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 Group I, claims 1-8, in the reply filed on 27 March 2026 is acknowledged.
Drawings
The drawings are objected to. The specification describes many drawings/figures in reference to the colors shown in the drawings/figures, however, color drawings have not been provided. It may be important to note that color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
As to claim 1, the claim recites the limitation “the main microchannel” and “the same main microchannel”. There is insufficient antecedent basis for these limitations in the claim. There is antecedent basis for “the at least one fluidic main microchannel”.
Further as to claim 1, the claim recites the limitation “the permselective membrane”. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “the at least one anion-permselective membrane” and “the at least one cation-permselective membrane”.
Further as to claim 1, the claim recites the limitations “the auxiliary channel” and “the same auxiliary channel”. There is insufficient antecedent basis for these limitations in the claim. There is antecedent basis for “the at least two auxiliary channels”.
Further as to claim 1, the claim recites the limitation “the droplet”. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “the at least one water-in-oil droplet”.
Further as to claim 1, the claim recites the limitation of “an auxiliary channel” at line 11. However, earlier in the claims the limitation “at least two auxiliary channels” is already recites. Therefore, it is unclear as to if the later limitation intends to refer back to the earlier limitation or to a new and separate limitation. Further, raising issue with later instances of recitations related to auxiliary channels.
As to claim 2, the claim recites the limitation “the droplet”. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “the at least one water-in-oil droplet”.
As to claim 3, the claim recites the limitation “the walls”. There is insufficient antecedent basis for this limitation in the claim.
As to claim 4, the claim recites the limitation “the droplet”. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “the at least one water-in-oil droplet”.
Further as to claim 4, the term “about” in the claim is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term about renders indefinite the volume of the droplet.
As to claim 5, the claim recites the limitation “the outlet”. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “the at least one outlet”.
As to claim 6, the claim recites the limitation “the droplet”. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “the at least one water-in-oil droplet”.
Further as to claim 6, the claim recites the limitation “the outlet”. There is insufficient antecedent basis for this limitation in the claim. There is antecedent basis for “the at least one outlet”.
As to claim 7, the claim recites the limitation “the edge”. There is insufficient antecedent basis for this limitation in the claim.
Further as to claim 7, the claim recites the limitation of “at least one permselective membrane”. However, claim 1, upon which claim 7 depends, already introduces the limitation of at least one anion-permselective membrane and at least one cation-permselective membrane. Therefore, it is unclear as to if the limitation of claim 7 intends to refer back to the limitation of claim 1 or to new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
As to claim 8, the claim recites the limitation of “at least one permselective membrane”. However, claim 1, upon which claim 8 depends, already introduces the limitation of at least one anion-permselective membrane and at least one cation-permselective membrane. Therefore, it is unclear as to if the limitation of claim 8 intends to refer back to the limitation of claim 1 or to new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
Further as to claim 8, the claim recites that at least a portion of at least one permselective membrane is “replaced” with electrode material; however, it is unclear as to what replaced intends to mean. Replacing the entirety of the permselective membrane would raise additional issues under 35 USC 112.
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.
Claims 1, 2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0113753 A1 to Moghaddam (Moghaddam).
As to claims 1, 2 and 4, Moghaddam teaches a main fluidic microchannel (between membrane 512 and membrane 515) connected to an inlet (3) and an outlet (6), the main fluidic microchannel capable of receiving any number of flows including a flow comprising at least one water-in-oil droplet through the inlet and out of the outlet, a cation permselective membrane (515) dividing the main microchannel from a first auxiliary channel and thus considered to extend at least particularly into the main microchannel and the first auxiliary channel, and an anion permselective membrane (512) dividing the main microchannel from a second auxiliary channel and thus considered to extend at least partially into the main microchannel and the second auxiliary channel, thus extending into the same main microchannel the different auxiliary channels and capable of electrical connection, the width of the main microchannel being 0.4 mm, the apparatus specifically configured for the application of a voltage bias across the permselective membranes for desalting fluid in the main microchannel (Paragraphs 0051-0053; Figure 5; MPEP 2114). With a channel width of 0.4 mm the apparatus, depending on the fluid supply, would be capable of simultaneously contacting a droplet with volume within the range of 10 pL to 50 nL (50 nL volume having a diameter of approximately 0.458 mm when taken as spherical) with the opposing permselective membranes (MPEP 2114).
