DETAILED ACTION
In application filed on 10/26/2023, Claims 1-13 are pending. The claim set submitted on 10/23/2023 is considered because this is the most recent claim set with some preliminary amendments. Claims 1-12 are considered in the current office 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/21/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 07/02/2026 is acknowledged. Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/02/2026.
Group I, claims 1-12 are considered on the merits below.
Claim Objections
Claims 6 are objected to because of the following informalities:
Claim 6 recites “a fifth microflow path” in line 5. It appears that this limitation should be recited as “the fifth microflow path”.
Appropriate correction is required.
Further, Claim 6 recites “a plurality of vortex forming flow paths” in lines 3-4. It appears that this limitation should be recited as “the plurality of vortex forming flow paths”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 6-7 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.
Claim 6 recites the limitation "the traveling direction”. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of expedited prosecution, the limitation " the traveling direction" is interpreted by the Examiner as " a traveling direction".
Moreover, Claim 7 is rejected by virtue of dependency on Claim 6.
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 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 1-7 and 9-12 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Han et al. (US20200205545A1, submitted in IDS 10/21/2024).
Regarding Claim 1, Han teaches a microfluidic chip (Abstract…an apparatus for manufacturing cosmetic using instantaneous emulsification) comprising:
an inlet portion (referred to as the combination of the fluid injection hole [Para 0095; Fig. 5, ref. 402] and fluid injection hole [Para 0095; Fig. 5, ref. 404]) comprising a first fluid inlet (referred to as the fluid injection hole [Para 0095; Fig. 5, ref. 402]) through which a first fluid (See Para 0095…‘an internal phase fluid’) is introduced (See Para 0095… an internal phase fluid is supplied) and a second fluid inlet (referred to as fluid injection hole [Para 0095; Fig. 5, ref. 404]) through which a second fluid (‘an external phase fluid’) is introduced (See Para 0095… an external phase fluid is supplied);
a dissolution portion (referred to as any portion/part of the first connecting flow path [Para 0097, Fig. 5, ref. 403]) comprising a first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) in which a first modular raw material (referred to as ‘surfactant’) dissolved by the first fluid (See Para 0091…an internal phase fluid…includes a surfactant.) is pre-loaded (See Fig. 5…the internal phase fluid is inputted from the internal phase fluid injection hole 402, thereby teaching “preloaded”) and a second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]) in which a second modular raw material (See Para 0262…acid fluid) dissolved by the second fluid (See Para 0095… an external phase fluid is supplied) is pre-loaded (See Para 0097… a second connecting flow path 405 which connects the first external phase fluid injection hole 404, thereby teaching “preloaded”);
a confluence (referred to as confluence part [Para 0095; fig. 5, ref. 410]) comprising a third micro flow path (referred to as third connecting flow path [Para 0101, Fig. 5, ref. 409]) in which the first fluid (See Para 0095…‘an internal phase fluid’), the first modular raw material (‘surfactant’) dissolved by the first fluid (See Para 0091…an internal phase fluid…includes a surfactant.), the second fluid (See Para 0095… an external phase fluid), and the second modular raw material (See Para 0262…acid fluid) dissolved by the second fluid (See Para 0095… an external phase fluid is supplied) converge (See Para 0095…a confluence part 410 where the internal phase fluid supplied from the internal phase fluid injection hole 402 and the external phase fluid supplied from the first external phase fluid injection hole 404 are joined, thereby teaching “converge”);
a stir portion (referred to as mixing section [Para 0095; Fig. 5, ref. 420]) comprising a fourth micro flow path (referred to as fourth connecting flow path [Para 0101, Fig. 5, ref. 407]) which forms a mixed fluid (See Para 0095… are joined while emulsion particles are formed, thereby teaching “a mixed fluid”) by mixing the first fluid (See Para 0095…‘an internal phase fluid’), the first modular raw material (referred to as ‘surfactant’ [Para 0091]) dissolved by the first fluid (See Para 0091…an internal phase fluid…includes a surfactant.), the second fluid (See Para 0095… an external phase fluid is supplied), and the second modular raw material (See Para 0262…acid fluid) dissolved by the second fluid (See Para 0095… an external phase fluid is supplied); and
a vortexing portion (referred to as a plurality of mixing parts 421, 422, 423, 424, 425 [Para 0095; Fig. 5]) configured to form a cosmetic content (See Para 0108… it is preferable to be subjected to three or more vortex generation sections in order to achieve emulsification to such an extent as to be suitable as cosmetics) comprising particles (See Para 0117… easy generation of emulsion particles in the first mixing part 421) by creating a vortex (See Para 0117…the first mixing part 421 may include a vortex prompting path 4214 for prompting formation of vortices) and cutting off the mixed fluid (See Para 0208…The emulsification part 444 functions to cause internal phase fluid to break neutralized fluid flow, and internal phase fluid to be dispersed into neutralized fluid in a particle state).
