DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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.
Claims 1-7, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hori et al (US 2018/0030499) in view of Slavcheva et al (Effect of sputtering parameters on surface morphology and catalytic efficiency of thin platinum films).
With respect to claims 1-5, Hori discloses a method of forming a glucose sensor (i.e. glucose probe or biosensor) [100] (Abstract; para 0002 and 0048), the method comprising providing a base substrate [21] of polyethylene terephthalate (PET) film, and forming an electrode layer [107] of Pt (e.g. platinum layer [107]) via sputtering over the base substrate [21] to a thickness of 100 nm (fig. 1; para 0008, 0046, 0073, 0075, and 0083). Hori further discloses the platinum layer [107] is sputtered (para 0073 and 0083), and is silent as to the platinum layer [107] being an oxide layer or having a reactive gas of oxygen used for the sputtering; thus the sputtering is without oxygen (e.g. “in the absence of oxygen”).
However Hori is limited in that a particular sputtering pressure for sputtering the platinum layer [107] of Hori is not suggested.
Slavcheva teaches a method for sputtering thin platinum films (Abstract), wherein the thin platinum films are sputtered to a thickness of 25-600 nm by using parameters of a sputtering pressure of 68 mTorr and a sputtering power of 50-1750 W (2.1 Deposition of the platinum films), with optimal parameters of sputtering power and sputtering pressure being respectively 100 W and 68 mTorr (Abstract), wherein the sputtering pressure being 68 mTorr and sputtering power of 100 W results in the platinum film having a desired surface roughness as evidenced by Applicant’s fig. 7. Slavcheva cites the advantage of using the sputtering power and sputtering pressure as providing thin platinum films that are homogenous, highly developed surface with columnar structure beneficial to electrochemical behaviour (Abstract; 4. Conclusions).
It would have been obvious to one of ordinary skill in the art to use the sputtering pressure taught by Slavcheva for sputtering the platinum layer [107] of Hori to gain the advantage of providing the platinum layer [107] being homogenous, highly developed surface with columnar structure beneficial to electrochemical behavior (such as in a glucose sensor of Hori). In addition it would have been obvious to one of ordinary skill in the art to use the sputtering pressure of Slavcheva for sputtering the platinum layer [107] of Hori since Hori fails to specify a particular sputtering pressure for sputtering the platinum layer [107], and one of ordinary skill would have had a reasonable expectation for success in making the modification since Slavcheva has demonstrated sputtering thin platinum films at thickness between 25-600 nm using the sputtering pressure of 68 mTorr.
With respect to claims 6 and 15, modified Hori further discloses the probe is formed by a continuous process that uses a rotator (i.e. conveyor) to continuously rotate (i.e. move) the base substrate [21] through a sputter chamber for sputtering the platinum layer [107] (para 0072-0073 and 0082-0083).
With respect to claims 7 and 9, modified Hori further discloses sputtering an adhesive layer (i.e. first adhesion-promoting layer) [105] of Ti over the base substrate [21] (fig. 1; para 0072 and 0083).
Claims 8, 10-11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hori et al (US 2018/0030499) and Slavcheva et al (Effect of sputtering parameters on surface morphology and catalytic efficiency of thin platinum films) as applied to claim 7 above, and further in view of Lee et al (US Patent No. 5,981,390).
With respect to claims 8 and 11, the combination of references Hori and Slavcheva is cited as discussed for claim 7. However the combination of references is limited in that Hori teaching a second layer between the first adhesion-promoting layer [105] of Ti and the platinum layer [107] is not suggested.
Lee teaches a method of depositing a first platinum layer in an oxidation atmosphere to form an oxygen-containing platinum layer (i.e. PtO layer), and then depositing a second platinum layer in a complete inert atmosphere (e.g. absence of oxygen) directly on the PtO layer in order to help glue or adhere the second platinum layer to a substrate or underlayer and form an electrode (abstract), wherein fig. 1B teaches the first platinum layer is formed by sputtering with an oxidation atmosphere (i.e. presence of oxygen) via gas flow, and then sputtering the second platinum layer with only an inert atmosphere via gas flow (Example), wherein the PtO layer has a degree of surface-roughness promoting for the second platinum layer. Lee cites the advantage of sputtering the first platinum layer in the presence of oxygen, followed by sputtering the second platinum in the absence of oxygen as resulting in effectively gluing the second platinum layer to the substrate to form an electrode while preventing voids and hillocks forming in addition to preventing Ti from diffusing into the platinum (col. 2, lines 27-37; col. 7, lines 57-61; col. 8, lines 28-36).
