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 species: A-1; B-2; C-1; D-2; and E-2 in the reply filed on 03/25/2026 is acknowledged.
Claims 1-8 are being examined.
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 1-8 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.
Claims 1-8 are not clear with respect to what applicant is claiming. The claims do not clearly set forth the metes and bounds of the patent protection desired. Claim 1 is unclear reciting “A film composite which is folded from a single film to form a plurality of layered film layers and comprises [...]”. It is unclear whether the applicant is claiming a composite comprising a single film layer or a plurality of film layers. It is advised to set forth the claim in a conventional preamble and body format to clearly distinguish what the applicant is claiming. In addition, the claim is unclear whether the claim is directed to a film or method of making a film (i.e., [...] which is folded [...] to form a plurality of layered film layers [...] formed in that film layers with embossed recesses are covered by the respective film layer adjacent in the layering direction). Further, the phrase “wherein” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention as the phrase includes elements that have not been positively claimed. Furthermore, the phrase "microfluidic structures of another plane [...]" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "microfluidic structures of another plane via through-holes in at least one film layer"), thereby rendering the scope of the claim unascertainable. For the reasons given above, claims 2-8 are similarly unclear.
Claim 1 recites the limitation "film layers" in L3 is unclear if the limitation is directed to the plurality of layered film layers in L1-2 or another element.
Claim 1 recites the limitation "the respective film layer" in L3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the film layers" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 is unclear reciting "[...] and, on one surface side of the carrier film, a lacquer layer with embossed recesses".
Claim 4 recites the limitation "the through-holes" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 is unclear reciting "which consists of [...]", because the term “which” is undefined.
Claim 5 is unclear reciting "their".
Claim 6 recites the limitation "microfluidic structures" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the film layers" in L2. There is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-8 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 et al. teach:
1. A film composite comprises microfluidic structures (e.g., 500) in different planes (see Fig. 7 for example), wherein the microfluidic structures are formed in that film layers with embossed recesses are covered by the respective film layer adjacent in the layering direction (see Figs. 5c, 6b, 7 for example), and wherein microfluidic structures of one plane are connected to microfluidic structures of another plane via through-holes in at least one film layer (see Figs. 5c, 6b, 7 for example).
Regarding claim 1, Cooksey et al. meet all the structural limitations recited by the instant invention. Applicants’ preamble recites “A film composite which is folded from a single film to form a plurality of layered film layers”. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
With regard to limitations in claims 1, 2, 4, 6-8 (e.g., to form a plurality of layered film layers [...]; which is obtainable by [...]; are created by [...], 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 claims 3, 5, Cooksey et al. teach:
3. The film composite according to claim 1, wherein at least one of the film layers comprises a carrier film (i.e., one side of the double-sided tape in Fig. 7).
5. The film composite according to claim 1, which consists of congruent film layers, which lie directly on top of each other, and folded edges (see Fig. 7 for example).
Conclusion
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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