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Claims 1-9 and 16-20 have been withdrawn.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Applicant's submission filed on 09/03/2026 has been entered.
Response to Arguments
Applicant’s arguments filed 09/03/2026 have been entered. Arguments were fully considered.
On pgs. 6-9 of Applicant’s arguments, Applicant argues that:
In the Action, claims 10-14 were rejected under 35 U.S.C. 103 as allegedly being unpatentable based on JP 2008-263847 to Hakoda ("Hakoda") in view of KR 2021-0058725 to Kim ("Kim") and CN101343613 to Yang ("Yang"). Applicant has amended independent claim 10 herein to further define and more clearly distinguish the present technology.
As amended, independent claim 10 now requires, inter alia, "a third electrode pattern and a fourth electrode pattern which are provided on a first side opposite a second side of an 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, wherein the first electrode pattern and the second electrode pattern are printed on the second side of the electrode structure, and the third electrode pattern and the fourth electrode pattern are printed on the first side of the electrode structure, and wherein at least two electrical power units are provided so that one and the other of the electrical power units are respectively connected with the first electrode pattern and the third electrode pattern, and the second and fourth electrode patterns are grounded."
Support for this amendment can be found, for example, in now-canceled dependent claims 13 and 14 and in paragraph [0060] of the as-published Application (US 2024/0051856). Applicant respectfully submits that independent claim 10, as amended, is patentable over the references of record, including Hakoda, Kim, and Yang, alone or in any combination, for at least the reasons discussed in detail infra.
As recited in amended independent claim 10, the first and second electrode patterns are printed on one side of the electrode structure, while the third and fourth electrode patterns are printed on the other side of the electrode structure. The first and second electrode patterns are formed in an interdigitated pattern, which generates a fringe field, and the third and fourth electrode patterns are also formed into an interdigitated pattern, which forms a fringe field on the opposite side of the electrode structure. Further, independent claim 10, as amended, also requires at least two electrical power units, with one and the other respectively connected to the first and third electrode patterns (on opposite sides of the electrode structure), with the second and fourth electrode patterns each being grounded.
Thus, the first and second electrode patterns on one side of the electrode structure and the third and fourth electrode patterns on the other side of the electrode structure - each connected to a different electrical power source - can be driven independently of one another. Therefore, not only can different fringe fields be formed on each side of the electrode structure, but the growth of biofilms on each side can also be appropriately controlled by, inter alia, applying different electrical conditions to each side. Additionally, by utilizing both sides of the electrode structure, the contact surface area between the biofilm and the raw water is effectively doubled, thereby improving the overall water treatment efficiency achievable by the present technology.
In contrast, none of the cited references - alone or in combination - disclose each and every feature of independent claim 10, as amended. Instead, Hakoda teaches a cell separation device for separating multiple types of cells by utilizing differences in the dielectrophoretic properties of the cells. Electrode 4 of Hakoda consists of a pair of comb-shaped electrodes 4A and 4B placed within a single processing tank. The electrodes are connected to a single AC power source to form an electric field gradient around the electrodes, which is used to apply dielectrophoretic force to suspended cells to temporarily absorb specific cells to the electrode. However, Hakoda does not teach or suggest a configuration in which two separate interdigitated electrode pairs are printed on opposite sides of a single electrode structure. Further, Hakoda does not teach or suggest different power sources connected to one electrode in each pair on opposite sides of the electrode structure that may be used to independently control the separately generated electric fields.
Kim relates to a device for removing biofilms or inhibiting their formation using AC voltage, DC voltage, or a superposition of these voltages. Kim discloses a configuration in which an insulating layer is formed on the outer side of an electrode and a configuration in which one electrode is used as a ground electrode. The electrodes of Kim mainly consist of cylindrical electrodes spaced apart from each other, grid-type electrodes, or electrodes placed inside a pipe.
However, Kim does not disclose a configuration in which first/second electrode patterns and third/fourth electrodes patterns are printed on opposite sides of a single electrode structure. Furthermore, Kim also fails to teach or suggest a configuration in which separate electrical power sources are connected to each pair of electrodes provided on both sides of the electrode structure, thereby enabling independent control of each pair of electrodes, permitting formation of different fringe fields.
Yang relates to a microelectrode array chip for cell electrofusion in which comb-shaped microelectrodes are formed on a flexible polyimide film. In Yang, the intersecting comb-shaped microelectrode group is formed on a lower surface of a polyimide film using an FPC process and placed in a cell electrofusion pool. However, Yang's system is designed to apply a non-uniform electric field to cells to allow them to absorb to microelectrodes and perform electrofusion. Yang is not related to the technology for controlling the growth of biofilms in contact with raw water subjected to water treatment and is therefore not analogous art.
In addition, the structure formed on the opposite side of the polyimide film of Yang only includes lead wires and connection structures for introducing external electrical stimulation signals. It does not form independent interdigitated electrode pairs on each side of the electrode structure. Accordingly, none of Hakoda, Kim, nor Yang, alone or in any combination, disclose or suggest each of the limitations of independent claim 10 as amended.
