DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of group I comprising claims 1 – 13 in the reply filed on 5/18/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 14 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/18/2026.
Note Regarding Prior Art
Examiner cites particular sections, columns, line numbers, paragraphs and figures, in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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 – 8, 12 and 13 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Puebla Hellmann et al. (US 2022/0135399 A1; hereinafter “Puebla”).
Regarding claim 1, Puebla teaches throughout the publication a microfluidic device (microfluidic device 1; paragraph 21; figures 1 – 6) comprising:
a silicon layer (second layer L2 comprising doped silicon; paragraph 23) having a first channel formed in a first side of the silicon layer and a second channel formed in a second side of the silicon layer (the device may comprise several microchannels; paragraph 32), the silicon layer having a vertical connection (microchannel 40; paragraph 23) extending through the silicon layer;
a bottom wafer (supporting substrate L0; paragraphs 22 and 35) bonded to the first side of the silicon wafer to cover the first channel;
a glass wafer bonded to the second side of the silicon wafer to cover the second channel (the microchannel structure is typically covered by a light-permissive layer lid L3, which is a glass wafer, for detection/monitoring purposes; paragraphs 35, 47 and 77; claim 17); and
an electronic component integrated into the silicon layer (e.g., electric circuit or electrical contact pads; paragraph 32).
Regarding claim 2, Puebla teaches the microfluidic device of claim 1, wherein the silicon layer includes a bonding oxide layer (e.g., a thermal oxide, such as silicon dioxide; paragraphs 28, 41, 50 and 53 – 55; anodic bonding; paragraph 57).
Regarding claim 3, Puebla teaches the microfluidic device of claim 1, wherein: the silicon layer (second layer L2) is in direct contact with the glass wafer (e.g., lid layer L3) as shown in figure 1B (paragraphs 35 and 65; claim 17).
Regarding claim 4, Puebla teaches the microfluidic device of claim 1, wherein: the bottom wafer is made of glass (the microchannel structure is typically covered by a light-permissive layer lid L3, which is a glass wafer, for detection/monitoring purposes; paragraphs 35 and 47; claim 17).
Regarding claim 5, Puebla teaches the microfluidic device of claim 1, further comprising: a device inlet (figure 5B) formed in the glass wafer (lid L3) and configured to allow fluid to flow into the vertical connection (microchannel 40; paragraph 23) (e.g., the microfluidic device can also include vent and capillary structures; paragraphs 23 and 32).
Regarding claim 6, Puebla teaches the microfluidic device of claim 1, further comprising: a device inlet (e.g., the microfluidic device can also include vent and capillary structures; paragraphs 23 and 32) formed by a lateral end of one of the first and second channels and configured to allow fluid to flow into the vertical connection (microchannel 40; paragraph 23).
Regarding claim 7, Puebla teaches the microfluidic device of claim 1, further comprising: a device outlet (e.g., the microfluidic device can also include vent and capillary structures; paragraphs 23 and 32) formed in the glass wafer (lid L3) and configured to allow fluid to flow out of the vertical connection (microchannel 40; paragraph 23).
Regarding claim 8, Puebla teaches the microfluidic device of claim 1, further comprising: a device outlet (e.g., the microfluidic device can also include vent and capillary structures; paragraphs 23 and 32) formed by a lateral end of one of the first and second channels and configured to allow fluid to flow out of the vertical connection (microchannel 40; paragraph 23).
Regarding claim 12, Puebla teaches the microfluidic device of claim 1, further comprising: an opening (e.g., apertures 65 formed in lid L3; paragraph 57) formed in the glass wafer and configured to provide access to the electronic component.
Regarding claim 13, Puebla teaches the microfluidic device of claim 12, further comprising: an electrical contact (e.g., electrical contact pads 60; paragraph 55) arranged in the opening and electrically connected to the electronic component.
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.
Claim(s) 9 – 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Puebla Hellmann et al. (US 2022/0135399 A1; hereinafter “Puebla”).
Regarding claim 9, Puebla does not specifically teach the microfluidic device of claim 1, further comprising: a further silicon layer having a third channel formed in a first side of the further silicon layer and a fourth channel formed in a second side of the further silicon layer, the further silicon layer having a further vertical connection extending through the first side and the second side of the further silicon layer, the first side of the further silicon layer bonded to the glass wafer opposite the silicon layer; and a further glass wafer bonded to the second side of the further silicon layer opposite the glass wafer to cover the fourth channel, wherein: the glass wafer includes a vertical opening configured to be vertically aligned with the vertical connection.
Regarding claim 10, Puebla does not specifically teach the microfluidic device of claim 9, further comprising: a device inlet formed in the further glass wafer and configured to allow fluid to flow into the vertical connection.
Regarding claim 11, Puebla does not specifically teach the microfluidic device of claim 9, further comprising: a device outlet formed in the further glass wafer and configured to allow fluid to flow out of the vertical connection.
However, these further modifications merely adds the same component features of the microfluidic device using the fabrication methods taught by Puebla and are still in the scope of the Puebla disclosure (paragraph 109). It would have been considered suitable and predictable to a person of ordinary skill in the art to contemplate the addition of the recited features to increase the processing capability of the disclosed microfluidic device. The addition these additional features would have been well within the ambit of a person of ordinary skill in the art without undue experimentation. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.04). Furthermore, the Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 82 USPQ2d 1385 (2007) has affirmed that the threshold requirement for a prima facie case of obviousness is “demonstrating that each element was, independently, known in the prior art.” The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success (see MPEP § 2143.02). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the recited device configuration as claimed. Examiner submits that these arguments are in line with the Supreme Court unanimous opinion, KSR International v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007), in which the Court stated that “[a] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 1731.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (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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BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
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