DETAILED ACTION
Status of the Claims
1. Claims 2-21 are pending.
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.
2. Claim 6 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "the second portion of the second substrate" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
3. Claims 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2013/0206597) and Bhullar et al. (US 2005/0103624).
Claim 9. Wang et al. teach a method (method steps of continuous reel-to-reel manufacturing process for forming droplet actuators of Fig 14; [0102]-[0106]):
a first set of electrodes on a first portion of a first substrate (printer is used to print electrowetting electrodes (reads on first set of electrodes) spaced apart from each other and disposed on substrate 116; [0054][0055][0088] and Fig 4);
a second set of electrodes on a second portion of the first substrate, the first portion spaced apart from the second portion (printer is used to print input/output pads 126 (reads on second set of electrodes) disposed on substrate 116 on second portion of substrate; see [0054][0055][0088] and Fig 4);
applying one or more of a hydrophobic material or a dielectric material to the first set of the electrodes during the laser ablating of the second set of electrodes on the second portion of the first substrate (CYTOP treatment station is used to insulate electrodes with a dielectric layer to make the electrode surface hydrophobic [0018][0085]. The input/output pads are spaced apart from the electrowetting electrodes, the input/output pads are exposed allow access to the pads [0055], thus no hydrophobic or dielectric material covers the input/output pads as recited);
defining a gap between the first substrate with a second substrate (embossing station form gap features between the first and second substrate; [0082]);
inserting one or more microbeads into the gap (microbeads are provided in the droplet operation gap; [0016]); and
cutting the first portion of the first substrate and a portion of the second substrate into a droplet actuator (cutting station cuts portion of first and second substrates to form droplet actuators comprising electrowetting electrodes and input/output pads; [0091] and Fig 14, the input/output pads and reservoir electrodes are disposed proximate to edge of the substrate; see Fig 4).
Wang et al. teach printer is used to print electrodes but do not teach use of laser to etch an electrode pattern on the substrate.
However, Bhullar et al. teach method of forming electrode array on a roll of ribbon or web with broad field laser ablation [0132] by positioning a mask 14 over the ribbon comprised of base substrate layered with conductive layer and forming electrode patterns on the conductive layer by penetrating excimer laser through the windows in mask (Fig 17 and [0095][0135]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention in view of Bhullar et al. teaching to use laser driver to form the conductive traces of Wang et al. because choosing any method among different methods of forming electrodes on a substrate including laser ablation would have obvious because these method are suitable equivalents for forming electrodes on the substrate and one of ordinary skill in the art would expect that using broad field laser ablation to form electrode patterns would have yield same results with reasonable expectations.
Claim 10. Wang et al. teach after applying the one or more of the hydrophobic material or the dielectric material, advancing the first portion of the first substrate via rollers to cause the one or more of the hydrophobic material or the dielectric material to be exposed to at least one of heat or an ultraviolet light (after application of CYTOP, the substrate is rolled over to heat cure station 1428; [0081] and Fig 14).
Claim 11. Wang et al. teach applying one or more of the hydrophobic material or the dielectric material to the second substrate (reservoir liner 122; [0055]).
Claim 12. Wang et al. in view of Bhullar et al. teach laser ablating the first set of electrodes includes exposing the first portion of the first substrate to a laser beam based on a pattern, the pattern defining spacings between respective ones of the electrodes of the first set (see Bhullar; [0135] and Fig 14).
Claim 13. Wang et al. in view of Bhullar et al. teach including laser ablating a signature the first portion of the first substrate (marking; see Bhullar; [0102]).
Claim 14. Wang et al. teach applying the one or more of the hydrophobic material or the dielectric material includes applying the one or more of the hydrophobic material or the dielectric material via web coating or vapor phase deposition (plasma-enhanced chemical vapor deposition to dispose CYTOP; [0017]).
Claims 15-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2013/0206597) and Hoss et al. (US 2010/0230285).
