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 .
Election/Restrictions
Applicant’s election without traverse of Species: A. 1, B. 4, C. 4, D. 3, and E. 1 in the reply filed on 03/23/2026 is acknowledged.
Claims 1, 2 and 4-8 are being examined.
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 1, 2 and 4-8 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.
Claims 1 and 4 are not clear with respect to what applicant is claiming. The claims do not clearly set forth the metes and bounds of the patent protection desired.
Claim 1 is unclear reciting “a first electrode electrically connected to a liquid flow flowing through a flow channel assembly of the flow cell” because it is unclear whether the liquid flowing through a flow channel assembly of the flow cell is part of the claimed invention. In addition, the phrase “a liquid flow flowing [...]” is unclear.
Claim 4 is unclear reciting “wherein the first electrode is made of a gold material, or a gold-plated layer is arranged on a conductive metal layer” because it is unclear whether the applicant is claiming that the first electrode is made of a gold material, or claiming a gold-plated layer arranged on a conductive metal layer. It is further unclear whether the conductive metal layer is part of the claimed invention.
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.
(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.
Claim(s) 1, 2, 5 and 6 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by (US 2015/0285726 A1).
Regarding claim 1, Tanase et al. teach:
1. A liquid flow charging device for a flow cell, comprising:
a first electrode (e.g., 4) electrically connected to a liquid flowing through a flow channel assembly of the flow cell (see Fig. 2A for example); and
a second electrode (e.g., 25) located at a predetermined position on a radially outer side of the liquid flow and has a cylindrical inner peripheral surface surrounding the liquid flow (see Figs. 7A-7B, 8A-8B & ¶ 0027-0029, 0087-0090 for example).
With regard to limitations in claims 1, 5, 6 (e.g., [...] a liquid flow flowing through a flow channel; [...] 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 2, 5, 6, Tanase et al. teach:
2. The liquid flow charging device according to claim 1, wherein the first electrode is grounded (see Figs. 2A, 4 for example), and the second electrode is electrically connected to a charging control device (see ¶ 0059 & Figs. 2A, 4 for example).
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).
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(s) 4, 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanase et al. (US 2015/0285726 A1) in view of Ito et al. (US 2012/0153185 A1).
Regarding claims 4, 7 and 8, Tanase et al. do not explicitly teach: 4. The liquid flow charging device according to claim 2, wherein the first electrode is made of 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 et al. teach: 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 et al. with the teachings of Ito et al. 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 et al. ¶ 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 et al. and select well-known materials, as taught by Ito et al., to construct the first and second electrodes as based upon the selection of a material for its suitability of intended use.
Conclusion
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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