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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 2 and 4 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 2 recites the limitation “one side” in line 2 of the claim. It is unclear whether the recitation of “one side” in claim 2 is the same as or different from the previously recited “one side” in line 2 of claim 1. For the purpose of examination, Examiner interprets these recitations to be the same. Examiner suggests amending the limitation in claim 2 to recite “the one side”.
Claim 4 recites the limitation “one side” in line 3 of the claim. It is unclear whether the recitation of “one side” in claim 4 is the same as or different from the previously recited “one side” in line 2 of claim 1. For the purpose of examination, Examiner interprets these recitations to be the same. Examiner suggests amending the limitation in claim 4 to recite “the one side”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US 2019/0310223 A1), as evidenced by Applicant’s instant specification with respect to claim 1.
Regarding claim 1, Smith teaches an electrode (an electrode, Fig. 1, para. [0070], [0082]) comprising: a substrate (a substrate, Fig. 1, para. [0070], [0082]); a metal underlying layer (a nickel layer on the substrate, Fig. 1, para. [0070], [0082]); and an electrically conductive carbon layer in sequence toward one side in a thickness direction (a layer of carbon nanofibers on the nickel layer, Fig. 1, para. [0070], [0082]; the substrate, the nickel layer, and the carbon nanofibers are in sequence toward one side in a thickness direction, Fig. 1; Examiner notes that the carbon nanofibers are electrically conductive since the carbon nanofiber electrode sensors are tested using electrochemical techniques to determine a response current proportional to an analyte in a solution, para. [0077], [0086]-[0088], [0096]).
Smith teaches the that the metal underlying layer is the nickel layer, and therefore fails to teach the metal underlying layer having a melting point of 450°C or less.
However, Smith teaches an alternative embodiment wherein the carbon nanofibers may be deposited on a transition metal selected from the group consisting of nickel, copper, platinum, and zinc to form the carbon nanofibers electrode sensor (para. [0034], [0070]-[0071], claim 8). As evidenced by Applicant’s instant specification, zinc has a low melting point of less than 450°C (para. [0032]-[0036] of the instant US PGPub).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the nickel layer of Smith with a zinc layer as taught by an alternative embodiment of Smith in order to yield the predictable result of depositing carbon nanofibers on a transition metal to form the carbon nanofibers electrode sensor. Simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 U.S.P.Q.2d 1385 (2007); MPEP § 2143(I)(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07.
Regarding claim 3, Modified Smith teaches a second metal underlying layer disposed between the substrate and the electrically conductive carbon layer (a titanium layer disposed between the substrate and the carbon nanofibers layer, Fig. 1, para. [0070]).
Regarding claim 4, Modified Smith teaches wherein the substrate, the second metal underlying layer, the metal underlying layer, and the electrically conductive carbon layer are disposed in sequence toward one side in the thickness direction (the substrate, the titanium layer, the zinc layer, and the carbon nanofibers layer are disposed in sequence toward the one side in the thickness direction, Fig. 1, para. [0070]-[0071], see modification supra).
Regarding claim 5, Modified Smith teaches the electrode being an electrode for an electrochemical measurement (the carbon nanofiber electrode is used for electrochemical detection, abstract, para. [0067], [0077], [0080], [0086]).
The limitation “for an electrochemical measurement” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114. The carbon nanofiber electrode disclosed by Modified Smith teaches all of the structural limitations of the claim and thus is configured for and capable of being “for an electrochemical measurement” as recited in the rejection supra.
Regarding claim 6, Modified Smith teaches the electrode being a working electrode (the carbon nanofiber electrode is a working electrode, Figs. 1, 3, & 23, para. [0073], [0085]-[0086]), wherein the electrochemical measurement is cyclic voltammetry (the electrochemical technique used is cyclic voltammetry, para. [0086]-[0088]).
The limitation “the electrochemical measurement is cyclic voltammetry” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114. The carbon nanofiber electrode disclosed by Modified Smith teaches all of the structural limitations of the claim and thus is configured for and capable of “the electrochemical measurement is cyclic voltammetry” as recited in the rejection supra.
Regarding claim 7, Modified Smith teaches an electrochemical measurement system comprising: the electrode according to claim 5 (a three-electrode electrochemical system comprising the carbon nanofiber electrode as a working electrode, Figs. 1, 3, & 23, para. [0073], [0085]-[0086]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Smith as applied to claim 1 above, and further in view of Okajima et al. (JPH0843344A) (provided in Applicant’s IDS filed on June 28, 2024) (references herein made with respect to provided English Machine Translation).
Regarding claim 2, Modified Smith teaches the metal underlying layer (the zinc layer, Smith, Fig. 1, para. [0034], [0070]-[0071], claim 8, see modification supra). Modified Smith fails to teach wherein the metal underlying layer has a raised portion which is raised toward one side in the thickness direction.
Okajima teaches a carbon electrode of high sensitivity (Okajima, abstract). Okajima teaches that the carbon electrode 21 is configured with a base board 5, Si mono-crystal film 6a, Si columnar mono-crystals 3, a nickel-phosphorus film 7 provided over the Si columnar mono-crystals 3 and Si mono-crystal film 6a, a metal 8, and a carbon film 9 (Okajima, abstract, Fig. 2, para. [0016]). Okajima teaches that the nickel-phosphorus film 7, the metal 8, and the carbon film 9 form a conductive film provided on the columnar mono-crystal 3 such that they have a raised portion which is raised toward one side in the thickness direction (Okajima, Fig. 2, para. [0016]). Okajima teaches that the carbon electrode is very useful as an ultrasensitive detector (Okajima, para. [0019]). Smith also teaches that carbon nanofiber sensors with high surface area lead to significantly enhanced sensitivity and faster reaction rate (Smith, para. [0007], [0103], [0115]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the conductive layers including the zinc layer of Modified Smith to have a raised portion which is raised toward the one side in the thickness direction as taught by Okajima in order to yield the predictable result of increasing the surface area of the carbon nanofibers which would lead to significantly enhanced sensitivity and faster reaction rate. MPEP § 2143(I)(C). Additionally, generally, differences in shape will not support the patentability of subject matter encompassed by the prior art absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(IV)(B). Therefore, it would have been a matter of choice to use a zinc layer with a raised portion which a person of ordinary skill in the art would have found obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIVIAN A TRAN whose telephone number is (571)272-3232. The examiner can normally be reached Mon - Fri 9am-5pm.
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794