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 .
Specification
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 1-15 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.
In claim 1, the limitation “the air-breathing aperture formed into the PCB” is confusing because earlier the claim only specified that the PCB had an aperture, not an air-breathing aperture. This is also confusing because “the air-breathing aperture” (emphasis added) would presumably mean we are referring to the air-breathing aperture of the biofuel cell, which is apparently not the case.
In claims 2 and 3, the recitation of “an external layer having an external layer air-breathing aperture” (emphasis added) is confusing because claim 1 presumably already set forth this feature.
In claims 2 and 3, the recitation of “both electrodes” and “the bioelectrodes” do not have defined meaning in the claims. It is presumed in both cases that the applicant is referring to the combined bioanode and biocathode, but if so the applicant should just make that explicit.
In claims 2 and 3, the recitation “the PCB…has an air-breathing aperture opposite the external layer” is just repeating limitations already set forth in claim 1.
In claims 2 and 3 last line of the claims, the phrase “and is connected to the bioelectrodes” is confusing for a couple of reasons. First, it is unclear if the claim is saying the PCB is in general connected to the bioelectrodes or just the PCB “on the same side as the external layer”. Second, it is unclear why the claims are saying the PCB is connected to the bioanode (i.e. the bioelectrodes) when it clearly is not (i.e. element 12 is not connected to element 2 in fig. 2 and 3). It makes sense to suggest the PCB is connected to the biocathode or to the biofuel cell in general (although claim 1 already did that, so such an interpretation would be redundant), but not to both bioelectrodes.
In claim 4, the limitation “the external layer air-breathing into the biofuel cell” is confusing both because the word “aperture” was omitted and because the external layer wasn’t “into the biofuel cell” but a part of the biofuel cell (see claim 1).
In claim 8, “the GDL air-breathing aperture” lacks antecedent basis. Moreover, for the first use of an acronym like GDL, applicant should define what the acronym is explicitly referring to.
In claims 9 and 10, the scope of “lowest environmental impact means” is entirely unclear. For example, the term “lowest” implies there is one and only one means that has the lowest impact. It is unclear if applicant even knows that lowest possible mechanism would even be. Also claim 10 further modifies this with either biodegradable or snap-fit means. Both of these can’t be the lowest, so which is it.
Furthermore in claim 9, for the first use of an acronym like ACF, applicant should define what the acronym is explicitly referring to.
In claims 12 and 14, it is unclear why “external layer” is in parenthesis. It would appear the claims need the “external” to distinguish this aperture from the PCB aperture, but clarification is requested.
Claims 5-7, 11, 13, and 15 are indefinite because they depend from indefinite claims.
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.
Claim(s) 1-8 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Le Goff (WO 2019/234573) in view of Shu et al (US 2006/0246336). For the rejection over Le Goff, the examiner will rely on the English language translation of US 2021/0249676.
With respect to claim 1, Le Goff discloses an electronic device (par. 0001) comprising a biofuel cell, where the biofuel cell comprises an external layer air-breathing aperture (GDL 9). See fig. 1 and par. 0077 and 0078. Le Goff does not explicitly disclose the use of a PCB attached to the biofuel cell.
Shu teaches in an alternate electronic device that it was conventional to have the fuel cell device and the electronic devices separate (par. 0002) and Shu taught integrating that by having the fuel cell 40 itself attached to the PCB(s) 20 of the electronic device. Shu further suggests that there is at least one PCB board (20B or 20E) where an aperture (40A, 40E) is placed opposite whatever gas/liquid inlet is needed for the fuel cell itself. See fig. 1 and 2 and par. 0003 and 0010-0012. It would have been obvious to one of ordinary skill in the art at the time of the filing to utilize the teaching of Shu for the electronic device of Le Goff in order to create an integrated device with the power source and devices being powered on one structure. Moreover, it is further obvious to utilize Shu with Le Goff because PCBs can then provide the electrical terminals that permit the power to be utilized.
