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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 May 2026 has been entered.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferrante et al. (US 8,308,340):
Regarding claim 1, Ferrante discloses an apparatus comprising a storage part (for example the barrel or other container of 102 and/or the barrel or other container of 104; see col. 5 lines 30-50 and Fig. 1); a microfluidic chip having a micro flow path (122, 124, 126) formed therein; and a main body (108, 114, 116) configured to accommodate the microfluidic chip. It is understood that the “first fluid” and “second fluid” are mentioned with regard to the capability of the storage part to store and are not required elements of the claimed apparatus. It is understood that the first formulation and second formulation are recited in the context of intended steps of providing during an intended operation and are not required elements of the claimed apparatus. See also MPEP 2115 which is titles “MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS” (block capitalization in original) and the decisions cited therein. See also Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) which held “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim."
Regarding claim 2, the apparatus further comprises a driving part (the piston part of 110 or the piston part of 112).
Regarding claim 3, the apparatus further comprises a control part (the handle part of 110 or the handle part of 112).
Claim 4 solely discusses uses involving fluids and formulations that are not required elements of the claimed structure.
Claim 5 solely discusses fluids and formulations that are not required elements of the claimed structure.
Claim 6 solely discusses uses involving fluids and formulations that are not required elements of the claimed structure.
Regarding claim 7, the microchip includes a portion (122,124) having a first inlet (114) and a second inlet (116), a mixing portion (126a) and an emulsifying portion (see Figs. 5C and 8) in which vortices would be capable of being formed.
Regarding claim 8, wider and narrower widths are disclosed (see Figs. 1, 2A, 2B, 5C and 8).
Regarding claim 9, a first coupling part is provided at the bottom of the first storage part and a second coupling part is provided at the bottom of the second storage part (see col. 5, lines 30-52).
Regarding claim 10, the main body includes: a first main body (108 or a portion thereof) in which a first insertion hole providing a space is formed; and a second main body (114) in which a second insertion hole providing a space into which the storage part is inserted is formed.
Claims 1-10 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Han (US 2020/0376449):
Regarding claim 1, Han discloses an apparatus comprising a storage part (20, 30, 40 and/or 50); a microfluidic chip (12, 12a, 14 or 16) having a micro flow path (110, 110a, 120 or 130) formed therein; and a main body (10) configured to accommodate the microfluidic chip. It is understood that the “first fluid” and “second fluid” are mentioned with regard to the capability of the storage part to store and are not required elements of the claimed apparatus. It is understood that the first formulation and second formulation are recited in the context of intended steps of providing during an intended operation and are not required elements of the claimed apparatus. See also MPEP 2115 which is titles “MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS” (block capitalization in original) and the decisions cited therein. See also Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) which held “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim."
Regarding claim 2, the apparatus further comprises a driving part (see [0049] and [0050]).
Regarding claim 3, the apparatus further comprises a control part (see [0050]).
Claim 4 solely discusses uses involving fluids and formulations that are not required elements of the claimed structure.
Claim 5 solely discusses fluids and formulations that are not required elements of the claimed structure.
Claim 6 solely discusses uses involving fluids and formulations that are not required elements of the claimed structure.
Regarding claim 7, the microchip includes a portion (115 or 115a) having a first inlet (111 or 111a) and a second inlet (113 or 113a), a mixing portion (a first portion of 117 or 117a) and an emulsifying portion (a second portion of 117 or 117a) in which vortices would be capable of being formed.
Regarding claim 8, wider and narrower widths are disclosed (see Figs. 3 and 4).
Regarding claim 9, a first coupling part (22) is provided at the bottom of the first storage part and a second coupling part (32) is provided at the bottom of the second storage part.
Regarding claim 10, the main body includes: a first main body in which a first insertion hole providing a space is formed; and a second main body in which a second insertion hole providing a space into which the storage part is inserted is formed (see Fig. 1).
Regarding claim 13, plural microchips (12, 14 and 16) are provided.
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.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ferrante et al. (US 8,308,340). The apparatus of Ferrante was discussed above. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) concerning the obviousness of making parts replaceable. It would have been obvious for one of ordinary skill in the art before the effective filing date to have made the microchip of Ferrante replaceable for cleaning purposes or in case a chip was damaged.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Han (US 2020/0376449). The apparatus of Han was discussed above.
Regarding claim 11, Han does not explicitly state that the microchip is replaceable. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) concerning the obviousness of making parts replaceable. It would have been obvious for one of ordinary skill in the art before the effective filing date to have made the microchip of Han replaceable for cleaning purposes or in case a chip was damaged.
Regarding claim 12, Han discloses plural differing microchips (12, 14 and 16) but does not explicitly state that the microchips are replaceable. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) concerning the obviousness of making parts replaceable. It would have been obvious for one of ordinary skill in the art before the effective filing date to have made the microchips of Han replaceable for cleaning purposes or in case a chip was damaged.
Response to Arguments
Applicant’s arguments are not convincing because as explained in MPEP 2115, “MATERIAL OR ARTICLE WORKED UPON DOES NOT LIMIT APPARATUS CLAIMS” (block capitalization in original). See also Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) which held “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim."
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L SORKIN whose telephone number is (571)272-1148. The examiner can normally be reached 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire X Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID L. SORKIN
Examiner
Art Unit 1774
/DAVID L SORKIN/Primary Examiner, Art Unit 1774
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