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 Invention I (claims 1-6, 9, 11-20, and 22) in the reply filed on 05/12/2026 is acknowledged.
Claims 7-8, 10, and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Inventions II and III, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12-20 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 12 recites, “a metal salt of an organic acid.”
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the case at hand, the limitation “metal salt of an organic acid” recites two broad genera: 1) metal salt; and 2) of an organic acid. Applicant has described a list of metals for which a metal salt can be produced. See e.g., instant PgPub at paras 0084 and 0085. However, the list is only a small fraction of metals and makes no mention of the majority of metals, such as gold, silver, lithium, etc. Further, applicant has described a list of organic acid groups from which a metal salt can be produced. See e.g., instant PgPub at paras 0097. However, these groups each comprise myriad different acids, since each can include any number of hydrocarbon arrangements. The whole of the specification mentions one particular acid, alkyl allyl sulfonic acid.
In effect, the instant claims are drafted to claim uncountably many instances of a metal salt of an organic acid, as the numerous atomic metals can each theoretically be a salt of any given organic acid. However, the disclosure only describes a handful of metals and one particular acid. Such a narrow disclosure does not reasonably provide evidence that the entirety of the claimed genus of “metal salt of an organic acid” was possessed or considered at the time of filing. As such, the claims are rejected for failing the written description requirement.
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 12-20 and 22 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.
Claim 12 recites “a polymer in which an absolute value of a difference from an SP value of the hydrocarbon is 3.5 MPa12or less.” It is unclear what difference is being referred to. The specifications recite “[i]n a case where the standard sample film contains a metal salt of an organic acid having a hydrocarbon group (in a case where the standard sample film contains a metal element derived from a metal salt of an organic acid), the absolute value of the difference between the SP value of the hydrocarbon group of the organic acid and the SP value of the hydrocarbon is preferably 3.5 MPa1/2.” For the purposes of examination 3.5 MPa12or less will be taken to be the absolute value of the difference between the SP value of the hydrocarbon group of the organic acid and the SP value of the hydrocarbon.
Moreover, it is unclear how the absolute value of a difference between the hydrocarbon of the organic acid and the hydrocarbon further limits the polymer.
Further, claim 12 recites “A standard sample…comprising: a hydrocarbon; a metal salt of an organic acid.” The specifications explain “The metal salt of an organic acid is a salt containing an organic acid and a metal element…The organic acid is preferably a hydrocarbon.” It is unclear if the hydrocarbon in the metal salt of the organic acid is the same hydrocarbon in the limitation in claim 12. For the purposes of examination, the hydrocarbon that makes up the metal salt of an organic acid will be interpreted to be different.
Claim 13 recites “wherein in the polymer, the absolute value of the difference from the SP value of the hydrocarbon is 2.5 MPau12or less.” It is unclear what difference is being referred to. The specifications of the present disclosure explain “[t]he absolute value of the difference between the SP value of the specific polymer and the SP value of the hydrocarbon is preferably 2.5 MPa1/2 or less.” For the purposes of examination, the difference referred to will be between the SP value of the specific polymer and the hydrocarbon.
Further, the specifications explain “[t]he metal salt of an organic acid is a salt containing an organic acid and a metal element…The organic acid is preferably a hydrocarbon.” Claim 12, on which claim 13 depends, claims a hydrocarbon and an organic acid. It is unclear if the difference referred to in claim 13 is between the specific polymer and the hydrocarbon referred to in claim 2, or between the specific polymer and the hydrocarbon of the organic acid.
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 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 1-5, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Arnaudguilhem, Carine, et al. "Toward a comprehensive study for multielemental quantitative LA-ICP MS bioimaging in soft tissues." Talanta 222 (2021): 121537, hereinafter referred to as Carine, in view of Uematsu (US 20200303176 A1), hereinafter referred to as Uematsu.
Regarding claim 1, Carine teaches a standard sample film for use in laser ablation inductively coupled plasma mass spectrometry, comprising:
a polymer (polymeric film (Section 2.2));
a metal element; and an internal standard (the other portion of the solution was spiked with internal standard solution and different amounts of metal solutions (Fe, Cu, Zn, Pt, P, Co, Ni, Se, Mo, Hg, Cd) (Section 2.2)),
Caine does not explicitly disclose wherein a maximum height difference in film thickness of the standard sample film is 0.50 pm or less.
