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 Objections
Claim 4 is objected to because of the following informalities: incorrect dependency. For the purpose of this Office action, the claim is treated as it depends from claim 1. Appropriate correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-8, 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanase (Tanase et al., US 2015/0285726 A1) in view of Ito (Ito et al., US 2012/0153185 A1).
Regarding claim 1, Tanase teaches:
1. A liquid flow charging device for a flow cell, comprising:
a first electrode (e.g., 4) configured to be electrically connected to a liquid flow when the liquid flow is flowing through a flow channel assembly of the flow cell (see Figs. 2A, 4 for example); and
a second electrode (e.g., 5/25) located at a predetermined position on a radially outer side of the liquid flow and having a cylindrical inner peripheral surface surrounding the liquid flow (see Figs. 7A-7B, 8A-8B & ¶ 0027-0029, 0087-0090 for example),
wherein the second electrode (5/25) is electrically connected to a charging control device (e.g., voltage source 8).
However, Tanase does not explicitly teach: wherein the first electrode is grounded.
Ito teaches: wherein a first electrode is grounded, and a second electrode is electrically connected to a charging control device (see i.e., As for the direction of applying the voltages, in case where the solid surface is negatively charged such as for porous silica members, either a positive voltage is applied to the electrode 44c placed upstream of the flow direction, while grounding the electrode 44d placed downstream of the flow direction; or the electrode 44c is grounded, while a negative voltage is applied to the electrode 44d. By contrast, in case where the solid surface is positively charged, either the electrode 44c is grounded, while a positive voltage is applied to the electrode 44d; or a negative voltage is applied to the electrode 44c, while the electrode 44d is grounded. ¶ 0104).
It is generally understood that in flow cytometry, at least one electrode is grounded, while the other serves as a charging electrode, as evidenced by Ito (¶ 0104). This setup ensures proper electrical connections and measurements during the analysis. Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the first electrode grounded, and the second electrode is electrically connected to a charging control device, as taught by Ito, to ensure proper electrical connections and measurements during the analysis.
With regard to limitations in claims 1, 5, 6, 15, 16 (e.g., [...] to be electrically connected to a liquid flow when the liquid flow is flowing through a flow channel assembly of the flow cell; [...] for a light beam to pass through is arranged on a side wall of the second electrode, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claims 5, 6, 16, modified Tanase teaches:
5. The liquid flow charging device according to claim 1, wherein a hole capable for a light beam to pass through is arranged on a side wall of the second electrode (see Figs. 7A-7B for example).
6. The liquid flow charging device according to claim 5, wherein the hole has an elongated shape in a flow direction of the liquid flow (see Fig. 8B for example).
16. The liquid flow charging device of claim 1, wherein the first electrode is configured to directly contact sheath fluid of the liquid flow when the liquid flow is flowing through a flow channel assembly of the flow cell (see ¶ 0047 for example).
Regarding claims 4, 7 and 8, Tanase does not explicitly teach: 4. The liquid flow charging device according to claim 1, wherein the first electrode includes: a gold material, or a gold-plated layer is arranged on a conductive metal layer. 7. The liquid flow charging device according to claim 1, wherein the second electrode comprises a conductive metal layer and a protective layer located on a surface of the conductive metal layer. 8. The liquid flow charging device according to claim 7, wherein the protective layer comprises an oxide layer, a non-metal layer, and/or an insulating layer.
Ito teaches: an electrode is made of a gold material or a gold-plated layer is arranged on a conductive metal layer; an electrode comprises a conductive metal layer and a protective layer located on a surface of the conductive metal layer; wherein the protective layer comprises an oxide layer, a non-metal layer, and/or an insulating layer (see i.e., preparing electrodes 44c and 44d formed as conductive laminated plates of gold, platinum, aluminum, and so forth; arranging the electrodes inside the pressure chamber 14b; forming the chip by bonding; and sealing with adhesives 44g. ¶ 0102; the electrodes may be formed alternatively by preparing thin film electrodes 44c and 44d of metal such as gold, platinum, or aluminum, ITO (indium-tin oxide), and so forth, which are deposited by the sputtering method on the inner surface of the pressure chamber 44b; and by connecting a contact pin 44h thereto. Furthermore, as shown in FIG. 17C, electrodes 44c and 44d may be sealed during the preparation of the chip, and subsequently subjected to the solid casting. ¶ 0103).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the electrodes of Tanase with the teachings of Ito as an electrode made of a gold material; and an electrode comprising a conductive metal layer and a protective layer, wherein the protective layer comprises an oxide layer, a non-metal layer, and/or an insulating layer are known in construction of electrodes (Ito ¶ 0102-0103). Additionally, the selection of a known material based upon its suitability of intended use would have been within the skill of the art, In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) & see MPEP 2144.07. Therefore, it would have been within the skill of the art to modify Tanase and select well-known materials, as taught by Ito, to construct the first and second electrodes as based upon the selection of a material for its suitability of intended use.
Regarding claim 15, Tanase does not explicitly teach: 15. The liquid flow charging device of claim 1, wherein the first electrode is configured to be electrically connected to a ground terminal of a casing of the flow cell. It would have been obvious to one of ordinary skill in the art at the time the invention was made to make the first electrode to be electrically connected to a ground terminal of a casing of the flow cell for safety, as it provides a low-resistance path for electrical current to flow safely away from the equipment in case of a fault, preventing shock hazards.
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.
Applicant is thanked for their thoughtful amendments to the claims.
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 DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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