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 .
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-8, 10, 14-15, 18-19 are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by US 2016/0203968 A1 [Otsuka II].
Regarding Claim 1:
Otsuka II teaches an apparatus for ionizing a liquid sample (para 89, Fig. 6), the apparatus comprising:
(a) a thin, rigid planar substrate extending from a proximal end to a sharp edge extending along a distal end of the thin, rigid planar substrate, the proximal end of the thin, rigid planar substrate comprising a flat surface (Fig. 1 (11), Para 25 explains that the probe may have a plate shape or a prismatic shape, either of which is planar and includes flat surfaces and sharp edges.); and
(b) a vibration generator comprising an electromechanical transducer coupled to the flat surface of the thin, rigid planar substrate, the vibration generator configured to vibrate the sharp edge to ionize liquid sample. Otsuka II paras 101-102, 104 explain that oscillator (102) is an electromechanical transducer that the oscillator may be incorporated with the probe. Figs. 1 and 6 further show coupling to a flat surface of the probe.
Regarding Claim 2:
Otsuka II teaches the apparatus of claim 1, wherein the thin, rigid substrate comprises glass, quartz, silicon, hard plastic, a ceramic material, metal, a composite material, fused silica, polyether ether ketone (PEEK), pyrolytic boron nitride (PBN), or a combination thereof (para 26-glass).
Regarding Claim 3:
Otsuka II teaches the apparatus of claim 2, wherein the thin, rigid planar substrate comprises glass (para 26).
Regarding Claim 5:
Otsuka II teaches the apparatus of claim 1, wherein the sharp edge is a corner (distal corners of Fig. 1 (11)).
Regarding Claim 6:
Otsuk II a teaches the apparatus of claim 1, wherein the thin, rigid substrate comprises an irregular shape. Para 25
Regarding Claim 7:
Otsuka II teaches the apparatus of claim 6, wherein the irregular shape comprises a triangle. Para 25.
Regarding Claim 8:
Otsuka II teaches apparatus of claim 1, wherein the thin, rigid planar substrate comprises microchannels to direct fluid flow (paras 94, 97-99).
Regarding Claim 10:
Otsuka II teaches the apparatus of claim 1, wherein the thin, rigid planar substrate comprises a glass microscope slide (para 147, (801)).
Regarding Claim 14:
Otsuka II teaches the apparatus of claim 13, wherein the electromechanical transducer is a piezoelectric transducer (paras 102, 104).
Regarding Claim 15:
Otsuka II teaches the apparatus of claim 1, wherein the vibration generator is fixed to the proximal end of the thin, rigid planar substrate to form a combined body (Fig. 1).
Regarding Claim 18:
Otsuka II teaches a method for producing a spray of droplets (Fig. 2 (9)), the method comprising
exciting the vibration generation of the apparatus of claim 1 to cause the sharp edge of the thin, rigid planar substrate (Fig. 6 (11) – distal edge) of the apparatus to vibrate, generating a vibrating sharp edge (paras 101-102 explain that oscillator (102) is an electromechanical transducer. Paras 25, 104-105 explains that the oscillator may be incorporated into the probe at the flat end of the probe. Para 25 further explains that the probe may have plate shape or a prismatic shape, either of which is planar and has a sharp edge.); and
contacting a liquid sample with the vibrating sharp edge thereby producing droplets (paras 108-109, Fig 6 (666)).
Regarding Claim 19:
Otsuka II teaches the method of claim 18, wherein the spray of droplets comprises an aerosol (paras 108-109).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuka II in view of US 10,068,200 B1 [Greving].
Regarding Claim 20:
Otsuka II teaches the method of claim 18, but fails to specify that the spray of droplets comprises an emulsion.
Greving teaches performing mass spectrometry of samples including emulsions (12:37-47). It would have been obvious to one of ordinary skill in the art before the effective time of filing to mass analyze the emulsion samples of Greving using the ionization device and mass spectrometer of Otsuka. One would have been motivated to do so because Greving demonstrates that such samples can be analyzed via mass spectrometry.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuka II in view of US 2006/0214101 A1 [Takahashi].
Regarding Claim 9:
Otsuka II teaches the apparatus of claim 1, wherein the thin, rigid substrate is chemically modified in order to increase hydrophobicity (para 147). However, Otsuka II fails to specify that the substrate is modified with a polymethylsiloxane (PDMS) or another silicone-based network.
Takahashi teaches using PDMS to modify a sample substrate in order to increase its hydrophobicity (paras 342, 344). It would have been obvious to one of ordinary skill in the art before the effective time of filing to replace the unspecified hydrophobic coating of Otsuka II with the PDMS of Takahashi. One would have been motivated to do so since Takahashi demonstrates that PDMS is a known hydrophobic coating for sample substrates.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuka II in view of ThorLabs, “Precision Cover Glasses and Microscope Slides.” 9 April 2016. (retrieved from https://web.archive.org/web/20160409022329/https://www.thorlabs.com/newgrouppage9.cfm?objectgroup_id=9704) [hereinafter Thor].
Regarding Claim 11:
Otsuka II teaches the apparatus of claim 1, but fails to specify its glass slide comprises a top surface area of from about 24x50 mm to about 24x75 mm.
Thor teaches glass slides with a top surface area of 24x50 mm (first page, first table). It would have been obvious to one of ordinary skill in the art before the effective time of filing to replace the generic glass slide of Otsuka II with the 24x50 mm slide of Thor. This would have been obvious because the simple substitution of one known glass slide for another yields predictable results to one of ordinary skill in the art.
Regarding Claim 12:
Otsuka II teaches the apparatus of claim 1, but fails to specify that the glass slide comprises a thickness of from about 0.08 mm to about 0.19 mm.
Thor teaches glass slides with a thickness of 0.170 mm (first page, first table). It would have been obvious to one of ordinary skill in the art before the effective time of filing to replace the generic glass slide of Otsuka II with the 0.170 mm thick slide of Thor. This would have been obvious because the simple substitution of one known glass slide for another yields predictable results to one of ordinary skill in the art.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuka II in view of US 2014/0070088 A1 [Otsuka].
Regarding Claim 17:
Otsuka II teaches the apparatus of claim 15, wherein the vibration frequency of the combined body is a frequency (para 113 – the combined body has a frequency.).
However, Otsuka II fails to specify that the combined body is driven at its resonant frequency. Otsuka teaches a vibration unit driving a combined body at its resonant frequency. Para 64. It would have been obvious to one of ordinary skill in the art before the effective time of filing to implement the ability to drive the combined body at a resonant frequency, as is taught by Otsuka, to the vibration generator of Otsuka II. One would have been motivated to do so in order to provide highly predictable resonant probe oscillation.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Both claims 15 and 17 depend from a cancelled claim. Accordingly, they are indefinite.
Response to Arguments
The double patenting rejections of record are withdrawn in light of applicant’s terminal disclaimer of 3/19/26.
The anticipation rejections over US 2014/0070088 A1 [Otsuka] are withdrawn in light of applicant’s amendments.
Applicant argues that Otsuka II fails to disclose that the vibration unit is coupled to a flat surface of the substrate. This is not persuasive. Figs. 1 and 6 show this exact coupling. Further, para 104 describes the oscillator incorporated into the flat substrate. Either embodiment anticipates the limitation at issue.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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