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 .
Claims Status
Claims 1-14 and 16-20 are pending:
Claims 10-14 are rejected.
Claims 1-9 and 16-20 have been withdrawn.
Response to Amendments
Applicant’s amendments filed 04/06/2026 have been entered. Amendments to the claims overcome claim objections and §103 rejections, partially overcomes §112b rejections as previously set forth in the non-final Office Action mailed 01/06/2026.
Amendments have necessitated new grounds of rejection.
Response to Arguments
Applicant’s arguments filed 04/06/2026 have been entered. Arguments were fully considered.
On pgs. 6-7 of Applicant’s arguments, Applicant argues that:
In the Action, claims 10-15 were rejected under 35 U.S.C. §103 as allegedly being unpatentable over Japanese Patent Application Publication No. 2008-263847 to Hakoda et al. (hereinafter, "Hakoda") in view of Korean Patent Application Publication No. 2021-0058725 to Kim et al. (hereinafter, "Kim"). Applicant respectfully submits that independent claim 10 is patentable over the references of record, including Hakoda and Kim, for at least the reasons discussed in detail infra.
As an initial matter, Applicant has amended independent claim 10 herein to further define and more clearly distinguish the present technology. In particular, as amended, independent claim 10 now requires, inter alia, that "the first electrode pattern and the second electrode pattern are printed on an electrode structure." Support for this amendment can be found, for example, in the as-published Application at paragraph [0051].
Neither Hakoda nor Kim teach or suggest this limitation. Although both Hakoda and Kim generally mention electrodes, neither discloses nor even suggests electrodes that "are printed on an electrode structure," as now recited in independent claim 10. Instead, Hakoda teaches that its rod-shaped electrodes are disposed within a suspension container and are oriented perpendicularly to the direction of flow of the medium passing through the container. Id. at paragraph [0023]. Thus, Hakoda does not disclose electrode patterns printed onto an electrode structure.
Similarly, Kim also fails to disclose this feature. Instead, Kim teaches a first electrode 110 and a second electrode 120 configured as concentric cylinders with drain holes 112 along the outer surface of the first electrode 110. See, for example, FIGS. 2(a) and 2(b) of Kim, reproduced below.
This argument is moot because amendments have necessitated new grounds of rejection.
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.
Claim 12 is 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 “an electrical power controlling unit for generating a fringe field by applying electrical power to the first electrode pattern when the thickness of the biofilm is examined and is greater than a predetermined value”; the limitation “applying…” implies a step of applying during operation which is directed to a method/process step. Reciting a method/process step in an apparatus/system claim is not per se wrong however it is unclear what means or mechanism performs the function of examining the biofilm thickness.
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.
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.
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.
Claims 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hakoda (JP 2008-263847) in view of Kim (KR 2021-0058725) and further in view of Yang (CN 101343613).
Regarding claim 10, Hakoda teaches a water treatment device (cell separation device, see ABS; the recitation of “water” is recited as an intended use) comprising: a first electrode pattern (comb-like electrodes 4b) including a plurality of electrode fingers extending in one direction (see Fig. 2); a second electrode pattern (comb-like electrodes 4a) which is provided between the plurality of electrode fingers provided in the first electrode pattern to form an interdigitated pattern with the first electrode pattern (see Fig. 2); and …a biofilm (cell suspension) which is provided on the surface of at least one of the first electrode pattern and the second electrode pattern (the living cell X is adsorbed by the respective straight rod-shaped electrode portions 4a and 4b), wherein the biofilm is provided in the flow path of raw water or in a chamber into which raw water is introduced so that the biofilm is brought into contact with raw water to be treated (cell suspension container 2 containing a cell suspension liquid applied to treatment tank 3 comprising electrodes 4, see Fig. 1), thereby removing organic pollutants in raw water (Hakoda teaches all of the claimed structure and therefore capable of performing function), and a fringe field (a gradient of electric field) …to regulate growth of the biofilm (this is an inherent characteristic of controlling the electric field).
Hakoda does not teach (1) that both the first electrode pattern and the second electrode pattern are covered with an electrical insulating layer; (2) that the fringe field is generated between the first electrode pattern and the second electrode pattern; and (3) that the first electrode pattern and the second electrode pattern are printed on an electrode structure.
