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 .
Response to Amendment
This is an office action in response to applicant’s arguments presented on August 3, 2026. Claims 1-7 are pending in the application and are being examined herein.
Status of Rejections
All rejections from the previous office action are withdrawn.
New grounds of rejection under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 are necessitated.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma et al. (KR 20200097627 A) (references herein made with respect to English Machine Translation), as evidenced by Applicant’s specification with respect to claim 1.
Regarding claim 1, Ma teaches an electrode (a working electrode 200, Fig. 2, para. [0056]) comprising:
a substrate (a substrate 100, Fig. 2, para. [0054]);
a metal underlying layer having a melting point of 450°C or less (a metal electrode layer 205 including Sn disposed on the substrate 100, Fig. 2, para. [0053]-[0054], [0057]; as evidenced by Applicant’s instant specification, tin has a low melting point of less than 450°C, see para. [0032]-[0036] of the instant US PGPub); and
an electrically conductive carbon layer in sequence toward one side in a thickness direction (a carbon electrode layer 215 disposed on the metal electrode layer 205, Fig. 2, para. [0053]-[0054]; the substrate 100, the metal electrode layer 205, and the carbon electrode layer 215 are in sequence toward one side in a thickness direction, Fig. 2, para. [0054]),
wherein a material of the metal underlying layer is at least one selected from the group consisting of tin, indium, lead, cadmium, selenium, thallium, lithium, bismuth, and an alloy thereof (the metal electrode layer 205 includes Sn, Fig. 2, para. [0053], [0057]).
Regarding claim 5, Ma teaches the electrode being an electrode for an electrochemical measurement (the working electrode 200 undergoes an oxidation-reduction reaction of a material to be sensed, and detects an electrical signal generated by the reaction, Fig. 2, para. [0048]).
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 working electrode disclosed by Ma 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, Ma teaches the electrode being a working electrode (the working electrode 200, Fig. 2, para. [0056]). Ma teaches that a voltage is applied to the electrode surface to undergo an oxidation-reduction reaction of a material to be sensed, and an electrical current signal generated by the reaction is detected (Fig. 2, para. [0048], [0083]-[0084]).
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 working electrode disclosed by Ma teaches all of the structural limitations of the claim and thus is configured for and capable of "the electrochemical measurement is cyclic voltammetry".
Regarding claim 7, Ma teaches an electrochemical measurement system comprising: the electrode according to claim 5 (a biosensor comprising the working electrode 200, Fig. 2, para. [0052]-[0054]; the working electrode 200 undergoes an oxidation-reduction reaction of a material to be sensed, and detects an electrical signal generated by the reaction, Fig. 2, para. [0048]).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ma as applied to claim 1 above, and further in view of Kanetani et al. (JP 2013022843 A) (references herein made with respect to English Machine Translation).
Regarding claim 2, Ma teaches the metal underlying layer (the metal electrode layer 205 includes tin, Ma, Fig. 2, para. [0053], [0057]). Ma fails to teach wherein the metal underlying layer has a raised portion which is raised toward the one side in the thickness direction.
Kanetani teaches a conductive layer provided on a substrate for forming an electrode (Kanetani, pg. 2, first paragraph, pg. 17, fourth paragraph). Kanetani teaches that the conductive layer 4 is a metal material comprising tin (Kanetani, Figs. 1-2, pg. 14, first paragraph). Kanetani teaches that the tin conductive layer 4 has convex portions which are raised toward the one side in the thickness direction (Kanetani, Figs. 1-2, pg. 5, first paragraph).
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 tin metal electrode layer of Ma to have convex portions which are raised toward the one side in the thickness direction as taught by Kanetani in order to yield the predictable result of a conductive tin layer for an electrode. 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 tin layer with raised portions which a person of ordinary skill in the art would have found obvious.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ma as applied to claim 1 above, and further in view of Maeda et al. (US 2004/0175917 A1).
Regarding claim 3, Ma teaches the substrate 100, the tin metal electrode layer 205, and the carbon electrode layer 215 in sequence toward the one side in the thickness direction (Ma, Fig. 2, para. [0054], [0057]). Ma fails to teach a second metal underlying layer disposed between the substrate and the electrically conductive carbon layer.
Maeda teaches a metal electrode 2 formed on a substrate 1 (Maeda, abstract, Fig. 1A, para. [0023]). Maeda teaches that the metal electrode 2 includes a first metallic layer 21, a second metallic layer 22, and a third metallic layer 23 lying from an outermost surface of the metal electrode 2 toward the substrate 1 in this order, wherein the first metallic layer 21 contains tin as a principal constituent and the second metallic layer 22 contains a metallic element which produces an eutectic reaction with tin, and the third metallic layer 23 is formed as an underlying metallic layer (Maeda, abstract, Fig. 1A, para. [0024]). Maeda teaches that the first metallic layer 21 and the second metallic layer 22 can be joined together at a low temperature, and the joint 19 thus produced offers a long-term service life and reliability (Maeda, Figs. 1A-1B, para. [0029]-[0030]).
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 working electrode of Ma to further include a second metallic layer disposed between the substrate and the tin metal electrode layer as taught by Maeda in order to yield the predictable result of producing an electrode with a long-term service life and reliability. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Regarding claim 4, Modified Ma teaches wherein the substrate, the second metal underlying layer, the metal underlying layer, and the electrically conductive carbon layer are disposed in sequence toward the one side in the thickness direction (the substrate 100, the second metallic layer, the tin metal electrode layer 205, and the carbon electrode layer 215 are disposed in sequence toward the one side in the thickness direction, Ma, Fig. 2, para. [0054], [0057], Maeda, Fig. 1A, para. [0024], see modification supra).
Response to Arguments
Applicant’s arguments with respect to claims 1-2 have been considered but are moot in light of new grounds of rejection. Prior art Ma is now relied on for the features of claim 1 as recited in the rejection supra. Prior art Ma in view of Kanetani is now relied on for the features of claim 2 as recited in the rejection supra.
Conclusion
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794
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