With respect to claims 2 and 3, the biofuel cell of Le Goff comprises a bioanode 5 with an external layer 9 and a biocathode 7 also having an external layer 9’ where both 9 and 9’ are gas permeable (i.e. apertures). In addition, the bioanode and biocathodes have frames 3, 3’ defining apertures (i.e. the holes in 3, 3’ in fig. 1) that is the size of the anode and cathode. Le Goff further teaches the bioanode and biocathode are separated by a cellulose paper which is the same component that the present invention evidences is microfluidic. See par. 0073 (sentence about the porous paper) and 0077 and compare with specification p. 5, ll. 7 and 8.
With respect to the bioanode being in contact with either the skin of a user or a reservoir, this further constitutes the intended use of the apparatus and intended use need not be given any further due consideration for the electronic device itself.
For the PCB limitations, Shu teaches that the apertures 40A, 40E) should opposite whatever aperture structure is present in the fuel cell (fig. 2).
With respect to claim 4, Shu teaches the air-breathing aperture (40A, 40E) is a hole (fig. 2). Also the GDL layer 9 of Le Goff is a plurality of pores or at least one hole.
With respect to claim 5, Le Goff shows in fig. 1 that the bioelectrodes are made in frames 3 and 3’ with an aperture the same size as pellets 5 and 7. This constitutes an aperture for the external layer 9. Shu shows in fig. 2 that the aperture 40A, 40E for either of the electrodes should be at least the same size or more of fuel cell itself in order to make sure the fuel cell has full exposure to the inlet gases/liquids. One of ordinary skill in the art would have made the hole in the PCB at least as large as the aperture defined by frame 3 of Le Goff so as to not limit the cells access to either the glucose solution or the O2.
With respect to claim 6 and 7, the holes 40A, 40E of Shu are clearly permeable to oxygen. Alternatively, Le Goff teaches that this entire biofuel cell should be encased in a protective film that preserves the diffusion of oxygen through it (par. 0078). Because this protective film would be the outermost part of the fuel cell, it would be exposed in the PCB aperture of Shu. This constitutes the PCB being “equipped with a material that is permeable to oxygen” and this material would be a membrane.
With respect to claim 8, Shu also discloses vias 41, 43 of layer 20C, 20D that allow the cathode and anode fuel to reach the electrodes (fig. 2 and par. 0012). This would constitute a plurality of contiguous holes in the PCB itself and these holes constitute a grid opposite the GDL air-breathing aperture of the cell of Le Goff.
With respect to claim 15, Le Goff is an enzymatic fuel cell using GOx or FAD-GDH (par. 0078).
Claim(s) 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Le Goff in view of Shu as applied to claim 1 above, and further in view of Neudecker et al (US 8,599,572).
With respect to claim 9, Le Goff and Shu set forth all the limitations of the claims but Shu did not explicitly disclose how the fuel cell is attached to the PCB. Neudecker teaches an alternate electrochemical based power source (battery) attached to a PCB and explicitly suggested that the connection between the electrochemical cell 102 and the PCB 101 can be made with components such as anisotropic conductive film (ACF). See fig. 2 and col. 10, l. 62- col. 11, l. 7. It would have been obvious to one of ordinary skill in the art at the time of the filing to utilize the attachment means of Neudecker for the electronic device of Le Goff and Shu because the utility of known attachment means in similar applications requires only routine skill in the art. With respect to the ACF being a “tape”, it is presumed this material is generally considered to be in tape form or is a conventional variant of an ACF.
With respect to claims 10-14, it is noted these claims only further define the attachments means when biodegradable or lowest environmental impact means is chosen from claim 9. These claims don’t further limit the invention when ACF is chosen as the attachment means of claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chang et al (US 2006/0112538), Hussain (US 2012/0019214), and JP 2005-340166 all disclose alternate means of fixing fuel cells to PCBs.
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/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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