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 Arguments
Applicant's arguments filed June 29, 2026 have been fully considered but they are not persuasive.
As to the 102 rejection applicant states”
“The Examiner rejected claims 1-3, 5, 6, and 8 under 35 U.S.C. § 102 as anticipated by Wong et al., US 2019/0126268. Applicant respectfully traverses this rejection.
Applicant respectfully traverses the anticipation rejection over Wong. As amended, claim 1 requires a transport region defined between first and second hydrophobic transport surfaces, the transport region extending from a broad first end to a narrow second end and having a gap distance that decreases from the broad first end toward the narrow second end. Claim 1 further requires that evaporation-induced reduction in volume of the liquid droplet causes passive translation of the droplet from the broad first end toward the narrow second end without applying an external driving force.
Wong does not disclose this limitation. Wong describes a biochemical analysis system in which a sample is autonomously transported through slippery inlet channels to a reaction chamber by channel geometry. Wong explains that the transport mechanism is a geometry- induced surface-force imbalance, including a Laplace-pressure driving force and a surface- retention force associated with contact-angle hysteresis. Wong expressly describes movement caused by Laplace pressure differences and contact-angle hysteresis, and states that for hydrophobic surfaces with negligible hysteresis, the droplet moves toward the diverging direction under the described condition-meaning under the conditions described in Wong the transport is in a direction opposite of that presently claims. Wong's disclosure is therefore directed to geometry/Laplace-pressure-driven transport on slippery, low-hysteresis surfaces, not evaporation-induced transport caused by reduction of droplet volume and that results in transport in a direction opposition of what is described in the instant application and claims. As described in the instant application, the evaporation-driven transport has the added benefit of providing for the directed transport and concentration of a liquid sample without the need for external driving forces.
The difference is not merely semantic. The present claims require the droplet to translate toward the narrow second end as the droplet evaporates and decreases in volume. The present specification explains that, as volume decreases during evaporation, the droplet's equilibrium location shifts toward the cusp of the non-parallel hydrophobic surfaces. Wong neither teaches nor suggests using evaporation-induced reduction in droplet volume to cause movement toward a narrow/cusp end. Accordingly, Wong does not disclose every limitation of amended claim 1, and the anticipation rejection should be withdrawn.
The examiner respectfully disagrees. It is noted that the rejected claims are apparatus claims. However, applicant’s arguments are directed to an evaporation process. The name “evaporation-induced liquid droplet transport apparatus” does not provide for any structural elements of the apparatus. The apparatus is defined by the positively claimed structural elements listed on separate intended lines in the body of the claim after the transitional phrase. Here, those structural elements are a first plate having a first hydrophobic surface, a second plate having a second hydrophobic surface facing the first hydrophobic surface, and one or more liquid droplets positioned between the first and second plates. The claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Applicant has provided for any structural differences. There is no requirement for the apparatus to be used in any process at all including performing any evaporation of the one more liquid droplets as may be intended by applicant. An owner, possessor, operator, of the apparatus not required to use the apparatus in any method at all. It is noted that whether not the liquid droplets are evaporated is matter of choice and depends on a number of factors not provided for in the claim including but not limited to the volatility of the liquid, temperature, and pressure that may be is chosen to be subjected to, exposed to the apparatus. It is noted that the apparatus is not claimed as comprising any structure that can provide heating to cause any droplet to evaporate. Whether not Wong discloses that an intended use of the apparatus is for evaporation or not is not at issue because such intended use is not a structural element of the apparatus. See above. However, there is nothing precluding one from choosing of placing the apparatus Wong in an environment where evaporation (natural phenomena, law of nature) of a liquid droplet can occur, whether such evaporation of liquid droplet is desired not, if the conditions are sufficient for such evaporation of the liquid droplet will naturally occur over time.
As stated in the prior Office Action, Wong clearly provides for the same structural elements claimed as defining the claimed apparatus. Therefore, the rejection is hereby maintained.
As to the 103 rejections of claims 4 and 9-10, applicant's arguments are the same as those directed to claim 1 and addressed above. Therefore, the rejections are maintained for the same reasons stated above.
