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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Status
Rejected Claims: 1-2 and 7-8
Cancelled Claims: 3-6 and 9
Response to Amendment
The amendment filed on 26 FEBRUARY 2026 has been entered.
In view of the amendment to the claims, the amendment of claim 1 and the cancellation of claims 3 and 4 have been acknowledged.
In view of the amendment to claim 1, the rejection of claim 1 under 35 U.S.C. 103 has been modified to incorporate the claim limitations that have been moved directly from cancelled claims 3 and 4 to claim 1.
Response to Arguments
Applicant’s arguments filed on 26 FEBRUARY 2026 have been fully considered.
Applicant argues, for instant claim 1, that Ziegler teaches a higher electrical resistance of 105 to 109 Ω*m than has been amended into instant claim 1 of equal to or lower than 105 Ω*m and therefore instant claim 1 is allowable (Arguments filed 26 FEBRUARY 2026, Page 6, Paragraph 1).
Regarding Applicant’s argument, Ziegler teaches ohmic resistance per meter of the materials which can be converted to an electrical resistance by using the given tubing diameters and thus cross sectional areas also taught by Ziegler. Ziegler teaches wherein the ohmic resistance of the tubing is preferably in a range between 100 kΩ/m to 1 MΩ/m (Paragraph 0029) with a diameter of tubing being 8 mm or smaller (Paragraph 0027) which converts to ([100,000 Ω/m * (3.14*(0.004m^2))] and [1,000,000 Ω/m * (3.14*(0.004m^2))]) a range of electrical resistivity of 5.024 Ω*m to 50.24 Ω*m (i.e., wherein the non-metallic material has an electric resistance value equal to or lower than 105 Ω*m). Furthermore, Tada also teaches that the resistivity of the material is in the range of 1 x 103 to 1 x 1014 Ω*cm, or 1 x 101 to 1 x 1012 Ω*m (i.e., wherein the non-metallic material has an electric resistance value equal to or lower than 105 Ω*m; Paragraph 0057, Machine Translation). Therefore, the prior art teaches the use of the materials of instant claim 1 with electrical resistance values within the claimed range and so instant claim 1 is not allowable.
Applicant argues that the limitation of “entirety of a surface of a passage” of instant claim 1 is different from the patterned tubing as taught by Ziegler in Fig. 6 because the material taught by Ziegler is opaque and requires gaps to transmit light and Ziegler teaches that the fluidic connections downstream of a flow cell are the “weak point” regarding electrostatic discharge and so there would be no motivation to combine Ziegler with Shirota such that the tubing is used in the flow cell itself (Arguments filed 26 FEBRUARY 2026, Page 6, Paragraph 2 to Page 7).
Regarding Applicants argument, the instant specification describes light passage members made of glass (Paragraph 0017), shown below in Fig. 2.
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Ziegler teaches the use of different patterns of PEEK embedded with carbon (Fig. 6, #206) to draw away electric charge within the rest of the PEEK tubing (Fig. 6, #208) which is clear such that a light source (Fig. 6, #600) and detector (Fig. 6, #602) can be used with the tubing, seen below. The PEEK embedded with carbon satisfies the limitation “entirety of a surface of a passage” and still maintains a passage for light to be transmitted. Therefore, it would be obvious to combine Ziegler with Shirota and instant claim 1 is not allowable.
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Applicant argues that the modification would render the core principle of Ziegler inoperable because Ziegler requires some transparent sections and thus meeting the limitation of instant claim 1 of “entirety of a surface of a passage” being opaque would render the entire tubing to be opaque and so it could not be used in a flow cell. Therefore, the instant claim 1 is allowable (Arguments filed 26 FEBRUARY 2026, Page 8, Paragraphs 1-3).
Regarding Applicant’s argument, “entirety of a surface of a passage” does not mean the “entirety of all surfaces”, otherwise, as shown above in Fig. 2 of the instant specification, the glass sections would not be allowed and the instant invention would also be inoperable. Ziegler teaches that different patterns of PEEK embedded with carbon can be used in transparent PEEK tubing such that a light source and detector can be used in conjunction with the tubing. Furthermore, Ziegler teaches that the entirety of a surface of a passage is in fact made from PEEK embedded with carbon and therefore satisfies the limitation of instant claim 1 without rendering Ziegler inoperable. Therefore, instant claim 1 is not allowable.
