DETAILED ACTION
Response to Arguments
Applicant's arguments filed 08 April 2026 have been fully considered but they are not persuasive.
Rejections under 35 USC 102: Kotani
The remarks take the position that the relied upon interpretation of Kotani is an intermediate manufacture state of Kotani’s device and does not suggest a DESI compatible sample support.
This have been found unpersuasive. Specifically, claim 1 was rejected under 102. The claim in no way precludes an intermediate product. MPEP 2131 recites “"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987)”
Therefore, even if the product is in an intermediate state, the claim has not been distinguished from that of Kotani. That is, Kotani teaches each and every element as set forth in the claim. Moreover, the requirement that the sample support be a desorption electrospray ionization sample support is not sufficient to overcome this rejection because Kotani teaches a porosity of 40% to 50 % ([0024]). As evidenced by US pgPub 2025/003843 to Ikeda such a porosity is sufficient for DESI (see paragraphs [0037] and [0078] respectively). Therefore, Kotani does have the mechanical strength needed for DESI (note again DESI is not required in claim 1). That is, the claim does not actually require desorption electrospray ionization to occur nor elements required to perform DESI, only that the sample support is a DESI sample support. Since evidence shows that the porosity is sufficient to perform DESI, the intermediate product is suitable for the claimed intended use.
That is, adding the identifier desorption electrospray ionization to the sample support does not suggest any distinguishing structure of the sample support itself.
The remarks rely on MPEP 2141.02, however this section is directed towards obviousness. Claims 1 and 6-7 were rejected under anticipation, therefore this is not found persuasive.
Lastly, the remarks take issues with the rational for inherency stating the “office provides no evidentiary support such as, for example, technical literature, calculations based on established models, to demonstrate that a sintered-glass-bead structure possessing certain porosity and bead diameter necessarily yields a joint (neck) diameter of 1/10 or more of the bead diameter. In fact, the relationship between porosity, particle diameter, and joint/neck diameter is complex and may depend on numerous factors, including, for example, sintering temperature, sintering duration, particle-size distribution, and packing arrangement. Thus, there is no basis to assume that the sintered-glass-bead structure of Kotani inherently possesses a joint diameter at or above the claimed threshold.”
MPEP 2112 (V) recites:
"Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims.”
Here, the remarks have provided no factual evidence to support that Kotani does not inherently possess the reasoned inherency presented in the last office action. Therefore the opinion suggested in the remarks is insufficient to overcome this reasoned showing of inherency.
The applicant may file an affidavit or declaration under 37 CFR 1.132 to overcome the inherency if it includes factual evidence to demonstrate that the inherency reasoning is incorrect.
Rejections under 35 USC 103: Kotani as evidenced by Naito
The remarks take the position that Naito 1 does not address the specific structural requirement of the join-diameter ratio. This has been found unpersuasive. Specifically, Naito 1 teaches “that increasing the bonding thickness between spherical glass beads improves the bonding strength”. Claim 1 does not require a ratio. Instead claim 1 requires (1) a joint diameter of 1/10 or more the bead diameter” and (2) less than the average diameter of the particles. Kotani already suggests a bonding less than the diameter (see last office action). However Kotani fails to disclose a joint diameter of 1/10 or more of the bead diameter. However Naito 1 teaches increasing the bonding thickness between spherical glass beads is a result effective variable. Therefore, a larger joint thickness will result in a stronger substrate. Since Kotani limits the joint diameter by suggesting the beads remain spherical, increasing the joint diameter greater than a tenth of the diameter would improve the strength of the substrate (i.e. discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.)
The remarks then suggest that Kotani requires the conductive layer for performing the intended LDI and that removal of the conductive layer would negate Kotani’s intended function.
This has not been found persuasive. Kotani’s intended function is desorption ionization. While Kotani does teach a conductive material. Knapp is evidence that a conductive material may be applied for LDI ([0031]) or not applied for DESI ([0061]). Therefore, Knapp is evidence that one skilled in the art in desorption ionization readily understood that preparing a substrate for LDI or DESI is merely the application or non-application of a conductive layer, thus routine to the art. Taken together with the suggestion of Naito 2 that the conductive coating is not desirable, one of ordinary skill in the art would have been motivated to not apply the conductive layer to the substrate of Kotani, when adapting the substrate for use in DESI (as evidenced by Knapp) so as to retain the high hydrophilic property of the alumina surface (as evidenced by Naito) and achieve the beneficial effects of DESI as evidenced by Takas. That is, Knapp is evidence that it was well known to the art as to how to adapt a sample support for either LDI or DESI. Therefore taken together with the suggestion with the known poor effects of the conductive coating required in LDI, one of ordinary skill in the art would be motivated to prepare the substrate of Kotani for DESI so as to simplify substrate preparation (i.e. by not applying the conductive coating) and have the improvement of retaining the high hydrophilic properties of the insulative porous substrate (i.e. glass beads).
