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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to a microchannel device, classified in B01L 2300/12.
II. Claim 8, drawn to a method for producing a microchannel device, classified in B01L 3/502707.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product of Invention I can be made by molding, as opposed to the method of Invention II, which requires an electrophotographic method.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
a. The inventions have acquired a separate status in the art in view of their different classification; and/or
b. The inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
c. The inventions require a different field of search (for example, searching different class/subclasses or electronic resources, or employing different search strategies or search queries); and/or
d. The prior art applicable to one invention would not likely be applicable to another invention; and/or
e. The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Angela Collison on 3/16/2026 a provisional election was made without traverse to prosecute the invention of Invention I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claim 8 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Status
Claims 1-8 are pending, with claims 1-7 being examined, and claim 8 deemed withdrawn.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) received on 8/22/2023, 3/24/2025, and 10/9/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
Regarding claim 1, Lns. 1-2 recite, “between channel walls formed in an inside a porous substrate”, which is grammatically correct. It appears that the above needs to be amended to recite, “between channel walls formed inside a porous substrate” to be grammatically correct.
Appropriate correction is required.
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 1-7 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.
Regarding claim 1, Lns. 4-6 recite, “wherein a proportion of the wax in an area of the a surface side of the channel wall facing the channel is higher than a proportion of the wax in an internal area of the channel wall”. However, it is unclear what the term “a proportion of the wax” is relative to. Is the proportion of wax relative to the thermoplastic resin? Relative to the total components in the relevant area of the channel wall? Or something else? Further clarification is needed.
Claims 2-7 are rejected at least for depending on claim 1, a rejected claim.
Regarding claim 3, Ln. 4 recites, SP (B) – SP (W) ≥ 0.5 (1). However, it is unclear if the “0.5” in this equation has the same units as the SP values of the wax and resin, which are (cal/cm3)1/2, or if the “0.5” is dimensionless. Further clarification is needed. For purposes of compact prosecution, the “0.5” has been examined as having the same units as the SP values of the wax and resin, which are (cal/cm3)1/2.
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 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (Translation of CN Pub. No. 107754961; hereinafter Zhu) in view of Lehto (US Pub. No. 2007/0053800).
Regarding claim 1, Zhu discloses a microchannel device that has a channel sandwiched between channel walls formed inside a porous substrate (Pg. 2 6th to Last Para.-Pg. 3 3rd Para., see Fig. 1, where the black is the hydrophobic region and the white is the hydrophilic area. The white area can be considered the channel, and the black the channel wall).
The channel wall contains a thermoplastic resin and a wax (Pg. 2 6th to Last Para.-Pg. 3 3rd Para., the toner contains styrene copolymer and wax, see Fig. 1).
Zhu fails to explicitly disclose that a proportion of the wax in an area of a surface side of the channel wall facing the channel is higher than a proportion of the wax in an internal area of the channel wall.
Lehto is in the analogous field of microchannel devices (Lehto [0027]). Lehto teaches that a proportion of wax in an area of a surface side of a channel wall facing a channel is higher than a proportion of wax in an internal area of a channel wall (Lehto; [0079], [0099], see Fig. 1A). A proportion of wax in the area of a surface side of a channel wall facing the channel is higher than a proportion of wax in an area X satisfying the following specification: where the area X is an area, which does not face the cannel of the channel wall, and of the surface of the substrate and the vicinity thereof (Lehto; [0079], [0099], see Fig. 1A). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the device of Zhu with the teachings of Lehto so that a proportion of the wax in an area of a surface side of the channel wall facing the channel is higher than a proportion of the wax in an internal area of the channel wall, as Lehto teaches that providing highly hydrophobic channel walls via the addition of wax can prevent sample from entering into areas of the device where the sample should not go (Lehto; [0079], [0099], see Fig. 1A). Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the device of Zhu with the teachings of Lehto so that the proportion of the wax in the area of the surface side of the channel wall facing the channel is higher than the proportion of the wax in an area X satisfying the following specification: wherein the area X is an area, which does not face the channel of the channel wall, and of the surface of the porous substrate and the vicinity thereof, as Lehto teaches that providing highly hydrophobic channel walls via the addition of wax can prevent sample from entering into areas of the device where the sample should not go (Lehto; [0079], [0099], see Fig. 1A).
Regarding claim 5, modified Zhu discloses the microchannel device according to claim 1. Modified Zhu further discloses that the proportion of the wax in the area of the surface side of the channel wall facing the channel is higher than the proportion of the wax in an area X satisfying the following specification: wherein the area X is an area, which does not face the channel of the channel wall, and of the surface of the porous substrate and the vicinity thereof (see Claim 1 above at Lehto teaching the claimed wax proportions in [0079], [0099], see Fig. 1A).
Regarding claim 6, modified Zhu discloses the microchannel device according to claim 5.