As to the 103 rejections of the method claims based upon Wong in view of Pollack, applicant states:
“Pollack does not teach or suggest the amended method step requiring that evaporation-induced reduction in droplet volume causes passive translation of the droplet from the broad first end toward the narrow second end. Nothing in Wong nor Pollack fairly teaches or suggests that evaporation would result in droplet translation in the apparatus of Wong and in a direction that is opposite the direction described in Wong The examiner only arrives at this conclusion using Applicant's own disclosure as a roadmap to reconstruct the claims.
Pollack broadly defines 'droplet operation' to include many different operations, including transporting and vaporizing. But Pollack's broad list of possible operations does not disclose the causal relationship now required by claim 11. Pollack does not teach that evaporation or vaporization of a droplet causes the droplet to move directionally through a hydrophobic, non- parallel transport region toward a narrow/cusp end. Rather, Pollack describes droplet actuators in which droplet manipulation may be electrode-mediated, such as by electrowetting, dielectrophoresis, or Coulombic forces, and also lists pressure, vacuum, magnetic, mechanical, and other techniques for controlling liquid flow.
Thus, the proposed combination relies on Applicant's disclosure as a roadmap: taking Wong's geometry-based/Laplace-pressure transport and Pollack's generic mention of vaporization, then reconstructing the presently claimed evaporation-induced transport mechanism. However, the proposed combination falls short because neither reference teaches or suggests that evaporation-induced volume reduction would result in transport in the device of Wong yet alone in transport in a direction opposite the directed described by Wong. Accordingly, Applicant respectfully submits that the § 103 rejection of claims 11-13, 15-16, 18, and 20 is overcome.”
The examiner disagrees. The rejection does not require that apparatus of Wong to be reconstructed as asserted by applicant. The apparatus of Wong comprises that same structural elements as that of the instant apparatus claims as clearly stated in the Office Action and evidenced by drawings. As to the method of using such apparatus. Applicant did not invent evaporation nor evaporation-induced liquid movement. Pollack provides for a number of known techniques for transporting liquid droplets. While Pollack may not specify that vaporization provides for transport of the droplets. It is noted that Pollack states: “any combination of droplet operations that are sufficient to result in the combination of the two or more droplets into one droplet may be used” (paragraph 0024). Therefore, any combination of the droplet operations, including heating, vaporizing, etc. can be employed to provide movement of the droplets.
Furthermore, as evaporation-induced liquid flow was previously known in the art. For example, Khademhosseini; Ali et al., US 2011/0300570 discloses Evaporation has also been used as driving force in pump-less' microfluidic devices. Evaporation is a well-known issue when handling small liquid volumes, especially in microfluidic devices. Evaporation in microfluidic devices has proven to be a useful tool in several applications, including generating slow, steady flows in microchannels used for chromatography, DNA analysis devices, and sample concentration. (paragraph 0011). Lee et al., US 2016/0144362 discloses [in microfluidic devices] gravity-driven, evaporation-driven, and droplet-based flow techniques take advantage of physical phenomena, and are highly dependent on environmental conditions that greatly influence reproducibility and reliability. (paragraph 0015). Weibel et al., US 2013/0130232 teaches that power-free microfluidic pumping methods such as, for example, droplet-based passive pumping, evaporation, capillary flow, and gravity-driven flow, do not require external power sources. (paragraph 0008).
Therefore, recognizing that the droplets can be moved via evaporation and employing such with an apparatus as that of Wong does not require any special knowledge and skills beyond that of one of ordinary skill in the art. As previously stated, it would have been obvious to and within common sense, knowledge, and skill of one of ordinary skill in the art before the effective filing date of the invention to incorporate within the method of Wong providing for exposing the apparatus to “conditions” (outside, in a room, or any other location of temperature, pressure, etc. or providing a heat source directed at the apparatus) to provide for vaporization/evaporation of a droplet as a technique to move the droplet in whatever direction of movement is desired including in a direction from the wide end of the gap of the narrow end of the gap of Wong.
Therefore, the claims are rejected as given herein.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements or steps listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
It is noted that the phrases “one or more” and “at least one” only requires one. Therefore, the phrase “one or more liquid droplets” only requires one liquid droplet.
As to claims 10 and 14, it is noted that claims do not provide for any definitive degree (value) of curvature. Although no transport “passive transport” is ever required be performed and does not define the apparatus of claim 10, it is presumed than any degree of curvature can alter a passive translation of the liquid droplet.
