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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-7 and 13-20 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 6-7 and 13-20 each recites the limitation “wherein the sensor is used in such a manner” in line 2 of each claim respectively. This recites a process step within an apparatus claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite (See MPEP 2173.05(p)(II)).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1, 5-7, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kosugi (JP 2020019985 A; citations refer to the accompanying English machine translation) in view of Hatanaka (US 20150070764 A1) and Kanesaka (US 20170110665 A1).
With respect to claim 1, Kosugi discloses an electrochemical sensor (see page 5 and Fig. 3: electrochemical sensor #7) comprising:
a substrate (see page 5 and Fig. 3: electrochemical sensor substrate #9);
an electrode chip (see page 5 and Fig. 3: carbon electrodes #1a and #1b that are shaped like a chip) including a base material (see page 4 and Fig. 3: resin layer #2 appears to be a part of carbon electrodes #1a and #1b) and a film (see page 3: molten salt electrolytic carbon plating film #3 appears to be part of electrodes #1a and #1b where the film #3 is formed using a LiCl-KCl-CaCl bath); and
an insulating resin configured to seal at least part of a surface of a conductive member included in the electrode chip (see page 5 and Fig. 3: an insulating resin cover #8 is provided over the carbon electrodes #1a and #1b so as to cover conductive wires #10a and #10b. Carbon electrodes #1a and #1b are electrical connected to electrochemical sensor substrate #9 via conductive wires #10a and #10b),
wherein the insulating resin is provided so as to expose at least part of the film (see page 5 and Fig. 3: insulating resin cover #8 is provided such that it exposes at least part of molten salt electrolytic carbon plating film #3).
Kosugi does not specifically disclose a diamond thin film. Kosugi also does not specifically disclose when an exposed surface of the diamond thin film is measured by time-of-flight secondary ion mass spectrometry, an integrated value BL per unit area of ionic strength of organic matter with a molecular weight of 100 or more is 1.2 x 106 cts/sec or less.
Hatanaka teaches a diamond thin film (see paragraph 0493-0499: a diamond thin film such as a diamond-like carbon thin film is formed on a substrate #33 where electrodes #35 are formed with substrate #33).
The substitution of one known element, the film as taught by Kosugi, for a diamond thin film as taught by Hatanaka would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention since the substitution would have yielded predictable results, namely, to provide thermo-conductive properties to electrodes (Hatanaka: see [0499]).
Kosugi and Hatanaka do no specifically teach when an exposed surface of the diamond thin film is measured by time-of-flight secondary ion mass spectrometry, an integrated value BL per unit area of ionic strength of organic matter with a molecular weight of 100 or more is 1.2 x 106 cts/sec or less.
Kanesaka teaches measuring a film by time-of-flight secondary ion mass spectrometry (see paragraph 0245-0256 and 0328-0334: time of flight type secondary ion mass spectrometry (TOF-SIMS) to measure film), an integrated value BL per unit area of ionic strength of organic matter with a molecular weight of 100 or more is 1.2 x 106 cts/sec or less (see paragraph 0245-0256 and 0328-0334).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Kosugi and Hatanaka with the teachings of Kanesaka to have utilized time of flight type secondary ion mass spectrometry because it would have resulted in the predictable result of removing heavy organic ions that might adhere to electrodes (Kanesaka: see [0245]-[0256]; [0328]-[0334]).
With respect to claim 5, all limitations of claim 1 apply in which Kosugi further discloses wherein an oxide layer is provided on a surface of the insulating resin (see page 4: an oxide film is formed on #6).
With respect to claim 6, all limitations of claim 1 apply in which the combination of Kosugi in view of Hatanaka teaches wherein the sensor is used in such a manner that a test liquid containing protein is in contact with the diamond thin film (Kosugi: see page 1, it is widely known that sensor electrodes using carbon material can measure blood sugar levels where the film would come into contact with blood which is a liquid with protein within it; further the “use” limitation does not further distinguish the claimed sensor from the combination – see 112b rejection above).
With respect to claim 7, all limitations of claim 1 apply in which Kosugi in view of Hatanaka teaches wherein the sensor is used in such a manner that a test liquid containing bodily fluid, blood, or urine of an animal including human is in contact with the diamond thin film (the “use” limitation does not further distinguish the claimed sensor from the combination – see 112b rejection above).
With respect to claim 16, all limitations of claim 5 apply in which Kosugi in view of Hatanaka teaches wherein the sensor is used in such a manner that a test liquid containing protein is in contact with the diamond thin film (the “use” limitation does not further distinguish the claimed sensor from the combination – see 112b rejection above).
With respect to claim 20, all limitations of claim 5 apply in which Kosugi in view of Hatanaka teaches wherein the sensor is used in such a manner that a test liquid containing bodily fluid, blood, or urine of an animal including human is in contact with the diamond thin film (the “use” limitation does not further distinguish the claimed sensor from the combination – see 112b rejection above).
Claims 4, 12, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kosugi in view of Hatanaka and Kanesaka as applied to claim 1 above, and further in view of Kawarada (US 20190049401 A1).
With respect to claim 4, all limitations of claim 1 apply in which Kosugi, Hatanaka and Kanesaka do not specifically teach wherein the exposed surface of the diamond thin film is oxygen-terminated.
Kawarada teaches a diamond thin film whose exposed surface is oxygen-terminated (see paragraph 0073: diamond thin film #107 is made into a p-type semiconductor by means of partial oxygen termination treatment).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Kosugi, Hatanaka and Kanesaka with the teachings of Kawarada to have an exposed surface of a diamond thin film to be oxygen terminated because it would have resulted in the predictable result of converting a sensor device into being ion sensitive for pH value measurement (Kawarada: see [0073]).
With respect to claim 12, all limitations of claim 4 apply in which Kosugi further discloses wherein an oxide layer is provided on a surface of the insulating resin (see page 4: an oxide film is formed on #6).
With respect to claim 15, all limitations of claim 4 apply in which Kosugi in view of Hatanaka teaches wherein the sensor is used in such a manner that a test liquid containing protein is in contact with the diamond thin film (the “use” limitation does not further distinguish the claimed sensor from the combination – see 112b rejection above).
With respect to claim 19, all limitations of claim 4 apply in which Kosugi in view of Hatanaka teaches wherein the sensor is used in such a manner that a test liquid containing bodily fluid, blood, or urine of an animal including human is in contact with the diamond thin film (the “use” limitation does not further distinguish the claimed sensor from the combination – see 112b rejection above).
Allowable Subject Matter
Claims 2-3 and 8-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 13-14 and 17-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Allowable Subject Matter
The closest prior art of record, Kosugi, Hatanaka, and Kanesaka, does not teach or disclose “wherein when the exposed surface of the diamond thin film is measured by time-of-flight secondary ion mass spectrometry, an integrated value BS per unit area of ionic strength of organic matter with a molecular weight of less than 100 is 1.9 x 106 cts/sec or less” along with the other features of claim 2.
Conclusion
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/N.N.P./Examiner, Art Unit 3791
/MATTHEW KREMER/Primary Examiner, Art Unit 3791
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