In addition, claim 1 recites an inlet portion, a dissolution portion, a confluence, a stir portion and a vortexing portion and then recites how these structures function. Claim 1 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 2, Han teaches wherein the first fluid (See Para 0095…‘an internal phase fluid’) introduced in the first fluid inlet (referred to as the fluid injection hole [Para 0095; Fig. 5, ref. 402]) passes through the first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) and dissolves the first modular raw material (referred to as ‘surfactant’ [Para 0091]),
wherein the second fluid (See Para 0095… an external phase fluid is supplied) introduced in the second fluid inlet (See Para 0095… an external phase fluid is supplied) passes through the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]) and dissolves the second modular raw material (See Para 0262…acid fluid).
In addition, claim 2 recites first micro flow path and the second micro flow path and the recites how this structures function. Claim 2 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 3, Han teaches that the first fluid (See Para 0095…‘an internal phase fluid’) is provided as a hydrophilic fluid (See Para 0160…the internal phase fluid may be a water-based raw material of cosmetic) , wherein the second fluid (See Para 0160…the external phase fluid may be oil) is provided as a hydrophobic fluid (See Para 0160…the external phase fluid may be oil),
wherein the first modular raw material (referred to as ‘surfactant’ [Para 0091]) is formed in a solid phase or gel phase which can be dissolved (See Para 0089… the surfactant may be defined as a compound that has a hydrophilic portion which is likely to be dissolved in water; Examiners submits under BRI that a solid phase or gel phase can be dissolved in water) in the hydrophilic fluid (See Para 0160…the internal phase fluid may be a water-based raw material of cosmetic), and
wherein the second modular raw material (See Para 0262…acid fluid) is formed in a solid phase or gel phase (See Para 0262…acid fluid; Examiner submits that a gel is considered a fluid in physics and fluid mechanics) which can be dissolved (See Para 0188…mixing acid fluid which is supplied from the first container 210′ to form external phase fluid, with base fluid which is supplied from the second container 220′ to form external phase fluid) in the hydrophobic fluid (See Para 0160…the external phase fluid may be oil).
In addition, claim 3 recites the microfluidic chip of Claim 1 and how it functions. Claim 3 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 4, Han teaches that the fourth micro flow path (referred to as fourth connecting flow path [Para 0101, Fig. 5, ref. 407]) provided on the stir portion (referred to as mixing section [Para 0095; Fig. 5, ref. 420]) comprising:
a first mixing flow path (See Fig. 5…for the embodiment of third connecting flow path [Para 0101, Fig. 5, ref. 409] with the confluence part [Para 0095; fig. 5, ref. 410]) which extends from the third micro flow path (referred to as third connecting flow path [Para 0101, Fig. 5, ref. 409]) formed on (See Fig. 1 for “formed on”) the confluence (referred to as confluence part [Para 0095; fig. 5, ref. 410]) and extends in one direction (See Fig. 5 for the direction of for the embodiment of third connecting flow path [Para 0101, Fig. 5, ref. 409] with the confluence part [Para 0095; fig. 5, ref. 410))
a second mixing flow path (See Para 0097; Fig. 5…for the embodiment of the first external phase fluid injection hole 404 with the confluence part 410) bent at a preset angle (See Fig. 5 for the angle) from the first mixing flow path (See Fig. 5…for the embodiment of third connecting flow path [Para 0101, Fig. 5, ref. 409] with the confluence part [Para 0095; fig. 5, ref. 410]), and a
third mixing flow path (See Para 0097; Fig. 5…for the embodiment of the a discharging hole 455 with an initial flow path 429 and the confluence part 410) bent at a preset angle (See Fig. 5 for the preset angle) from the second mixing flow path (See Para 0097; Fig. 5…for the embodiment of the first external phase fluid injection hole 404 with the confluence part 410).
In addition, claim 4 recites the microfluidic chip of Claim 1 and how it functions. Claim 4 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 5, Han teaches that wherein at least one of the first mixing flow path (This limitation is viewed as optional) and the third mixing flow path (See Para 0097; Fig. 5…for the embodiment of the a discharging hole 455 with an initial flow path 429 and the confluence part 410) is formed in a figure (See Para 0097; Fig. 5…for the embodiment of the a discharging hole 455 with an initial flow path 429 and the confluence part 410, thereby teaching “figure” ) which increases and then decreases along the direction of a fluid flow (See Para 0125…The particle size adjusting part 430 may include a converging portion 431 in which the width W1 of a mixing flow path 426 of the mixing section 420 decreases, a convergence maintaining portion 432 which has a width W2 less than width W1 of the mixing flow path 426, a diverging portion 433 in which the width W2 of the convergence maintaining portion 432 increases, and a divergence maintaining portion 434 which has a width W3 greater than the width W1 of the mixing flow path 426).
