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 .
Status of the Claims
The Amendment filed July 6th, 2026 has been entered. Claims 1, 3-5, and 7 have been amended. Claims 14-15 have been added. Claim 13 has been canceled. Claims 1-12 and 14-15 are currently examined herein.
Status of the Rejection
All U.S.C. 112(f) claim interpretations along with U.S.C. § 112(b) and U.S.C. § 103 rejections from the previous office action are withdrawn in view of the amendments.
New grounds of claim objection and rejection under 35 § U.S.C 112(a) and 35 § U.S.C 112(d) are necessitated by the Applicant’s amendments.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3, please amend “a first operation of generating a first potential difference” to “[[a]] the first operation of generating [[a]] the first potential difference” and “a second operation of generating a second potential difference” to “[[a]] the second operation of generating [[a]] the second potential difference”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 and 14-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 14, and 15 recite “a power supply controller”, which is not supported in the specification/figures. The specification does not explicitly disclose the use of a “controller”, “a power supply controller”, or structures associated with a controller, such as a cpu/processor. Therefore, claim 1 is a new matter. Claims 2-12 are further rejected by virtue of their dependency upon and because they fail to cure the deficiencies of indefinite claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 3, the limitation “wherein the power supply controller mutually switches between a first operation of generating a first potential difference between the measurement object electrode and the measurement film electrode using the measurement object power supply and the measurement film electrode using the measurement object power supply and the measurement film power supply and a second operation of generating a second potential difference between the measurement object electrode and the measurement film electrode using the potential difference generation unit” is already captured by the amendments in independent claim 1 and does not narrow the claims further.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant's arguments, see Remarks pgs. 10-11, filed 07/06/2026, with respect to the 35 U.S.C. 112b and 35 U.S.C 103 rejections and amended claims have been fully considered.
Applicant’s Argument #1:
Applicant has amended independent claim 1 to incorporate the limitations of claim 13, which was not rejected by 103. Applicant has also amended “control unit” to “controller”, which is a structured term well-recognized by those skilled in the art as denoting a class of physical structures (including a processor executing software).
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection above. In addition, although Applicant argues that a “controller” is well known in the art, a “controller” can vary in scope from a potentiostat, power supply, or a different voltage source, and the specification/figures do not support what “power supply controller” is used. Thus, “a power supply controller” is considered a new matter.
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.
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/R.L.G./Examiner, Art Unit 1795
/SHIZHI QIAN/Primary Examiner, Art Unit 1795
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