However, Carine does specify a film thickness of 40 nm (variance 1%)).
Paragraph [0044] of the specifications define “the maximum height difference” by a process of using a stylus type step profiler to measure the thickness of the film and then subtract the minimum value of 10 scans from the maximum value of 10 scans. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113). Carine teaches a film with a thickness variance of 1%.
Further, optimizing the height difference in film thickness is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Uematsu teaches that “The surface roughness Ra is preferably 1 μm or less both on a front surface and a back surface of the base in order to suppress refraction scattering of a laser beam or an optical vortex laser beam, and to prevent reduction in energy to be applied to the matrix. Moreover, the surface roughness Ra in the preferable range is advantageous because unevenness in an average thickness of the matrix deposited on the sample can be suppressed, and a desired amount of the matrix can be deposited (para. [0063]).”. As such, Uematsu identifies modifying the height difference in film thickness as a variable which achieves a recognized result, i.e., suppressing refraction scattering of the laser beam and depositing the desired amount of the matrix with optimized precision. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the height difference in film thickness in Carine such that a maximum height difference in film thickness of the standard sample film is 0.50 pm or less, since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Regarding claim 2, Carine teaches the standard sample film according to claim 1 wherein an element concentration variation of the standard sample film is 30% or less (Over the 4 film substrates analyzed, internal standards signal stability was in the range of 8–16% and was slightly lower for film substrates produced at 4000 rpm (RSD ~ 12%) compared with film obtained at 4500 rpm (RSD ~ 9%). For the latter condition, RSD between the 2 film substrates was better for In (10%) compared with Ir (12%) and Rh (14%). Therefore, spin-coating at 4500 rpm provided homogenized film substrates (Section 3.1, para. [0003])).
However, Carine does not teach the standard sample film according to claim 1 wherein an element concentration variation of the standard sample film obtained by method X is 30% or less, method X: at 10 points on a surface of the standard sample film, time-of-flight secondary ion mass spectrometry is carried out from one surface of the standard sample film toward the other surface of the standard sample film to obtain a profile of secondary ion intensity of the metal element in a depth direction, in a case where a position of 20% of a total thickness of the standard sample film from the one surface of the standard sample film toward the other surface of the standard sample film is defined as a first position, and a position of 80% of the total thickness of the standard sample film from the one surface of the standard sample film toward the other surface of the standard sample film is defined as a second position, a total value of secondary ion intensity of the metal element from the first PCT(CA) position to the second position at each point is calculated, and then, a relative standard deviation of the obtained 10 total values of the secondary ion intensities is calculated and defined as the element concentration variation.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113). The way in which Method X defines the product is the element concentration variation of the metal element is 30% or less. Carine teaches the element concentration variation of the internal standard is 30% or less.
However, optimizing element concentration variation is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Carine teaches that “successful quantification using polymer film calibrant strictly relies on two keys parameters: the chemical purity in terms of metals of the polymer molecule and the homogeneity of the film produced (section 3.1, para. [0001])”. As such, Carine identifies element concentration variation as a variable which achieves a recognized result, i.e., successfully quantifying a polymer film. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize element concentration variation in Carine to meet an element concentration variation of less than 30 for the metal element since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Regarding claim 3, Carine teaches the standard sample film according to claim 1 wherein an average film thickness of the standard sample film is 3.5 pm or less (Therefore, quantification was performed based on preconcentration factors determined for each element and the 40-nm thickness (density was therefore determined to 3.6982) of the film, which is the substrate used for sample deposition (section 3.1, para. [0004])).
Regarding claim 4, Carine teaches the standard sample film according to claim 1 wherein the metal element is derived from a metal salt of an organic acid or a metal salt of an inorganic acid (Chemical composition, weight and thickness of polymer film standards prepared by spin-coating. Concentration ranges (0–400 μg g−1 and 0–80 μg g−1) are reported for major elements (P, Fe, Cu, Zn, and Pt) and minor (Ni, Co, Se, Mo, Cd, and Hg) elements (Table 1 caption)).
