DETAILED ACTION
Response to Arguments
Applicant's arguments filed 9/11/2025 have been fully considered but they are not persuasive.
Rejections under 35 USC 112(b)
Applicant’s arguments with respect to the rejections of claims 1, 9 and 10 have been fully considered. The amendments to claims 1, 9, and 10 overcomes the rejections under 35 USC 112(b), therefore, the rejections have been withdrawn.
Rejections under 35 USC 102 and 35 USC 103
Applicant's arguments with respect to the rejection of claim 1, see pgs. 1-4 of the remarks filed 09/11/2025 under 35 USC 102 have been fully considered but they are not persuasive. Applicant states on pg. 3 that “the claimed configuration of ‘a substrate; and a porous layer provided on the substrate” is clearly different from Kotani’s substrate with through-holes.” The claim as written, however does not exclude the porous layer from having through-holes. The claim teaches “the porous layer includes a body layer having a plurality of holes open to the surface.” There is no recitation in the claim that requires the plurality of holes not be open on the opposite side. As such, under the broadest reasonable interpretation of the claim and the meanings of the words “hole” and “porous”, Kotani successfully teaches each limitation of claim 1.
Applicant's arguments with respect to the rejection of claim 5, see pgs. 4-5 of the remarks filed 09/11/2025, have been fully considered but they are not persuasive. Applicant states on pg. 5 that there is “lack of motivation to combine Kotani with Carpenter.” The argument is unpersuasive because there is motivation to combine Kotani with Carpenter, namely that of facilitating energy transfer to the analyte for laser desorption/ionization an analyte without a co-crystallizing matrix.” See Non-Final Rejection filed 07/01/2025. Furthermore, the applicant states on pg. 5 that “The Office Action alleges that one of ordinary skill in the art would adopt the dimensions from Carpenter to optimize the performance of Kotani”, however, the office action does not discuss adopting the dimensions of Carpenter to optimize the performance of Kotani. Rather the Office Action discusses Carpenter teaching the limitation “wherein the body layer is exposed to an outside at least on the surface and an inner surface of the opening”, and how Carpenter can be used to modify Kotani in an obvious fashion to achieve the claimed invention.
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 .
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.
Claims 1-4, 6-7, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kotani, et. al. (WO 2019155836 A1), hereinafter Kotani (see paragraph numbers from translated document (WIPO)).
Regarding claim 1, Kotani teaches a sample support body for ionization of components of a sample (sample support 1 and slide glass 6 are together interpreted to be a sample support body for ionization of components of a sample, [0020], [0036], Fig. 5B), comprising:
a substrate (slide glass 6 is a glass substrate, [0036], Fig. 5B, Fig. 6); and
a porous layer (substrate 2 with plurality of through holes 20, [0021], Fig. 2) provided on the substrate and having a surface opposite to the substrate (Substrate 2 is fixed on slide glass 6 via conductive tape 7 and substrate 2 has surface 2a opposite to slide glass 6; See Fig. 2, Fig. 4, Fig. 5B, Fig. 6, [0036], [0032]),
wherein the porous layer includes a body layer having a plurality of holes open to the surface (part of the substrate with plurality of through holes 20 which open (first opening 20 a) to surface 2a; Fig. 2, [0021]),
wherein each of the plurality of holes includes:
an extension portion extending in a thickness direction of the substrate (Fig. 2, Fig. 4(c), second portion 22 of the through hole that extends to opening on second surface side 2b, [0021], [0023]); and
an opening widened from an end of the extension portion on a surface side toward the surface (Fig. 2, Fig. 4(c), first portion 21 of through hole that widens and connects to opening on first surface side 2a, [0021], [0023]),
wherein an average value of depths of the plurality of holes is 3 µm or more and 100 µm or less ([0021] teaches that the thickness of the substrate 2 is 1 µm to 50 µm, and in Fig. 2 the through holes span the thickness of the substrate, such that the depth of the through hole is equivalent to the thickness of the substrate and is also between 1 µm and 50 µm, which is inside of the claimed range), and
wherein a value obtained by dividing the average value of the depths by an average value of widths of the extension portions of the plurality of holes is 9 or more and 2500 or less (The average depth is between 1 µm and 50 µm, as discussed above, see [0021]. [0022]-[0023] teaches the width of the first opening is about twice the width of the second opening and that the minimum width is 1 nm and the maximum width is 700 nm and that the minimum value of the width is the diameter of the second portion and the maximum value of the width is the diameter of the first opening. As such the width of the second portion 22 may be between 1nm and 350 nm. With these dimensions, the average depth divided by the average width of the extension portions could result in a value between 2.86 (1 µm / 350 nm = 2.86) and 50,000 (50 µm/ 1 nm = 50,000). This range of values fully overlaps with the claimed range.).
