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
The Amendment filed 08/05/2026 has been entered. Claims 13, 15 and 17-24 remain pending in the application and are being examined herein.
Status of Objections and Rejections
All rejections of claims 14 and 16 are obviated by Applicant’s cancellation.
The objection to the Drawings is withdrawn in view of Applicant’s interpretation of “complementary”.
The claim objection is withdrawn in view of Applicant’s amendment.
The rejection under 112(a) is being withdrawn in view of Applicant’s amendment.
The rejection under 35 U.S.C 112(b) is maintained.
The rejections of under 35 U.S.C. 102 and 35 U.S.C. 103 are being withdrawn in view of Applicant’s amendment.
New grounds for rejection under 35 U.S.C. 103 in view of Applicant’s amendment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one claim limitation that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim is a single means claim that recites a means-plus-function limitation as the only limitation of a claim. 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by its terms is limited to “an element in a claim for a combination.” Therefore, single means claims that do not recite a combination cannot invoke section 112(f) or pre-AIA section 112, sixth paragraph. As such, they are not limited to the structure, material or act disclosed in the specification that performs the claimed function.
Such claim limitation is:
“complementary holding means of the connection device with an external dedicated surface of one of the two fluidic elements” in claim 13.
The connection device in claim 13 comprises the above means-plus-function limitation as the only limitation. The “one of the two fluidic elements” is interpreted as not positively recited for the reason that the preamble indicates the connection device a device for connecting between two channels of “one of the two fluidic elements” and another of the two fluidic elements, and thus “one of the two fluidic elements” is interpreted as not part of the invention, but an article worked upon.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“external holding system” in claim 22, line 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
In this instant case, the corresponding structure for:
the " external holding system” is adhesive tape (p. 7, lines 24-25) and equivalents thereof.
Additional notes on claim interpretation
The accepted meaning of “complementary” in structures is two structures that fit together in such a way that mutually supplying each other’s lack, like a lock -and-key” mechanism. However, in view of Applicant’s Remarks on 4-5, “complementary” (in “complementary holding means”) is being interpreted two structures that fit together without having a to supplying each other’s lack (See also Fig. 1).
Claim 13 is amended to recite “the continuous barbed connector has the form of a continuous overthickness of the inner surface.” In view of the Applicant’s Remarks and the Specification, the “a continuous overthickness” is being interpreted as “a continuous ring of extra thickness” (p. 4 in the Remarks of 08/05/2026; paras. 0038 and 0046 of Specification of 8/3/2023 (1/4) and Fig. 4) or a continuous ring of protrusion.
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 13, 15 and 17-24 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 13 indicates that the invention is “a connection device between two micro-channels or two milli-channels of two fluidic elements” in lines 1-2. However, claim 13 does not positively recite any structure as a part of the connection device. Therefore, it is unclear what the connection device comprises, and thus indefinite. It appears that the “complementary holding means” is a part of the connection device, since line 4 recites “complementary holding means of the connection device”, but it is unclear because the “complementary holding means” is a part of the first fluidic element, which appears to be an article worked upon based the lines 1-2. Clarification is requested and appropriate correction is required. It is suggested that the Applicant clearly recites what the connection device comprises (e.g., a connection device between two micro-channels or two milli-channels of two fluidic elements comprising [a list of components that is part of the connection device]).
Claims 15 and 17-24 are indefinite because of their dependence on claim 13.
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.
Claims 13, 17-21 and 23-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kahl (US 20050118068 A1) (the U.S. equivalent of EP-134543, provided in Applicant’s IDS of 07/05/2023) in view of Helstern et al. (US 20110018260 A1).
Regarding claim 13, Kahl teaches a connection device between two micro-channels or two milli-channels of two fluidic elements (Fig. 6, the embodiment on the right), a first fluidic element (4) having a first micro- or milli-channel (Fig. 6, right) and a second fluidic element (6) having a second micro- or milli channel (Fig. 6, right), the first fluidic element comprising complementary holding means (16) of the connection device to connect with an external surface of the second fluidic element (6), wherein the complementary holding means comprise at least one continuous barbed connector (16) located in a cavity of the first fluidic element (4)(Fig. 6, right), said at least one continuous barbed connector bearing on the external surface of the second fluidic element (6)(para. 0100, barb 16 bearing on recess 17).
Kahl teaches the continuous barbed connector is a protrusion on the inner surface cavity, Kahl does not explicitly teach the protrusion is a form of a continuous ring, and thus fail to teach wherein the continuous barbed connector (16) has the form of a continuous overthickness of the inner surface of the cavity.