According to the specifications of the present disclosure “[t]he metal salt of an organic acid is a salt containing an organic acid and a metal element.…[f]rom the viewpoint that the effect of the present invention is more excellent, aluminum (Al), sodium (Na), magnesium (Mg), barium (Ba), calcium (Ca), titanium (Ti), vanadium (V), chromium (Cr), manganese (Mn), iron (Fe), nickel (Ni), copper (Cu), zinc (Zn), molybdenum (Mo), cadmium (Cd), and lead (Pb) are preferable as the metal element (para. [0083]).” Carine teaches the use of Fe, Ni, Cu, Mo, Cd. Therefore, Carine teaches metal elements derived from a metal salt of an organic acid or a metal salt of an inorganic acid.
Regarding claim 5, Carine teaches the standard sample film according to claim 1 wherein the standard sample film contains two or more of the metal elements (A portion of this solution was spiked with the internal standards solution (In, Rh, Ir) to obtain a theoretical concentration of 10 μg g−1 before preconcentration by spin-coating and dedicated as sample deposit substrates after spin-coating. The other portion of the solution was spiked with internal standard solution and different amounts of metal solutions (Fe, Cu, Zn, Pt, P, Co, Ni, Se, Mo, Hg, Cd) to produce calibrants for quantification by LA-ICP MS after spin-coating (section 2.2)).
Regarding claim 9, Carine teaches a sample set comprising a plurality of the standard sample films according to claim 1 in combination, wherein the plurality of standard sample films contain the same type of a metal element, and concentrations of the metal element in the plurality of standard sample films are different from each other (Chemical composition, weight and thickness of polymer film standards prepared by spin-coating. Concentration ranges (0–400 μg g−1 and 0–80 μg g−1) are reported for major elements (P, Fe, Cu, Zn, and Pt) and minor (Ni, Co, Se, Mo, Cd, and Hg) elements, respectively. Rh, In and Ir are internal standards (Table 1 caption)).
Regarding claim 11, Carine teaches a transfer film comprising: a temporary support; and the standard sample film according to claim 1 disposed on the temporary support (support (glass slide) (section I, para, [0003])).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Carine, in view of Uematsu, and in further view of Hayashizaki (JP 2004212206 A), herein after referred to as Hayashizaki.
Regarding claim 6, Carine fails to teach the standard sample film according to claim 1 wherein the polymer is a (meth)acrylic polymer.
However, Hayashizaki teaches wherein the polymer is a (meth)acrylic polymer (Examples of such an organic substrate material include materials such as PET, PI, acrylic, aramid, PP, PC, polystyrene, nylon, and ABS (para. [0065])).
According to the specifications of the present disclosure “The (meth)acrylic polymer is a general term for an acrylic polymer and a methacrylic polymer”, where an acrylic is a polymer.
To be clear, Carine teaches a polymer film. Carine does not teach that the polymer is acrylic. However, Hayashizaki teaches a polymer substrate for use in laser ablation polymer analysis. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Carine to include the teachings of Hayashizaki by allowing the polymer to be acrylic. Doing so is beneficial because it is “inexpensive and has a high degree of freedom in shape and material design (para. [0065]).”
Claim(s) 12-14 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Alexander Loboda (US 20210239707 A1), hereinafter referred to as Loboda, in view of Kit Lam (WO 2008036449), hereinafter referred to as Lam.
Regarding claim 12, Loboda teaches a standard sample for use in laser ablation inductively coupled plasma mass spectrometry, comprising:
a hydrocarbon (and the solvent may be toluene (para. [0209]));
a metal and an organic acid (The metal-chelating group that is capable of binding at least one metal atom can comprise at least four acetic acid groups. For instance, the metal-chelating group can be a diethylenetriaminepentaacetate (DTPA) group or a 1,4,7,10-tetraazacyclododecane-1,4,7,10-tetraacetic acid (DOTA) group. Alternative groups include Ethylenediaminetetraacetic acid (EDTA) and ethylene glycol-bis(O-aminoethyl ether)-N,N,N′,N′-tetraacetic acid (EGTA) (para. [0256]));
a polymer (the polymer film (para. [0209])) in which an absolute value of a difference from an SP value of the hydrocarbon is 3.5 MPa12or less ([o]ther non-limiting examples of the 3D polymer brushes suitable for use in the present invention include when the polymer is a neutral species such as polystyrene, poly(methyl methacrylate (PMMA), poly(N-isopropylacrylamide) (para. [0097])).
