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 .
Response to Amendment
Rejection of Claim(s) 1-4 and 6-14 under 35 U.S.C. 102(a)(1) as being anticipated by Barman (US 2019/0351415) has been modified in light of applicant’s amendments.
Rejection of Claim(s) 5 under 35 U.S.C. 103 as being unpatentable over Barman has been modified in light of applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicants recite “to apply a hydraulic pressure to the first liquid” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
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.
Claim(s) 1-4 and 6-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barman (US 2019/0351415).
Regarding claim 1, Barman teaches a microfluidic device comprising a) at least partly filling a container (122) with an amount of a first liquid (111); b) causing a second liquid (121) to flow into the container (122) via a first passage (120) to apply a hydraulic pressure (Barman discloses “when increasing the cross section of channels 110, 120, lower capillary pressure may be generated which results in a lower force being required to deform the meniscus of the capillary stop valves at the interfaces 112, 122. Hence, to achieve lower activation voltages, larger channel cross sectional areas may be used. However, if the blocking pressure of the capillary stop valve is too low, the valve may fail”) to the first liquid, thereby forcing at least some of the first liquid (111) out of the container (122), in order to discharge at least some of the first liquid (111) through a second passage (130) (Refer to abstract); The first passage (120) has a first resistance (capillary stop valve) to the flow of the first liquid, and the second passage has a second resistance (capillary stop valve) to flow of the second liquid. Applicants further recite “wherein the first resistance is higher than the second resistance”, Barman teaches different liquids such as reagents and samples, different cross sections of channels and capillary stop valves which inherently all change the resistance of the fluid flow in the passage. Barman discloses the size of the channel aids in minimizing the restriction of flow and this can be particularly useful when viscous fluids are involved. (Refer to paragraph [0018]) (Refer to Figures 10-10B)
Regarding claim 2, supplying a third liquid downstream of the container in order to mix the first liquid with the third liquid at a predetermined concentration of first liquid. (Refer to paragraph [0019])
Regarding claim 3, the first liquid (111) is supplied via a first inlet (111), and the second liquid (121) is supplied via a separate, second inlet (121). (Refer to Figures 10-10B)
Regarding claim 4, a viscosity of the second liquid is higher than a viscosity of the first liquid. (Refer to paragraph [0018])
Regarding claim 6, a first inlet (111), for letting the first liquid into the chip; a container (122) connected to the first inlet (111), for at least temporarily containing an amount of first liquid; a second inlet (121) connected to the container (122) via a first passage, for letting in a second liquid into the chip; a second passage (130) connecting the container (122) to an outlet (end of passage 130), allowing flow of the first liquid (111) into the second passage (130), thereby delivering the first liquid (111). As shown in Figure 10b, the cross sections of the passages/channels are different which inherently means the first passage has a first resistance to liquid flow, and the second passage has a second resistance to liquid flow.
Regarding claim 7, the first resistance is higher than the second resistance. As shown in Figure 10b, the cross sections of the passages/channels are different which inherently means the first passage has a first resistance to liquid flow, and the second passage has a second resistance to liquid flow.
Regarding claim 8, a third passage (150) connected to the second passage (130) downstream of the container for supplying a third liquid to the second passage, the chip thereby being suitable for mixing the third liquid with the first liquid. (Refer to Figure 10a)
Regarding claim 9, a third inlet (151) connected to the second and/or third passage.
Regarding claim 10, a minimum cross sectional area of the first passage is smaller than a minimum cross sectional area of the second passage. (Refer to Figures 10a and 10b)
Regarding claim 11, a minimum cross sectional area of the first passage is smaller than a minimum cross sectional area of the second passage, wherein the minimum cross sectional area of the first passage is smaller than a minimum cross sectional area of the third passage. (Refer to Figures 10a and 10b)
Regarding claim 12, a capillary stop valve (112) between the container and the first passage and/or a capillary stop valve between the container and the second passage.
Regarding claim 13, an absorber (electrode) connected to the first inlet.
Regarding claim 14, a vent (air gap) connected to the first passage at a position beyond the container as seen from the inlet.
Claim Rejections - 35 USC § 103
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 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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barman.
Refer above for the teachings of Barman.
Barman fails to teach the first resistance is at least approximately ten times higher than the second resistance.
Barman teaches discloses the size of the channel aids in minimizing the restriction of flow and this can be particularly useful when viscous fluids are involved. Barman further teaches the cross-sectional area of the output channel can be larger at the third interface than it is at the first interface. This decoupling can be useful when the microfluidic device is being used for viscous fluids and especially when the fluid comprises large particles, for example biological cells. (Refer to paragraphs [0018] and [0022])
Therefore, it would have been obvious to one having ordinary skill in the art to provide the device of Barman where the first resistance is at least approximately ten times higher than the second resistance in order to accommodate highly viscous fluids during processing.
Response to Arguments
Applicant's arguments filed 5/8/2026 have been fully considered but they are not persuasive. Applicants argue that Barman fails to teach “to apply a hydraulic pressure to the first liquid”. Examiner respectfully disagrees. Barman teaches when increasing the cross section of channels, lower capillary pressure may be generated which results in a lower force being required to deform the meniscus of the capillary stop valves at the interfaces. Hence, to achieve lower activation voltages, larger channel cross sectional areas may be used. However, if the blocking pressure of the capillary stop valve is too low, the valve may fail. Therefore, Barman teaches “hydraulic pressure to the first liquid”. Applicants further argue that Barman fails to teach a second passage connecting the container to an outlet, allowing flow of the first liquid into the second passage, thereby delivering the first liquid”. Examiner respectfully disagrees. Refer to the rejection of claim 6 above.
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.
/JYOTI Mutreja/ Primary Examiner, Art Unit 1798
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