Detailed Action
The communications received 06/11/2026 have been filed and considered by the Examiner. Claims 1-20 are pending.
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 use of the terms Brij 93, Span 20, Span 40, Span 60, Span 65, Span 80, Span 85, Tetronic 90R4, Tetronic 701, Pluronic® L-31, Pluronic® L-61, Pluronic® L-81, Pluronic® L- 121, Pluronic® 31R1, Brij 52, and MERPOL®, which are trade name and/or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claim(s) 1-6, 8-9, 11-15, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Srinivasan et al (US 2009/0280476) hereinafter SRI as evidenced by NIST (Tetradecane NIST, 2020).
As for claim 1, SRI teaches a method [Abstract] comprising:
introducing an aqueous droplet into an air gap of a microfluidics apparatus which is formed between a first plate and a second plate of the microfluidics apparatus [Fig. 11; 0377; 0394]; and
encapsulating the aqueous droplet within a sheath of a mobilizing composition comprising a liquid wax component and a lipophilic mobilizing component (as the filler fluid can be silicone oil, parrafin oil, and a non-ionic surfactant can be used) [0393-0397; 0408; 0410-411], wherein the liquid wax component comprises a hydrocarbon chain (as a hydrocarbon) [0397] and is a liquid at temperatures from 4°C to 100°C, (as the components disclosed in the instant specification and SRI are substantially the same, therefore are understood to have the same melting points see instant specification paragraph 0025 compared with SRI paragraph 0397, in addition they are understood to be liquid at room temperature) and
the lipophilic mobilizing component comprises a non-ionic surfactant, and is mixed with the liquid wax component, wherein the lipophilic mobilizing component forms a layer between the aqueous droplet and the liquid wax component (by creating a stabilizing liquid film between the droplet and solid phases) [0410].
As it pertains to liquid at temperatures, Tetradecane one of the possible liquid wax components of SRI is evidenced to have a melting point of ~4 degrees Celsius which means it would be liquid in the claimed range of 4-100 degrees Celsius [NIST, Normal melting point].
As for claim 2, SRI teaches claim 1 and further has a hydrophilic lipophilic balance of less than 5 [0410].
As for claim 3, SRI teaches that the liquid wax component (the filler fluid) can include hydrocarbon chains which have a backbone of at least 10 carbon backbone atoms (tetradecane and hexadecane can be mixed in) [0397]
As for claim 4, SRI teaches claim 1, and wherein the hydrocarbon chain includes tetradecane, hexadecane or a combination thereof (as these can be included in the combination) [0397].
As for claim 5, SRI teaches claim 1 and wherein a hydrophilic head group of lipophilic mobilizing component is oriented towards the aqueous droplet and a hydrophilic tail of the lipophilic mobilizing component is oriented away from the aqueous droplet (as a combo of lipophile and hydrophile balanced surfactant) [0410].
As for claim 6, SRI teaches claim 5 and it is understood that the combo of lipophie and hydrophile balanced surfactant would have this behavior of orientation [0410].
As for claim 8, SRI teaches claim 1 and wherein the first plate comprises a plurality of adjacent actuation electrodes, and wherein combining the aqueous droplet with the mobilizing composition comprises applying energy to a subset of the adjacent actuation electrodes of the plurality of adjacent actuation electrodes thereby moving the aqueous droplet into contact with the mobilizing composition [0379-381].
As for claim 9, SRI teaches claim 8 and as the lipophilic mobilizing component improves the control of the surface/interfacial tension with the droplet phase/with the droplet micro actuator surfaces that it contributes to preventing surface fouling of the first plate [0400; 0410-411].
As for claim 11, this is understood to substantially be the liphophilic mobilizing composition combined with the liquid wax of claim 1 taught by SRI.
As for claim 12, see claim 1 for the encapsulating behavior as taught by SRI.
As for claim 13, see claim 3.
As for claim 14, see claim 5.
As for claim 15, see claim 6.
As for claim 18 see claim 1.
As for claim 19 see claim 9.
As for claim 20 see claim 2.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 10 and 17 are is/are rejected under 35 U.S.C. 103 as being unpatentable over SRI.
As for claim 10, SRI teaches claim 1 and wherein a concentration of the lipophilic mobilizing component within the mobilizing composition is between approximately (v/v%) 0.01% to approximately 0.1% (0.001-0.1 % which overlaps the claimed range) [0412].
In accordance with the MPEP, ‘ In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
As for claim 17 see claim 10.
Claim(s) 7 and 16 are is/are rejected under 35 U.S.C. 103 as being unpatentable over SRI and further in view of Gosselin et al (US 2014/0341958 A1) hereinafter MAT.
As for claims 7 and 16, SRI teaches claims 1 and 11 and that the lipophilic mobilizing component requires a certain HLB value and that some acceptable surfactants are Span 85 and Span 65 [0410] but does not teach a a polyethylene glycol oleyl ether.
MAT teaches that in encapsulating emulsions of oil that suitable surfactants (i.e. lipophilic mobilizing component) with HLB values similar to those required by SRI include as alternatives Span 85, Span 65, and Brij 39 which is a polyethylene glycol oleyl ether [0136].
In accordance with the MPEP, a simple substitution of one known element for another to obtain predictable results is an exemplary rationale of obviousness [MPEP 2143(I)(B)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the lipophilic mobilizing component of SRI with the one of MAT which includes a polyethylene glycol oleyl ether as these are understood to be suitable substitutions of each other which the MPEP teaches is obvious. As both SRI and MAT pertain to encapsulating oil emulsions they are analogous art as the HLB values are the same they are understood to be compatible.
Conclusion
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/E.V./Examiner, Art Unit 1748 /JACOB T MINSKEY/Primary Examiner, Art Unit 1748
