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 .
Specification
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Here, Applicant makes reference to a foreign patent document (para. 9-10) that appears “essential” material as said document describes the process of detecting states of satellite droplets—which appears to be the essence of Applicant’s claimed invention (see e.g., base claims 1, 16 and 17).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to “A droplet sorting program for causing a computer...” which under its broadest reasonable interpretation can be interpreted as software per se. Moreover, software per se has been held to be non-statutory subject matter (MPEP 2106.03).
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 8-9 and 12-15 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 pre-AIA the applicant regards as the invention.
Claims 8 and 13-15 recite the limitation "it". There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 12 and 14-15, these claims describe a processing unit that “scans the fluid stream image” from a “downstream side” (claims 12 and 15) and “upstream side” (claim 14). Here, it is unclear how a processing unit can scan an image from a specific location and it is also unclear what is regarded as upstream or downstream. Applicant must clarify what exactly is being imaged/scanned and from what specific location, e.g., a droplet imaging unit that images a state of the fluid stream upstream or downstream of the detection unit.
Examiner requests clarification and recommends amending the claims with language that clearly sets forth the claimed invention. In the interim, and in the interests of compact prosecution, the claims have been interpreted as set forth below.
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 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; or
(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 1-11, 13 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otsuka (WO 2020149042 A1)(with text citations to English translation attached herewith).
Otsuka teaches a droplet sorting system and method comprising:
(re: base claim 1) a droplet imaging unit that images a state of a fluid stream including a droplet discharged from an orifice that generates the fluid stream (fig. 1 showing imaging unit 15; p. 7 teaching that droplet detection unit 15 include an image sensor 15 that “detects the state of the droplet D discharged from the orifice p3 and the satellite droplet SD”);
a vibration (V) element for forming the droplet (p. 5 teaching vibrating the flow path P at a predetermined frequency to form a fluid stream of droplets); and
a control unit (16) that specifies a control parameter of the vibration element on a basis of a state of a satellite in a fluid stream image including a droplet fused with the satellite captured by the droplet imaging unit (p. 7 teaching control unit that “controls the drive condition supplied to the vibrating element V based on the relative relationship between the droplet D discharged from the orifice P3 and the satellite droplet SD”; fig. 4 and p. 8-9 teaching that captured image includes a droplet fused with the satellite droplet fused and control unit analysis the absorption of said satellite droplet);
(re: claim 2) wherein the control parameter is one or more parameters selected from frequency, amplitude, and intensity of a drive voltage of the vibration element (p. 7 teaching control of frequency and/or intensity of drive voltage; see also fig. 7 and p. 11);
(re: claim 3) a processing unit that separates a satellite portion and a droplet portion from each other in the fluid stream image (p. 8-10 teaching ease of absorption analysis by control unit involves separating the satellite portion, e.g., see broken-line in fig. 3);
(re: claim 4) wherein the control unit specifies the control parameter of the vibration element on a basis of the fluid stream image after the separation (p. 8-10 teaching that control unit adjusts drive condition based on ease of absorption);
(re: claim 5) wherein the separation is performed on a basis of width information regarding the droplet (Id. teaching that width of target droplet can be used for separation analysis);
(re: claim 6) wherein the separation is performed at a position having a specific width with respect to height of the droplet (p. 8 teaching separation determination technique involving an area value of the target droplet wherein a width of the target droplet is applied—thus as height and width are proportional in an area calculation and a threshold area value is used it logically follows that a specific width with respect to height is used);
(re: claim 7) wherein the separation is performed at a position where width of the droplet is minimum or at a position where the width of the droplet is a specific width with respect to a maximum width (p. 8 teaching separation determination technique wherein the maximum value of the widths of the plurality of target liquid droplets is acquired, and when the width is equal to or more than half the liquid droplets, the liquid droplet D is determined, and when the width is less that that the satellite liquid droplet SD”);
(re: claim 8) wherein the processing unit performs a first determination for determining whether or not
(re: claim 9) wherein the threshold is a threshold related to one or more selected from width, height, and a center of gravity of the droplet (Id.);
(re: claim 10) wherein the processing unit performs a second determination for determining whether or not the separation is possible on a basis of a state parameter of the droplet calculated from the fluid stream image captured by the droplet imaging unit (fig. 4 and p. 9 teaching in Example 1 a second determination technique using position of center of gravity as a state parameter);
(re: claim 11) wherein the state parameter is one or more state parameters selected from a ratio between width and height of the droplet, a position of a center of gravity with respect to the height of the droplet, and a position where the width of the droplet is a specific width with respect to the height of the droplet (Id.);
(re: claim 13) wherein if the state parameter is within a predetermined range in the second determination,
(re: claim 16) The claimed method steps are performed in the normal operation of the device cited above.
(re: claim 17) Otsuka further teaches a droplet sorting program for causing a computer to achieve a control function of specifying, on a basis of a state of a satellite discharged from an orifice that generates a fluid stream including a droplet fused with the satellite, a control parameter of a vibration element for forming the droplet in a fluid stream image including a state of the fluid stream (p. 17 teaching droplet control program to execute method steps of sorting system and control unit described above).
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.
Claims 12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuka (WO 2020149042 A1) in view of Otsuka et al. (“’957 Reference”)(US 2015/0068957) and legal precedent.
Otsuka as set forth above teaches all that is claimed except for expressly teaching
(re: claim 12) wherein the processing unit
(re: claim 14) wherein is within a predetermined range with respect to the height of the droplet,
(re: claim 15) wherein the fluid stream image
Here, it is noted that Otsuka as cited above already teaches using dimensional values, such as width and area, in droplet separation determinations (see e.g., p. 8-10).
The ’957 Reference further teaches that it is well-known in the microparticle sorting arts to use width and length values related to the fluid stream/satellite droplets during the droplet break-off process to optimize the sorting process (fig. 2, 4, 5 and 7 showing various width and height/length values; para. 69-87 teaching that state of satellite droplet as measured via various width and length/height values in comparison to certain threshold/minimum values as well as relationship of said values can be used to optimize sorting/separation process).
Indeed, the claimed features relating to the relationship between specific width and height values of a droplet as well as specific ranges can be regarded as common design parameters/operating variables controlled by the design incentives and/or economic considerations involved in this type of subject matter. This is especially applicable in the microparticle sorting arts as demonstrated above. Moreover, legal precedent teaches that variations in these type of common design parameters/operating variables are obvious and are the mere optimization of result-effective variables that would be known to one with ordinary skill in the art. See MPEP 2144.05 I.II (teaching ample motivation to optimize or modify result-effective variables based on “design need(s)” or “market demand”).
It would thus be obvious to one with ordinary skill in the art to modify the base reference with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found in the prior art itself as cited above and in legal precedent as described above. Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Otsuka for the reasons set forth above.
Conclusion
Any references not explicitly discussed above but made of record are regarded as helpful in establishing the state of the prior art and are thus considered relevant to the prosecution of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805.
Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov. Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”.
Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/
/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
Jcr
---
February 5, 2026