DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/23/2026 has been entered.
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.
Claim 16 is 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.
The limitation “wherein the metal layer has a roughened surface and has a thickness of layer has a thickness of less than 80 nm” is unclear. Is the thickness value referring to the metal layer, the coating, or another element? The limitation is interpreted to reference the metal layer.
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) 1 and 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wilkerson.
Regarding claim 1, Wilkerson discloses a droplet delivery device including an ejector comprising:
a polymer mesh (Paragraph 14, generator plate) with apertures (Paragraph 14); and a deposited metal layer on the polymer mesh (Paragraph 231, metal may be deposited on all surfaces of the generator plate), but fails to disclose wherein the apertures are 1 micron to 6 microns in size or wherein the metal layer has a thickness of less than 80 nm.
Wilkerson discloses that the metal may have a thickness of about less than 0.1 μm to about 500 μm (Paragraph 228). The coating thickness is disclosed as a result effective variable, in that the coating thickness is optimized to adhere to the ejector plate sufficiently to prevent delamination when vibrating at a high frequency (Paragraph 228). Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the Wilkerson device to have a thickness within the claimed range, as it involves only adjusting the thickness of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Wilkerson to have a thickness of less than 80 nm, as a matter of routine optimization, since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Wilkerson also discloses aperture size as a result effective variable, putting forth that “The three-dimensional geometry and shape of the openings, including orifice diameter and capillary length, and spatial array on the generator plate may be controlled to optimize generation of the directed stream of droplets.” (Paragraph 14) Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the Wilkerson device to have aperture size within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Wilkerson to have apertures that are 1 micron to 6 microns in size, as a matter of routine optimization, since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Modified Wilkerson further discloses:
As to claim 3, wherein the metal layer is sputtered on the polymer mesh (Paragraph 233, the coatings may be deposited by sputtering);
As to claim 4, wherein the metal layer includes one or more of gold, palladium, platinum, and silver (Paragraph 231);
As to claim 5, wherein the metal layer includes one or more precious metal alloys (Paragraph 231);
As to claim 6, the droplet delivery device of claim 2, wherein the metal layer includes one or more of gold, palladium, platinum, and silver (Paragraph 231);
As to claim 7, the droplet delivery device of claim 1, wherein the metal layer includes one or more of gold, palladium, platinum, and silver (Paragraph 231);
As to claim 8, the droplet delivery device of claim 7, wherein the polymer mesh includes one or more of poly-methyl methacrylate, polyether ether ketone, polyetherimide, polyvinylidene fluoride, ultra-high molecular weight polyethylene, polysulfone, polyimide, fluorinated ethylene propylene, perfluoroalkoxy alkane and polytetrafluoroethylene (Paragraph 14);
As to claim 9, wherein the polymer layer includes palladium (Paragraph 226);
As to claim 10, further comprising an oleophobic or hydrophobic coating on the metal layer.
As to claim 11, further comprising a hydrophobic coating on the metal layer (Paragraph 232, The generator plate may include a hydrophobic coating in addition to the protective metal layer).
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) 12-14, 16-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wilkerson in view of Rao (US 20190134664).
As to claims 12-14, Wilkerson discloses the droplet delivery device of claims 1, 10 and 11, but is silent as to whether the metal layer is roughened;
Or whether the metal layer is roughened to include peaks and valleys and one or more coatings cover the peaks and valleys of the metal layer to provide a smooth surface.
Rao discloses that it is known to create superior hydrophobic surfaces by first roughening a metal surface, and adding a hydrophobic coating to cover the peaks and valleys to provide a smooth surface (Paragraph 34).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wilkerson with the disclosures of Rao, roughening the surface, and adding a hydrophobic coating to cover the peaks and valleys to provide a smooth surface, in order to provide for a superior hydrophobic surface, as disclosed by Rao.
Regarding claim 16, Wilkerson in view of Rao discloses a droplet delivery device including an ejector comprising: a substrate with apertures (See above claim 1); a transducer configured to vibrate the substrate (Abstract, piezo-electric actuator); a liquid supply (5520) to the substrate (Paragraph 202); and
one or more coatings applied to a metal layer on the substrate, wherein the metal layer has a roughened surface (See claim 14) and has a thickness of less than 80 nm (See claim 1);
As to claim 17, wherein the substrate is a polymer (See claim 10);
As to claim 19, wherein the metal layer includes one or more of gold, palladium, platinum and silver (See claim 4);
As to claim 20, wherein the one or more coatings include a hydrophobic coating (see claim 10).
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Wilkerson in view of Rao and Oles (US 20030049396).
Regarding claim 18, Wilkerson in view of Rao discloses the droplet delivery device of claim 16, but fails to disclose wherein the one or more coatings include an oleophobic coating.
Oles discloses a device wherein in addition to being hydrophobic, a container is oleophobic (Paragraph 22)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wilkerson in view of Rao with the disclosures of Oles, providing the container to include an oleophobic coating. Wilkerson suggests providing a coating to gain a desired advantage or benefit. The addition of the coating would extend fields of application of the device to include fields with oil-containing liquids, or solutions with low surface tension, as disclosed by Oles (Paragraph 22).
Response to Arguments
Applicant's arguments filed 2/23/2026 have been fully considered but they are not persuasive.
As to Applicants position that Wilkerson does not disclose a range of 1-6 microns, Wilkerson discloses motivation for optimizing the size of the aperture to optimize droplet generation. One of ordinary skill in the art would have been motivated by the disclosures of Wilkerson to optimize aperture size to be within the claimed range. Further Applicant does not disclose criticality as to the claimed range, disclosing that the hole size “may” be in the claimed range or “similar desirable small micron size range” (Applicant’s specification, paragraph 24).
As to Applicant’s position that the Wilkerson coating is not selected for structural or mechanical modification, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The prior art suggests provision of a deposited metal layer. While mechanical or structural benefit may be a result of Applicant’s device, the structural configuration is obvious based upon Wilkerson. Therefore, the limitation is unpatentable over Wilkerson.
As to Applicants position that Wilkerson does not disclose a range of less than 80 nm for the thickness of the metal layer, Wilkerson discloses motivation for optimizing metal layer thickness to provide optimal adherence, thereby preventing delamination when vibrating at a high frequency. One of ordinary skill in the art would have been motivated by the disclosures of Wilkerson to optimize the layer thickness to be within the claimed range, in order to provide optimal adherence. aperture size to be within the claimed range. Further Applicant does not disclose not criticality as to the claimed range, disclosing that the thickness could be 100 nm etc. (Applicants specification, paragraph 24).
As to Applicant’s position that the sizing of the current device is for a different purpose than that of Wilkerson, the limitations are broad, as Applicant puts forth no structure that would limit the limitations to consideration in Applicant’s prescribed endeavor.
As to Applicant’s position that the prior art lacks motivation to combine Wilkerson and Rao, Rao serves the problem of surface effectiveness, which is relevant to the Wilkerson discharge device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R. DANDRIDGE whose telephone number is (571)270-1505. The examiner can normally be reached M-T 9am-7pm.
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CHRISTOPHER R. DANDRIDGE
Primary Examiner
Art Unit 3752
/CHRISTOPHER R DANDRIDGE/Primary Examiner, Art Unit 3752