It is noted that “colloidal particles” are not specified in the claims being any specific particles and “solutes” are not defined as being any specific chemical, substance, matter, etc.
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 1-6 and 9-18 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.
As to claims 1 and 11, although driving force is not structure and there is no structure claimed as an element of the apparatus that can provide for any driving force, it is unclear what the unspecified “external driving force” is required to be external relative to because the claims do not provide for such. Any force can be considered external relative to something. If applicant intends for such force to be external to the apparatus, then the claims should recite such. However, it noted that exclusion of all external forces contradicts the claims because a means that would cause heating, temperature, etc. that would provide for evaporation is also external to the apparatus. Therefore, it is unclear how the claims can exclude all “driving forces” sources that are external of the apparatus.
Dependent claims 2-6, 9-10, and 12-18 are rejected via dependency upon a rejected claim.
As to claim 4, it is unclear if the claim is intended to require the first and second plate to be in direct structural contact with each other because the claim does not state what the plates are required to be in contact with. Furthermore, it is noted that claim does not provide for any specific type of contact. See also claim 17. Furthermore, it is noted that the claims appear to contradict claims 1 and 11 which both recite a gap exists between the first and second transport surfaces …from the first broad end and the second narrow end. Therefore, if the plates are in direct contact with each other at the narrow end, then no gap exists at the narrow end.
As to claim 5 and 18, it appears that the claims are redundant because both claims 1 and 11 previously recite that a gap exists between the first and second transport surfaces …from the first broad end to the second narrow end.
As to claim 10, although no passive translation of any liquid droplet is ever required to occur, it is unclear what/which droplet is being referenced by “the liquid droplet” because claim 1 previously recites “one or more liquid droplets”
Claims 12-18 are rejected via dependency upon a rejected claim. See also applicable rejections above.
As to claim 17, it is unclear if the claim is intended to require the first and second plate to be in structural contact because the phrase “make contact…” appears to be directed to what occurs during use rather than what is structurally required. It is unclear what the first and second plates are required to “make contact” be contact with because the claim does not clearly recite such. See also rejection of claim 4 above.
Claim Rejections - 35 USC § 102
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) 1-3 and 5-6 is/are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Wong et al., US 2019/0126268.
As to claims 1-3 and 5-6, Wong discloses method of transporting a droplet employing a device as shown in Figure 3A and 5A comprising a first plate and a second plate and a liquid (solute) droplet between in gap and in contact with respective transport surfaces of first and second transport surfaces. The second plate is positioned at an acute angle about 14 degrees with respect to the first plate. The plates have hydrophobic (hydrophobic agent) transfer surfaces. (paragraph 0015, 42, 48, 52, 70 and Figures 3A and 5A).
As to claim 5, it is noted that a “narrow” gap is between the plates at a “narrow” end.
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) 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al., US 2019/0126268 as applied to claims 1-3 and 5-6 above, and further in view of Le Berre et al., US 20180250670 A1.
Wong does not disclose that the first plate and second plate are in contact at the narrow end; the first plate and the second plate each have a length between tens of nanometers to several centimeters; and the one or more liquid droplets have a volume between tens of nanoliters to tens of milliliters.
The Applicant is advised that the Supreme Court recently clarified that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR Int’l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007) (see MPEP § 2143).
Common sense, predictability, knowledge, and skill of one of ordinary skill in the art may suffice to establish obviousness.
Le Berre disclose a device comprising first and second substrates in contact with each other for manipulating a liquid droplet between the substrates. See Figures 2b-2c and 3a.
It would have been obvious to and within common sense, knowledge, and skill of one of ordinary skill in the art before the effective filing date of the invention to modify the device of Wong such that the first and second plates contact to manipulate the liquid droplet between the plates as taught by Le Berre.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al., US 2019/0126268 as applied to claims 1-3 and 5-6 above, and further in view of Baroud et al., US 2015/0267246.
Wong does not disclose the transport plates as having a curved surface.
Baroud discloses a microfluid device for manipulating fluid drops. (Abstract). The device comprises first and second plates having respective transport surfaces. A surface of the plates can be curved to control/manipulate the form and movement of the drop between the transport surfaces. (Figures 2-4B, 5B, 6B, 8-9, 11, 13).