Applicant argues that discovering the source of a problem supports non-obviousness and because Shirota and Ziegler recognize temperature differences for noise and safety risks, respectively, they do not identify the electrostatic noise that the instant invention identifies as the problem to be solved and so there would be no motivation to combine Shirota with Ziegler in the way that the instant invention teaches and so instant claim 1 is allowable (Arguments filed 26 FEBRUARY 2026, Page 8, Paragraph 4 to Page 9).
Regarding Applicant’s argument, the discovering of a source or cause of a problem is only part of the analysis. In this case, Shirota teaches the main structure of the flow cell and Ziegler teaches a motivation to add carbon to the PEEK material of the tubing through a section of tubing in which a light source and detector are included which the same as the instant application – to remove electrical charge from the fluids. Ziegler teaches that this is for safety while the instant application teaches noise reduction, but the results of removing charge are exactly the same. The is comparable to the example in MPEP 2141.02(III):
“claims directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action to minimize fading of the brakes were rejected as obvious over a reference showing carbon disc brakes without grooves in combination with a reference showing grooves in noncarbon disc brakes for the purpose of cooling the faces of the braking members and eliminating dust, thereby reducing fading of the brakes. The court affirmed the rejection, holding that even if the inventor discovered the cause of a problem, the solution would have been obvious from the prior art which contained the same solution (inserting grooves in disc brakes) for a similar problem” (In re Wiseman, 596 F.2d at 1022, 201 USPQ at 661)
In the example, the structure of the brakes, or the grooves, (i.e., flow cell of Shirota) is combined with a material of a carbon disc brake (i.e., PEEK embedded with carbon tube of Ziegler) for cooling the brake members (i.e., for safely discharging electrical charge from the fluid taught by Ziegler). This problem was different from the examined invention which claimed that the grooved carbon disc brakes would minimize the fading of the brakes (i.e., discharge electrical charge from the fluid to reduce noise of the instant invention) and yet the rejection was affirmed.
As such, it would be obvious to combine Shirota, Ziegler, and Tada to arrive at the instant claimed invention and instant claim 1 is not allowable.
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.
Claims 1-2 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shirota et al Japanese Patent No. JP 2002071658 A (hereinafter Shirota) in view of Ziegler et al US Patent Application No. 20170003256 A1 (hereinafter Ziegler) in view of Tada et al Japanese Patent No. JP 2012097193 A (hereinafter Tada).
Regarding Claim 1, Shirota teaches
a liquid chromatography apparatus configured to inject a test liquid into a mobile phase and introduce the test liquid into a column and detect the separated components flowing out of the column with a detector (i.e., a detector for a liquid chromatograph, the detector comprising; Paragraph 0003, Machine Translation), wherein the absorptiometry detector has a flow cell (i.e., a flow cell configured to detect a component in a sample flowing within the flow cell)
and the test liquid is injected into the flow cell via a pipe (i.e., a tube; the tube and the flow cell are arranged so that a mobile phase and the sample exiting from a column in the liquid chromatograph flow through the tube into the flow cell; Paragraph 0004, Machine Translation),
and wherein the injection pipe (Fig. 2, #20) is made of polyether ether ketone (PEEK) (i.e., the tube includes a first wetted member made of a polyether ether ketone resin material; Paragraph 0048, Machine Translation)
where the main body (Fig. 1, #11) is also made of PEEK and the cell portion (Fig. 1, #16) is formed at the center of the main body (i.e., an entirety of a surface of a passage of the flow cell that lies within a region through which light emitted from a light source passes is formed by a second wetted member including a non-metallic material; Paragraphs 0038-0040, Machine Translation).
Shirota does not teach that (1) the second wetted member includes a non-metallic material having that has a lower electric resistivity than the first wetted member, so as to discharge electric charge that flows into the passage to outside the flow cell through the second wetted member, (2) wherein the non-metallic material is a polyether ether ketone resin material containing carbon, and (3) wherein the non-metallic material has an electric resistance value equal to or lower than 105 Ω*m.
