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 II, claims 12-20 in the reply filed on 12/22/2025 is acknowledged.
Claims 1-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 12-20 have been fully considered in Examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 01/11/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
Drawings
The drawings are objected to because figure 3 contains spelling errors. “Applying Nagative Photoresist” should read --- Applying Negative Photoresist ---. Further, “Thin-film Deposi using MVD” should read --- “Thin-film Deposition using MVD”. 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 12-20 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.
Claim 12 recites the limitation "the silicon-based substrate" in line 8. There is insufficient antecedent basis for this limitation in the claim. There is no prior recitation of “a silicon-based substrate” in claim 12, rendering it unclear if “the silicon-based substrate” refers to “the substrate” previously recited in claim 12 or a distinct element. Therefore, for the purposes of Examination, “the silicon-based substrate” in claim 12 has been interpreted as --- the substrate --- however, this edit may be altered if Applicant intends otherwise. Claims 13-16 are also rejected by virtue of their dependency on claim 12.
Claim 17 recites the limitation "the silicon-based substrate" in line 15. There is insufficient antecedent basis for this limitation in the claim. There is no prior recitation of “a silicon-based substrate” in claim 17, rendering it unclear if “the silicon-based substrate” refers to “the substrate” previously recited in claim 17 or a distinct element. Therefore, for the purposes of Examination, “the silicon-based substrate” in claim 17 has been interpreted as --- the substrate --- however, this edit may be altered if Applicant intends otherwise. Claims 18-20 are also rejected by virtue of their dependency on claim 17.
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.
Claims 12-17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cruchon-Dupeyrat (U.S. PG Pub No US2010/0242765A1).
Regarding claim 12, Cruchon-Dupeyrat teaches a substrate [see fig. 2, 0260, 0276] with improved water drainage (substrate provides improved drainage of water-comprising liquids [0282], such as water [0216] and/or ink [0260]), comprising:
a designated hydrophobic region (overlapping hydrophobic barrier layer disposed on substrate between microchannels [0274-0276]) (see annotated fig. 2 below) comprising hydrophobic (top/bottom) surfaces of a hydrophobic film (barrier layer [0274-0276]), wherein electronic circuitries (‘integrated microelectronics’ 5) [0260] are fabricated in the designated hydrophobic region (between channels) of the substrate (see annotated fig. 2 below); and
a designated hydrophilic region (substrate overlapping hydrophilic microfluidic channels) [0039, 0276] comprising hydrophilic surfaces (sidewalls of channels) of the substrate (see annotated fig. 2 below), wherein a drainage channel (‘microfluidic channel’) [0260, 0276] is formed in the designated hydrophilic region [0272, 0276], wherein the drainage channel (‘microfluidic channel) [0260] facilitates fluid flow [0260] from the designated hydrophobic region to a drainage/evaporation port (‘reservoir’ 1) [0260] of the substrate [0276] to prevent damage of the electronic circuitries (‘integrated microelectronics’ 5) [0260] by moisture (fluid) accumulation in the designated hydrophobic region (channels guide fluids away from hydrophobic region comprising circuitry [0260] to drainage port / reservoir [0260], thereby preventing fluids from building up or “cross-contaminating” [0040] at the electronic circuitries [0260, 0272, 0276]), and
wherein the designated hydrophobic region and the designated hydrophilic region are delineated (boundaries are defined) based on a pattern (based on the pattern of the grid-layout of the lines of the channel) for forming the drainage channel (‘microfluidic channel’) [0260].
[AltContent: arrow][AltContent: rect][AltContent: textbox (Hydrophobic of substrate region outside channel)][AltContent: arrow][AltContent: ][AltContent: arrow][AltContent: textbox (hydrophilic channel)][AltContent: arrow][AltContent: textbox (substrate)]
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Annotated fig. 2 of Cruchon-Dupeyrat
Regarding claim 13, Cruchon-Dupeyrat teaches the substrate [see fig. 2, 0260, 0276] of claim 12. Cruchon-Dupeyrat also teaches wherein the substrate [0276] comprises a silicon-based substrate [0276], and wherein the electronic circuitries (‘integrated microelectronics’ 5) fig. 2 [0260] comprise at least one electronic integrated circuit device (device(s) for controlling fluid delivery [0260] comprising microelectronic circuitry parts 5 shown in fig. 5 [0260, 0268]).
