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 .
Response to Arguments
Applicant’s arguments, see Remarks page 5, filed 25 February 2026, with respect to the rejection under 112(b) have been fully considered and are persuasive in light of the amendments. The rejection of claim 7 has been withdrawn.
Applicant's arguments, see Remarks page 5, filed 25 February 2026, with respect to the double patenting rejections have been fully considered but they are not persuasive. The double patenting rejection has been maintained. However, in the intervening time, copending case 18/038,582 has been patented and issued as U.S. Patent No. 12611619. As such, the provisional double patenting has been withdrawn, and an equivalent non-statutory double patenting rejection has been put forth. No changes have been made to the substance of the rejection.
Applicant’s arguments, see Remarks page 6, filed 25 February 2026, with respect to the rejections under 35 U.S.C. 102(a)(1) and 103 have been fully considered and are persuasive. The rejections of claims 1, 2, 4 – 6, 8 – 20 have been withdrawn.
Status of Claims
Applicant's amendments to the claims filed 25 February 2026 have been entered. Applicant's remarks filed 25 February 2026 are acknowledged.
Claims 1 and 18 are in status “Currently Amended.” Claims 2, 4 – 6, 8 – 17, and 19 – 20 are in status “Original.” Claims 3 and 7 are cancelled.
Double Patenting
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.
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Claims 1, 2, 4 – 6, and 8 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 12611619. Although the claims at issue are not identical, they are not patentably distinct from each other because;
With regards to claim 1, claim 9 of U.S. Patent No. 12611619 teaches a hydrodynamic separator comprising a substrate, a liquid channel defined by the substrate, the liquid channel configured to receive a liquid within the channel, an inlet, an outlet, wherein the liquid channel has an inner wall defining an inner radius and an outer wall defining an outer radius, the liquid channel having a liquid channel length along an inner wall, the channel having a cross-section with a channel width between the inner wall and the outer wall, where the channel has a tapered region where the channel width increases towards the outlet, and wherein the inner radius is constant from the inlet to the outlet.
Patented claim 9 does not teach instant claim 1’s limitation of “an outlet comprising a first outlet branch and a second outlet branch.” However, this limitation is obvious over the embodiment of patented claim 8, which recites “wherein the outlet comprises a first outlet and a second outlet.”
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the embodiments claimed in U.S. Patent No. 12611619, for the benefit of collecting separated particles in different ends of the branched outlets. Accordingly, instant claim 1 is not patentably distinct over patented claim 9 and claim 8.
With regards to claim 2, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 9 additionally teaches where the channel width tapers between the inlet and the outlet. Accordingly, instant claim 2 is not patentably distinct over patented claim 9 and patented claim 8.
With regards to claim 4, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 10 teaches all the limitations of claim 9, and additionally teaches where the width increases towards the outlet. As the inner radius is held constant, this limitation requires that the outer radius taper outward between the inlet and the outlet. Accordingly, instant claim 4 is not patentably distinct over patented claim 10 and patented claim 8.
With regards to claim 5, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 14 teaches all the limitations of claim 9, and additionally teaches wherein the liquid channel has a first region having a first channel with and a first liquid channel length, a second region having a second channel width and a second liquid channel length, and the tapered region having a tapered region length that extends from the first region to the second region. Accordingly, instant claim 5 is not patentably distinct over patented claim 14 and patented claim 8.
With regards to claim 6, instant claim 5 is obvious over patented claims 14 and 8. Patented claim 15 teaches all the limitations of claim 14, and additionally teaches wherein the first region has a larger length than the second region. Accordingly, instant claim 6 is not patentably distinct over patented claim 15 and patented claim 8.
With regards to claim 8, instant claim 5 is obvious over patented claims 14 and 8. Patented claim 14 does not explicitly disclose any limitations regarding particle diameter. Patented claim 8 teaches all the limitations of independent claim 5. Independent claim 5 recites wherein the particle has a diameter which is greater than 8% of the hydraulic diameter. It would have been obvious to one of ordinary skill in the art to modify the device as taught by claim 14 with the particle diameter as taught by claim 5, as optimization of a results-effective variable in order to use fluid flow properties to effectively separate particles.
With regards to claim 9, instant claim 1 is obvious over patented claims 9 and 8. This combination does not explicitly disclose wherein the separator is configured to separate particles up to three times as dense as the liquid. Patented claim 3 additionally teaches wherein the particles are up to three times as dense as the liquid. It would have been obvious to one of ordinary skill in the art to modify the device of patented claims 9 and 8 with the embodiment taught by claim 3, as optimization of a results-effective variable in order to use fluid flow properties to effectively separate particles.
With regards to claim 10, instant claim 1 is obvious over patented claims 9 and 8. This combination does not explicitly disclose wherein the inner radius is greater than or equal to 10 mm and less than or equal to 100 mm. MPEP 2144.04(IV)(A) teaches that changes in size are not sufficient to distinguish a claimed device from the prior art provided that the claimed dimensions would not perform differently than the prior art devices—please see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Accordingly, claim 10 is not patentably distinct over patented claims 9 and 8.