However, Ziegler teaches a lumen (Fig. 6, #202) for an optical detector system (Fig. 6, #610) that contains an electrically conductive section (Fig. 6, #206; Paragraph 0073) that contains electrically conductive carbon black particles embedded in a polymer matrix (Paragraph 0061) where the polymer matrix can be polyether ether ketone (i.e., a second wetted member including a non-metallic material having a lower electric resistivity than that of the first wetted member; wherein the non-metallic material is a polyether ether ketone resin material containing carbon; Paragraph 0028) for the purpose of discharging static from fluid samples that are incapable of efficiently transporting away electric charge towards a ground away from the electrically conductive section of the tubing and also preventing chemical attack by the fluid sample against the conductive materials (i.e., so as to discharge electric charge that flows into the passage to outside the flow cell through the second wetted member; Paragraph 0023-0026),
wherein the ohmic resistance of the tubing is preferably in a range between 100 kΩ/m to 1 MΩ/m (Paragraph 0029) with a diameter of tubing being 8 mm or smaller (Paragraph 0027) which converts to ([100,000 Ω/m * (3.14*(0.004m^2))] and [1,000,000 Ω/m * (3.14*(0.004m^2))]) a range of electrical resistivity of 5.024 Ω*m to 50.24 Ω*m (i.e., wherein the non-metallic material has an electric resistance value equal to or lower than 105 Ω*m).
Ziegler is analogous to the claimed invention because it pertains to an electrostatic discharge device (Abstract) for liquid chromatography (Paragraph 0004). It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the liquid chromatography apparatus taught by Shirota with the lumen taught by Ziegler because the lumen would transport away electric charge from fluids efficiently and prevent chemical attack of the electrically conductive lumen.
Shirota in view of Ziegler does not teach wherein the carbon is in the shape of carbon fibers.
However, Tada teaches that a semiconductive resin contains a polyether ether ketone and a conductive filler (i.e., wherein the non-metallic material is a PEEK resin material; Paragraph 0001, Machine Translation) and the filler material can be carbon fibers (i.e., containing carbon fibers; Paragraph 0050, Machine Translation) where the filler includes carbon black that forms a higher-order structure (Paragraph 0011, Machine Translation) to create a material with excellent mechanical, optical, and electrical properties (Paragraph 0019, Machine Translation). Tada further teaches that the resistivity of the material is in the range of 1 x 103 to 1 x 1014 Ω*cm, or 1 x 101 to 1 x 1012 Ω*m (i.e., wherein the non-metallic material has an electric resistance value equal to or lower than 105 Ω*m; Paragraph 0057, Machine Translation).
Tada is analogous to the claimed invention because it pertains to polyether ether ketone resin materials (Paragraph 0001, Machine Translation) that exhibit stable electrical properties over a long period of time under a high electric field (Paragraph 0002, Machine Translation). It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the electrodes as made obvious by Shirota in view of Ziegler with the carbon fibers as taught by Tada because the carbon fibers would improve the mechanical, optical, and electrical properties of the material.
Furthermore, the limitation “so as to discharge electric charge that flows into the passage to outside the flow cell through the second wetted member” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Shirota in view of Ziegler in view of Tada does not teach the explicit range of wherein the non-metallic material is the PEEK resin material containing the carbon fibers and having an electric resistance value equal to or lower than 1 x 105 Ω*m. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have selected the resistivity that corresponds to the claimed range while experimenting with the range made obvious by Shirota in view of Ziegler in view of Tada.
Regarding Claim 2, Shirota further teaches that the detector utilizes ultraviolet light and the absorption rate of the UV light as it passes through the test liquid is analyzed (i.e., an ultraviolet-visible spectrophotometer configured to cast visible light or ultraviolet light into the flow cell and measure absorbance; Paragraphs 0034-0035, Machine Translation).
Regarding Claim 7, Shirota further teaches a base section (Fig. 1, #13) that is formed of a metal at the bottom of the main body portion (i.e., a cell holder made of metal and being in contact with the second wetted member; Paragraph 0046, Machine Translation).
Ziegler further teaches that the device can be coupled to a housing (i.e., further comprising a casing) made of a metallic material and that the housing may be grounded such that the electrically conductive section discharges the electrostatic charges towards the housing and the ground (i.e., wherein the cell holder is in contact with the casing; Paragraphs 0025-0026).
Regarding Claim 8, Ziegler further teaches that the electrically conductive section may be coupled to a grounded housing (i.e., wherein the second wetted member is grounded; Paragraph 0076).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ADRIEN GERMAIN whose telephone number is (703)756-5499. The examiner can normally be reached Mon - Fri 7:30-4:30.
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/A.A.G./ Examiner, Art Unit 1777
/Ryan B Huang/ Primary Examiner, Art Unit 1777
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