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 and remarks filed on April 9, 2026. Claims 1-7 are pending in the application and are being examined herein.
Status of Objections and Rejections
All rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection under 35 U.S.C. 103 are necessitated by the amendments.
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) in view of Ma et al. (KR 20200097627 A) (references herein made with respect to English Machine Translation).
Regarding claim 1, Smith teaches an electrode (an electrode, Smith, Fig. 1, para. [0070], [0082]) comprising:
a substrate (a substrate, Smith, Fig. 1, para. [0070], [0082]);
a metal underlying layer (a nickel layer on the substrate, Smith, 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, Smith, Fig. 1, para. [0070], [0082]; the substrate, the nickel layer, and the carbon nanofibers are in sequence toward one side in a thickness direction, Smith, 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, Smith, 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, 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.
Ma teaches a biosensor with improved detection performance comprising a working electrode 200 disposed on a substrate 100 (Ma, abstract, Fig. 2, para. [0042]). Ma teaches that the working electrode 200 comprises a working electrode layer 210 including a metal electrode layer 205 and a carbon electrode layer 215 disposed thereon (Ma, Fig. 2, para. [0041], [0053]-[0054]). Ma teaches that the metal electrode layer 205 comprises a metal including at least one of Au, Ag, Cu, Pt, Ti, Ni, Sn, Mo, Co, Pd, and alloys thereof (Ma, Fig. 2, para. [0055], [0057]). Ma teaches that the metal layer senses the electrical signal (Ma, para. [0059]).
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 tin (Sn) layer as taught by Ma in order to yield the predictable result of depositing carbon on a metal layer to form the carbon nanofibers electrode sensor that senses the electrical signal. 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. As evidenced by Applicant’s instant specification, tin has a low melting point of less than 450°C (para. [0032]-[0036] of the instant US PGPub).
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, Smith, 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 the one side in the thickness direction (the substrate, the titanium layer, the tin layer, and the carbon nanofibers layer are disposed in sequence toward the one side in the thickness direction, Smith, Fig. 1, para. [0070]-[0071], Ma, Fig. 2, para. [0053]-[0055], [0057], 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, Smith, 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, Smith, Figs. 1, 3, & 23, para. [0073], [0085]-[0086]), wherein the electrochemical measurement is cyclic voltammetry (the electrochemical technique used is cyclic voltammetry, Smith, 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, Smith, Figs. 1, 3, & 23, para. [0073], [0085]-[0086]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Ma 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 tin layer, Ma, Fig. 2, para. [0053]-[0055], [0057], see modification supra). Modified Smith fails to teach wherein the metal underlying layer has a raised portion which is raised toward the 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 tin 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 tin layer with a raised portion which a person of ordinary skill in the art would have found obvious.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in light of new grounds of rejection. Prior art Ma is now relied on for the features of the metal underlying layer having a melting point of 450°C or less, 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 as recited in the rejection and modification supra.
Applicant's arguments filed April 9, 2026 have been fully considered but they are not persuasive.
In the arguments presented on pg. 6 of the amendment, Applicant argues that the claimed electrode is directed to achieving excellent sensitivity to potassium ferricyanide when used for electrochemical measurement, and the materials recited in claim 1 achieve this purpose. Applicant asserts that Smith, in contrast, is directed to a carbon nanofiber sensor for non-enzymatic glucose detection and does not teach or suggest using the claimed materials to achieve sensitivity to potassium ferricyanide.
Examiner respectfully disagrees. In response to applicant's argument that Smith is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Smith is in the field of the inventor’s endeavor which is electrochemical measurement. In response to applicant's argument that Smith does not teach sensitivity to potassium ferricyanide, a recitation of the intended use 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. If the prior art structure is capable of performing the intended use, then it meets the claim. As mapped in the rejection supra, Smith modified in view of Ma teaches all of the structural limitations of the claim and thus is capable of sensitivity to potassium ferricyanide. Furthermore, Applicant has not claimed sensitivity to potassium ferricyanide. Nevertheless, it would still be interpreted as intended use and/or functional language even if recited in the claim.
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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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794
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