Regarding claim 14, Cruchon-Dupeyrat teaches the substrate [see fig. 2, 0260, 0276] of claim 12. Cruchon-Dupeyrat also teaches wherein the substrate [see fig. 2, 0260] comprises a silicon-based substrate [0276], and wherein the drainage channel (‘microfluidic channel’) [0260, 0276] is formed by at least:
covering, using a first photolithographic technique, the designated hydrophobic region of the silicon-based substrate with a first photoresist, wherein the designated hydrophilic region of the silicon-based substrate is not covered with the first photoresist;
deep dry etching (DRIE) into the designated hydrophilic region (overlapping channel) of the silicon-based substrate [see fig. 10, 0309] to form the drainage channel [0260, 0309];
removing all remaining first photoresist from the silicon-based substrate using a lift-off solvent;
covering, using a second photolithographic technique, the drainage channel with a second photoresist, wherein the designated hydrophobic region of the silicon-based substrate is not covered with the second photoresist;
coating, using a thin film deposition technique (CVD) [0310], the top surface of the silicon-based substrate [see fig. 10, 0310] with a hydrophobic film [0310];
removing the second photoresist material from the drainage channel using the lift-off solvent; and
removing, in response to removing the second photoresist material, the hydrophobic film from the drainage channel.
With respect to the underlined limitation(s) above, they have been considered as “product by process” limitation(s) – process steps that do not yield an identifiable structure in the product. Note that a “product by process” limitation is directed to the product per se, no matter how actually made. See In re Thorpe et al. 227 USPQ 964 (CFAC, 1985) and the related case law cited therein, which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935. (See MPEP 2113).
Regarding claim 15, Cruchon-Dupeyrat teaches the substrate [see fig. 2, 0260, 0276] of claim 14. Cruchon-Dupeyrat also teaches wherein said covering the designated hydrophobic region of the silicon-based substrate using the first photolithographic technique comprises:
coating a top surface of the silicon-based substrate with the first photoresist;
covering a top of the first photoresist with a photomask, wherein the photomask comprises the pattern transparent to UV light and delineating the designated hydrophobic region and the designated hydrophilic region;
exposing the covered top of the first photoresist to UV light that selectively changes a first chemical property of the first photoresist according to the transparent pattern of the photomask;
removing the photomask; and
removing the first photoresist across the designated hydrophilic region based on the changed first chemical property of the first photoresist, and wherein the designated hydrophobic region remains covered with the first photoresist.
With respect to the underlined limitation(s) above, they have been considered as “product by process” limitation(s) – process steps that do not yield an identifiable structure in the product. Note that a “product by process” limitation is directed to the product per se, no matter how actually made. See In re Thorpe et al. 227 USPQ 964 (CFAC, 1985) and the related case law cited therein, which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935. (See MPEP 2113).
Regarding claim 16, Cruchon-Dupeyrat teaches the substrate [see fig. 2, 0260, 0276] of claim 15. Cruchon-Dupeyrat also teaches wherein said covering the drainage channel using the second photolithographic technique comprises:
coating the top surface of the silicon-based substrate with a second photoresist;
covering the top of the second photoresist with the photomask, wherein the photomask is aligned to the drainage channel;
exposing the covered top of the second photoresist to UV light that selectively changes a second chemical property of the second photoresist according to the transparent pattern of the photomask;
removing the photomask; and
removing the second photoresist across the designated hydrophobic region based on the changed second chemical property of the second photoresist, and wherein the drainage channel remains covered with the second photoresist.
With respect to the underlined limitation(s) above, they have been considered as “product by process” limitation(s) – process steps that do not yield an identifiable structure in the product. Note that a “product by process” limitation is directed to the product per se, no matter how actually made. See In re Thorpe et al. 227 USPQ 964 (CFAC, 1985) and the related case law cited therein, which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935. (See MPEP 2113).