Lastly, the remarks take the position that Knapp is evidence that an electrically conductive material is required for LDI and therefore one of ordinary skill in the art would have no motivation to modify Kotani and Takats that removes the conductive layer from the LDI set up. This has not been found persuasive. Knapp was used as evidence to demonstrate the skill in the art. Specifically, that it was within the skill in the art to prepare a substrate for LDI or for DESI by the application or non-application of a conductive layer. Since the conductive layer to a porous substrate is disadvantageous as evidenced by Naito 2, preparing the substrate by not applying the conductive layer as suggested by Knapp would facilitate preparation for DESI which would allow for the substrate to retain the high hydrophilic properties for DESI analysis.
Therefore the remarks are unpersuasive. Moreover, solely to advance prosecution and address concerns raised in the remarks with respect to the combination of Kotani in view of Takats in view of the claimed amendment, claims 8 and 11 are additionally rejected over Knapp in view of Kotani.
Claim Rejections - 35 USC § 102
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 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kotani et al. (WO2019155741)(submitted with IDS) (national stage application US pgPub 20210050201 is used as the translation) (first interpretation).
Regarding claim 1, Kotani teaches a desorption electrospray ionization sample support (fig. 2, 1) for ionizing a sample (intended use), comprising: a substrate (2) that includes:
a first surface (either 2a or 2b) having an electrical insulating property ([0024]-[0025] sintered glass beads), wherein the electrical insulating property is exposed to an outside of the sample support (2a prior to being coated with conductive layer 4);
wherein the first surface of the substrate is not provided with a conductive layer (prior to application of conductive layer the surface 2a is not coted), and
wherein the first surface of the substrate is a surface onto which the sample is transferred (a sample can be placed on the uncovered surface 2a prior to coating. MPEP 2114 (II) recites: “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”. Here, transferring a sample on the surface is a manner of operating the apparatus and thus does not structurally distinguish the claimed invention over the uncovered surface 2a of Kotani);
a second surface opposite to the first surface (the other of either 2a or 2b); and
an irregular porous structure that opens to at least the first surface ([0024])
wherein the porous structure is formed by an aggregate of a plurality of particles ([0053]);
wherein the particles are made of glass, a metal oxide, or an insulation-coated metal ([0024]).
an average diameter of a joint between adjacent particles is 1/10 or more of an average diameter (see discussion in response to arguments above) and less than the average diameter of the particles (because the glass beads are sintered ([0045]) and retain a spherical shape as evident by the average diameter shape ([0025])), the joint must inherently be less than the diameter because fusing the beads greater than the diameter would suggest a loss of the spherical shape. In other words, in order to have beads with an average diameter after sintering, the joint or fuse between beads must inherently be far less than the diameter of the beads themselves. Alternatively, [0024] teaches a porosity of the sintered body of glass beams being 40-50% and the porous structure distributed in three-dimensions. Porosity is the ratio of voids to entire volume, therefore in order for a three-dimensional porous volume to have a 40-50% porosity, the bonding between sintered beads would inherently have to be less than the diameter of the beads. That is, the volume of the porous substrate is the void + beads. The porosity is therefore void/(void+beads). For a 50% porosity the void space of pores must equal the bead space, therefore the sintered beads cannot be joined more than diameter of the beads because a 50% porosity would not be possible (i.e. joints of equal or greater diameter between beads in a three-dimensional irregular structure would result in voids much less than 50% because the voids would be filled with the joints. ).
Claim Rejections - 35 USC § 103
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.
Claims 1 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani et al. (WO2019155741)(submitted with IDS) (national stage application US pgPub 20210050201 is used as the translation) (second interpretation) as evidenced by Naito et al. (WO 2019107063).
