitly taught by Quake et al. (paragraph 0152). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of cited prior art predictably result in structures useful for forming transporting liquids.
15. Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013) in combination with Panagiotou et al. (U.S. Patent Application Publication No. US 2015/0343402 A1, published 3 December 2015) and Ness et al. (U.S. Patent Application Publication No US 2015/0307919 A1, published 29 October 2015).
Regarding claims 17 and 20, Baroud et al. teach a microfluidic droplet generator (Title) comprising body 2 having an inlet, in the form of connection orifice 9, adjacent to the upper surface of the body (Figures 1-2 and paragraph 0059). Baroud et al. further teach a reservoir, in the form of chamber 3, having a floor (i.e., bottom wall; paragraph 0061l) and four side walls (paragraph 0061). The reservoir (i.e., chamber 3) is adapted to contain a fluid that is immiscible with water (e.g., oil; paragraph 0069). Baroud et al. also teach the end of microchannel 8 connected to inlet 9 (i.e., where narrow channel 8 meets wide inlet 9 in Figurers 1 and 2) and the other end of microchannel 8 intersects sidewall 5 at a location beneath the upper surface of body 2 (paragraph 0059 and Figures 1-2; compare these figures to Figure 1 of the instant specification). It is further noted that Baroud et al. also teach a plurality of microchannels 8 fluidically connected to the sample reservoir at a common side (i.e., wall) of the chamber (Figures 9-10 and paragraphs 0064-0065); thus it would have been obvious to have inlet 9 connected to more than one microchannel, each of which intersects the sidewall of the reservoir as discussed above.
Baroud et al. do not teach the channels are have a change in height (i.e., claim 20), so that the point at which the channel end reaches the reservoir is above the floor of the reservoir (i.e., claim 17), as shown in Figure 14 of the instant specification.
However, Panagiotou et al. teach formation of droplets (paragraph 0107), wherein microchannels are received above the bottom of a chamber (paragraph 0009; see also paragraph 0081), which has the added advantage of reducing cavitation, which reduced the chances of high local temperatures that can damage heat sensitive material (paragraphs 0002-0004). Thus, Panagiotou et al. teach the known techniques discussed above.
It is reiterated noted that the courts have found that changes in shape are obvious and that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device. Thus, any changes to the shape of the reservoir and channels (i.e., including a step height) and/or arrangement of the channel entrance relative to the reservoir is obvious.
Applicant is again cautioned to avoid merely relying upon counsel’s arguments in place of evidence in the record.
Neither Baroud et al. nor Panagiotou et al. teach a raised inlet.
However, Ness et al. teach droplet generators utilizing droplet chambers (i.e., 1290 of Figure 29) having raised inlets, in the form of wells (paragraph 0285 and Figure 29). Ness et al. also teach the generators have the added advantage of allowing complex samples to be converted into a plurality of simpler, more easily analyzed samples (paragraph 0129). Thus, Ness et al. teach the known techniques discussed above.
It is also reiterated that the courts have held that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device. Thus, the claimed arrangement of the opening of the chamber to the upper surface is obvious.
Applicant is again cautioned to avoid merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Baroud et al., Panagiotou et al., and Ness et al. to arrive at the instantly claimed generators with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in generators having the added advantages of
Providing droplets that have a constant and controlled size as explicitly taught by Baroud et al. (paragraph 0014);
Reducing the chances of high local temperatures that can damage heat sensitive material by reducing cavitation, which reduced the chances of high local temperatures that can damage heat sensitive material as explicitly taught by Panagiotou et al. (paragraphs 0002-0004); and
Allowing complex samples to be converted into a plurality of simpler, more easily analyzed sample as explicitly taught by Ness et al. (paragraph 0129).
In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior could have been combined with predictable results because the known techniques of the cited prior art predictably result in structures useful for manipulating droplets.
Regarding claim 18, the generator of claim 17 is discussed above. Baroud et al. teach reservoir 3 is open to a surface of the body that is on the same side as inlet 9 (Figure 7). Thus, it would have been obvious to have chamber 3 open on the same side as inlet 9 of the device in Figure 2, which is the upper surface.
In addition, Ness et al. teach droplet chambers (i.e., 1290 of Figure 29) that open to the upper surface of the body, via emulsion well 1278 (paragraph 0285 and Figure 29).
Regarding claim 19, the generator of claim 17 is discussed above.
It is reiterated that the courts have found that changes in shape are obvious. Thus, the claimed substantially perpendicular walls are obvious variants of the walls of the cited prior art.
Double Patenting
16. 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.
18. Claims 1-3 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,602,722 B2 in view of Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013).
Both sets of claims are drawn to a generator having a body, an inlet, an adapted sample reservoir, a microchannel having connected ends, sidewall intersections, step changes, etc. Any additional limitations of the ‘722 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘722 claims do not have the inlet on the upper surface.
However, Baroud et al. teach this limitations, as well as the others and the rationale for combining, as discussed above.
19. Claims 2 and 4-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,602,722 B2 in combination with Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013) as applied to claim 1 above, and further in combination with Ness et al. (U.S. Patent Application Publication No US 2015/0307919 A1, published 29 October 2015) based on the citations and rational presented above.
20. Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,602,722 B2 in combination with Baroud et al. (U.S. Patent Application Publication No. US 2013/0078164 A1, published 28 March 2013) Ness et al. (U.S. Patent Application Publication No US 2015/0307919 A1, published 29 October 2015).
Both sets of claims are drawn to a generator having a body, an inlet, an adapted sample reservoir, a microchannel having connected ends, sidewall intersections, step changes, etc. Any additional limitations of the ‘722 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘722 claims do not have the inlet on the upper surface.
However, Baroud et al. teach this limitations, as well as the others and the rationale for combining, as discussed above.
Neither the ‘722 claims nor Baroud et al. teach the raised inlet.
However, Nes et al. teach the raised inlet, and the other limitations and rationale for combining as discussed above.
Conclusion
21. No claim is allowed.
22. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683
Prosecution Insights