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 .
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.
Election/Restrictions
Newly submitted claims 21-24 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: structurally distinct design operating via comb shaped electrodes that does not overlap with the original claims or appear as an obvious variant
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-24 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added 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.
Response to Amendment
Claims 1-8, 10-17, and 21-24 are pending. Claims 1 and 10 stand amended. Claims 21-24 are withdrawn. Claims 9, 18-20 were canceled by the amendment.
Claim Rejections - 35 USC § 112
Claims 1-8 and 10-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
Regarding claims 1 and 10, the instant claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amended claims require “a dummy pattern structure disposed in line with the first branch electrode in a space between the first branch electrode and the basal pattern electrode”. This subject matter is not described by Applicant’s specification (regarding dummy pattern disclosure, e.g. ¶18, ¶95). The dependent claims depend from the instant claims and thus inherit this deficiency.
Claim Rejections - 35 USC § 102
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, 3-5, 7, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kweon (KR 102152644 B1).
Regarding claim 1, Kweon teaches a pattern electrode structure (Figs. 1-4, a comb or interdigitated electrode pattern of electrodes 131 and 151) for an electrowetting device, the pattern electrode structure comprising:
a first branch electrode (330, ¶45) disposed in a direction perpendicular to any plane that is perpendicular to a plane defined by the pattern electrode structure (since the plurality of first comb electrode portions 330 is formed in the same plane as that of the pattern electrode structure, the direction of the plurality of first comb electrode portions 330 would be perpendicular to any plane perpendicular to a plane formed by the pattern electrode structure); and
a basal pattern electrode (550, ¶49) disposed in an area above an upper end of the first branch electrode and connected to an electrode connection portion configured to receive a voltage (Fig. 3), wherein an interval between the first branch electrode and the basal pattern electrode is equal to or larger than a diameter of a droplet to be removed (Fig. 2, ¶38, droplets 22 and 23 being smaller than the interval between electrodes).
Notwithstanding that Kweon anticipates the claimed configuration as detailed above, it is noted that the limitation "droplet" is directed to a material or article worked upon. "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Young, 75 F.2d. 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). MPEP 2115. Thus, the designation "wherein an interval between the first branch electrode and the basal pattern electrode is equal to or larger than a diameter of a droplet to be removed" is deemed to be functional limitation in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, since the diameter of the droplet to be removed does not limit the claimed pattern electrode structure, the limitation that "wherein an interval between the first branch electrode and the basal pattern electrode is equal to or larger than a diameter of a droplet to be removed" would not limit the claimed pattern electrode structure.
Kweon does not explicitly show further comprising a dummy pattern structure disposed in line with the first branch electrode in a space between the first branch electrode and the basal pattern electrode.
Revier discloses an analogous electrowetting droplet removal device (Title, Abstract) and teaches a dummy pattern of dielectric (105) disposed in a space between the first branch electrode (110) and the basal pattern electrode (115) (Fig. 2, ¶22). Since the dielectric occupies the space between the electrodes and performs the isolating function disclosed by Applicant (instant specification, ¶95) Revier’s dummy pattern is considered as in line.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have followed Revier and employed the dummy pattern between electrodes of Kweon to prevent a short circuit caused by contact with conductive material, such as water droplets.
Regarding claim 3, the modified Kweon teaches the pattern electrode structure of claim 1, and further discloses wherein a polarity of the first branch electrode is different from a polarity of the basal pattern electrode (e.g. Fig. 2, + and -, and Fig. 4, operating with DC + and - voltages).
Regarding claim 4, the modified Kweon teaches the pattern electrode structure of claim 3, and further discloses further comprising second branch electrodes (530) disposed alternately with a plurality of the first branch electrodes in a width direction of the pattern electrode structure (Figs. 3, 4), wherein a polarity of the second branch electrodes is different from the polarity of the first branch electrodes (Figs. 3, 4).
Regarding claim 5, the modified Kweon teaches the pattern electrode structure of claim 1, and further discloses further comprising second branch electrodes (530) disposed alternately with a plurality of the first branch electrodes in a width direction of the pattern electrode structure (Figs. 3, 4), wherein a polarity of the second branch electrodes is different from the polarity of the first branch electrodes (Figs. 3, 4).
Regarding claim 7, the modified Kweon teaches the pattern electrode structure of claim 1, and further discloses wherein the upper end of the first branch electrode comprises a convex portion (Fig. 6, rounded ends i.e. convex).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over the modified Kweon as applied to claim 1 above.
Regarding claim 2, the modified Kweon teaches the pattern electrode structure of claim 1, but does not explicitly show wherein the interval between the first branch electrode and the basal pattern electrode is equal to or larger than 1.93 mm.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). The general conditions having been disclosed by Kweon above, benefit of optimizing the interval between the first branch electrode and the basal pattern electrode includes optimizing the delivery of vibration and heat toward droplet removal (Kweon, “The width and spacing of the electrodes are only examples, and may vary depending on the applied device and the characteristics of the droplet to be removed“; “By this, the first mode, the droplets spanning between the electrodes can be removed by vibration. Meanwhile, by applying power to the second electrode 500 in the second mode to generate heat, droplets that have not been removed in the first mode due to heat (eg, 22, 23, and 25 in FIG. 2) may be removed”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the interval of Kweon’s electrodes based on the characteristics of the droplet to be removed toward enhancing delivery of vibration and heat thus achieving optimized droplet removal, thereby achieving the claimed range.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over the modified Kweon as applied to claim 1 above, and further in view of Chung ‘174 (KR 20180086174 A).