Regarding claim 1, Kotani teaches a sample support (fig. 2, 1) for ionizing a sample (intended use), comprising: a substrate (2) that includes:
a first surface (either 2a or 2b) having an electrical insulating property ([0024]-[0025] sintered glass beads), wherein the electrical insulating property is exposed to an outside of the sample support (2a prior to being coated with conductive layer 4);
wherein the first surface of the substrate is not provided with a conductive layer (prior to application of conductive layer the surface 2a is not coted), and
wherein the first surface of the substrate is a surface onto which the sample is transferred (a sample can be placed on the uncovered surface 2a prior to coating. MPEP 2114 (II) recites: “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”. Here, transferring a sample on the surface is a manner of operating the apparatus and thus does not structurally distinguish the claimed invention over the uncovered surface 2a of Kotani);
a second surface opposite to the first surface (the other of either 2a or 2b); and
an irregular porous structure that opens to at least the first surface ([0024])
wherein the porous structure is formed by an aggregate of a plurality of particles ([0053]);
wherein the particles are made of glass, a metal oxide, or an insulation-coated metal ([0024]).
an average diameter of a joint between adjacent particles is less than the average diameter of the particles (because the glass beads are sintered ([0045]) and retain a spherical shape as evident by the average diameter shape ([0025])), the joint must inherently be less than the diameter because fusing the beads greater than the diameter would suggest a loss of the spherical shape. In otherwords, in order to have beads with an average diameter after sintering, the joint or fuse between beads must inherently be far less than the diameter of the beads themselves. Alternatively, [0024] teaches a porosity of the sintered body of glass beams being 40-50% and the porous structure distributed in three-dimensions. Porosity is the ratio of voids to entire volume, therefore in order for a three-dimensional porous volume to have a 40-50% porosity, the bonding between sintered beads would inherently have to be less than the diameter of the beads. That is, the volume of the porous substrate is the void + beads. The porosity is therefore void/(void+beads). For a 50% porosity the void space of pores must equal the bead space, therefore the sintered beads cannot be joined more than diameter of the beads because a 50% porosity would not be possible (i.e. joints of equal or greater diameter between beads in a three-dimensional irregular structure would result in voids much less than 50% because the voids would be filled with the joints. ).
Kotani fails to expressly teach the average diameter of a joint between adjacent particles is one tenth or more of an average diameter of the particles.
However, Naito is evidence that increasing the bonding thickness between spherical glass beads improves the bonding strength ([0130]).
Therefore, one of ordinary skill in the art would have recognized that the bonding thickness to be a result effective variable. That is, less bonding thickness results in weaker bonding strength, vs. increased bonding thickness results in stronger bonding strength. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the average diameter of a joint between adjacent particles is one tenth or more of an average diameter of the particles, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, Kotani teaches wherein the particles are glass beads ([0024]).
Regarding claim 7, Kotani teaches wherein the porous structure is formed so as to communicate the first surface and the second surface ([0024]).
Claim Rejections - 35 USC § 103
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.
Claims 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Knapp (US pgPub 2008/0087811) in view of Kotani as evidenced by Naito et al. (Naito et al., “A novel laser desorption/ionization method using through hole porous alumina membranes”, Rapid Communications in in mass spectrometry (2018)).
Regarding claim 8, Knapp teaches an ionization method (DESI see paragraph [0032]-[0033]) including:
a first step of preparing a desorption electrospray ionization (DESI) sample support that includes a substrate including a first surface having an electrical insulating property, a second surface opposite to the first surface, and an porous structure that opens to at least the first surface ([0053] teaches for DESI operation, porous alumina surface placed on an acrylic platform. The porous alumina has two opposing surfaces with pores opening from on surface to another and alumina is insulative), wherein the electrical insulating property is exposed to an outside of the sample support ([0061] teaches a sample spotted on alumina surface), wherein the first surface of the substrate is not provided with a conductive layer ([0061] since sample spotted on alumina surface there is no conductive layer);
a second step of transferring a sample to the first surface ([0061]); and
a third step of ionizing the transferred component of the sample by irradiating the first surface with a charged microdroplet, and sucking the ionized component ([0061], where paragraph [0033] DESI as charged liquid droplet spray imping upon the surface to be analyzed into gas phase ions).
Knapp teaches a porous alumina substrate, thus fails to disclose irregular pores and wherein the porous structure is formed by an aggregate of a plurality of particles; the particles are made of glass, a metal oxide, or an insulation-coated metal; and an average diameter of a joint between adjacent particles is 1/10 (one tenth) or more of an average diameter of the particles and less than the average diameter of the particles.
