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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Additionally, in paragraph 11, the specification states “the ultraviolet light emitting diodes are comprised within a mercury vapor lamp.” To the best of Examiner’s knowledge this is not possible.
Appropriate correction and/or clarification is required.
Claim Objections
Claim 8 is objected to because of the following informalities: “rheologically” should be “rheological”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: “a retractable ultraviolet light emitting diodes” should be “retractable ultraviolet light emitting diodes”. Appropriate correction is required.
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.
Claim 16 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.
Regarding claim 16, the claim recites “the ultraviolet light emitting diodes are comprised within a mercury vapor lamp.” To the best of Examiner’s knowledge, this is not possible, as a mercury vapor lamp uses an electric arc through vaporized mercury in a bulb. It is not clear how UV LEDs could be comprised with a bulb of vaporized mercury.
Appropriate correction and/or clarification is required.
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, 2, 4, 5, 8, and 9 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Bejarano et al. (J. Micromech. Microeng. 19 (2009) 115007).
Regarding claim 1, Bejarano et al. disclose “a method comprising: providing a substrate comprising a planar substrate material (first sentence of 2.1) and a first electrode material coupled to at least a portion of a top surface of the planar substrate material (first full sentence on page 7); disposing one or more volumes of an ink through one or more patterned screens onto a top surface of the substrate (last paragraph of 3.4); at least partially curing the one or more volumes of the ink to form a plurality of microstructures on the top surface of the substrate (penultimate paragraph of 2.1, Figure 1), wherein the top surface of the substrate and the plurality of microstructures define one or more microcavities (Figure 1); and disposing a capping film over at least a portion of the plurality of microstructures to encapsulate at least a portion of the one or more microcavities between the top surface of the substrate and a bottom surface of the capping film (third full sentence on page 7).” Regarding claim 2, Bejarano et al. further disclose “wherein the at least partially curing the one or more volumes of the ink is performed using a curing device selected from among: a heat source, a light source, a light emitting diode, a lamp, a bulb, an ultraviolet emission source, a heater, or a mercury vapor lamp (penultimate paragraph of 2.1).” Regarding claim 4, Bejarano et al. further disclose “wherein said disposing the capping film over at least a portion of the plurality of microstructures forms one or more inlets into the one or more microcavities and one or more outlets from the one or more microcavities (Figure 1).” Regarding claim 5, Bejarano et al. further disclose “wherein the substrate comprises a planar substrate material and a first electrode material coupled to at least a portion of the top surface of the planar substrate material (Figure 1, penultimate paragraph of 3.5).” Regarding claim 8, Bejarano et al. further disclose “wherein the ink comprises one or more of: a resin, an isobornyl acrylate-based resin, PDMS, a ceramic, an acrylic, polystyrene, polycarbonate, polyvinyl chloride, a conductive ink, a solvent, a binder, an additive, a pigment, a carrier, or a rheologically modifier (first full sentence on page 7).” Regarding claim 9, Bejarano et al. further disclose “further comprising:disposing a first electrode material onto the substrate to form the top surface of the substrate (first full sentence on page 7).”
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.
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) 13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bejarano et al.
Regarding claim 13, Bejarano et al. disclose all that is claimed, as in claim 1 above, except ”disposing a graphic layer onto the top surface of the substrate before screen-printing the one or more volumes of the ink onto the top surface of the substrate in order to dispose one or more fiducials on the top surface of the substrate.” However, Examiner takes Official Notice that, at the time of the filing of the invention, it was known to provide fiducials on a substrate onto which a functional device is to be added in order to allow for alignment of components. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to provide a graphic layer on the top surface of the substrate of Bejarano et al. before screen printing in order to allow for alignment of the printed layers. Regarding claim 20, Bejarano et al. disclose the method as discussed with respect to claim 1 above. Implicitly, in carrying out the method of Bejarano et al., an apparatus will be used. However, Bejarano et al. fail to disclose “at least one processor; and at least one memory comprising instructions stored therein that, when executed by the at least one processor, cause the apparatus to perform” the method steps of claim 1. However, it has been held that automating a manual activity is prima facie obvious. See MPEP §2144.04(III). Furthermore, Examiner takes Official Notice that, at the time of filing of the invention, using a computer with a processor and memory with a program that causes the various components of the system to function as desired was a known means of automating a system and/or process. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use a computer with a processor and a memory with a program that causes the various components of the system used by Bejarano et al. to function as described in an automatic manner because it is known in the art to be suitable for the purpose. See MPEP §2144.07.
Allowable Subject Matter
Claims 15-19 are allowed. Claims 3, 6, 7, 10-12, and 14 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record neither discloses nor renders obvious a method of additive screen printing comprising, in combination with the remaining claim elements: screen printing a resin ink through a first patterned screen onto a substrate, then exposing it to UV light from LEDs which are retractable, repeating the screen printing with a second patterned screen onto the substrate and/or the first ink layer, then exposing with UV light from LEDs which are retractable to at least partially cure the second portion of the resin ink to form a plurality of microstructures, wherein the top surface of the substrate and the plurality of microstructures define a plurality of microcavities therebetween.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853
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