RESPONSE TO AMENDMENT
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 .
WITHDRAWN REJECTIONS
The 35 U.S.C. §103 rejection of the claims made of record in the office action mailed on 10/22/2026 have been withdrawn due to Applicant’s amendment in the response filed 01/21/2026.
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 3, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Haishi et al. (JP2019-105637, cited in the IDS filed on 09/26/2022) in view of Okumura (JP 2009-212226) and Bhullar (U.S. Pat. No. 6,662,439).
Regarding claim 1, Haishi et al. discloses a carbon electrode comprising a flexible substrate, a functional layer and a conductive carbon layer. (Abstract, par. [0007]-[0010]). The flexible substrate is made of a polymer material (i.e. a “resin film” as claimed) (par. [0025]), the functional layer may include a gas barrier and conductive layer including a metal. (par. [0034]-[0039]) with a thickness of 15 nm to 700 nm (par. [0044]) which overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Haishi et al. further discloses, with respect to the conductive carbon layer, a ratio of sp3 to sp2 carbon in the range of 0.05 to 2.0 (par. [0049]-[0050]), overlapping with the presently claimed range.
Haishi et al. does not explicitly disclose the feature of sp2 bonding and sp3 bonding in order toward one side in a thickness direction.
Okumura teaches a photovoltaic device containing an amorphous carbon layer which has reduced peeling and the transparent electrode material. (Abstract). Okumura teaches controlling the sp3 to sp2 bond ratio because delamination as a result of the formation of graphite is known. (page 2, last 2 paragraphs). Okumura further teaches reduce the relative sp3 to sp2 bond ratio from one thickness or side of the amorphous carbon layer to prevent the carbon layer from peeling. (page 3, first paragraph).
It would have been obvious to one of ordinary skill in the art to have the carbon layer material in Haishi et al. have sp2 bonding and sp3 bonding in order toward one side in a thickness direction as claimed based on the teachings of Okumura.
One of ordinary skill in the art would have found it obvious to have the carbon layer include an order in a thickness direction in order to improve the bonding of the carbon layer to the layers it is attached to in order to prevent delamination thereof. One of ordinary skill in the art would therefore have been able to manufacture a carbon electrode having improved longevity and structural integrity.
Haishi et al. does not disclose that the metal layer is a metal element selected from the group of elements of claim 1.
Bhullar teaches a method of making a patterned metallic laminate structure for an electrode including one or more metallic layers formed on an insulating substrate. (Abstract, claim 13 and col. 5, lines 3-30). Bhullar teaches that “metallic” refers to any material which conducts electricity as well as a metal, including carbon/graphite materials. (col. 2, lines 35-37 and col. 5, lines 3-19). Bhullar therefore contemplates structure including metal underlaying structures with carbon layers thereon. Examples of metal layers for application on the electrode substrate including niobium cobalt, tantalum vanadium and zirconium. (col. 5, lines 3-19)
It would have been obvious to one of ordinary skill in the art to use niobium cobalt, tantalum vanadium and zirconium as metals for the conductive metal layer in Haishi et al.
One of ordinary skill in the art would have found it obvious to use molybdenum or tantalum as these are known metals having conductivity for use as the conductive layer of a carbon electrode for use as an electrochemical sensor, similar to Haishi et al. One of ordinary skill in the art would therefore have a reasonable expectation of success that using the metals disclosed in Bhullar would be suitable for use in the metal layer of Haishi et al. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claim 3, Haishi et al. discloses that the thickness of the carbon layer is in the range of 15 nm to 700 nm (par. [0044]) which overlaps with the presently claimed range.
Regarding claims 5 and 7, Haishi et al. teaches that the flexible layer may include polyethylene terephthalate. (par. [0025]).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 01/21/2026 regarding the prior art rejections made of record in the previous office action have been considered but are moot due to the new grounds of rejection.
Applicant further alleges the combination of the claimed sp3 and sp2 ration, metal selection and thickness of the metal layer provides synergistic benefits that are unexpected over the cited prior art. (Applicant’s arguments filed 01/21/2026, page 7). Applicant relies upon the data in Tables 1 and 2 of the specification as evidence of criticality to support their arguments.
In order to traverse a rejection under 35 U.S.C. §103 based on allegations of unexpected results, the evidence provided must be of probative value, commensurate in scope with the claims and show that the results are unexpected. MPEP 716.02. The evidence must further be weighed against the evidence supporting a prima facie case obviousness. Id. When making allegations of unexpected results, the Applicant bears the burden to demonstrate whether the differences between the prior art and claimed invention differ to such an extent that the difference is unexpected. (MPEP 716.02 and 716.02(b)). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance”. (MPEP 716.02(b), citing Ex Parte Gelles, 22 USPQ2d 1318, 1318, Bd. Pat. App. & Inter. 1992). It should be noted that mere allegation of improved properties alone is no sufficient to serve as the basis of unexpected results if they do not show a significance equal to or greater than the expected properties. (see MPEP 716.02(c) I). Furthermore, the unexpected results relied upon by the Applicant for patentability must be commensurate in scope with the claims which the evidence is offered to support. MPEP 716.02(d).
The evidence provided in Tables 1-2 is not commensurate in scope with the claims due to the significantly larger pool of metals claimed than tested in the examples. It should also be noted that Examples 1-4 use tungsten (W) which is no longer presently claimed. Therefore, any allegation of unexpected results based on the data provided does not show improved properties using all the metallic materials claimed. Furthermore, the arguments do not show that the improvements are to such a degree that they rise to the level of unexpected results under MPEP 716.02. Okumura et al. teaches that it is known in the art that the sp2 and sp3 content affects the peeling (i.e. curling) of the carbon layer and therefore based on the prior art reference it would not be inventive to find the optimal ratio to achieve the best anti-curling properties.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 03/03/2026