Toluene is an aromatic hydrocarbon.
The specification of the present disclosure recites “[t]he type of the specific polymer is not particularly limited as long as it satisfies the range of the absolute value of the above difference. Examples of the specific polymer include a (meth)acrylic polymer, a styrene-based polymer, an olefin-based polymer, a polyester-based polymer, and a polyamide-based polymer, among which a (meth)acrylic polymer or a styrene-based polymer is preferable, and a (meth)acrylic polymer is more preferable.” Loboda teaches the use of a polystyrene and methacrylic polymer. Therefore, Labodo inherently teaches the claimed range.
Labodo fails to teach a metal salt of an organic acid.
However, Lam teaches a metal salt of an organic acid (The term "chelating agent" refers to a compound which binds to a metal ion, such as a radionuclide, with considerable affinity and stability…Examples of bifunctional chelating agents include, but are not limited to, 1,4,7,10- tetraazacyclododecane-N,N',N",N'"-tetraacetic acid (DOTA), a bromoacetamidobenzyl derivative of DOTA (BAD), 1,4,8,1 l-tetraazacyclotetradecane-N,N',N",N'"-tetraacetic acid (TETA), diethylenetriaminepentaacetic acid (DTPA), the dicyclic dianhydride of diethylenetriaminepentaacetic acid (ca-DTPA) (para. [0083])).
The specifications of the present disclosure explain “The metal salt of an organic acid is a salt containing an organic acid and a metal element.” Loboda discloses the use of metal chelanting moieties like penetic acid (DTPA), which is an organic acid used for binding to metal atoms. However, Loboda fails to teach the use of DTPA as a salt to bind to metal atoms. However, Lam teaches using ca-DTPA to bind to metal ions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Loboda to include the teachings of Lam by using ca-DTPA to bind to metal. Doing so is a known in the art as an effective chelanting agent.
Regarding claim 13, Loboda teaches the standard sample according to claim 12, wherein in the polymer, the absolute value of the difference from the SP value of the hydrocarbon is 2.5 MPau12or less ([o]ther non-limiting examples of the 3D polymer brushes suitable for use in the present invention include when the polymer is a neutral species such as polystyrene, poly(methyl methacrylate (PMMA), poly(N-isopropylacrylamide) (para. [0097])).
The specification of the present disclosure recites “[t]he type of the specific polymer is not particularly limited as long as it satisfies the range of the absolute value of the above difference. Examples of the specific polymer include a (meth)acrylic polymer, a styrene-based polymer, an olefin-based polymer, a polyester-based polymer, and a polyamide-based polymer, among which a (meth)acrylic polymer or a styrene-based polymer is preferable, and a (meth)acrylic polymer is more preferable.” Loboda teaches the use of a polystyrene and methacrylic polymer. Therefore, Labodo discloses the claimed range.
Regarding claim 14, Loboda teaches the standard sample according to claim 12 wherein the polymer is a (meth)acrylic polymer ([o]ther non-limiting examples of the 3D polymer brushes suitable for use in the present invention include when the polymer is a neutral species such as polystyrene, poly(methyl methacrylate (PMMA), poly(N-isopropylacrylamide) (para. [0097])).
Regarding claim 22, Loboda teaches a transfer film comprising: a temporary support; and a sample film consisting of the standard sample according to claim 12 disposed on the temporary support (sample carrier (e.g., glass slide) (para. [0445])).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Loboda in view of Lam, as applied to claim 12 above, and in further view of Andrew Naisby (US 20140309375 A1), hereinafter referred to as Naisby.