In addition, claim 5 recites the microfluidic chip of Claim 4 and how it functions. Claim 5 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 6, Han teaches that wherein a fifth micro flow path (See Para 0099…initial flow path) provided on the vortexing portion (referred to as a plurality of mixing parts 421, 422, 423, 424, 425 [Para 0095; Fig. 5]) includes a plurality of vortex forming flow paths (See Fig. 5 for the embodiment of the combination of a plurality of mixing parts 421, 422, 423, 424, 425 [Para 0095; Fig. 5])) configured to create a vortex (See Para 0106…The mixing section 420 may include a plurality of the mixing portions 421, 422, 423, 424, 425, which extend from the confluence part 410, and which form vortices in flow by converting a proceeding direction of fluid) by converting the traveling direction of the fluid (See Para 0106… by converting a proceeding direction of fluid) comprising a plurality of vortex forming flow paths (See Fig. 5 for the embodiment of the combination of a plurality of mixing parts 421, 422, 423, 424, 425 [Para 0095; Fig. 5])) wherein a fifth micro flow path (See Para 0099…initial flow path) provided on the vortexing portion (referred to as a plurality of mixing parts 421, 422, 423, 424, 425 [Para 0095; Fig. 5]) converts the traveling direction of a fluid (See Para 0106… by converting a proceeding direction of fluid) to create a vortex (See Para 0106…which form vortices).
In addition, claim 6 recites the microfluidic chip of Claim 1 and how it functions. Claim 6 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 7, Han teaches wherein each of the vortex forming flow path See Fig. 5 for the embodiment of the combination of a plurality of mixing parts 421, 422, 423, 424, 425 [Para 0095; Fig. 5])) comprises:
a first turning flow path (referred to as a first turning path 4211 [Fig. 5, ref. (4211); Para 0115]) which directs the entering mixed fluid (See Para 0095… are joined while emulsion particles are formed, thereby teaching “a mixed fluid”) to rotate in one direction (See Para 0115…a first turning path 4211 which guides fluid so as to rotate in one direction);
a second turning flow path (referred to as a second turning path 4212 [Fig. 5, ref. (4212); Para 0115]) which directs the mixed fluid (See Para 0095… are joined while emulsion particles are formed, thereby teaching “a mixed fluid”) rotating in one direction to rotate in the other direction (See Para 0115…second turning path 4212 which guides fluid so as to rotate in the other direction); and
a direction conversion flow path (referred to as a direction conversion path 4213 [Para 0115]) which converts the rotation direction of the mixed fluid between the first turning flow path (referred to as a first turning path 4211 [Fig. 5, ref. (4211); Para 0115]) and the second turning flow path (referred to as a second turning path 4212 [Fig. 5, ref. (4212); Para 0115]) (See Para 0115… which converts the rotating direction of the fluid between the first turning path 4211 and the second turning path 4212.).
In addition, claim 7 recites the microfluidic chip of Claim 6 and how it functions. Claim 7 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 9, Han teaches that the particles (See Para 0117… easy generation of emulsion particles in the first mixing part 421) formed at the vortexing portion (referred to as a plurality of mixing parts 421, 422, 423, 424, 425 [Para 0095; Fig. 5]) are emulsion particles (See Para 0117… easy generation of emulsion particles), and the cosmetic content (See Para 0108… to achieve emulsification to such an extent as to be suitable as cosmetics) comprising the emulsion particles (See Para 0117… easy generation of emulsion particles) is provided as an emulsion (See Para 0117… easy generation of emulsion particles; See Para 0120… By continuously disposing these mixing parts 421, 422, 423, 424, 425, continuous emulsification can take place, which enables emulsion to be formed …).
In addition, claim 8 recites the microfluidic chip of Claim 1 and how it functions. Claim 8 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 9, Han teaches that wherein
the first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) comprises a middle portion (See Para 0097; Fig. 5, ref. 403…Examiner submits that ,under BRI, the first micro flow path has a middle portion) of the first micro flow path referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) in which the first modular raw material (referred to as ‘surfactant’ [Para 0091]) is disposed (See Fig. 5…the internal phase fluid is inputted from the internal phase fluid injection hole 402, thereby teaching “disposed”),
the cross-sectional area of the middle portion (See Para 0097 Fig. 5, ref. 403…Examiner submits that ,under BRI, the first micro flow path has a middle portion; Also, the middle portion has a cross-sectional area) of the first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) in which the first fluid (See Para 0091…an internal phase fluid…includes a surfactant.) flows changes as the first modular raw material (referred to as ‘surfactant’ [Para 0091])is dissolved by the first fluid (See Para 0091…an internal phase fluid…includes a surfactant.),
the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]) comprises a middle portion (See Para 0097; Fig. 5, ref. 405…Examiner submits that ,under BRI, the second micro flow path has a middle portion) of the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]) in which the second modular raw material (See Para 0262…acid fluid) is disposed, and
the cross-sectional area of the middle portion (See Para 0097; Fig. 5, ref. 405…Examiner submits that, under BRI, the second micro flow path has a middle portion; Also, the middle portion has a cross-sectional area) of the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405])in which the second fluid (See Para 0095… an external phase fluid is supplied) flows changes as the second modular raw material (See Para 0262…acid fluid) is dissolved by the second fluid (See Para 0095… an external phase fluid is supplied).
