DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Breadmore, et al. application filed with the Office on 20 December 2024.
Claims 34-53 are currently pending, and claims 34-48 have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 34-48, drawn to a method for production of an inner surface coating and a coated capillary.
Group II, claim(s) 49-53, drawn to an apparatus for forming an inner surface coating.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I & II lack unity of invention because the groups do not share the same or corresponding technical feature.
During a telephone conversation with Mr. Brian Marstall on 21 July 2026, a provisional election was made with traverse to prosecute the invention of Group I, claims 34-48. Affirmation of this election must be made by applicant in replying to this Office action. Claims 49-53 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
The instant application is a US National Stage Application of an International Patent Application, PCT/AU2023/050553, filed on 20 June 2023, which claims priority to an Australian Patent Application, AU2022901678, filed on 20 June 2022. Thus, the earliest effective filing date for the instant application is 20 June 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted regarding the present application filed on 20 December 2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the Examiner.
Claim Rejections - 35 USC § 102
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.
Claims 34, 40, 42, 45 and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published paper by K. C. Popat, et al. (“Poly(ethylene glycol) interfaces: an approach for enhanced performance of microfluidic systems”, Biosensors & Bioelectronics, 19(9): p. 1037-1044, April 15 2004; hereinafter, “Popat”).
Regarding claim 34, Popat discloses ethylene oxide in vapor phase was used to grow PEG on microcapillary surfaces (1st ¶, 2.3. Vapor phase coating of glass microcapillaries, p. 1038). Thus, Popat teaches a method of coating the inner surface of an enclosed article (i.e., microcapillaries) by vaporization of a first monomer (i.e., ethylene oxide), wherein the interaction of the first monomer and the inner surface result in a first monomer layer on the inner surface of the enclosed article (i.e., “We modified the inner surface of glass microcapillaries with PEG (polyethylene glycol) …”, last ¶, 1. Introduction, p. 1038).
Regarding claim 40, Popat does not teach heating during the introduction of the ethylene oxide polymer precursor (2.3. Vapor phase coating of glass microcapillaries, p. 1038-1039), therefore it is inferred the reaction to coat the inner surface of the enclosed article was performed at room temperature, which is below 180 °C.
Regarding claim 42, Popat teaches “[t]he inner surface of microcapillary was first silanized by injecting 4 mmol/cm2 concentration of APTMS using a microsyringe. The microcapillaries were then transferred to vacuum oven for silanization. The surfaces were silanized for 2 h at 120 ◦C under vacuum.” (2nd ¶, 2.3. Vapor phase coating of glass microcapillaries, p. 1039) Thus, Popat teaches a preliminary step of vaporizing an anchor layer composition and reacting the vaporized anchor layer composition with a native inner surface of the enclosed article.
Regarding claim 45, Popat teaches the enclosed article is glass microcapillaries (“Ethylene oxide in vapor phase was used to grow PEG on microcapillary surfaces.”, 1st ¶, 2.3. Vapor phase coating of glass microcapillaries, p. 1038).
Regarding claim 46, Popat discloses “[e]thylene oxide in vapor phase was used to grow PEG on microcapillary surfaces.” (1st ¶, 2.3. Vapor phase coating of glass microcapillaries, p. 1038), wherein “PEG composition can be controlled by the concentration of ethylene oxide and the polymerization reaction time” (1st ¶, 2.3. Vapor phase coating of glass microcapillaries, p. 1038-1039). Thus, Popat teaches a coated capillary comprising a polymeric inner surface coating with a uniform, controlled polymer chain length.
Allowable Subject Matter
Claims 35-39, 41, 43-44 and 47-48 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The Popat reference is considered the closest prior art to the instant claims. However, Popat does not anticipate or render obvious further vaporizing a second monomer (as required by instant claims 35-38 and 41), the first monomer be selected from the group of molecule recited in instant claim 39, that the enclosed article is fused silica (as required by instant claims 43 and 44), or that the polymer is an alternating copolymer comprising first and second monomers (as required by instant claims 47 and 48).
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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, Luan Van can be reached at (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
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