In a related field of endeavor, Kim teaches an apparatus (see ABS) comprising (1) wherein both the first electrode pattern and the second electrode pattern are covered with an electrical insulating layer (an insulating layer formed outside the first electrode and the second electrode); and (2) the fringe field is generated between the first electrode pattern and the second electrode pattern (the system uses a ground electrode and a ground electrode facilitates the flow of current (a field flow) between itself and another electrode).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the electrodes of Hakoda by incorporating the insulating layer of Kim because said layer helps to prevent short-circuiting between the electrodes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify one of the electrodes having AC power of Hakoda and configuring as a ground electrode as disclosed by Kim to produce a field gradient between the first electrode and the second electrode pattern because it has the benefit of enhanced safety and stability in an electrical system.
In a related field of endeavor, Yang teaches a cell electrofusion microelectrode array chip device (see ABS) comprising a first electrode pattern and a second electrode pattern that are printed on an electrode structure (array chips to flexible transparent polyimide film as substrate, using flexible printed circuit board processing technology (Flexible Printed Circuit board (FPC), on the flexible transparent polyimide film substrate to form a vertical layered structure formed by gold coating a copper foil layer of a polyimide film with a copper foil layer of a gold plating layer from up to down; interdigitated micro-electrode group formed on polyimide film by etching the copper foil layer on the lower surface of the structure, the interdigitated array microelectrode set is composed of two crossed with each other and are not pectinate micro-electrode array electrode contact, the electrical structure is not connected with each other; the pectinate micro-electrode array electrode etching copper foil layer form a lead layer connected with the upper surface of the chip through hole, pad bonding lead on the lead layer of introducing external electrical stimulation signal, the electrode group inside the micro-channel micro-electrode is a working channel, see pg. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the electrodes of Hakoda by rearranging the first electrode pattern and the second electrode pattern printed on an electrode structure as disclosed by Yang because it applying a known technique for producing interdigitated electrode arrays obviously resulting in achieving precise spacing, repeatability and manufacturability. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Regarding claim 11, Hakoda, Kim and Yang teach the water treatment device of claim 10, wherein the biofilm is provided on the insulating layer (Kim, formation on the apparatus 100, an insulating layer may be formed outside the first electrode and the second electrode) (Hakoda as modified by Kim teaches the claimed limitation).
Regarding claim 12, Hakoda, Kim and Yang teach the water treatment device of claim 10, further comprising an electrical power controlling unit (Hakoda, the voltage applied to the electrode 4 by the control unit 10) for generating a fringe field by applying electrical power to the first electrode pattern when the thickness of the biofilm is greater than a predetermined value (see §112b).
Regarding claim 13, Hakoda, Kim and Yang teach the water treatment device of claim 10.
The combination of references does not teach a third electrode pattern and a fourth electrode pattern which are provided on a first side opposite a second side of the electrode structure on which the first electrode pattern and the second electrode pattern are provided, wherein the third electrode pattern includes a plurality of electrode fingers extending in one direction, and the fourth electrode pattern is provided between the plurality of electrode fingers provided in the third electrode pattern to form an interdigitated pattern with the third electrode pattern, wherein a fringe field is generated between the third electrode pattern and the fourth electrode pattern.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the electrodes of Hakoda (as modified by Kim) by duplicating said electrodes and arranging said electrodes opposite because doing so improves the overall efficiency and sensitivity of the electrochemical system.
Regarding claim 14, Hakoda, Kim and Yang teach the water treatment device of claim 13….
Hakoda and Kim, both, including only a single power supply unit therefore the combination does not teach wherein at least two electrical power unit is provided.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the power supply of Hakoda (as modified by Kim) by duplicating said power supply unit to provide at least two electrical power units because doing so for the benefit providing a back up unit for maintenance without shutdown. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Harza, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04).
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 EKANDRA S. MILLER-CRUZ whose telephone number is (571)270-7849. The examiner can normally be reached M-Th 7 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L. Lebron can be reached at (571) 272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773
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