In addition, claim 10 recites the microfluidic chip of Claim 1 and how it functions. Claim 10 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 11, Han teaches that wherein the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]), the third micro flow path (referred to as third connecting flow path [Para 0101, Fig. 5, ref. 409]), the fourth micro flow path(referred to as fourth connecting flow path [Para 0101, Fig. 5, ref. 407]), and a fifth micro flow path (See Para 0099…initial flow path) are formed on an identical plane (See Para 0093; fig. 5…same plane inside the plate 400) , but a middle portion (See Para 0097; Fig. 5, ref. 403…Examiner submits that ,under BRI, the first micro flow path has a middle portion) of the first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) of the first micro flow path path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) in which the first modular raw material (referred to as ‘surfactant’ [Para 0091]) is disposed and a middle portion (See Para 0097; Fig. 5, ref. 405…Examiner submits that ,under BRI, the second micro flow path has a middle portion) of the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]) of the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]) in which the second modular raw material (See Para 0262…acid fluid) is disposed are formed on a different plane (See Para 0093; fig. 5…same plane inside the plate 400); See Para 0134… For example, two plates may be stacked in an up and down direction,) from the second micro flow path (referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]) to the fifth micro flow path (See Para 0099…initial flow path).
In addition, claim 11 recites the microfluidic chip of Claim 1 and how it functions. Claim 11 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 12, Han teaches that the first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) to a fifth micro flow path (See Para 0099…initial flow path) are formed inside a plane shape plate (See Para 0093…the same plane inside the plate 400; See fig. 5 for the plane shape of the plate 400 ), and the plate (See Para 0093…the same plane inside the plate 400; See fig. 5 for the plane shape of the plate 400 ) is provided with a protrusion portion (See Para 0091; Fig. 5…a portion or part of the embodiment of the mixing part 423 protruding towards flow path 403) which is protruded toward (See Fig. 5… protruded toward) the first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]) and the second micro flow path(referred to as second connecting flow path [Para 0097, Fig. 5, ref. 405]).
In addition, claim 12 recites the microfluidic chip of Claim 1 and how it functions. Claim 12 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (US20200205545A1, submitted in IDS 10/21/2024).
Regarding Claim 8, Han teaches wherein the width of the first micro flow path (referred to as first connecting flow path [Para 0097, Fig. 5, ref. 403]; Examiner submits, under BRI, that the first connecting flow path has a width) in which the first modular raw material (referred to as ‘surfactant’ [Para 0091]) is disposed, or the width of the second micro flow path where the second modular raw material is disposed (The limitation is optional ) ; the width of the fifth micro flow path (See Para 0099…initial flow path; Examiner submits, under BRI, that the initial flow path has a width).
Han does not explicitly teach that “wherein the width of the first micro flow path in which the first modular raw material is disposed, or the width of the second micro flow path where the second modular raw material is disposed are to be formed bigger than the width of the fifth micro flow path”
However, Han does teach that the microfluidic chip of Claim 1 is a microfluidic device where the only difference between the prior art and the claim is the bigger width of the first micro flow path in which the first modular raw material is disposed, or the bigger width of the second micro flow path where the second modular raw material is disposed
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 (See MPEP § 2144.05, Part II, Subpart B; In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to design and fabricate a microfluidic device wherein the width of the first micro flow path in which the first modular raw material is disposed, or the width of the second micro flow path where the second modular raw material is disposed are to be formed bigger than the width of the fifth micro flow path” for the benefit enabling a user to directly manufacture cosmetic having components exhibiting desirable effects, feeling of use, content ratio (Han, Para 0012), allowing for the providing a product where stability of product should be maintained for a long time from manufacture of cosmetic to the time of use (Han, Para 0011).
In addition, claim 8 recites the microfluidic chip of Claim 1 and how it functions. Claim 8 is an apparatus claim and MPEP 2114 recites that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OYELEYE ALEXANDER ALABI whose telephone number is (571)272-1678. The examiner can normally be reached on M-F 7:30am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached on (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OYELEYE ALEXANDER ALABI/ Examiner, Art Unit 1797
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