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 .
Status of Claims
The claim set submitted on 19 JULY 2024 is acknowledged and considered. In the claim set, Claims 1-10 are presented and are considered on the merits below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 19 JULY 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,070,749 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while the ‘749 reference discloses a microfluidic system, it includes the microfluidic device as claimed in the instant invention.
For example, Claim 1 of the instant invention is directed to a microfluidic device comprising: a substrate having a first fluid inlet/outlet system, a second fluid inlet/outlet system, and a fluidic network between the first fluid inlet/outlet system and the second fluid inlet/outlet system and in fluid communication with the first fluid inlet/outlet system and the second fluid inlet/outlet system; wherein the fluidic network comprises a microfluidic channel network that is in fluid communication with the first fluid inlet/outlet system and spaced from the second fluid inlet/outlet system, a nanofluidic channel network fluidly connecting the microfluidic channel network and the second fluid inlet/outlet system, and a plurality of pores in fluid communication with the microfluidic channel network and the nanofluidic channel network and the microfluidic system also include the microfluidic device as claimed verbatim as well as other components that are included in the overall microfluidic system for operating the device.
The microfluidic device are exactly claimed the same.
See ‘749 claims below how it relates the instant invention.
Claims 1, 2 of ‘749: substrate and fluidic network à Claim 1 of instant invention
Claim 4 of ‘749 à Claim 2 of instant invention
Claim 5 of ‘749 à Claim 3 of instant invention
Claims 6 and 7 of ‘749, à Claims 4 and 5 of instant invention
Claim 8 of ‘749 à Claim 6 of instant invention
Claim 9 of ‘749 à Claim 7 of instant invention
Claim 10 of ‘749 à Claim 8 of instant invention
Claim 11 of ‘749 à Claim 9 of instant invention
Claim 3 of ‘749 à Claim 10 of instant invention
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.
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by HE, US Publication No. 2016/0123890 A1, submitted on the Information Disclosure Statement on 19 JULY 2024, US Patents Cite No. 7
Applicant’s invention is drawn towards a device, a microfluidic device.
Regarding Claim 1, the HE reference discloses a microfluidic device, Figure 3 and 4, mini-reservoir device 301, [0040, 0047], comprising: a substrate, [0036], having a first fluid inlet/outlet system, Figure 3, inlet 305/outlet 315, [0047], a second fluid inlet/outlet system, Figure 3, inlet 306/outlet 316, [0047], and a fluidic network between the first fluid inlet/outlet system and the second fluid inlet/outlet system and in fluid communication with the first fluid inlet/outlet system and the second fluid inlet/outlet system, Figure 3 and 5, mini-reservoir device 301, [0045, 0047]; wherein the fluidic network comprises a microfluidic channel network that is in fluid communication with the first fluid inlet/outlet system and spaced from the second fluid inlet/outlet system, a nanofluidic channel network fluidly connecting the microfluidic channel network and the second fluid inlet/outlet system, and a plurality of pores in fluid communication with the microfluidic channel network and the nanofluidic channel network, [0039-0041], Figure 2, character 210, 215, Figure 5 and 6.
Additional Disclosures Included are: Claim 2: wherein the microfluidic device of claim 1, wherein the microfluidic channel network has a first set of microfluidic inlet/outlets that are fluidly connected to the first fluid inlet/outlet system, and a second set of microfluidic inlet/outlets that are fluidly connected to the nanofluidic channel network, Figure 3, inlet/outlet pairs 305/315 and 306/316, connected to mini-reservoir comprising micro-pore, nanopores or both, [0040, 0048], Figure 5, see network/lattice, [0039].; Claim 3: wherein the microfluidic device of claim 1, wherein the nanofluidic channel network has a first set of nanofluidic inlet/outlets that are fluidly connected to the microfluidic channel network, a second set of nanofluidic inlet/outlets that are fluidly connected to the first fluid inlet/outlet system, and a third set of nanofluidic inlet/outlets that are fluidly connected to the second fluid inlet/outlet system, Figure 3, mini-reservoir 301, [0047], mini-reservoir for accepting fluid or additional fluid, [0040], may in some embodiments comprise a porous network comprising micro-pores, nano-pores, or both. Micro-pores are pore, channel, and/or throat structures with generally micrometer-scale diameters nano-pores are pore, channel, and/or throat structures with generally nanometer-scale diameters.; Claim 4: wherein the microfluidic device of claim 1, wherein the microfluidic channel network has a depth of between about 1 micron and about 500 microns, [0040, 0126].; Claim 5: wherein the microfluidic device of claim 1, wherein the nanofluidic channel network has a depth of between about 1 nm and about 999 nm, [0040].; Claim 7: wherein the microfluidic device of claim 1, wherein the microfluidic channel network is arborescent and has a stem adjacent the first fluid inlet/outlet system and a plurality of branches spaced from the first fluid inlet/outlet system, Figure 5, [0056].; Claim 8: wherein the microfluidic device of claim 1, wherein the first fluid inlet/outlet system comprises at least a first inlet/outlet port and at least a first inlet/outlet channel fluidly connecting the first inlet/outlet port and the fluidic network, Figure 3, inlet 305 connected to capillary 325 which may accept additional fluid (an first port) connected to a channel 355, connected to outlet 315 and mini-reservoir 301, [0047, 0048], and the second fluid inlet/outlet system comprises at least a second inlet/outlet port and at least a second inlet/outlet channel fluidly connecting the second inlet/outlet port and the fluidic network, Figure 3, inlet 306 connected to capillary 326 which may accept additional fluid (a second port) connected to a channel 366, connected to outlet 316 and mini-reservoir 301, [0047, 0048].; Claim 9: wherein the microfluidic device of claim 1, wherein the substrate comprises i) a base panel in which the first fluid inlet/outlet system, the second fluid inlet/outlet system, and the fluidic network are etched, [0036-0038], Figure 1, and ii) a cover panel secured to the base panel and covering the first fluid inlet/outlet system, the second fluid inlet/outlet system, and the fluidic network, and wherein at least one of the base panel and the cover panel is transparent, [0038], glass or another transparent substrate is grafted to chip to enable visual observation, Figure 1.; and Claim 10: wherein the microfluidic device of claim 1, wherein the fluidic network mimics an oil formation, abstract, [0036, 0048].
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over HE, US Publication No. 2016/0123890 A1.
Regarding Claim 6, the HE reference discloses the claimed invention, but is silent in regards to wherein the microfluidic device of claim 1, wherein the microfluidic channel network is triangle shaped and has a base adjacent the first fluid inlet/outlet system and a peak spaced from the first fluid inlet/outlet system.
In HE, Figure 2, the network of channels can be in different conformations such as in lattice or be randomized in 210 and 215. The pore network comprises pores and throats connecting the pores. The pore network may be an approximation of a pore network scanned from an actual core sample or may be an imprint of a computationally or otherwise synthetically designed pore network. A mini-reservoir device of either type (ROC or PMA) may in some embodiments be configured to approximate a pore network within a subterranean formation (whether by reproduction, or by generation of a structure having characteristics such as permeability and/or porosity similar to a subterranean formation, or by other means of approximation), [0037].
Since HE discloses that the design of the network have a specific structure having characteristic for desired permeability and/or porosity, it would be obvious to one having ordinary skill in the art before the effective filing date to modify the shape network so that it is triangle shaped and has a base adjacent the first fluid inlet/outlet system and a peak spaced from the first fluid inlet/outlet system to create a network for fluid to flow through the system to mimic a pore network scanned from an actual one or a designed one mimicking a particular environment, [0037], and wherein the shape of the network is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed network was significant, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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, 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.
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.
CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797
