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 .
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 2-4 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.
The use of parentheses in claims 2 and 3 as seen in the recitations to “a temperature of…” provided indefinite metes and bounds to the claims. Applicant is invited to remove the parentheses and provide the sought temperature(s) to the claim recitation.
Further, the recitations of claims 2-4 themselves are not clearly understood. In claim 2, the heating is set forth at a temperature at T1 or greater than a value and less than T1.
In claim 3, the heating is similarly set forth at a temperature of Tg + 130 or more and Tg + 160 or less.
In both claims, are these intended as two, individual heating steps?
This is similarly seen in claim 4, in which recitations to pressure of 90 or more and 120 or less are provided.
Are these intended as two, individual pressure steps?
Further, in all of claims 2-4, their recitations amount to providing a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 2 recites the broad recitation T1 – 20 or more, and the claim also recites T1 or less which is a narrower statement of the range/limitation.
This is likewise seen in cl.3 with the broad recitation Tg + 130 or more and also the narrower recitation thereof to Tg + 160 or less, and as in cl. 4 to a broad recitation of 90 or more followed by a narrow recitation thereof in 120 or less.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
It is also noted that the claims are drawn to a device in which such processes are not afforded patentable weight in terms of prior art (i.e. 35 USC 102/103), however, clarification remains to be required.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Sekihara (US 2011/0133364).
Sekihara discloses a microchannel chip comprising a resin substrate 001 including a channel groove 002 one surface of the resin substrate (pars.[0038,0039,0050,0052, figs. 3-5, 11, for example), and wherein Examiner asserts the recitation “manufactured using a mold formed by direct engraving…” is drawn to a process recitation not afforded patentable weight in a device claim. Further, such recitation is drawn to a product-by-process recitation, wherein scope of the product is defined at least in part in terms of the method or process by which it is made. In this case, the end product is defined by “manufactured using a mold formed by direct engraving…” Applicant is reminded that the product-by-process claim is always to a product. The reference need only to substantially meet the structure of the end product.
Sekihara further discloses a covering material (an opposing and joined resin substrate 001) joined to the resin substrate to cover the channel or groove 002 of the resin substrate (par.[0038], for example). Further noting Sekihara discloses likewise materials of construction to the resin substrate and resin covering material (par.[0054]) that coincide with Applicant’s disclosed materials of construction (see pars.[0023,0024] of Applicant’s pre-grant publication US 2024/0390891).
Further, the recitation to “…a roundness of a corner formed at a boundary between a joint surface of the covering material and inner surface…is R5 micrometers or less” is likewise drawn to the prior product-by-process recitation in the forming/manufacturing of the resin substrate, in which no patentable weight is attributed to such process recitations and wherein Applicant is reminded that the product-by-process claim is always to a product, wherein Sekihara likewise provides the structure of the product resin substrate, as claimed, as discussed above.
As discussed above, Sekihara meets the structure of the end product as Sekihara discloses a likewise resin substate including a channel groove, and wherein the claims are drawn to a device that do not necessitate any such manufacturing steps (and as likewise seen in the remaining dependent claims 2-4).
With regard to claim 2, the resin substrate of Sekihara implicitly has a load deflection temperature given as T1 as this is drawn to a material property, and wherein the qualitative comparison by way of “…the resin substrate is formed by injecting a molten resin into a cavity…” is drawn to a process recitation not afforded patentable weight in a device claim, and wherein T1 is not particularly limited and reads on the T1 of the commensurate structure of the claimed resin substrate disclosed by Sekihara (see likewise discussion to product-by-process recitations as discussed above).
With regard to claim 3, the resin substrate of Sekihara implicitly has a glass transition temperature given as Tg as this is drawn a material property, and wherein the qualitative comparison by way of “…the resin substrate is formed by injecting a molten resin heated to a temperature…” is drawn to a process recitation not afforded patentable weight in a device claim, and wherein Tg is not particularly limited and reads on the Tg is of the commensurate structure of the claimed resin substrate disclosed by Sekihara (see likewise discussion to product-by-process recitations as discussed above).
With regard to claim 4, the recitation is drawn to a process recitation not afforded patentable weight in a device claim wherein Sekihara discloses a commensurate resin substate as discussed above as in cl. 1, and furthermore thereto such recitation is drawn to a product-by-process recitation, wherein Applicant is reminded that the product-by-process claim is always to a product. The reference need only to substantially meet the structure of the end product.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hwang et al. (US 2010/0111770) discloses microfluidic chips including resin substrates, which is relevant to Applicant’s field of endeavor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEIL N TURK/Primary Examiner, Art Unit 1798
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