DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on March 27, 2026. Claims 1-3 and 5-7 are pending in the application.
Status of Objections and Rejections
All rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by the amendments.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haishi (WO 2019/117112, machine translation used for citation; in particularly, see human translation for [0049]-[0050] by PTO STIC) in view of Shunichi (JP 2004/156928, machine translation used for citation).
Regarding claims 1-3, Haishi teaches an electrode (Fig. 1; p. 2: the electrode film 1) comprising: a substrate (Fig. 1; p. 2: a flexible substrate 2); a conductive carbon layer (Fig. 1; p. 2: a conductive carbon layer 4) in sequence toward one side in a thickness direction (Fig. 1),
wherein the conductive carbon layer includes sp2 bonded atoms and sp3 bonded atoms (p. 3: the conductive carbon layer 4 is formed of carbon having sp2 bonds and sp3 bonds; also see [0049] translated by STIC).
Haishi does not disclose wherein a ratio of the number of sp3 bonded atoms to a sum of the number of sp3 bonded atoms and the number of sp2 bonded atoms is 0.30 or more.
However, Haishi teaches the conductive carbon layer 4 is formed of carbon having sp2 bonds and sp3 bonds, having a graphite type structure and a diamond structure, and the ratio of sp3/sp2 is 0.05 or more and is 2.00 or less (p. 3; also see [0049]-[0050] translated by STIC), which overlaps the claimed range (e.g., when the ratio of sp3/sp2 is 50:50, the ratio of the number of sp3 bonded atoms to a sum of the number of sp3 bonded atoms and the number of sp2 bonded atoms would be 0.5).
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 Haishi by adjusting the ratio of the number of sp3 bonded atoms to a sum of the number of sp3 bonded atoms and the number of sp2 bonded atoms within the claimed range because it would provide good conductivity of the conductive carbon layer and wide potential window of the sensor; moreover, it has excellent in the film-forming property in low temperature (p. 3). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Haishi does not disclose a metal layer in sequence toward one side in a thickness direction with the substrate, the conductive carbon layer or wherein the metal layer is disposed on one surface of the conductive carbon layer in the thickness direction, and wherein an area ratio of the metal layer on the one surface of the conductive carbon layer is 95% or less (claim 1) or wherein the metal layer is a gold layer (claim 2) or wherein the metal layer has an island structure (claim 3).
However, Shunichi teaches enzyme sensors for electrochemical measurement by immobilizing enzymes on the sensor surface (¶2). The sensor support comprises a carbon substrate and a noble metal layer covering the carbon substrate in a sea-island manner (¶10) because molecules such as thiol are selectively adsorbed only on the surface of the noble metal, so that coating the carbon substrate with a noble metal layer in a sea-island manner enables immobilization of the enzyme and binds to the carbon surface (¶12). Said noble metal layer comprises gold (¶15). A process of forming a part of the Au-coated surface into a sea-island structure performed until the Au coverage became 60% (¶29), when overlaps the claimed range in claim 1.
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 Haishi by incorporating a gold layer in a sequence toward one side in a thickness direction on the conductive carbon layer and the substrate and having an island structure with controlled area ratio, i.e., Au coverage on the carbon support layer, as taught by Shunichi because the treatment would improve the electrical conductivity of the portion of the sensor support where the carbon is exposed and the efficiency of electron transfer (¶22). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Regarding claim 5, Haishi and Shunichi disclose all limitations of claim 1, but fails to teach wherein the area ratio is 70% or more.
However, Shunichi teaches a sensor comprising a carbon substrate and a noble metal layer covering the carbon substrate in a sea-island manner (¶10), using a process of forming a part of the Au-coated surface into a sea-island structure performed until the Au coverage became 60% (¶29).
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 Haishi by adjusting the area ratio, i.e., Au coverage on the carbon support layer, within the claimed range because the treatment would improve the electrical conductivity of the portion of the sensor support where the carbon is exposed and the efficiency of electron transfer (¶22). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Regarding claim 6, Haishi teaches the electrode further comprising: a metal underlying layer (Fig. 1; p. 2: a functional layer 3), which is disposed between the substrate and the conductive carbon layer (Fig. 1). As a result, the combination of Haishi and Shunichi would necessarily result in the substrate, the metal underlying layer, the conductive carbon layer, and the metal layer being disposed in sequence toward one side in the thickness direction.
Regarding claim 7, Haishi teaches wherein the substrate is a flexible film (Fig. 1; p. 2: flexible substrate such as a polymer film).
Response to Arguments
Applicant’s arguments have been considered and Examiner agrees with Applicant that Examples 4-5 in Table 3 show the synergetic results based on both sp ratio and area ratio (Response, p. 7, para. 5). However, the combination of these two features, i.e., both sp ratio and area ratio, should be within specific ranges to result in unexpected technical effect of increasing the signal-to-background ratio that supports non-obviousness. Claim 1 fails to show a commensurate in scope with the results as shown in Table 3. Based on the Examples 4 and 5 in Table 3, which result in the exceptional signal-to-background ratio (Table 3: 131 and 138), the sp ratio is between 0.30 and 0.35 and the area ratio is between 84% and 93%. Thus, Examiner suggests claim 1 be amended to recite the sp ratio between 0.30 and 0.35 and the area ratio between 84% and 93%. Examiner further suggests to delete claim 5, because in Table 3, when the sp ratio is 0.30 and the area ratio is 71% (Example 2) or when the sp ratio is 0.30 and the area ratio is 83% (Example 3), i.e., within the claimed ranges in claim 5, the signal-to-background ratio is not better than others outside these ranges (Table 3: Example 2, 36; Example 3, 47).
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 extension fee 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 CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached M-F: 8:30am - 5:30pm.
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/C. SUN/Primary Examiner, Art Unit 1795
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