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 without traverse of Group I, claims 1-19 in the reply filed on October 3, 2025 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
A claim is only limited by positively claimed elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”. MPEP 2115 Material or Article Worked Upon by Apparatus.
It is noted that the apparatus claims 1-14 mention water, a liquid droplet, an air bubble, a microcapsule, and a mulitiple emulsion. However, none of the prior are positively claimed as elements of the apparatus. All of such are considered as materials/articles that are intended to be and/or can be worked upon, used with the apparatus.
It is note that term “defining” in “defining surface” does not provide for any structure of any surface.
It is noted that the phrase “or more” provides for an alternative option, not a requirement.
It is noted that the phrase “at least one” only requires 1.
As to claims 4 and 7, it is noted that the term “region” is broad and not defined by any structural boundaries so as to determine where each respective “region” begins and ends. Based upon the claims any location where a surfactant is located (claim 4) or not located/present (claim 7) is a “region”. It is presumed that claim 4 intends for a “surfactant” to be positively claimed as being located on each of the defining surfaces of the first and second bases. However, no amount of water is positively claimed as being located on the defining surfaces.
As to claims, 8-9, it is noted that the phrase “channel part” is relatively broad and is not defined by any structural boundaries so as structural distinguish and “channel part” from any other “part”.
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 1-19 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.
As to claim 1, it is unclear what is the structural connectivity of the first and second base to each other because the claim does not clearly provide for such. The phrase “coming into contact with the first base” is drafted as process step rather than providing for structural connectivity of the first and second base. It appears based upon the specification and drawings that the first base 10 comprises an upper surface that includes a groove and the second base 20 comprises a lower surface including a groove; and the second base is located on top of the first base such that the lower surface of the second base is in contact with the upper surface of the first base such that the groove in the of the lower surface of the second base and groove of the upper surface of the first base define a flow channel. If so, the claim should clearly recite such.
It is unclear what phrase “and containing a polymer…” modifies because the claim does not clearly recite such.
In claim 1, it is also unclear what the phrase “having solvent resistance” modifies because the claim does not clearly state such and it is note that no solvent is defined in the claim nor any relative basis of any solvent resistance is provided for in the claim to determine what is structural required, considered as “solvent resistance”.
As to claim 1, in the “wherein” paragraph it is unclear what is the structural nexus of “a surface of the first base” to the prior recited “defining surface of the first base”, if such are the same or different because the claim does not clearly recite such. As presently drafted, the “a surface of the first base” is not require to be the same as the “a defining surface of the first base”. Furthermore, it is unclear what structurally meant, required by the “exposed by peeling…” clause because there is no requirement for any exposing of anything required to be performed by performing any “peeling”. Therefore, it is unclear if such surface roughness of “a surface of first base” is an actual property of such surface or is dependent upon, only exists if such “peeling” occurs (conditional process step that is never required to be performed). The claim is vague, ambiguous, and confusing. It is noted that the claim is directed to an apparatus not a process. There is no requirement for any “peeling” to ever be performed.
Dependent claims 2-19 depend upon a rejected claim and are also rejected.
Claim 2 recites the limitation "the group" in line 2. There is insufficient antecedent basis for this limitation in the claim. It appears as if the phrase should be “a group…”.
As to claim 4, it is unclear which/what region is being referenced by the phrase “the region” because the claim previously recites “a region” of the first base and “a region” of the second base.
It is unclear what is structurally required by claims 10-14 because the claims do not provide for any further structural elements nor structure of any previously positively claimed elements. Instead the claims are directed to intended, possible use of the microchannel device. As noted above the claims are directed to an apparatus not a process use. What the invention can be used for and/or is intended to be used for does not provide for any structural elements of the device that applicant is attempting to define.
As to claims 15 and 19, it is unclear what is the nexus of “a liquid droplet” to the oil and water because the oil and water could be “liquid droplets”. The claims do not clearly indicate what is the nexus of oil and water to a liquid droplet and in claim 19 what is the nexus of such and a gas to a droplet and air bubble. In claim 19, the gas is not required to be air. Furthermore, in claims 15 and 19, it is unclear what is the nexus of “a liquid droplet” recited in the last line to “a liquid droplet” recited in the preambles of the claims…and in claim 19 what is the nexus of “an air bubble” in the last line to the previously recited “an air bubble” recited in the preamble of the claim.
As to claim 16, it is what is the nexus of “an air bubble” in the last line to the previously recited “an air bubble” recited in the preamble of the claim. Furthermore, it is noted that a gas is not required to be air.
As to claim 17 it is unclear what is the nexus of a oil and a water to a microcapsule because the claim does not clearly state such. There is no indication what is difference between a “microcapsule” and “an emulsion”.
As to claim 18, it is unclear what is “a multiple emulsion” in relative to the “at least three liquids” because the claim does not clearly recite such. It is noted that such at least three liquids are defined as being any specific liquids not what is required to occur relative to such at least three liquids such that a multiple emulsion is obtained. The same is applicable to the gas, oil, and water of claim 19.
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.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 102 or in the alternative 103 as being unpatentable over RENK. ET AL: "Whole-Teflon microfluidic chips" (cited by applicant) (D1).
Fig. 1 (C) of document D1 shows:
a microchannel device (a microfluidic device for generating droplets) comprising:
a first base having a defining surface that defines a flow channel (the upper half substrate as illustrated in Fig. 2 (A)) and containing a polymer that contains a fluorine atom (Teflon, as indicated in Fig. 2); and
a second base having a defining surface that defines the flow channel together with the defining surface of the first base (the lower half substrate as illustrated in Fig. 2 (A)), having solvent resistance (because it consists of Teflon), and coming into contact with the first base (as shown by the right sketch of Fig.
2(A)).
Claim 1 specifies that an arithmetic average roughness Ra of a surface of the first base, exposed by peeling the second base from the first base, is 1 µm or more. D1 does not mention arithmetic average surface roughness’s which are the result of peeling.
However, it is unclear (as noted above) as to what such surface roughness is derived from. It is presumed that such roughness is inherent and/or at least would have been obvious to one of ordinary skill in the art because such merely a choice of design.
As to claim 2: The second base (the lower base in Fig. 2(A)) consists of Teflon.
As to claim 3: Both bases consist of Teflon, a material than can provide for such contact angle.
As to claim 7, the device includes “regions” not including a surfactant.
As to claims 8-9: see "Junction" in Fig. 1 (C)
As to claims 10-19: The claims recite an intended use of the device.
It is construed as meaning that the device is suitable for producing the droplets or the bubbles etc. mentioned in the claim. Since the device of Fig. 1 (C) is for droplet generation (see caption) it has at least two openings. Hence, air bubbles in a liquid may be generated by supplying the corresponding media at the right pressure to the openings which are connected to the "junction".
The device can be employed to mix, combine liquids and gases (air) to form droplets, capsules, etc. as desired.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Coleman; Zane; MATSUOKA; Akira et al.; BABCOCK; Brian David; and Hoglund; Kasper et al. discloses devices and/or methods for forming droplets, capsules, emulsions, etc.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R GORDON whose telephone number is (571)272-1258. The examiner can normally be reached M-F, 8-5:30pm; off every other Friday..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill Warden can be reached at 571-272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN R GORDON/Primary Examiner, Art Unit 1798
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