Further, as discussed supra, Applicant has amended independent claim 10 to include the limitations of now-canceled dependent claims 13 and 14. In the Action, the Patent Office alleged that the addition of a third and fourth electrode pattern (as recited in claim 13) and the addition of at least two electrical power units (as recited in claim 14) were obvious since, for example, "[t]he mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art." Action at p. 8.
However, Applicant respectfully submits that the electrode structure recited in independent claim 10 is clearly distinguished from a structure formed by simply replicating the same electrode or electrode configurations. More particularly, as recited in claim 10, the first/second electrode patterns and the third/fourth electrode patterns are not simply replicated, but are specifically printed on opposite sides of a single electrode structure. Further, at least one of the two electrical power units is connected to the first electrode pattern and the other electrical power unit is connected to the third electrode pattern, while the second and fourth electrode patterns are grounded. Accordingly, the two electrical power units are not simply a duplicated (i.e., main andbackup) power supply connected to the same load, but are intended to independently drive each pair of electrodes provided on opposite sides of the claimed electrode structure.
As discussed supra, the specific configuration of the electrode structure recited in independent claim 10 permits independent control of the interdigitated electrode pairs (first/second and third/fourth) printed on either side of the electrode structure. As a result, the growth of biofilms on either side of the electrode structure may also be controlled independent of one another, thereby enhancing the efficiency of wastewater treatment performed with the claimed structure.
Even if arguendo one skilled in the art were to combine Hakoda, Kim, and Yang as suggested in the action, the modified structure would still not include each and every element recited in independent claim 10. Specifically, the proposed modifications would not permit a complete configuration in which an additional interdigitated electrode pair is printed on the opposite side of the electrode structure and a separate electrical power unit is connected to the driving electrode on each side to independently control the growth of biofilms on both sides.
In particular, none of the cited references disclose or suggest that both sides of a single electrode structure may be exposed to different water treatment environments, nor any need to independently control the fringe field of each side according to the biofilm growth state of both sides. None of the cited references provide any suggestion or motivation that would lead one skilled in the art in the direction, absent impermissible hindsight.
Thus, for at least these reasons, Applicant respectfully submits that independent claim 10, as amended, is patentable over the references of record, including Hakoda, Kim, and Yang, alone or in any combination.
Dependent claim 11 depends from independent claim 10 and recites additional patentable features. Thus, claim 11 should be allowable on its own merits, as well as for depending from an allowable base claim.
This argument is moot because amendments have necessitated new grounds of rejection.
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 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hakoda (JP 2008-263847) in view of Kim (KR 2021-0058725) in view of Yang (CN 101343613) and further in view of Holland (US 2006/0175200).
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; (4) a third electrode pattern and a fourth electrode pattern which are provided on a first side opposite a second side of an 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, wherein the first electrode pattern and the second electrode pattern are printed on the second side of the electrode structure, and wherein the third electrode pattern and the fourth electrode pattern are printed on the first side of the electrode structure, and wherein at least two electrical power units are provided so that one and the other of the electrical power units are respectively connected with the first electrode pattern and the third electrode pattern, and the second and fourth electrode patterns are grounded.
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.).
In a related field of endeavor, Holland teaches a method and apparatus for removing contaminants from conduits and fluid columns (see ABS) comprising a third electrode pattern and a fourth electrode pattern which are provided on a first side opposite a second side of an electrode structure on which the first electrode pattern and the second electrode pattern are provided (See Fig. 8), 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 (electrode array) with the third electrode pattern, wherein a fringe field (magnetic flux, see ¶17) is generated between the third electrode pattern and the fourth electrode pattern, …and wherein at least two electrical power units (multiple power supplies, see ¶51) are provided so that one and the other of the electrical power units are respectively connected with the first electrode pattern and the third electrode pattern, and the second and fourth electrode patterns are grounded (“multiple power supplies may be utilized to apply electrical energy to the electrodes of the contaminant separation sectors within a single reactor housing to produce an electric field that causes contaminants carried within the magnetically treated feed stream to separate from the fluid column, and it may be desirable to energize a first contaminant separation sector with a first power supply and energize a second contaminant separation sector with a second power supply”, see ¶51).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the printed electrodes of Nakoda (as modified by Yang) by duplicating said electrodes to be third and fourth electrodes and providing at least two electrical power units are provided so that one and the other of the electrical power units are respectively connected with the first electrode pattern and the third electrode pattern, and the second and fourth electrode patterns are grounded as disclosed by Holland because multiple power supplies produce an electric field that causes contaminants carried within the magnetically treated feed stream to separate from the fluid column, and it may be desirable to energize a first contaminant separation sector with a first power supply and energize a second contaminant separation sector with a second power supply (Holland, see ¶51).
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).
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.
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
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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/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773
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