Regarding claim 17, Cruchon-Dupeyrat teaches a circuit module [see fig. 2, 0260, 0276] with improved water drainage (module provides improved drainage of water-comprising liquids [0282], such as water [0126] and/or ink [0260]), comprising:
a substrate [0260, 0276] (see annotated fig. 2 below) comprising:
a designated hydrophobic region (overlapping hydrophobic barrier layer disposed on substrate between microchannels [0274-0276]) (see annotated fig. 2 below) comprising hydrophobic (top/bottom) surfaces of a hydrophobic film (barrier layer [0274-0276]); and
a designated hydrophilic region (substrate overlapping hydrophilic microfluidic channels) [0039, 0276] comprising hydrophilic (sidewall) surfaces of the substrate [0276], wherein a drainage channel (‘microfluidic channel’) [0260, 0276] is formed in the designated hydrophilic region (substrate overlapping hydrophilic microfluidic channels) [0039, 0276], wherein the designated hydrophobic region and the designated hydrophilic region are delineated (boundaries are defined) based on a pattern (based, in part, on the boundaries of the patterned photoresist) [0052-0059] (see also fig. 10) for forming the drainage channel (‘microfluidic channel’) [0260];
a drainage/evaporation port (‘reservoir’ 1) [0260] of the substrate [see fig. 2]; and
electronic circuitries fabricated (‘integrated microelectronics’ 5) [0260] in the designated hydrophobic region (overlapping substrate, outside channels) of the substrate (see annotated fig. 2 below), wherein the drainage channel (‘microfluidic channel) [0260] facilitates fluid flow [0260] from the designated hydrophobic region [0260] to a drainage/evaporation port (‘reservoir’ 1) [0260] of the substrate [see fig. 2, 0260] to prevent damage of the electronic circuitries (5) [0260] by moisture accumulation in the designated hydrophobic region (channels guide fluids away from hydrophobic region comprising circuitry [0260] to drainage port / reservoir [0260], thereby preventing fluids from building up or “cross-contaminating” [0040] at the electronic circuitries [0260, 0272, 0276]),
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Annotated fig. 2 of Cruchon-Dupeyrat
Regarding claim 19, Cruchon-Dupeyrat teaches the circuit module [see fig. 2, 0260, 0276] of claim 17. Cruchon-Dupeyrat also teaches wherein the substrate [see fig. 2, 0260] comprises a silicon-based substrate [0276], and wherein the drainage channel (‘microfluidic channel) [0260] is formed by at least:
covering, using a first photolithographic technique, the designated hydrophobic region of the silicon-based substrate with a first photoresist, wherein the designated hydrophilic region of the silicon-based substrate is not covered with the first photoresist;
deep dry etching (DRIE) into the designated hydrophilic region (overlapping channel) of the silicon-based substrate [see fig. 10, 0309] to form the drainage channel [0260, 0309];
removing all remaining first photoresist from the silicon-based substrate using a lift-off solvent;
covering, using a second photolithographic technique, the drainage channel with a second photoresist, wherein the designated hydrophobic region of the silicon-based substrate is not covered with the second photoresist;
coating, using a thin film deposition technique (CVD) [0310], the top surface of the silicon-based substrate [see fig. 10, 0310] with a hydrophobic film [0310];
removing the second photoresist material from the drainage channel using the lift-off solvent; and
removing, in response to removing the second photoresist material, the hydrophobic film from the drainage channel.
With respect to the underlined limitation(s) above, they have been considered as “product by process” limitation(s) – process steps that do not yield an identifiable structure in the product. Note that a “product by process” limitation is directed to the product per se, no matter how actually made. See In re Thorpe et al. 227 USPQ 964 (CFAC, 1985) and the related case law cited therein, which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935. (See MPEP 2113).
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 18 is rejected under 35 U.S.C. 103 as being unpatentable over Cruchon-Dupeyrat (U.S. PG Pub No US2010/0242765A1), as applied in claim 17 above, in view of Handique (U.S. PG Pub No US2012/0022695A1).
Regarding claim 18, Cruchon-Dupeyrat teaches the circuit module [see fig. 2, 0260, 0276] of claim 17. However, Cruchon-Dupeyrat does not explicitly disclose wherein the substrate [see fig. 2, 0260] comprises a printed circuit board.
Handique teaches a circuit module [see fig. 3B, 0124] wherein the substrate (36) fig. 3B [0124] comprises a printed circuit board (PCB) [0124].
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the microfluidic circuit module of Cruchon-Dupeyrat such that the substrate comprises a printed circuit board (PCB) [0124] in order to toughen the substrate [0124] to provide firm support for circuit architecture [0124] and good contact with external connectors [0124], as taught by Handique.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Cruchon-Dupeyrat (U.S. PG Pub No US2010/0242765A1), as applied in claim 17 above, in view of DeLouise (U.S. PG Pub No US2012/0070886A1).
Regarding claim 20, Cruchon-Dupeyrat teaches the circuit module [see fig. 2, 0260, 0276] of claim 17. However, Cruchon-Dupeyrat does not explicitly disclose wherein the hydrophobic film comprises Perfluorodecyltrichlorosilane (FDTS) (PTFE mentioned instead [0295]).
DeLouise teaches a circuit module [see fig. 3, 0051] (substrate for microfluidic device circuitry [0003]) wherein the hydrophobic film comprises Perfluorodecyltrichlorosilane (FDTS) (PTFE and FDTS may be used interchangeably as hydrophobic film [0066]).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the hydrophobic film of Cruchon-Dupeyrat to be composed to FDTS instead of PTFE [0066] because of FDTS’s superior microbubble formation efficiency characteristics [0038, 0066] associated with improved coating uniformity [0066] and film infiltration [0066] compared to PTFE [0066], as taught by DeLouise.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Remaining references made available on the PTO-892 form are considered relevant to the present disclosure because they all feature circuitry modules with microfluidic channels defined by hydrophobic and hydrophilic patterns.
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/SEAN AYERS WINTERS/Examiner, Art Unit 2892 05/13/2026
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