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 .
DETAILED ACTION
Response to Election
1. This action is in response to the election filed December 12, 2025.
(Group II) Claims 11-23 was provisionally elected rendering (Groups I and III) Claims 1-10 and 24-30 to a non-elected inventions.
RESPONSE TO REQUEST FOR RECONSIDERATION
2. Applicant's election with traverse of a polymer composition (Group I) and without traverse of a non-fluorinated article (Group III) are acknowledged. The traversal is on the ground(s) that that none of the claims are related to "insulation or building materials" but are instead directed to polymeric compositions and articles formed from those polymeric compositions. Applicant believes that at least the Group I and II claims of the proposed inventions are inextricably intertwined because if the independent claim from Group I is allowable so is the independent claim of Group II, and SO prosecution of the proposed groups of claims together would be most efficient and effective for the Office. Applicant submits that in order to conduct a comprehensive search regarding either of these groups, including the group provisionally elected above, it would be inherently necessary to review the same pertinent fields and classes of prior art relating to the other groups. Moreover, the important questions of patentability and claim interpretation are likely to be based on substantially similar issues and evaluations for each group of claims, and would require consideration of the same prior art, and combined prosecution is therefore less likely to result in inconsistent or conflicting file histories. In response to Applicant’s argument, it is maintained that inventions I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as insulation or building material and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
The requirement is deemed proper and is therefore made FINAL.
Information Disclosure Statement
3. The references disclosed within the information disclosure statement (IDS) submitted on October 3, 2025, has been considered and initialed by the Examiner.
Claim Rejections – 35 USC § 103
4. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
5. Claims 11-22 are rejected under 35 U.S.C. 103 as being unpatentable over Meuler et al. (CN 109070129 A).
Meuler discloses an article comprising a liquid-repellent surface comprising a thermoplastic polymer material (abstract and paragraph 18) where the article can include a pipette tip (paragraph 20). Meuler discloses 5 weight % to 35 weight % of alkyl group in the polydimethyl copolymer in a alkyl dimethyl silicone polymer (paragraphs 53 and 56) and greater than about 60 weight % alkyl dimethyl silicone polymer (paragraph 59). Meuler does not appear to explicitly teach the molecular weight of the composition; however, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material (alkyl dimethyl silicone) and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed molecular weight. Regarding the weight percentages of the article, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.
Cir. 1990), as in claim 11.
Concerning claim 12, Meuler discloses the article has a surface layer (abstract) which comprises a first and second major surface. Meuler does not appear to explicitly teach the concentration at varying depths of the surfaces; however, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material (alkyl dimethyl silicone) and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed concentration at varying depths of the surfaces.
Concerning claims 13-14, Meuler discloses the article can include a pipette tip (paragraph 20).
Concerning claim 15, Meuler does not appear to explicitly teach the fluid retention; however, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material (alkyl dimethyl silicone) and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed fluid retention. In claim 15, the phrase, “after a single aspirate/dispense cycle” constitutes a “capable of” limitation and that such a recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform.
Concerning claims 16-17, Meuler does not appear to explicitly teach the fluid retention; however, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material (alkyl dimethyl silicone) and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed fluid retention. In claim 16, the phrase, “after exposure to a polar solvent” constitutes a “capable of” limitation and that such a recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform.
Concerning claim 18, Meuler discloses cleaning the article (sterilized) (paragraph 2). Meuler does not appear to explicitly teach the fluid retention; however, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material (alkyl dimethyl silicone) and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed fluid retention. In claim 18, the phrase, “after a single aspirate/dispense cycle” constitutes a “capable of” limitation and that such a recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform.
Concerning claim 19, Meuler discloses cleaning the article (sterilized) (paragraph 2). Meuler does not appear to explicitly teach the fluid retention; however, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material (alkyl dimethyl silicone) and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed fluid retention. In claim 19, the phrase, “sterilized article aged for 14 days at 55°C” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having an article with alkyl silicone, dimethyl silicone and thermoplastic polymer. The reference suggests such a product because Meuler discloses an article comprising a thermoplastic polymer material (abstract and paragraph 18) and an alkyl dimethyl silicone polymer (paragraphs 53 and 56).
Concerning claims 20-22, Meuler discloses an article comprising a thermoplastic polymer (abstract and paragraph 18) and a alkyl dimethyl silicone polymer (paragraphs 53 and 56) Meuler does not appear to explicitly teach the haze; however, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material (alkyl dimethyl silicone) and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed haze.
Claim Rejections – 35 USC § 103
6. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kamatani et al. (WO 2023/171578).
Kamatani discloses a thermoplastic resin comprising dimethyl silicone and alkyl silicone, where the silicone material has an average molecular weight of 200 to 5,000 (paragraph 108). Although Kamatani does not explicitly disclose the weight percentage of the dimethyl silicone and alkyl silicone. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have a polymer composition with the optimum weight percentage of the silicone contents, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), as in claim 11.
Claim Objection
7. Claims 23 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 closest prior art does not teach or suggest the recited article further including a 200 µL pipette tip and comprises an amount of fluid retention less than or equal to 4mg after a single aspirate/dispense cycle with 200µL of fluid, as measured by gravimetric testing.
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781