Claims 15 and 20. Wang et al. teach least one non-transitory machine-readable medium comprising machine- readable instructions that cause at least one processor circuit to at least (computer-usable storage medium having computer-usable program code used to implement method steps of continuous reel-to-reel manufacturing process for forming droplet actuators of Fig 14; [0102]-[0106]):
the conductive layer coupled to the non-conductive layer (droplet operation substrate 116 coupled to bottom substrate 110; [0053][0054]);
form a first set of electrodes in the conductive layer at a first time (printer is used to form electrowetting electrodes in the droplet substrate 116; [0054]),
cause the laser to form a second set of electrodes in the conductive layer at a second time, the laser associated with the second radiation intensity level at the second time (printer is used to form reservoir electrodes in the droplet substrate 116; [0054][0055]);
cause one or more of a hydrophobic layer or a dielectric layer to be applied to the first set of electrodes or the second set of electrodes (CYTOP treatment station is used to insulate electrowetting electrodes with a dielectric layer to make the electrode surface hydrophobic [0018][0085]);
cause the first substrate to be aligned with a second substrate such that a gap is formed therebetween (embossing station form gap features between the first and second substrate; [0082]);
cause one or more projections to be at least partially inserted into the gap (embossing station form gap features which include projections 1120 between the first and second substrate; [0082][0075] and Fig 11A); and
cause a portion of the first substrate and a portion of the second substrate to be cut to form a droplet actuator, the portion of the first substrate including one or more of the first set of electrodes or the second set of electrodes (cutting station cuts portion of first and second substrates to form droplet actuators comprising electrowetting electrodes and reservoir electrodes; [0091] and Fig 14)
Wang et al. do not teach laser is used to form the first and second set of electrodes and define first radiation intensity level for a laser based on a thickness of one or more of a conductive layer of a first substrate or a non-conductive layer of the first substrate, cause a radiation intensity level of the laser to be adjusted from the first radiation intensity level to a second radiation intensity level, the second radiation intensity level different than the first radiation intensity level.
However, Hoss et al. teach method of making electrodes on a substrate with the use of UV lasers (abstract and [0126][0127]). Hoss et al. further teaches intensity of the laser radiation to trim a material is dependent on material to be ablated and thickness of the coating is estimated before the ablation and intensity of the laser could be adjusted to properly ablate the estimated thickness and laser parameters are selected based on the type, density and thickness of material as well as size of the element, area to be removed/trimmed [0131][0136].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention in view of Hoss et al. to use laser as the method of forming electrodes of Wang et al. onto the substrate because laser method produces precise dimension and surface area over other methods.
Combined teachings of Wang et al. Hoss et al. would yield laser that could be configured to have radiation intensity level of the laser to be adjusted from the first radiation intensity level to a second radiation intensity level, the second radiation intensity level different than the first radiation intensity level to produce electrowetting and reservoir electrodes respectively.
Claim 16. Wang et al. teach the machine-readable instructions are to cause one or more of the at least one processor circuit to control one or more of respective rates at which respective thicknesses of the one or more of the hydrophobic layer or the dielectric layer (CYTOP treatment station is used to insulate electrowetting electrodes with a dielectric layer of desired thickness [0018][0085]);
Claim 17. Wang et al. in view of Hoss et al. teach wherein the machine-readable instructions are to cause one or more of the at least one processor circuit to cause the laser to form a third set of electrodes in the conductive layer at a third time; and cause one or more of the hydrophobic layer or the dielectric layer to be applied to the first set of electrodes but not to the third set of electrodes (the input/output pads are spaced apart from the electrowetting electrodes, the input/output pads are exposed allow access to the pads [0055], thus no hydrophobic or dielectric material covers the input/output pads as recited)
Claim 18. Wang et al. in view of Hoss et al. teach the first radiation intensity level causes the laser to penetrate the conductive layer and at least a portion of the non-conductive layer (laser could be configured to penetrate both conductive and substrate layer; See Hoss et al. [0136]).
Claim 19. Wang et al. in view of Hoss et al. teach the second radiation intensity level is associated with a lesser of depth of penetration of the laser with respect to the conductive layer than the first radiation intensity level (Hoss et al. teach radiation intensity could be changed based on size of the element, area to be removed/trimmed [0131][0136], thus one could configured second radiation intensity to penetrate at lesser depth compared to first radiation intensity.
Claim 21. Wang et al. teach the machine-readable instructions are to cause one or more of the at least one processor circuit to cause at least one first roller to move the first substrate in a first direction and at least one second roller to move the second substrate in the first direction to cause the first substrate and the second substrate to be aligned (see Fig 14 and [0091]).
Double Patenting
4. 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.
Claims 2, 3, 4 and 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11,13,17 and 18 of U.S. Patent No.12,201,980 (hereinafter ‘980). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘980 teach method for making a droplet actuator comprising:
ablating a first portion of a first substrate with a laser to form an electrode array on the first portion of the first substrate; aligning the first substrate with a second substrate such that a gap is formed between at least a portion of the first substrate and at least a portion of the second substrate; inserting one or more capillaries at least partially in the gap; and dicing the first substrate and the second substrate to form a first droplet actuator including the first portion of the first substrate and a second droplet actuator including a second portion of the first substrate (see claim 11).
Claim 3 (see claim 13).
Claim 4 (see claim 18).
Claim 6 (see claim 17).
Allowable Subject Matter
Claims 5, 7 and 8 are 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GURPREET KAUR whose telephone number is (571)270-7895. The examiner can normally be reached M-F 9:30-6.
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, Curtis Mayes can be reached at 571-272-1234. 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.
/GURPREET KAUR/
Primary Examiner
Art Unit 1759
Prosecution Insights