Modified Zhu fails to explicitly disclose that the proportion of the wax in the area X is 15% or less.
Lehto further teaches that a proportion of wax in an area X is 15% or less (Lehto; [0079], [0099], see Fig. 1A, no wax is in an area of the device outside of the area immediately proximate the surface of the channels). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the device of modified Zhu with the further teachings of Lehto so that the proportion of wax in the area X is 15% or less, in order to provide a device that does not contain wax in areas distal to the surfaces of the channel walls in an amount high enough to potentially affect the structural integrity of the channel walls, as waxes are soft and malleable, which is undesirable for many microchannel devices.
Further, even if modified Zhu is not considered to teach that the proportion of the wax in the area X is 15% or less, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have the proportion of wax in an area X of 15% or less, in order to provide a device that does not contain wax in areas distal to the surfaces of the channel walls in an amount high enough to potentially affect the structural integrity of the channel walls, as waxes are soft and malleable, which is undesirable for many microchannel devices in terms of rendering the devices impact resistant, durable, etc.
Regarding claim 7, modified Zhu discloses the microchannel device according to claim 5.
Modified Zhu fails to explicitly disclose that the proportion of the wax in the area X is 7% or less.
Lehto further teaches that a proportion of wax in an area X is 7% or less (Lehto; [0079], [0099], see Fig. 1A, no wax is in an area of the device outside of the area immediately proximate the surface of the channels). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the device of modified Zhu with the further teachings of Lehto so that the proportion of wax in the area X is 7% or less, in order to provide a device that does not contain wax in areas distal to the surfaces of the channel walls in an amount high enough to potentially affect the structural integrity of the channel walls, as waxes are soft and malleable, which is undesirable for many microchannel devices.
Further, even if modified Zhu is not considered to teach that the proportion of the wax in the area X is 15% or less, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have the proportion of wax in an area X of 7% or less, in order to provide a device that does not contain wax in areas distal to the surfaces of the channel walls in an amount high enough to potentially affect the structural integrity of the channel walls, as waxes are soft and malleable, which is undesirable for many microchannel devices in terms of rendering the devices impact resistant, durable, etc.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zhu in view of Lehto, as evidenced by Halfyard et al. (US Pub. No. 2009/0162555; hereinafter Halfyard).
Regarding claim 4, modified Zhu discloses the microchannel device according to claim 1.
Modified Zhu fails to explicitly disclose that the weight average molecular weight of the wax is 300 to 10,000.
Lehto further teaches that the weight average molecular weight of the wax is 300 to 10,000 (Lehto; [0079], [0099], see [0045] of Halfyard, which states that the molecular weight of the wax is from about 1,000 to about 10,0000). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the device of modified Zhu with the further teachings of Lehto as evidenced by Halfyard, as Lehto teaches that paraffin waxes, which have the claimed molecular weight, can be added to the surfaces of channel walls to prevent sample from entering into areas of the device where the sample should not go (Lehto; [0079], [0099], see Fig. 1A).
Allowable Subject Matter
Claims 2-3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Zhu, Lehto, and Hong et al. (US Pub. No. 2017/0115585; hereinafter Hong; already of record on the IDS received 3/24/2025) teach a device similar to that claimed. However, Zhu, Lehto, and Hong do not teach, either alone or in combination with the prior art, that a SP value of the wax is lower than a SP value of the thermoplastic resin, or that the SP value of the wax is set to SP(W) (cal/cm3)1/2 and the SP value of the thermoplastic resin is set to SP(B) (cal/cm3)1/2, the formula (1) is satisfied: SP (B) – SP (W) ≧ 0.5 (cal/cm3)1/2 .
Specifically, although Zhu teaches a channel wall comprising a thermoplastic resin and a wax (Zhu; Pg. 2 6th to Last Para.-Pg. 3 3rd Para., the toner contains styrene copolymer and wax, see Fig. 1), Zhu does not specify the SP values of the thermoplastic resin or the wax. Further, although Hong teaches a thermoplastic resin and a wax where the difference of SP value between the thermoplastic resin and wax is greater than 5 (Hong; [0016]-[0017], [0037]-[0041], [0060]), Hong does not specifically teach that a SP value of the wax is lower than a SP value of the thermoplastic resin, and specifically selecting a thermoplastic resin and wax where a SP value of the wax is lower than a SP value of the thermoplastic resin would have required impermissible hindsight. See MPEP 2142. Further, a person having ordinary skill in the art before the effective filing date of the invention would not have been motivated to modify Zhu with the teachings of Hong, as Hong is drawn to a toner for developing an electrostatic image (Hong [0016]-[0017]), and there would be no expectation of success to apply the toner of Hong to a microchannel device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John McGuirk whose telephone number is (571)272-1949. The examiner can normally be reached M-F 8am-530pm.
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/JOHN MCGUIRK/Examiner, Art Unit 1798