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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-028796, filed on 02/25/2021.
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.
(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 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. The closest prior art is Kobayashi (US20160223535A1).
Regarding Claim 1, Kobayashi et al. teaches a microchannel device (See the Abstract, the testing device 10, i.e. a microchannel device, and the Claim(s) 1-6 in [0064]-[0068] in Fig. 1-7) that has a channel sandwiched between channel walls formed in an inside of a porous substrate (See how the flow path member 12, includes a porous portion 12x that is not hydrophobized, and a flow path wall 12y that is hydrophobized, as shown in [0028]-[0037] in Fig. 1-3), wherein the channel wall contains a thermoplastic resin (See the flow path wall 12y in [0038], [0041]-[0046], [0068]-[0070] in Fig. 1-2) and a colorant (See how a colorant may be added in order to impart the function for enabling the flow path wall 12y to be distinguished in the flow path member 12y in [0064]-[0074] in Fig. 1-7), and wherein an abundance ratio of the colorant is higher in the porous substrate surface area of the channel wall than in an internal area of the channel wall (See in [0064]-[0074] in Fig. 1-7).
Note what is discussed in MPEP § 2144 IV. A. concerning changes in the size or portions of a claimed invention. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. The current claim 1 limitations regarding "the abundance ratio of the colorant is higher in the porous substrate surface area of the channel wall than in an internal area of the channel wall", does not change the function or structural features of the claimed invention in comparison to the prior art.
Also, note that what is discussed in MPEP § 2144 VI. concerning the rearrangement of parts of a claimed invention in comparison to the prior art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). The current claim 1 limitations regarding "the abundance ratio of the colorant is higher in the porous substrate surface area of the channel wall than in an internal area of the channel wall", does not change the function or structural features of the claimed invention in comparison to the prior art.
Regarding Claim 2, Kobayashi et al. teaches the device limitations of claim 1.
Kobayashi et al. further teaches a microchannel device (See the Abstract, the testing device 10, i.e. a microchannel device, and the Claim(s) 1-6 in [0064]-[0068] in Fig. 1-7), wherein an amount of the colorant contained in the channel wall is 1.0 × 10-6mass% to 0.4 mass% based on a total mass of components constituting the channel wall excluding the porous substrate (See how the colorant content is from 0.5 parts by mass to 5 parts by mass relative to 100 parts by mass of the thermoplastic material in [0065]; A person skilled in the art would therefore consider pigment concentrations).
Regarding Claim 3, Kobayashi et al. teaches a microchannel device (See the Abstract, the testing device 10, i.e. a microchannel device, and the Claim(s) 1-6 in [0064]-[0068] in Fig. 1-7), that has a channel sandwiched between channel walls formed in an inside of a porous substrate (See how the flow path member 12, includes a porous portion 12x that is not hydrophobized, and a flow path wall 12y that is hydrophobized, as shown in [0028]-[0037] in Fig. 1-3), wherein the channel wall contains a thermoplastic resin (See the flow path wall 12y in [0038], [0041]-[0046], [0068]-[0070] in Fig. 1-2) and a colorant (See how a colorant may be added in order to impart the function for enabling the flow path wall 12y to be distinguished in the flow path member 12y in [0064]-[0074] in Fig. 1-7), and wherein X and Y satisfies a relationship of X>Y, when an abundance ratio of the colorant in an area within a depth D (μm) from a surface of the microchannel device excluding the porous substrate in the channel wall is X(%) and an abundance ratio of the colorant in an area beyond the depth D (μm) from the surface of the microchannel device excluding the porous substrate in the channel wall is Y(%), said depth D being a depth (μm) represented by (A/2)/(1-B/100) when a fiber diameter of a fiber forming the porous substrate is A (μm) and a porosity of the porous substrate is B(%) (See in [0064]-[0074] in Fig. 1-7).
Note in MPEP § 2144 IV. A. concerning changes in the size or portions of a claimed invention. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984),The current claim 3 limitations regarding the configuration for a desired "abundance ratio of the colorant in an area within a depth D (μm) from a surface of the microchannel device", does not change the function or structural features of the claimed invention in comparison to the prior art.
Also, note in MPEP § 2144 VI. concerning the rearrangement of parts of a claimed invention in comparison to the prior art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) ; In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). The current claim 3 limitations regarding the configuration for a desired "abundance ratio of the colorant in an area within a depth D (μm) from a surface of the microchannel device", does not change the function or structural features of the claimed invention in comparison to the prior art.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US20160223535A1) and Kennedy (US6074725A).
Regarding Claim 4, Kobayashi et al. teaches method of manufacturing a microchannel device (See the Abstract, the testing device 10, i.e. a microchannel device, and the Claim(s) 7-8 in [0064]-[0068] in Fig. 1-7), that has a channel sandwiched between channel walls formed in an inside of a porous substrate (See how the flow path member 12, includes a porous portion 12x that is not hydrophobized, and a flow path wall 12y that is hydrophobized, as shown in [0028]-[0037] in Fig. 1-3), comprising; a step of placing a channel wall forming material comprising a thermoplastic resin and a colorant on a surface of the porous substrate (See in [0041]-[0046], [0064]-[007] in Fig. 1-7), wherein a content ratio of the colorant with respect to the channel wall forming material is 1.0×10-6mass % to 0.4 mass %. (.
Kobayashi et al. fails to explicitly teach a method of manufacturing a microchannel device comprising; a step of placing a channel wall forming material comprising a thermoplastic resin and a colorant on a surface of the porous substrate by an electrophotographic manner to form a channel pattern on the surface of the porous substrate; and a step of melting the thermoplastic resin contained in the channel pattern by heat to allow the thermoplastic resin to penetrate into the porous substrate to form a channel in the porous substrate (See in in [0065]).
However, in the analogous art of fabrication of microfluidic circuits by printing techniques, Kennedy teaches a method of manufacturing a microchannel device (See in the Abstract and Claim(s) 23-27 in [Col. 7]-[Col. 8] in Fig. 1-11) by an electrophotographic manner to form a channel pattern on the surface of the porous substrate; and a step of melting the thermoplastic resin contained in the channel pattern by heat to allow the thermoplastic resin to penetrate into the porous substrate to form a channel in the porous substrate (See in [Col. 13 lines 43-65]).
Thus, it would be obvious to one with ordinary skills in the arts to modify the method of Kobayashi by incorporating a step using electrophotographic manners to pattern (as taught by Kennedy) for the benefit of forming a channel pattern on the surface of the porous substrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Vella et al. (US20160207038A1) discloses similar devices and methods.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITNEY N WASHINGTON whose telephone number is (703)756-5959. The examiner can normally be reached Monday-Friday 7:00am - 3:30pm CT.
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/BRITNEY N. WASHINGTON/Examiner, Art Unit 1797
/JENNIFER WECKER/Primary Examiner, Art Unit 1797