DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on May 26, 2026. Claims 1-30 are pending in the application.
Status of Objections and Rejections
All objections and rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by the amendments.
Claim Rejections - 35 USC § 102/103
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 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.
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 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.
Claim(s) 20-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bormashenko (U.S. 10,475,625) or, in the alternative, under U.S.C. 103 as being unpatentable over Bormashenko in view of Ogura (U.S. 2021/0151311).
Regarding claim 20, Bormashenko teaches a system, comprising:
a probe (Fig. 2; col. 8, l. 17: a jet head; ll. 11-15: the plasma jet technology involves the use of a high-voltage discharge to create a pulsed electric charge in an enclosed chamber; a gas is then allowed to flow through the discharge section for form the plasma) having a tapered tip (e.g., Fig. 3: the tapered tip below the liquid reservoir 34; col. 10, ll. 21-23: the liquid droplets are dispensed directly into chamber from liquid reservoir);
a voltage source (col. 8, line 26: an electric power source), the voltage source being in electronic communication with the probe (col. 9, ll. 5-6: the plasma treatment is effected upon generating the plasma by application of a high voltage);
a target electrode (Fig. 4B: Aluminium foil; also see Fig. 2: sample 25; col. 8, ll. 34-35: sample 25 is a liquid placed in a porous substrate; col. 9, l. 66: an exemplary porous substrate is depicted in Fig. 4B);
a dielectric substrate disposed between the probe and the target electrode (Fig. 4B: PC porous film; as evidenced by Fig. 2, the film must be between the jet head and the Aluminium foil),
the system being configured such that the voltage source is operable to give rise to ions in a first medium surrounding the probe (col. 7, ll. 11-15: plasma is considered to consist of a mixture of neutral atoms, atomic ions, electrons, molecular ions, and molecules in excited and ground states and carrying a high amount of internal energy) that are encouraged away from the tapered tip of the probe and toward the target electrode (Fig. 2: see the direction of plasma 23; e.g., Fig. 3: the tip of the jet head) while the probe is free of physical contact with a droplet (Fig. 5: water droplet) that has a density and is disposed between (1) the probe and (2) the dielectric substrate (Fig. 2: plasma 23, as evidenced by Fig. 4b, the plasma must be between the jet head 27 and the PC porous film on the Aluminium foil),
the system being further configured such that the ions are sufficient to effect a decrease in a contact angle of the droplet relative to the substrate (Fig. 6A-B; Table 1, col. 25, ll. 41-45: the initial apparent water contact angle (APCA) of liquid silicon oil (PDMS) following cold air plasma treatment was considerably lower than the initial APCA of the untreated silicone oil).
Here, the limitations “the system being configured such that the voltage source is operable to give rise to ions in a first medium surrounding the probe that are encouraged away from the tapered tip of the probe and toward the target electrode while the probe is free of physical contact with a droplet that has a density and is disposed between (1) the probe and (2) the dielectric substrate” and “the system being further configured such that the ions are sufficient to effect a decrease in a contact angle of the droplet relative to the substrate” are deemed to be functional limitations in apparatus claims. MPEP 2114 (II). "[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). Here, Bormashenko teaches all structural limitations of the presently claimed system and thus it is capable of operating the voltage source to give rise to ions in first medium surrounding the probe that are encouraged away from the probe and toward the target electrode while the probe is free of physical contact with a droplet that has a density and is disposed between (1) the probe and (2) the dielectric substrate and thus the ions are sufficient to effect a decrease in a contact angle of the droplet relative to the substrate.
Alternatively, Bormashenko does not teach the probe (Fig. 2: jet head 27) having a tapered tip of the ions are away from the tapered tip of the probe.
However, Ogura teaches gas ions generated by a corona discharge from a discharging electrode 25 and then introduced into the inlet tube 26 (Fig. 5; ¶7). Thus, the discharging electrode 25 is a probe having a tapered tip from which ions are away from the tapered tip of the discharging electrode 25.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Bormashenko by substituting its jet head with one having a tapered tip as taught by Ogura because such a configuration of the jet head is known in the art and the substitution would not yield nothing more than predictable results. MPEP 2141(III)(B). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 21, Bormashenko teaches a second medium (Fig. 5: silicon oil; col. 26, ll. 7-8: the silicon oil is PDMS liquid), the second medium being disposed so as to enclose the droplet (Fig. 5: indicating the silicon oil enclosing the water droplet).
Regarding claim 22, Bormashenko teaches wherein the second medium has a density lower than the density of the droplet (the density of silicon oil is lower than the density of water because oil forms on top of the water droplet).
Regarding claim 23, Bormashenko teaches wherein the second medium is an oil (Fig. 5: silicon oil).
Regarding claim 24, Bormashenko teaches the system further comprising a material disposed on the substrate (Fig. 4B: liquid PDMS on the dielectric substrate, i.e., PC porous film).
Regarding claim 25, Bormashenko teaches wherein the material is positioned such that the decrease in the contact angle of the droplet relative to the substrate effects contact between the droplet and the material (Fig. 5, 6A-B; Table 1; col. 25, ll. 45-46: the surface of silicon oils was hydrophilized by the plasma treatment).
Regarding claim 26, Bormashenko teaches wherein the material is indicative of a position of the droplet, a composition of the droplet, or both (Fig. 5; col. 25, l. 1: the water droplet engulfed by the silicon oil).
Regarding claim 27, Bormashenko teaches wherein the material is reactive with a component of the droplet (Fig. 5, 6A-B; Table 1; col. 25, ll. 45-46: the surface of silicon oils was hydrophilized by the plasma treatment; ll. 59-60: the plasma treatment significantly increases surface energies of organic liquids; thus the hydrophilized silicon oil would be more reactive with the water droplet).
Regarding claim 28, Bormashenko teaches wherein the voltage source is operable according to a programmed schedule (col. 9, ll. 8-10: the application of high voltage may be continuous or comprises repeated brief discharges).
Further, the limitation “operable according to a programmed schedule” is 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).
Regarding claim 29, Bormashenko teaches wherein the voltage source is operable to vary a voltage applied to the probe (col. 9, 8-12: the application of high voltage may be continuous or comprises repeated brief discharges, for example, at a rate of at least 1 kHz and optionally in a range of from 10 to 100 kHz).
Further, the limitation “operable to vary a voltage applied to the probe” is 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).
Regarding claim 30, Bormashenko teaches wherein the dielectric substrate defines at least one depression (Fig. 4B: PC porous film with a plurality of depressions), the at least one depression being configured to accommodate the droplet (Fig. 5, 7A-B).
Further, the limitation “being configured to accommodate the droplet” is 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).
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached M-F: 8:30am - 5:30pm.
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/C. SUN/Primary Examiner, Art Unit 1795
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