Regarding claim 15, Loboda fails to teach the standard sample according to claim 12, wherein the hydrocarbon includes an aliphatic saturated hydrocarbon having 10 or more carbon atoms.
However, Naisby teaches wherein the hydrocarbon includes an aliphatic saturated hydrocarbon having 10 or more carbon atoms (In this specification "alkyl" denotes a straight- or branched-chain, saturated, aliphatic hydrocarbon radical. Said "alkyl" may consist of 1 to 12, typically 1 to 8, in some embodiments 1 to 6 carbon atoms (para. [0089])) (In one embodiment, the hydrophobic small molecule includes one or more straight- or branched chain, saturated or unsaturated, hydrocarbyl (for example, alkyl, alkenyl or alkynyl) groups having 6 to 30 carbon atoms, such as at least 8 to 24, especially 10 to 22, particularly 12 to 18, for example 12, 14, 16 or 18 carbon atoms (para. [0138])).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Loboda to include the teachings of Naisby such that the organic solvent is a aliphatic saturated hydrocarbon having 10 or more carbon atoms. Naisby outlines the benefits of such incorporation “Incorporation of a hydrophobic small molecule into the bulk of a polymer, and subsequent annealing to induce migration of the small molecules within the bulk of the polymer part, according to the present technology, results in a well-defined and long-term stable surface energy on the surface of the polymer part (para. [0032]).”
Regarding claim 16, Loboda fails to teach the standard sample according to claim 12 wherein the hydrocarbon includes paraffin.
However, Naisby teaches wherein the hydrocarbon includes paraffin (In this specification "alkyl" denotes a straight- or branched-chain, saturated, aliphatic hydrocarbon radical. Said "alkyl" may consist of 1 to 12, typically 1 to 8, in some embodiments 1 to 6 carbon atoms (para. [0089])) (In one embodiment, the hydrophobic small molecule includes one or more straight- or branched chain, saturated or unsaturated, hydrocarbyl (for example, alkyl, alkenyl or alkynyl) groups having 6 to 30 carbon atoms, such as at least 8 to 24, especially 10 to 22, particularly 12 to 18, for example 12, 14, 16 or 18 carbon atoms (para. [0138])).
The specifications of the present disclosure explain “In the present specification, paraffin means an aliphatic saturated hydrocarbon having 15 or more carbon atoms.” Naisby implements aliphatic saturated hydrocarbon having up to 18 carbon atoms. Therefore, Naisby teaches wherein the hydrocarbon includes a paraffin.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Loboda to include the teachings of Naisby such that the organic solvent is a aliphatic saturated hydrocarbon having 15 or more carbon atoms. Naisby outlines the benefits of such incorporation “Incorporation of a hydrophobic small molecule into the bulk of a polymer, and subsequent annealing to induce migration of the small molecules within the bulk of the polymer part, according to the present technology, results in a well-defined and long-term stable surface energy on the surface of the polymer part (para. [0032]).”
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Loboda in view of Lam, as applied to claim 12 above, in further view of Hideaki Naka-Jima (WO 2004097395 A1), hereinafter referred to as Naka-Jima.
Regarding claim 17, Loboda fails to teach the standard sample according to claim 12 wherein the organic acid has a sulfonic acid group.
However, Naka-Jima teaches the standard sample according to claim 12 wherein the organic acid has a sulfonic acid group (In the formula, R l, R2, R3, and R4 may be identical or different from each other, and two or more of them are alil groups with total carbon numbers between 6 and 18, and may be substituted with halogen atoms, hydroxyl groups, sulfonic acid groups (Section: Disclosure of the Invention; para. [0003])).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Loboda to include the teachings of Naka-Jima such that the organic acid has a sulfonic acid group. Doing so improves the films’ ability to maintain a strong signal intensity even after being placed in a vacuum for a long period of time (pg. 5, para [0005]).
Regarding claim 18, Loboda fails to teach the standard sample according to claim 12 wherein the organic acid has a hydrocarbon group.
However, Naka-Jima teaches the standard sample according to claim 12 wherein the organic acid has a hydrocarbon group (If two of Rl, R2, R3, and R4 are the aryl groups, then the remaining two are each independently alkyl groups with total carbon numbers from 1 to 10 (Section: Disclosure of the Invention; para. [0004])).