However, Helstern teaches connecting two tubings with a barb connector. Helstern further teach continuous barbed connector (barb 40)(para. 0014) has the form of a continuous ring of overthickness/protrusion on the surface (Fig. 2).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the barbed connector taught by Kahl to have a continuous ring of overthickness/protrusion as taught by Helstern because one of ordinary skill in the art would accordingly have recognized the barbed connector with a continuous ring of protrusion was an alternative to the barbed connector with a protrusion and would provide a more secured connection, and simple substitution of one known element (a barbed connector with a protrusion) for another element (a barbed connection with a continuous ring of protrusion) is likely to be obvious when predictable results (a barbed connector) are achieved. See MPEP 2143(I)(B).
Regarding claim 17, modified Kahl teaches all of the elements of the current invention as stated above with respect to claim 13. With respect to the limitation “wherein the fluidic element which carries at least the barbed connector comprises a material more rigid than the second fluidic element,” the first and second fluidic elements are not positively recited and thus not part of the invention. Since this limitation is directed to the fluidic elements, this limitation does not further limit the structure of the invention. For the purpose of the compact prosecution, Kahl teaches the fluidic element (plug means 7) which carries at least the barbed connector (16) comprises a material (aluminum)(para. 0048) more rigid than the second fluidic element (microfluid system 6)(para. 0031, made of plastic material such as cyclic olefin)(aluminum is more rigid than cyclic olefin).
Regarding claim 18, modified Kahl teaches all of the elements of the current invention as stated above with respect to claim 14. Kahl further teaches wherein the at least one barbed connector comprises a substantially polygonal profile (Fig. 6, barb 16).
Regarding claim 19, modified Kahl teaches all of the elements of the current invention as stated above with respect to claim 18. Kahl further wherein the at least one barbed connector comprises a substantially right-triangular profile (Fig. 6, barb 16 has a right-triangular profile).
Regarding claim 20, modified Kahl teaches all of the elements of the current invention as stated above with respect to claim 13. With respect to the limitation “wherein one of the two fluidic elements comprises a flexible tube or a semi-flexible tube or a rigid tube or a nozzle provided with a tip,” the fluidic elements are not positively recited and thus not part of the invention. Since this limitation is directed to one of the fluidic elements, this limitation does not further limit the structure of the invention. For the purpose of the compact prosecution Kahl does teach one of the two fluidic elements (plug means 7) comprises a flexible tube or a semi-flexible tube or a rigid tube or a nozzle provided with a tip (Fig. 6, plug means 7 comprises a tube 4).
Regarding claim 21, modified Kahl teaches all of the elements of the current invention as stated above with respect to claim 13. With respect to the limitation “wherein one of the two fluidic elements comprises a micro-fluidic or milli-fluidic chip,” the fluidic elements are not positively recited and thus not parts of the invention. Since this limitation is directed to one of the fluidic elements, this limitation does not further limit the structure of the invention. For the purpose of the compact prosecution Kahl teaches wherein one of the two fluidic elements comprises a micro-fluidic or milli-fluidic chip (microfluid system 6).
Regarding claim 23, modified Kahl teaches a micro-fluidic chip or a milli-fluidic chip comprising a connection device according to claim 13 between a micro-channel or a milli-channel of the respective micro-fluidic chip or milli-fluidic chip and a micro-channel or a milli-channel of a fluidic element (Fig. 6, of microfluid system 6, the chip, comprises recess 17, the complementary holding means).
Regarding claim 24, modified Kahl teaches a connection bridge between two micro-channels or two milli-channels of two fluidic elements comprising two connection devices according to claim 13 (two complementary holding means – 16 complementary with 17 and 14 complementary with 15), each device being connected to one of the two fluidic elements (Fig. 6)(as discussed above, the fluidic elements are not positively recited).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kahl (US 20050118068 A1) (the U.S. equivalent of EP-134543, provided in Applicant’s IDS of 07/05/2023) in view of Helstern et al. (US 20110018260 A1) as applied to claim 13, and further in view of Cleveland et al. (US 20070152442 A1).
Regarding claim 15, modified Kahl teaches all of the elements of the current invention as stated above with respect to claim 13.
Modified Khal teaches the complementary holding means comprises one continuous barbed connector and thus fails to teach wherein the complementary holding means comprise at least two continuous barbed connectors that are parallel to one another, each of the continuous barbed connectors bearing on the external surface of the second fluidic element.
However, Cleveland teaches a device for tubing connection (para. 0002). Cleveland further teaches the device comprise at least two barbed connectors (20) that are parallel to one another (Figs. 1-2). Cleveland further teaches one barb is sufficient in most applications; however, one may want to employ a plurality barbs to provide backup seals.; typically, 2 or 3 barbs are preferred.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the complementary means taught by modified Kahl to have an additional barbed connector as taught by Cleveland because the addition barbed connection can provide backup seals with a reasonable expectation of success (Cleveland, para. 0024) (MPEP 2143)(I)(G).