As to claim 6, Moghaddam teaches the apparatus of claim 1. Moghaddam further teaches that the outlet collects the fluid from the main microchannel for further processing (Paragraphs 0054-0056; Figure 5).
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.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Moghaddam as applied to claim 1 above, and further in view of US 2022/0042182 A1 to Dara et al. (Dara).
As to claims 3 and 8, Moghaddam teaches the apparatus of claim 1. Moghaddam teaches that fluid flows through the auxiliary channels; however, fails to specifically teach how the flow is provided through the channels. However, Dara also discusses electrolytic salt exchange and teaches that effective flow through the channel can occur via open channel flow fields (Paragraphs 0093). Therefore, it would have been obvious to form the flow through the auxiliary channels as a flow through flow fields with the reasonable expectation of effectively providing the flow as taught by Dara. The back walls of the auxiliary channels of Moghaddam are the electrodes, thus forming the flow field within the electrodes such that portions of the electrodes touch their respective auxiliary channel membrane and “replace” some of the surface area of the membranes.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Moghaddam as applied to claim 1 above, and further in view of US 2024/0238736 A1 to Daga et al. (Daga).
As to claim 7, Moghaddam teaches the apparatus of claim 1. However, Moghaddam fails to teach that at least a portion of an edge of at least one of the permselective membranes comprises notches. However, Daga also discusses ion exchange membranes and teaches that texturing the membrane surfaces allows for greater surface area and improved ion exchange capability (Paragraph 0129). Therefore, it would have been obvious to one of ordinary skill in the art to texture, considered to be notches, at least one edge surface of the membranes of Moghaddam in order to increase surface area to improve ion exchange capability as taught by Daga.
Claims 1, 2, 4, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over “Concentration Enrichment, Separation, and Cation Exchange in Nanoliter-Scale Water-in-Oil Droplets” to Anand et al. (Anand) in view of “Continuous separation of submicron-scale oil droplets in aqueous electrolyte by electrophoretic migration” to Kim et al. (Kim).
As to claims 1, 2 and 4, Anand teaches a microfluidic device comprising a fluidic main microchannel connected to an inlet and an outlet wherein at least one water-in-oil droplet is infused through the inlet, flows through the channel and is withdrawn from the outlet; two permselective membranes, a first one of the membranes separating a first auxiliary channel and the main channel and extending into each and a second permselective membrane separating a second auxiliary channel and the main channel and extending into each, thus extending into the same main microchannel the different auxiliary channels and capable of electrical connection, a droplet with a volume of, for example, 25 nL, provided to the main channel such that it simultaneously contact the two permselective membranes at opposite sides thereof, the apparatus specifically configured for the application of a voltage bias across the permselective membranes for droplet desalting (Figure 1; Droplet Generation). However, Anand teaches that the two permselective membranes are both cation exchange membranes and fails to teach that one is an anion exchange membrane. However, Anand does specifically teach that one usage of the apparatus is for ion concentration polarization (ICP) for cation exchange and concentration (Results and Discussion Page 3199).
However, Kim also discusses ICP utilizing only cation exchange membranes and teaches that with only cation exchange membranes unstable vortices can occur in the ion depletion zone and teaches that by providing the membranes oppositely as CEM and AEM these can be avoided (Page 3, Paragraph 2; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify one of the membranes of Anand to an anion exchange membrane in order to prevent unstable vortices from occurring as taught by Kim.
As to claims 5 and 6, the combination of Anand and Kim teaches the apparatus of claim 1. Kim further teaches that the apparatus is located upstream of a droplet splitting (further processing) device (Page 3202; Paragraph 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2018/0141834 A1 to Wessling et al. – Continuous electro desalination
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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