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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2 & 4-7 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Cooksey et al. (US 2012/0285560 A1).
Regarding claim 1, Cooksey teaches:
1. A film composite comprising:
a single film (e.g., double-sided tape: i.e., double-sided silicone tape 3M 96042 or double-sided acrylic/silicone tape 3M 9731 ¶ 0041+) comprising a plurality of foldable sections referred to as film layers of the single film (see a plurality of layers 620 in Fig. 6b for example), the film layers of the single film having been folded to form a layered structure, and microfluidic structures in different planes of the layered structure (see the microfluidic device 500 in different planes of the layers as shown in Figs. 6a-6b for example), the microfluidic structures having been formed by covering at least one film layer of said film layers of the single film (see the microfluidic device 500 formed by covering at least one layer as a folded form as shown in Figs. 6b-6c for example), said at least one film layer containing embossed recesses, by the respective film layer adjacent in the layering direction (see ¶ 0042, 0053 & Fig. 6b for example), and
at least some of the microfluidic structures of one plane of said microfluidic structures in different planes are connected to microfluidic structures of another plane of said microfluidic structures in different planes via through-holes in at least one film layer of said film layers of the single film (see the second layer of one plane and the third layer on another plane connected via through-holes (e.g., 605) as shown in Figs. 6a-6b for example).
With regard to limitations in claims 2, 4, 8 (e.g., which is obtainable by folding a film [...]; created by laser cutting; [...] exclusively thermal bonding, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claim 4, Cooksey teaches: The film composite according to claim 1, wherein said through-holes are created by cutting, embossing, etching, or other ablation method ¶ 0042. It is noted that the limitation “[...] created by laser cutting” is given little patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.), see MPEP 2113 and 2114. Therefore, the through-holes as recited in claim 4 is the same as the through-holes disclosed by Cooksey, as set forth above, the claim is unpatentable even though the through-holes of Cooksey was made by a different process. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Regarding claims 5-7, Cooksey teaches:
5. The film composite according to claim 1, wherein the film composite consists of congruent ones of said film layers of the single film that lie directly on top of each other over an entire surface of each of said congruent film layers, and folded edges (see the layers 620 of the microfluidic device 500 folded directly on top of each other as shown in Figs. 6b-6c; see also Fig. 7 for example).
6. The film composite according to claim 1, wherein said microfluidic structures in different planes include microfluidic structures communicating with one another formed in that two of said film layers of the single film adjacent in the layering direction have embossed recessions which face one another and only partially overlap one another in the layering direction (see the second layer of one plane and the third layer on another plane communicating with one another in a direction have embossed recessions (e.g., 605) as shown in Figs. 6a-6b; see also Fig. 7 for example).
7. The film composite according to claim 1, comprising in the microfluidic structures at least one modification selected from functionalisation, nanostructuring, hydrophobisation and heating agent filling (e.g., Teflon, PDMS, oil, membrane ¶ 0044, 0050-0053).
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.
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(s) 3 & 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cooksey et al. (US 2012/0285560 A1) in view of Smolka et al. (WO 2020/187990 A1).
Regarding claims 3 & 8, Cooksey teaches: The film composite according to claim 1, wherein at least one of said film layers of the single film comprises a carrier film (i.e., one side of the material such as polymers, plastics, elastomers (e.g. poly(dimethylsiloxane)), paper, adhesive, liners, foil, porous material, double-sided tape, glasses, and composites. ¶ 0040) having, on one surface side thereof, a layer with embossed recesses (see ¶ 0042, 0053 for example). The film composite according to claim 1, wherein at least one of said film layers of the single film has a carrier film (i.e., one side of the material such as polymers, plastics, elastomers (e.g. poly(dimethylsiloxane)), paper, adhesive, liners, foil, porous material, double-sided tape, glasses, and composites. ¶ 0040) and, on at least one surface side of the carrier film, a layer with embossed recessions (see ¶ 0042, 0053 for example), wherein the recessions are present in said film layers of the single film bonded to the adjacent film layer (see ¶ 0042, 0053 & Figs. 6a-6b for example).
However, Cooksey does not explicitly teach: 3. The film composite according to claim 1, wherein at least one of said film layers of the single film comprises a carrier film having, on one surface side thereof, a lacquer layer with embossed recesses. 8. The film composite according to claim 1, wherein at least one of said film layers of the single film has a carrier film and, on at least one surface side of the carrier film, a lacquer layer with embossed recessions, wherein the recessions are present in a thermoplastic lacquer layer of said film layers of the single film and the lacquer layer is bonded to the adjacent film layer by exclusively thermal bonding.
Smolka teaches: A film composite wherein at least one of film layers comprises a carrier film (e.g., 1) having, on one surface side thereof (see Fig. 1), a lacquer layer (e.g., 2) with embossed recesses (e.g., 4). A film composite wherein at least one of film layers has a carrier film (e.g., 1) and, on at least one surface side of the carrier film, a lacquer layer (e.g., 2) with embossed recessions (e.g., 4), wherein the recessions are present in a thermoplastic lacquer layer (see P5/¶ 1) of said film layers of the single film (see Fig. 1) and the lacquer layer is bonded to the adjacent film layer by thermal bonding (see P5/¶ 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the device of Cooksey with a lacquer layer with embossed recesses, as taught by Smolka for producing microstructures with a high throughput and at a lower manufacturing cost (Smolka P5/¶ 7-14).
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.
The amendments have been considered and 35 USC § 112 rejections have withdrawn.
Applicant is thanked for their thoughtful amendments to the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHARLES CAPOZZI can be reached at (571)270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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