It would have been obvious to one of ordinary skill in the art to sputter a layer of platinum in presence of oxygen as taught by Lee between the first adhesion-promoting layer) [105] of Ti and platinum layer [107] of the combination of references to gain the advantages of effectively gluing the platinum layer [107] to the base substrate [21] to form an electrode while preventing voids and hillocks forming in addition to preventing Ti from diffusing into the platinum layer [107].
With respect to claims 13 and 14, the combination of references Hori, Slavcheva, and Lee has Hori teaching the platinum layer [107] has a thickness of 100 nm (para 0083), and Slavcheva teaching to use the sputtering pressure of 68 mTorr when sputtering a platinum layer having a thickness of 25-600 nm (2.1 Deposition of the platinum films).
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hori et al (US 2018/0030499) in view of Yoshii (JP 63300954, machine translation cited below).
With respect to claims 16 and 17, Hori discloses a method of forming a glucose sensor (i.e. glucose probe or biosensor) [100] (Abstract; para 0002 and 0048), the method comprising providing a base substrate [21] of polyethylene terephthalate (PET) film, and forming an electrode layer [107] of Pt (e.g. platinum layer [107]) via sputtering over the base substrate [21] to a thickness of 100 nm (fig. 1; para 0008, 0046, 0073, 0075, and 0083). Hori further discloses the platinum layer [107] is sputtered (para 0073 and 0083), and is silent as to the platinum layer [107] being an oxide layer or having a reactive gas of oxygen used for the sputtering; thus the sputtering is without oxygen (e.g. “in the absence of oxygen”).
However Hori is limited in that a particular sputter pressure for sputtering the platinum layer [107] of Hori is not suggested.
Yoshii teaches a method of sputtering an electrode of platinum in absence of oxygen onto a substrate to form an “enzyme sensor” (e.g. claimed “biosensor”) (para 0001), similar to the method of Hori. Yoshii further discloses the platinum is deposited with a sputter pressure of about 0.5x10-2 to about 0.5x10-1 Torr (~5 mtorr to ~50 mTorr) (para 0001; also p. 2, left col. of the JP, annotated box), with it being held that in the case where the claimed ranges (“50 mTorr or less” for claim 16 or “about 30 to about 50 mTorr” for claim 17) “overlap or lie inside ranges disclosed by the prior art” (~5 mTorr to ~50 mTorr), a prima facie case of obviousness exists (MPEP 2144.05, I).
It would have been obvious to one of ordinary skill in the art to use the sputter pressure of Yoshii as the sputter pressure of Hori since Hori fails to specify a particular sputter pressure, and one of ordinary skill would have had a reasonable expectation for success in making the modification since Yoshii has shown success in using the sputter pressure to deposit an electrode of platinum for a biosensor.
Response to Arguments
Applicant’s Remarks on p. 5-8 filed 8/6/2025 are addressed below.
103 Rejections
On p. 5-7, Applicant argues similar from p. 5-6 Remarks 11/18/2024 and p. 5-7 Remarks 2/27/2025 that Hori may teach the Pt layer is an oxide layer despite being silent to oxygen gas being used to sputter the Pt layer at para 0073 and 0083, and cites two non-patent literatures filed 8/6/2025 showing oxides of Pt may be conductive.
The Examiner respectfully disagrees since Hori teaches the Pt layer is used to form an electrode at para 0083 (which must be electrically conductive), whereas platinum oxide is electrically insulating. Thus Hori being silent on oxygen being present to sputter the Pt layer to form the electrode is directed to oxygen not being present (or is absent) in order to form the Pt layer that is electrically conductive for the electrode. In contrast, Applicant’s suggestion is that Hori’s silence of oxygen being present means that oxygen would be present to form electrically insulating Pt-oxide as the electrically conductive electrode, e.g. the electrode would now be an insulator, which is opposite to the teaching of Hori. The two non-patent literatures (npls) filed by Applicant are noted, however are each directed to specific circumstances and oxygen amounts being present, and neither npl overcomes the plain teaching of Hori explicitly being silent as to any oxygen being present, nor why oxygen would necessarily be present in Hori despite being silent. Therefore as previously discussed (see Office Actions 11/27/2024 and 5/7/2025), one of ordinary skill would read Hori as directed to sputtering the Pt layer in absence of oxygen to form the electrode (as recited by claim 1), since reading Hori (as Applicant argues) to have oxygen necessarily being present then impermissibly adds information to the pages of Hori that is not present.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794