With regards to claim 11, instant claim 1 is obvious over patented claims 9 and 8. This combination does not explicitly disclose wherein the liquid channel is one of a plurality of identical liquid channels defined by the substrate. Per MPEP 2114.04(VI)(B), duplication of parts does not have patentable significance unless a new and unexpected result is produced—please see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Accordingly, claim 11 is not patentably distinct over patented claims 9 and 8.
With regards to claim 12, instant claim 1 is obvious over patented claims 9 and 8. This combination does not explicitly disclose wherein the liquid channel has a width ranging from 400 µm to 1000 µm. MPEP 2144.04(IV)(A) teaches that changes in size are not sufficient to distinguish a claimed device from the prior art provided that the claimed dimensions would not perform differently than the prior art devices—please see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Accordingly, claim 12 is not patentably distinct over patented claims 9 and 8.
With regards to claim 13, instant claim 1 is obvious over patented claims 9 and 8. This combination does not explicitly disclose wherein the liquid channel has a height ranging from 100 µm to 500 µm. MPEP 2144.04(IV)(A) teaches that changes in size are not sufficient to distinguish a claimed device from the prior art provided that the claimed dimensions would not perform differently than the prior art devices—please see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Accordingly, claim 13 is not patentably distinct over patented claims 9 and 8.
With regards to claim 14, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 9 additionally teaches wherein the liquid channel has a rectangular cross-section along the liquid channel length, which reads on a polygonal cross-section.
With regards to claim 15, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 9 additionally teaches wherein the liquid channel has a rectangular cross-section along the liquid channel length.
With regards to claim 16, instant claim 1 is obvious over patented claims 9 and 8. This combination does not explicitly disclose wherein the channel width of the liquid channel does not change more than 10 mm per mm liquid channel length along the liquid channel. MPEP 2144.04(IV)(A) teaches that changes in size are not sufficient to distinguish a claimed device from the prior art provided that the claimed dimensions would not perform differently than the prior art devices—please see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Accordingly, claim 16 is not patentably distinct over patented claims 9 and 8.
With regards to claim 17, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 11 teaches all the limitations of claim 9, and additionally teaches wherein the channel width increases at a constant rate between the inlet and the outlet. Accordingly, instant claim 17 is not patentably distinct over patented claims 11 and 8.
With regards to claim 18, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 9 additionally teaches wherein the liquid channel has a first region having a first channel width (as read on the liquid channel having a rectangular cross-section along the liquid channel length) and a tapered region (as read on the tapered region). Patented claim 10 teaches all the limitations of claim 9, and additionally teaches wherein the width increases towards the outlet. Accordingly, instant claim 18 is not patentably distinct over patented claims 10 and 8.
With regards to claim 19, instant claim 1 is obvious over patented claims 9 and 8. Patented claim 14 teaches all the limitations of claim 9, and additionally teaches wherein the channel has a plurality of channel regions. However, the combination of patented claims 14 and 8 does not explicitly disclose wherein each region has an increasing channel width towards the outlet. Patented claim 10 teaches all the limitations of claim 9, and additionally teaches wherein the channel width increases towards the outlet. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device including a plurality of channel regions as taught by patented claim 14 and 8 with the increasing widths as taught by claim 10, as routine optimization of a results-dependent variable in order to use fluid flow properties to effectively separate particles.
With regards to claim 20, instant claim 1 is obvious over patented claims 9 and 8. Claim 9 does not explicitly disclose wherein the liquid channel is a microfluidic channel. Patented claim 5, from which claim 8 depends, teaches a liquid channel with a height and width measured in µm, which reads on a microfluidic channel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device as taught by patented claim 9 in view of patented claim 8 with the microfluidic channel taught by patented claim 5, for the benefit of making use of the unique laminar flow properties found in microfluidic devices.
Allowable Subject Matter
Claims 1, 2, 4 – 6, and 8 – 20 define over Toner et al. The sole remaining issue is the obviousness double patenting rejection over USP 12611619.
The following is a statement of reasons for the indication of allowable subject matter:
Applicant’s arguments regarding the novelty of “wherein the inner radius is constant from the inlet to the outlet” are persuasive. This limitation amounts to more than an obvious modification of size, shape, or structure, and would result in a fundamentally different device than that taught by Toner et al.
Toner et al, relied upon in the non-final rejection filed 05 December 2025, teaches a device that could be considered to have a constant inner radius; that of the sinusoidal inner radius shown in Figure 1B. However, this embodiment does not meet the structure of “an inner radius around a central axis.”
Likewise, the references made of record but not relied upon in the non-final rejection filed 05 December 2025 fail to teach an inner radius which is constant from the inlet to the outlet. Each of these teaches planar, spiral embodiments, in which the inner radius must increase as the spiral moves outwards. The claimed invention, with its central axis and inner radius wound around said axis in a non-planar fashion, is novel over the prior art.
Accordingly, claim 1 is in condition of allowance because the prior art fails to teach or suggest the limitation “the liquid channel has an inner wall defining an inner radius around a central axis and an outer wall defining an outer radius around the central axis, wherein the inner radius is constant from the inlet to the outlet.”
Claims 2, 4 – 6, and 8 – 20 are in condition for allowance due to their dependance on claim 1.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON CLAIRE GERHARD whose telephone number is (571)270-0945. The examiner can normally be reached M-F, 9:00 - 5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISON CLAIRE GERHARD/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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