The teachings of Khal as modified with Cleveland would yield the complementary holding means comprise at least two continuous barbed connectors that are parallel to one another (Cleveland, Figs. 1-2), bearing on the external dedicated surface of one of the two fluidic elements.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kahl (US 20050118068 A1) (the U.S. equivalent of EP-134543, provided in Applicant’s IDS of 07/05/2023) in view of Helstern et al. (US 20110018260 A1) as applied to claim 13, and further in view of Bonham et al. (US 20170173322 A).
Regarding claim 22, modified Kahl teaches all of the elements of the current invention as stated above with respect to claim 13.
Modified Kahl teaches a connection device including a continuous barbed connector that connects two fluidic channels.
Modified Kahl does not teach the connection device further comprising an additional external holding system.
However, Bonham teaches a fluid device comprises a fluid connector (205) that connects two fluidic channels (tubing 100 and exit port 9917)(Fig. 2b). Bonham further teaches at the of tape 206b to wrap around the connection to prevent the connection from becoming disengaged (Fig. 2b and para. 0034 and 0202).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the connection device taught by modified Kahl to include a tape wrapped around the connection where the two fluidic channels are connected as taught by Bonham because doing so helps prevent the connection from becoming disengaged with a reasonable expectation of success (Bonham, para. 0202) (MPEP 2143)(I)(G).
The teachings of modified Kahl would yield the connection device further comprising an additional external holding system (tape wrapped around the connection).
Response to Arguments
Applicant’s arguments, see pp. 4-5, filed 08/05/2026, with respect to the objection of the Drawing have been fully considered and are persuasive. The objection of 05/05/2026 has been withdrawn. The term “complementary” in “complementary hold means” in being interpreted in view of Applicant’s Remarks. See claim interpretation.
Applicant’s arguments, see p. 6, filed 08/05/2026, with respect to the objection of the Drawing have been fully considered and are persuasive. The objection of 05/05/2026 has been withdrawn.
Applicant’s arguments, see p. 6, filed 08/05/2026, with respect to the claim objection have been fully considered and are persuasive. The objection of 05/05/2026 has been withdrawn.
Applicant’s arguments, see p. 6, filed 08/05/2026, with respect to the claim interpretation of “complementary holding means” have been fully considered and are persuasive. “Complementary holding means” in claim is not interpreted under 35 U.S.C. 112(f) in view of the amendment.
Applicant’s arguments, see p. 6, filed 08/05/2026, with respect to the claim interpretation of “external holding system” have been fully considered and are not persuasive. The Applicant argues that “adhesive tape” is merely exemplary and thus the “external hold system” should not be interpreted under 35 U.S.C.112(f).
The examiner respectfully disagrees. The external holding system (system configured for external holding) is being interpreted under 35 U.S.C. 112 (f) because it is “a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.” Whether “adhesive tape” is an example is not relevant in determination. Therefore, the argument is unpersuasive. The Applicant can explicitly recite sufficient structure for the external holding system to rebut the U.S.C. 112(f) interpretation.
Applicant’s arguments, see pp. 7-8, filed 08/05/2026, with respect to the rejection under 35 U.S.C. 112(b) have been fully considered and are not persuasive. The amendment of claim 13 does not recite any structure for the connection device, and thus it is unclear what the connection device comprise and thus the claim is indefinite.
The portion of the rejection under 35 U.S.C. 112(b) relating to “complementary,” is withdrawn in view of Applicant’s interpretation of “complementary” as discussed above.
Applicant’s arguments, see p. 6, filed 08/05/2026, with respect to the rejections under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejections has been withdrawn. However, upon further consideration, a new ground(s) of rejection of claim 13, 16-21 and 23-24 is made in view of Kahl (US 20050118068 A1) (the U.S. equivalent of EP-134543, provided in Applicant’s IDS of 07/05/2023) in view of Helstern et al. (US 20110018260 A1); a new ground(s) of rejection claims 15 is made in view of Kahl (US 20050118068 A1) (the U.S. equivalent of EP-134543, provided in Applicant’s IDS of 07/05/2023) in view of Helstern et al, and further in view of Cleveland et al. (US 20070152442 A1); and a new ground(s) of rejection claims 22 is made in view of Kahl (US 20050118068 A1) (the U.S. equivalent of EP-134543, provided in Applicant’s IDS of 07/05/2023) in view of Helstern et al, and further in view of Bonham et al. (US 20170173322 A).
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 MAY CHIU whose telephone number is (571)272-1054. The examiner can normally be reached 9 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at 571-270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.L.C./Examiner, Art Unit 1758
/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796
