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 .
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1, 6-17, 22-25, 30, 34 and 35 are rejected under 35 U.S.C. 112(b) 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 1 recites a fluidic device comprising
(i) a notch capillary barrier;
or (ii) an inset barrier disposed in a fluidic channel,
wherein:
(i) the notch capillary barrier comprises a first ramp and a second ramp, wherein the first and second ramps rise in opposite directions within the fluidic channel, and a notch positioned between the first and second ramps, wherein, the notch comprises a base and two opposing faces; and
(ii) the inset barrier comprises first and second base sections within the fluidic channel, and a notch positioned between the first and second base sections, wherein the notch comprises a notch base and two opposing faces.
The use of the alternative language “or” in the preamble of independent claim 1 is confusing and indefinite. As currently written, this independent claim sets forth two distinct embodiments, (i) notch capillary barrier and (ii) inset barrier. In addition, these different embodiments as recited in claim 1 are not structurally linked to each other. The use of the alternative language between disparate structures in the preamble is improper.
Furthermore, applicant’s specification, as filed, does not support a fluid device that includes both the i) notch capillary barrier and ii) the inset barrier as recited in claim 1. None of the dependent claims 6-17, 22-25, 30, 34 and 35 link these structures together. Any attempt to link these embodiments into a single fluidic device will trigger a new matter rejection.
Dependent claims 6-17, 22-25, 30, 34 and 35 depend directly or indirectly (i.e., claim 15) from independent claim 1. The dependent claims attempt to structurally limit either embodiment i) or ii), or both i) and ii). The dependent claims are replete with antecedent basis issues. For example, if embodiment i) where examined “the rise-over-run” limitation in the first and second ramp in claim 1 has not been established and lacks antecedent basis in claim 2. Also, numerous dependent claims refer to “a notch” or “each notch”, which not only lack antecedent basis but are confusing since both embodiments i) and ii) recite a notch. In short, indefinite issues are to numerous and confusing to address here. Applicant must correct these in any future response.
In the interest of compact prosecution, the examiner will attempt to apply prior art to the ii) inset barrier embodiment as best understood in claim 1. The dependent claims are not being treated with prior art. MPEP 2173.06(II) states, “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
Again, any future amendment by applicant that would result in a claim interpretation where the fluid device in claim 1 includes both embodiments i) and ii), or limit claim 1 to the i) embodiment after receiving this first action on the merits will be considered new matter and/or a shift in the invention, which is not permitted in this case, see MPEP 819.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6-17, 22-25, 30, 34 and 35 are further rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As discussed above dependent claims 6-17, 22-25, 30, 34 and 35 are rejected here for failing to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1 (embodiment ii), as best understood, is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Norikane et al., (US 2007/0242560; hereinafter “Norikane”).
Norikane teaches a fluidic device 1 comprising an inset barrier disposed in a fluidic channel (corresponds to flow passage 12), wherein: the inset barrier comprises first and second base sections within the fluidic channel, and a notch 28 positioned between the first and second base sections, wherein the notch comprises a notch base and two opposing faces, see examiner annotated Fig. 14 below.
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Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Relevant Prior Art
While the following prior art listed below is not specifically discussed in this Official action, the examiner considers the listed prior art relevant to the overall prosecution and may be relied upon during subsequent examination(s) based on applicant’s future response(s).
Mourey et al., (US 2019/0060898) teach microfluidic devices comprising a microfluidic channel, a capillary chamber, and a fluidic actuator. The microfluidic channel is fluidly connected to the capillary chamber. The capillary chamber is to restrict flow of fluid therethrough.
Vulto et al., (US 2015/0238952) teach apparatus for controlling the shape and/or position of a moveable fluid-fluid meniscus, the apparatus comprising a volume for containing and directing fluid, the filling direction being a downstream direction, including the meniscus and the volume having at least a first structure defining a capillary pressure barrier along which the meniscus tends to align, the capillary pressure barrier and the meniscus defining a boundary in the volume between at least two sub-volumes.
Conclusion
No claims are allowed.
The examiner does not recommend further patent prosecution in this case, as the use of capillary barriers with tailored geometry in microfluidic channels to control flow (i.e., pin/release liquid menisci) is well established in the crowded microfluidic art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached between 9:30am-7pm EST.
Examiner interviews are available via telephone 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.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached on 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/P. Kathryn Wright/Primary Examiner, Art Unit 1798
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