According to the specifications of the present disclosure “[t]he organic acid preferably has a hydrocarbon group (an aliphatic hydrocarbon group or an aromatic hydrocarbon group), more preferably an aliphatic hydrocarbon group, and still more preferably an alkyl group.” Naka-Jima teaches the organic acid has a hydrocarbon group.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Loboda to include the teachings of Naka-Jima such that the organic acid has a hydrocarbon group. Doing so improves the films’ ability to maintain a strong signal intensity even after being placed in a vacuum for a long period of time (pg. 5, para [0005]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-6, 9, 11-20, and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 11-20, and 22 of U.S. Patent No. 12326418, hereinafter referred to as Sugiyama, in view of Carine.
18/426,363
12326418 (Sugiyama)
l.(Original) A standard sample film for use in laser ablation inductively coupled plasma mass spectrometry, comprising:
a polymer;
a metal element;
and an internal standard,
wherein a maximum height difference in film thickness of the standard sample film is 0.50 pm or less.
1. A standard sample film for use in laser ablation inductively coupled plasma mass spectrometry, comprising:
a polymer;
and a metal element,
(See rejection below)
wherein a maximum height difference in film thickness of the standard sample film is 0.50 μm or less.
2.(Original) The standard sample film according to claim 1 wherein an element concentration variation of the standard sample film obtained by method X is 30% or less , method X: at 10 points on a surface of the standard sample film, time-of-flight secondary ion mass spectrometry is carried out from one surface of the standard sample film toward the other surface of the standard sample film to obtain a profile of secondary ion intensity of the metal element in a depth direction, in a case where a position of 20% of a total thickness of the standard sample film from the one surface of the standard sample film toward the other surface of the standard sample film is defined as a first position, and a position of 80% of the total thickness of the standard sample film from the one surface of the standard sample film toward the other surface of the standard sample film is defined as a second position, a total value of secondary ion intensity of the metal element from the first position to the second position at each point is calculated, and then, a relative standard deviation of the obtained 10 total values of the secondary ion intensities is calculated and defined as the element concentration variation.
2. The standard sample film according to claim 1, wherein an element concentration variation of the standard sample film obtained by the following Method X is 30% or less, Method X: at 10 points on a surface of the standard sample film, time-of-flight secondary ion mass spectrometry is carried out from one surface of the standard sample film toward the other surface of the standard sample film to obtain a profile of secondary ion intensity of the metal element in a depth direction, in a case where the position of 20% of a total thickness of the standard sample film from one surface of the standard sample film toward the other surface of the standard sample film is defined as the first position, and the position of 80% of the total thickness of the standard sample film from the one surface of the standard sample film toward the other surface of the standard sample film is defined as the second position, a total value of the secondary ion intensity of the metal element from the first position to the second position at each point is calculated, and then, a relative standard deviation of obtained 10 total values of the secondary ion intensities is calculated and defined as the element concentration variation.
3.(Original) The standard sample film according to claim 1 wherein an average film thickness of the standard sample film is 3.5 pm or less.
3. The standard sample film according to claim 1, wherein an average film thickness of the standard sample film is 3.5 μm or less.
4. The standard sample film according to claim 1, wherein the metal element is derived from a metal salt of an organic acid or a metal salt of an inorganic acid.
4. The standard sample film according to claim 1, wherein the metal element is derived from a metal salt of an organic acid or a metal salt of an inorganic acid.
5. The standard sample film according to claim 1, wherein the standard sample film contains two or more metal elements.
5. The standard sample film according to claim 1, wherein the standard sample film contains two or more metal elements.
6. The standard sample film according to claim 1, wherein the polymer is a (meth)acrylic polymer.
6. The standard sample film according to claim 1, wherein the polymer is a (meth)acrylic polymer.
9.(Original) A sample set comprising a plurality of the standard sample films according to claim 1 in combination, wherein the plurality of standard sample films contain the same type of a metal element, and concentrations of the metal element in the plurality of standard sample films are different from each other.