Regarding claim 2, Kotani teaches wherein the average value of the widths is 40 nm or more and 350 nm or less ([0022]-[0023] teaches the width of the first opening is about twice the width of the second opening and that the minimum width is 1 nm and the maximum width is 700 nm and that the minimum value of the width is the diameter of the second portion and the maximum value of the width is the diameter of the first opening. As such the width of the second portion 22 may be between 1nm and 350 nm. This range fully overlaps with the claimed range.).
Regarding claim 3, Kotani teaches wherein the body layer is an insulating layer (the porous film is made of alumina, an insulator, [0032]), and
wherein the porous layer further includes a conductive layer formed along at least the surface and an inner surface of the opening (conductive layer 4 is provided on the first surface 2a of the substrate 2, [0026] and on inner surface of opening, [0050], Fig. 2).
Regarding claim 4, Kotani teaches wherein the conductive layer has a thickness of 10 nm or more and 200 nm or less ([0030] teaches conductive layer thickness of 1nm to 350 nm. This range fully overlaps with the claimed range).
Regarding claim 6, Kotani teaches wherein the substrate and the body layer are formed by anodizing a surface layer of a metal substrate or a silicon substrate ([0032].
Regarding claim 7, Kotani teaches an ionization method, comprising:
a process of preparing the sample support body according to claim 3 (see “Regarding claim 3, …” above);
a process of arranging the sample on the surface ([0036], Fig. 6(b)); and
a process of ionizing the components by irradiating the surface with energy rays ([0007], [0038]-[0040], Fig. 7).
Regarding claim 9, Kotani teaches a mass spectrometry method comprising:
all processes included in the ionization method according to claim 7 (see “Regarding claim 7, …” above); and
a process of detecting the ionized components ([0040]).
Regarding claim 11, Kotani teaches wherein each of the plurality of holes includes a bottom (20b, bottom side of through hole 20, Fig. 2, [0021]).
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.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kotani (WO 2019155836 A1) in view of Carpenter, et. al. (US 20190323139 A1), hereinafter Carpenter.
Regarding claim 5, Kotani teaches wherein the body layer is an insulating layer (the porous film is made of alumina, an insulator, [0032]), and
Kotani does not teach wherein the body layer is exposed to an outside at least on the surface and an inner surface of the opening.
Carpenter teaches wherein the body layer is exposed to an outside at least on the surface and an inner surface of the opening (Figs. 2-5 show that the top surface layer of the analyte spot 1 comprising nanoporous aluminum oxide (alumina, an insulator) is exposed to an outside at least on the upper surface and the inner surface of the openings of the pores on the upper surface, [0073] notes that coating is optional.).
Carpenter modifies Kotani by suggesting the body layer exposed to an outside at least on the surface and an inner surface of the opening.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Carpenter because instead of providing a metal coating on top of the porous layer, one may instead leave the surface and inner surface of the opening of the porous body layer exposed and instead provide other metal structures to attain the goal of “facilitate[ing] energy transfer to the analyte for laser desorption/ionization (LDI) of an analyte without a co-crystallizing matrix” ([0028]) , such structures being metal nanoparticles, nanorods, or secondary nanotubes, ([0073], see Figs. 3, 4, 5), with the metal absorbing and transferring energy, ([0063]).
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (WO 2019155836 A1) in view of Carpenter (US 20190323139 A1), further in view of Takats, et. al. (US 20180047554 A1), hereinafter Takats.
Regarding claim 8, Kotani teaches an ionization method, comprising:
a process of preparing the sample support body according to claim 5 (see “Regarding claim 5, …” above);
a process of arranging the sample on the surface ([0036], Fig. 6(b)).
Kotani in view of Carpenter does not teach a process of ionizing the components by irradiating the surface with charged-droplets.
Takats teaches a process of ionizing the components by irradiating the surface with charged-droplets (Abstract).
Takats modifies Kotani by suggesting ionizing the components by directing a spay of charged droplets onto the surface.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Takats because directing a spray of charged droplets onto a surface with a sample of interest generates a plurality of analyte ions to be analyzed, (Takats, Abstract).
Regarding claim 10, Kotani in view of Carpenter further in view of Takats teaches a mass spectrometry method comprising:
all processes included in the ionization method according to claim 8 (see “Regarding claim 8, …” above); and
a process of detecting the ionized components ([0040]).
Conclusion
THIS ACTION IS MADE FINAL. 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 LAURA E TANDY whose telephone number is (703)756-1720. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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LAURA E TANDY
Examiner
Art Unit 2881
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881