However, Kotani teaches irregular pores ([0024]) and wherein the porous structure is formed by an aggregate of a plurality of particles; wherein the porous structure is formed by an aggregate of a plurality of particles ([0053]);
wherein the particles are made of glass, a metal oxide, or an insulation-coated metal ([0024]).
an average diameter of a joint between adjacent particles is 1/10 or more of an average diameter (see discussion in response to arguments above) and less than the average diameter of the particles (because the glass beads are sintered ([0045]) and retain a spherical shape as evident by the average diameter shape ([0025])), the joint must inherently be less than the diameter because fusing the beads greater than the diameter would suggest a loss of the spherical shape. In otherwords, in order to have beads with an average diameter after sintering, the joint or fuse between beads must inherently be far less than the diameter of the beads themselves. Alternatively, [0024] teaches a porosity of the sintered body of glass beams being 40-50% and the porous structure distributed in three-dimensions. Porosity is the ratio of voids to entire volume, therefore in order for a three-dimensional porous volume to have a 40-50% porosity, the bonding between sintered beads would inherently have to be less than the diameter of the beads. That is, the volume of the porous substrate is the void + beads. The porosity is therefore void/(void+beads). For a 50% porosity the void space of pores must equal the bead space, therefore the sintered beads cannot be joined more than diameter of the beads because a 50% porosity would not be possible (i.e. joints of equal or greater diameter between beads in a three-dimensional irregular structure would result in voids much less than 50% because the voids would be filled with the joints. ).
Kotani modifies Knapp by suggesting the substitution of anodized alumina for glass beads (see Naito which teaches porous alumina may also be used for the same type of device).
Since both inventions are directed towards using a sample substrate for either LDI or DESI, it would have been obvious to one of ordinary skill in the art to substitute the porous alumina as suggested in Knapp and Naito for the glass beads of Kotani because it would yield predictable results to one of ordinary skill in the art. That is, Knapp is evidence that anodized alumina may be used for either DESI or LDI. Naito is further evidence that anodized alumina may be used in a device similar to Kotani. Kotani teaches that instead of porous aluminum glass bead may be used. Therefore the substitution of the anodized aluminum of Knapp for the sintered glass beads suggested by Kotani would yield predictable results of a sample support for the purpose of DESI as suggested by Knapp.
Claim 11 is taught as discussed above in claim 8. Knapp further teaches a method of mass spectrometry (abstract).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani et al. as evidenced by Naito et al. (WO 2019107063) in view of Takats (Takats et al., “mass Spectrometry Sampling Under Ambient Conditions with Desorption Electrospray Ionization” Science, 2004) as evidenced by Knapp (US pgPub 2008/0087811) and Naito et al. (Naito et al., “A novel laser desorption/ionization method using through hole porous alumina membranes”, Rapid Communications in in mass spectrometry (2018)) or alternatively in view of Takats (US pgPub 2009/0302211).
Regarding claim 8, Kotani et al. teach an ionization method (0033) including:
a first step of preparing a sample support (fig. 2, 1) that includes a substrate (2) including a first surface (either 2a) having an electrical insulating property (glass beads [0024]), a second surface opposite to the first surface (2B opposite 2a), and an irregular porous structure that opens to at least the first surface ([0024]), wherein the electrical insulating property is exposed to an outside of the sample support (prior to application of conductive layer. Paragraph [0028] teaches a conductive layer is provided on the first surface, therefore requiring the first surface to be in a state without a conductive layer prior to the application), wherein the first surface of the substrate is not provided with a conductive layer (prior to application the first surface is not provided with a conductive layer)
wherein the porous structure is formed by an aggregate of a plurality of particles ([0053]);
wherein the particles are made of glass, a metal oxide, or an insulation-coated metal ([0024]).
an average diameter of a joint between adjacent particles is less than the average diameter of the particles (because the glass beads are sintered ([0045]) and retain a spherical shape as evident by the average diameter shape ([0025])), the joint must inherently be less than the diameter because fusing the beads greater than the diameter would suggest a loss of the spherical shape. In otherwords, in order to have beads with an average diameter after sintering, the joint or fuse between beads must inherently be far less than the diameter of the beads themselves. Alternatively, [0024] teaches a porosity of the sintered body of glass beams being 40-50% and the porous structure distributed in three-dimensions. Porosity is the ratio of voids to entire volume, therefore in order for a three-dimensional porous volume to have a 40-50% porosity, the bonding between sintered beads would inherently have to be less than the diameter of the beads. That is, the volume of the porous substrate is the void + beads. The porosity is therefore void/(void+beads). For a 50% porosity the void space of pores must equal the bead space, therefore the sintered beads cannot be joined more than diameter of the beads because a 50% porosity would not be possible (i.e. joints of equal or greater diameter between beads in a three-dimensional irregular structure would result in voids much less than 50% because the voids would be filled with the joints. ).
Kotani fails to expressly teach the average diameter of a joint between adjacent particles is one tenth or more of an average diameter of the particles.
However, Naito is evidence that increasing the bonding thickness between spherical glass beads improves the bonding strength ([0130]).