It would have been obvious to and within common sense, knowledge, and skill of one of ordinary skill in the art before the effective filing date of the invention to modify the device of Wong to include curved transport surfaces to provide for manipulation and control movement of the droplet between the plates as taught by Baroud.
Claim(s) 11-13, 15-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al., US 2019/0126268 as applied to claims 1-3 and 5-6 above, and further in view of Pollack et al., US 2011/0104816; Khademhosseini; Ali et al., US 2011/0300570; Lee et al., US 2016/0144362; and/or Weibel et al., US 2013/0130232.
Pollack discloses a microfluid device and method for manipulating fluid droplets. The device comprises first and second plates having respective transport surfaces. The method comprises performing droplet operations including transporting a droplet from one location to another in any direction and vaporizing a droplet. Pollack also teaches that any combination of droplet operations that are sufficient to result in the combination of the two or more droplets into one droplet may be used” (paragraph 0024). Therefore, any combination of the droplet operations, including heating, vaporizing, etc. can be employed to provide movement of the droplets. (paragraph 0024; Figures 1A-2B, 12A).
Khademhosseini; Ali et al., US 2011/0300570 discloses evaporation has also been used as driving force in pump-less' microfluidic devices. Evaporation is a well-known issue when handling small liquid volumes, especially in microfluidic devices. Evaporation in microfluidic devices has proven to be a useful tool in several applications, including generating slow, steady flows in microchannels used for chromatography, DNA analysis devices, and sample concentration. (paragraph 0011).
Lee et al., US 2016/0144362 discloses [in microfluidic devices] gravity-driven, evaporation-driven, and droplet-based flow techniques take advantage of physical phenomena, and are highly dependent on environmental conditions that greatly influence reproducibility and reliability. (paragraph 0015).
Weibel et al., US 2013/0130232 teaches that power-free microfluidic pumping methods such as, for example, droplet-based passive pumping, evaporation, capillary flow, and gravity-driven flow, do not require external power sources. (paragraph 0008).
It would have been obvious to and within common sense, knowledge, and skill of one of ordinary skill in the art before the effective filing date of the invention to incorporate within the method of Wong a known, pumpless, reproducible, and reliable technique such as heating to provide for evaporation to move the droplet without external power as taught by Pollack, Khademhosseini, Lee, and Weibel.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al., US 2019/0126268 in view of Pollack et al., US 2011/0104816; Khademhosseini; Ali et al., US 2011/0300570; Lee et al., US 2016/0144362; and/or Weibel et al., US 2013/0130232 as applied to claims above, and further in view of Baroud et al., US 2015/0267246.
Wong does not disclose the transport plates as having a curved surface.
Baroud discloses a microfluid device for manipulating fluid drops. (Abstract). The device comprises first and second plates having respective transport surfaces. A surface of the plates can be curved to control/manipulate the form and movement of the drop between the transport surfaces. (Figures 2-4B, 5B, 6B, 8-9, 11, 13).
It would have been obvious to and within common sense, knowledge, and skill of one of ordinary skill in the art before the effective filing date of the invention to modify the modified teachings of Wong to provide for a device that includes curved transport surfaces to provide for manipulation and control movement of the droplet between the plates as taught by Baroud.
31. Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al., US 2019/0126268 in view of Pollack et al., US 2011/0104816; Khademhosseini; Ali et al., US 2011/0300570; Lee et al., US 2016/0144362; and/or Weibel et al., US 2013/0130232 as applied above, and further in view Le Berre et al., US 20180250670 A1.
Wong does not disclose that the first plate and second plate “make contact” at the second end.
The Applicant is advised that the Supreme Court recently clarified that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR Int’l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007) (see MPEP § 2143).
Common sense, predictability, knowledge, and skill of one of ordinary skill in the art may suffice to establish obviousness.
Le Berre discloses a device comprising first and second substrates in contact with each other for manipulating a liquid droplet between the substrates. See Figures 2b-2c and 3a.
It would have been obvious to and within common sense, knowledge, and skill of one of ordinary skill in the art before the effective filing date of the invention to modify the device of Wong such that the first and second plates contact to manipulate the liquid droplet between the plates as taught by Le Berre.
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 BRIAN R GORDON whose telephone number is (571)272-1258. The examiner can normally be reached M-F, 8-5:30pm; off every other Friday..
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/BRIAN R GORDON/Primary Examiner, Art Unit 1798
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