9. A sample set comprising a plurality of the standard sample films according to claim 1 in combination, wherein the plurality of standard sample films contain the same type of metal element, and concentrations of the metal element in the plurality of standard sample films are different from each other.
11.(Original) A transfer film comprising: a temporary support; and the standard sample film according to claim 1 disposed on the temporary support.
11. A transfer film comprising: a temporary support; and the standard sample film according to claim 1 disposed on the temporary support.
12.(Original) A standard sample for use in laser ablation inductively coupled plasma mass spectrometry, comprising: a hydrocarbon; a metal salt of an organic acid; a polymer in which an absolute value of a difference from an SP value of the hydrocarbon is 3.5 MPa12or less;
and an internal standard.
12. A standard sample for use in laser ablation inductively coupled plasma mass spectrometry, comprising: a hydrocarbon; a metal salt of an organic acid; and a polymer in which an absolute value of a difference from an SP value of the hydrocarbon is 3.5 MPa.sup.1/2 or less.
(See rejection below)
13.(Original) The standard sample according to claim 12 wherein in the polymer, the absolute value of the difference from the SP value of the hydrocarbon is 2.5 MPau12or less.
13. The standard sample according to claim 12, wherein the absolute value of the difference from the SP value of the hydrocarbon is 2.5 MPa.sup.1/2 or less.
14.(Original) The standard sample according to claim 12, wherein the polymer is a (meth)acrylic polymer.
14. The standard sample according to claim 12, wherein the polymer is a (meth)acrylic polymer.
15.(Original) The standard sample according to claim 12, wherein the hydrocarbon includes an aliphatic saturated hydrocarbon having 10 or more carbon atoms.
15. The standard sample according to claim 12, wherein the hydrocarbon includes an aliphatic saturated hydrocarbon having 10 or more carbon atoms.
16.(Original) The standard sample according to claim 12, wherein the hydrocarbon includes paraffin.
16. The standard sample according to claim 12, wherein the hydrocarbon includes paraffin.
17.(Original) The standard sample according to claim 12, wherein the organic acid has a sulfonic acid group.
17. The standard sample according to claim 12, wherein the organic acid has a sulfonic acid group.
18.(Original) The standard sample according to claim 12, wherein the organic acid has a hydrocarbon group.
18. The standard sample according to claim 12, wherein the organic acid has a hydrocarbon group.
19.(Original) The standard sample according to claim 12, wherein the standard sample contains two or more of the metal salts of the organic acid having different types of metal elements.
19. The standard sample according to claim 12, wherein the standard sample contains two or more metal salts of the organic acid having different types of metal elements.
20.(Original) A sample set comprising a plurality of the standard samples according to claim 12 in combination, wherein the plurality of standard samples contain the same type of a metal salt of an organic acid, and concentrations of a metal element derived from the same type of the metal salt of the organic acid in the plurality of standard samples are different from each other.
20. A sample set comprising a plurality of the standard samples according to claim 12 in combination, wherein the plurality of standard samples contain the same type of metal salt of an organic acid, and concentrations of a metal element derived from the same type of the metal salt of the organic acid in the plurality of standard samples are different from each other.
22.(Original) A transfer film comprising: a temporary support; and a sample film consisting of the standard sample according to claim 12 disposed on the temporary support.
22. A transfer film comprising: a temporary support; and a sample film consisting of the standard sample according to claim 12 disposed on the temporary support.
Regarding claim 1, Sugiyama fails to teach an internal standard.
However, Carine teaches an internal standard (the other portion of the solution was spiked with internal standard solution (Section 2.2)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Sugiyama to include the teachings of Carine by incorporating the internal standard. An internal standard is useful for correcting for variability during quantification.
Regarding claim 12, Sugiyama fails to teach an internal standard.
However, Carine teaches an internal standard (the other portion of the solution was spiked with internal standard solution (Section 2.2)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Sugiyama to include the teachings of Carine by incorporating the internal standard. An internal standard is useful for correcting for variability during quantification.
Conclusion
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/MICA JILLIAN EINHORN/Examiner, Art Unit 2881
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881
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