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 .
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.
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Claims 1-4, 6-12, and 14-19, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-20, and 26 of copending US Application No. 18/529,146 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4, 6-19, and 25 of the instant application are merely broad presentations of claims 1-2, 4-20, and 26 of copending US Application No. 18/529,146. Note that the terms “pore”, “diameter”, and “cylindrical” used in the claims of copending US Application No. 18/529,146 are narrower than the terms “channel”, “width”, and “elongated”, respectively, used in the claims of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 8: It is the Examiner’s position that the term “the substrate material” should be amended to—the channel substrate—to correct an antecedent basis issue and to match the language of original claim 13.
Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 03/24/26 have been fully considered but they are not persuasive.
Regarding Applicant’s comments directed to the provisional rejection of claims 1-4, 6-19, and 25 on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-20, and 26 of copending US Application No. 18/529,146, Applicant argues:
Argument #1: “In the instant application, a "channel" is a surface feature having an open top and extending along a surface, such as being elongated and potentially continuous along a wall, whereas the "pore" structure of the '146 application is directed to discrete voids within a porous medium that are not required to be elongated or open along a surface. Thus, a pore (even if cylindrical and defined by a diameter) is not encompassed by a channel as recited in claims 1 and 25, nor is a channel necessarily a pore. The claimed geometries impose different structural and functional constraints on fluid confinement and meniscus formation, and therefore are not interchangeable or hierarchical.” See page 8 of Applicant’s remarks.
Response to Argument #1: First, the claim (claim 1) does not include limitations describing the channel as “elongated or open along a surface”. Because this language is not in the claim, the original specification needs to be referenced to understand the meaning of the term “channel”. An understanding of the term “channel” can be derived by examining figure 2 of the instant application; wherein channel structure 40 and channel 42 are clearly identified, as shown below. Furthermore, even though not required by claim 1, the pore 303 of copending application 18/529,146 is both “elongated” and “open along a surface”, as seen in figure 3 below.
Second, a pore is a three-dimensional structure—not a two-dimensional structure. Because a pore is a three-dimensional structure, a pore is inherently elongated along three dimensions.
Third, the descriptions of the word “channel” in the instant application and the word “pore” in copending application 18/529,146 impose zero different structural and functional constraints on fluid confinement and meniscus formation, as seen the figures below.
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Figure 2 of the Instant Application
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Figure 3 of Copending Application 18/529,146
Argument #2: “A "diameter" of a cylindrical pore describes a radially symmetric, enclosed or semi-enclosed cavity, whereas a "width" of an elongated channel, as recited in claims 1 and 25, describes a transverse dimension of an open, anisotropic surface feature extending in a longitudinal direction.” See page 8 of Applicant’s remarks.
Response to Argument #2: A diameter of circle is also known as a width of a circle. The term “width” is a general term describing a dimension of any object and the term “diameter’ is a term describing a particular dimension (diameter) of particular object (circle). Therefore, the term “diameter” is a narrow description of the term “width”.
Argument #3: “Likewise, a "cylindrical" pore does not read on an "elongated" channel, which requires extension along a surface and may be continuous.” See page 8 of Applicant’s remarks.
Response to Argument #3: A cylinder is a three-dimensional structure—not a two-dimensional structure. Because a cylinder is a three-dimensional structure, a cylinder is inherently elongated along three dimensions. Specifically, a cylinder is formed by elongating a circle along a third dimension.
Allowable Subject Matter
Claims 20-24 are allowed.
Claim 5 is 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 best prior art references of record, Nagasaka (US 2013/0047417) and Akagi et al. (US 2021/0310945), fail to teach:
“wherein the subject material exhibits a reduced wetting angle on the liner material which is less than a wetting angle of the subject material on the channel substrate.”, as set forth in claim 20.
Regarding claim 5, copending US Application No. 18/529,146 fails to claim “wherein the channels are disposed continuously along and around the walls of the body.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEVI GANNON whose telephone number is (571)272-7971. The examiner can normally be reached 7:00AM-4:30PM.
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/LEVI GANNON/Primary Examiner, Art Unit 2849 April 2, 2026