Therefore, one of ordinary skill in the art would have recognized that the bonding thickness to be a result effective variable (note the instant specification suggests no criticality to the join relative the average diameter of the particles). That is, less bonding thickness results in weaker bonding strength, vs. increased bonding thickness results in stronger bonding strength. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the average diameter of a joint between adjacent particles is one tenth or more of an average diameter of the particles, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Kotani teaches only discloses laser desorption ionization and a conductive coating and therefore fails to disclose the second step of transferring a sample to the first surface; and a third step of ionizing the transferred component of the sample by irradiating the first surface with a charged microdroplet, and sucking the ionized component. As evidenced by Knapp an electrically conductive layer is required for LDI for non-silicon surfaces ([0031)). Therefore, Kotani requires the conductive coating. However, Naito is evidence that the conductive coating is not desirable because it results in a loss of the high hydrophilic property of the alumina surface (page 1853, first paragraph in left column), therefore negatively effecting the impregnation of the solution into the through holes.
However, Takats teaches an exposed insulating outside surface and a step of ionizing the transferred component of the sample by irradiating the first surface with a charged microdroplet and sucking the ionized component (fig. 1, shows a DESI source and right column teaches an insulating sample or analyte deposited on an insulating surface, thus both first and second surfaces are exposed and insulating. Further figure 1 shows atmospheric inlet of mass spectrometer. In order for the desorbed ions to enter the inlet of the MS, they must inherently be drawn or sucked by the vacuum of the open inlet to the MS because MS inherently occurs under vacuum conditions).
Takats modifies Kotani by teaching the substitution of laser desorption ionization for DESI, therefore allowing the support to be insulative without a conductive coating.
While laser desorption ionization requires a conductive layer (see discussion in Knapp above) and the conductive layer is not desirable in Naito due to its hydrophobic nature for capillary transfer of sample components (see Naito discussion above), Takats teaches that using DESI does not require the support to have a conductive coating. Therefore, it would have been obvious to one of ordinary skill in the art to adopt the DESI source of Takats instead of the laser in Kotani because it would allow the through hole support to be without the conductive layer, improving the hydrophilic properties of the support and thus the sample transfer as evidenced by Naito. In other words, since both inventions are directed towards desorption ionization, it would have been obvious to one of ordinary skill in the art to substitute the laser of Kotani for the electrospray nozzle of Takats because DESI does not require the metal coating as the LDI taught by Naito (see evidence discussed above). Therefore, the substitution of the DESI source for the laser of Kotani allows for a porous substrate without the conductive layer. Thus, the substitution results in the insulative porous substrate that is more hydrophilic, improving the capillary transfer of the sample components to the first surface as evidenced by Naito. Moreover, DESI has the advantage over MALDI in that under ambient conditions DESI can be used for the spatial analysis of native surfaces (see page 472 of Takats, right column last paragraph). Therefore, it would be obvious to substitute the laser of Kotani for the electrospray source of Takats such that spatial analysis may be performed for a given sample by lifting the requirements of a vacuum chamber or a fixed sample stage (see page 472 of Takats, right column last paragraph).
Alternatively, Takats teaches first and second surfaces exposed during sample mounting ([0096]) and irradiating the first surface being externally exposed with charged-droplets ([0015]) and sucking the ionized components (as seen in figure 1).
Takats modifies Kotani by suggesting substitution of charged droplets for a laser (laser of prior art [0009]) and preferentially using an insulating substrate.
While laser desorption ionization requires a conductive layer (see discussion in Knapp above) and the conductive layer is not desirable in Naito due to its hydrophobic nature for capillary transfer of sample components (see Naito discussion above), Takats teaches that using a charged liquid stream of charged particles does not require the support to be conductive. Therefore, it would have been obvious to one of ordinary skill in the art to adopt the charged particle liquid jet (i.e. droplets) of Takats instead of the laser in Kotani because it would allow the through hole support to be without the conductive layer, improving the hydrophilic properties of the support and thus the sample transfer as evidenced by Naito. Moreover, the insulative sample support has the advantage of resisting the applied liquid jet ([0096]).
Regarding claim 9, Kotani in view of Takats as evidenced by Naito teaches in the second step, the component of the sample is held on a surface of one or more of the particles ([0039] component that is moved to the first surface 2a is remained on the first surface 2a by a surface tension, when modified by Takats the component would be held by the beads as evidenced by Naito which teaches hydrophilic properties of insulative materials).
Regarding claim 10 Kotani in view of Takats teaches wherein in the third step, an irradiated area of the charged microdroplets is relatively moved with respect to the first surface (figure in takats on page 471 showing freely moving sample stage in air).
Claim 11 is taught as discussed above in claim 8. Kotani further teaches a method of mass spectrometry ([0023]).
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 MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
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