Regarding claim 6, the modified Kweon teaches the pattern electrode structure of claim 1, but does not explicitly show wherein the upper end of the first branch electrode comprises a concave portion.
Chung ‘174 teaches an analogous electrowetting device for droplet removal having comb like electrodes and a concave geometry thereof contributing to droplet removal (“The sub-electrodes are comb-like, the surface of the cleaning device is inclined in a specific direction, a first voltage of a positive voltage is applied to at least one of the first sub-electrodes, and at least one of the second sub- The droplet attached to the surface of the cleaning device vibrates as the second voltage smaller than the first voltage is applied and the adhesion between the droplet and the cleaning device is continuously weakened by the vibration, At least one of the droplets, dust, or frost is removed from the cleaning device, and the concave of the sub-electrodes coincides with the direction of movement of the droplet.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the concave geometry of the electrodes of Chung ‘174 with the first branch electrode of the modified Kweon thus enhancing droplet movement in a direction of the concave geometry.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over the modified Kweon as applied to claim 1 above, and further in view of Chung ‘808 (US 20140251808 A1).
Regarding claim 8, Kweon teaches the pattern electrode structure of claim 1, but does not explicitly show wherein the upper end of the first branch electrode comprises a cutting-edge portion.
Chung ‘808 teaches an analogous use of a cutting edge electrode tip to move particles and droplets (Fig. 1A, ¶49-50, ¶56).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilize the geometry of Chung known to be effective for moving particles and droplets with the electrode of the modified Kweon thus predictably enhancing the desired effect of droplet removal.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Revier in view of Kweon.
Regarding claim 10, Revier teaches an electrowetting device (Fig. 2) comprising: a base material (120); a dielectric layer (105) on the base material (Fig. 2); and an electrode layer (electrodes 110 and 115) laminated between the base material and the dielectric layer (Fig. 2), the electrode layer comprising a pattern electrode structure (the electrodes alternating along the horizontal dimension at least); and
a dummy pattern of dielectric (105) disposed in a space between the first branch electrode (110) and the basal pattern electrode (115) (Fig. 2, ¶22).
Since Revier’s dielectric occupies the space between the electrodes and performs the isolating function disclosed by Applicant (instant specification, ¶95) Revier’s dummy pattern is considered as in line.
Revier does not explicitly show a first branch electrode disposed in a direction perpendicular to any plane that is perpendicular to a plane defined by the pattern electrode structure; and a basal pattern electrode disposed in an area above an upper end of the first branch electrode and connected to an electrode connection portion configured to receive a voltage, wherein an interval between the first branch electrode and the basal pattern electrode is equal to or larger than a diameter of a droplet to be removed.
Kweon teaches a pattern electrode structure (Figs. 1-4, a comb or interdigitated electrode pattern of electrodes 131 and 151) for an electrowetting device, the pattern electrode structure comprising:
a first branch electrode (330, ¶45) disposed in a direction perpendicular to any plane that is perpendicular to a plane defined by the pattern electrode structure (since the plurality of first comb electrode portions 330 is formed in the same plane as that of the pattern electrode structure, the direction of the plurality of first comb electrode portions 330 would be perpendicular to any plane perpendicular to a plane formed by the pattern electrode structure); and
a basal pattern electrode (550, ¶49) disposed in an area above an upper end of the first branch electrode and connected to an electrode connection portion configured to receive a voltage (Fig. 3), wherein an interval between the first branch electrode and the basal pattern electrode is equal to or larger than a diameter of a droplet to be removed (Fig. 2, ¶38, droplets 22 and 23 being smaller than the interval between electrodes).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the patterned electrode of Kweon in the integrated package of Revier thus protecting the patterned electrode and preventing short circuits.
Notwithstanding that the modified Revier teaches the claimed configuration as detailed above, it is noted that the limitation "droplet" is directed to a material or article worked upon. "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Young, 75 F.2d. 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). MPEP 2115. Thus, the designation "wherein an interval between the first branch electrode and the basal pattern electrode is equal to or larger than a diameter of a droplet to be removed" is deemed to be functional limitation in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, since the diameter of the droplet to be removed does not limit the claimed pattern electrode structure, the limitation that "wherein an interval between the first branch electrode and the basal pattern electrode is equal to or larger than a diameter of a droplet to be removed" would not limit the claimed pattern electrode structure.
Claims 11-17 recite essentially the same subject matter as those addressed above by the teachings of the prior art, and are rejected on the same basis.
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 COLLIN X BEATTY whose telephone number is (571)270-1255. The examiner can normally be reached M - F, 10am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham can be reached on 5712723689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/COLLIN X BEATTY/Primary Examiner, Art Unit 2872
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