DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election without traverse of Group I in the reply filed on 7/14/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of the Application
Claim(s) 1-10 is/are pending.
Claim(s) 8-10 is/are withdrawn.
Claim(s) 1-7 is/are rejected.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-7 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of copending Application No. 18/728,112. Although the conflicting claims are not identical, they are not patentably distinct from each other because the structural differences would have been recognized as obvious variants from each other in the art.
Claims 1-7 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of copending Application No. 18/018,314. Although the conflicting claims are not identical, they are not patentably distinct from each other because the structural differences would have been recognized as obvious variants from each other in the art.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Rejections – 35 U.S.C. § 102
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 –
PNG
media_image1.png
281
1244
media_image1.png
Greyscale
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Park et al. (US 20240145661 A1) [hereinafter Park].
Regarding claim 1, Park teaches
a substrate (see fig 5b: 510) having a first surface (e.g. bottom surface), a second surface opposite to the first surface (e.g. top surface), and an irregular porous structure opening to the first surface (see fig 5),
wherein the porous structure is formed of an aggregate of a plurality of particles (see fig 5),
the porous structure has a joint (vertical portion between nanoparticles) in which the particles adjacent to each other are bonded to each other (see fig 5b, bonded together via interconnects) to form a recessed portion between the particles (see fig 5b),
a conductive layer (e.g. electroplated with lithium, [0176]; alternately copper current collector, 510, [0176]) is provided on at least a portion constituting the first surface (see fig 5b), in surfaces of the plurality of particles and the joint (see fig 5b), and
a protective layer (e.g. polymer layer, [0180-181]) is provided so as to cover surfaces of the plurality of particles, the joint, and the conductive layer (see fig 5b, natural result of forming composite structure).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by https://en.wikipedia.org/w/index.php?title=Electronic_paper&oldid=1067713125.
Regarding claim 1, Wikipedia teaches a sample support for ionizing a sample, comprising:
a substrate (see layer of e-ink capsules in “Scheme of an electrophoretic display” image) having a first surface (e.g. bottom surface), a second surface opposite to the first surface (e.g. top surface), and an irregular porous structure opening to the first surface (see image, natural result of using microcapsules to form irregular surface profile),
wherein the porous structure is formed of an aggregate of a plurality of particles (see microcapsules),
the porous structure has a joint (vertical portion between microcapsules) in which the particles adjacent to each other are bonded to each other (see “Macro photograph of Kindle 3 screen; microcapsules are evident at full size”, showing microcapsules touching each other and held in place) to form a recessed portion between the particles (natural result of microcapsule layer geometry),
a conductive layer (e.g. bottom electrode in “Scheme of an electrophoretic display”) is provided on at least a portion constituting the first surface (see image), in surfaces of the plurality of particles and the joint (see image), and
a protective layer (transparent electrode) is provided so as to cover surfaces of the plurality of particles, the joint, and the conductive layer (see image).
Claim Rejections – 35 U.S.C. § 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:
PNG
media_image2.png
158
934
media_image2.png
Greyscale
Claim(s) 1-2, 4-7 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Kotani et al. (WO2019155741) (US 20220102126 A1 will be used as an English language equivalent) [hereinafter Kotani] in view of Kotani et al. (JP7236295B2) (US 20220157587 A1 will be used as an English language equivalent) [hereinafter Kotani II].
Regarding claim 1, Kotani teaches a sample support for ionizing a sample, comprising:
a substrate (see fig 4: 2) having a first surface (e.g. top surface), a second surface (e.g. bottom surface) opposite to the first surface, and an irregular porous structure (see [0046]) opening to the first surface,
wherein the porous structure is formed of an aggregate of a plurality of particles (see glass beads, [0047]),
the porous structure has a joint (natural result of sintered body of glass beads, [0047]) in which the particles adjacent to each other are bonded to each other to form a recessed portion between the particles (natural result of geometry of beads),
a conductive layer (see fig 2: 4, [0029]) is provided on at least a portion constituting the first surface (see [0029]), in surfaces of the plurality of particles and the joint (natural result of coating the surface), and
Kotani may fail to explicitly disclose a protective layer is provided so as to cover surfaces of the plurality of particles, the joint, and the conductive layer.
However, the use of additional protective layers was well known in the art at the time the application was effectively filed. For example, Kotani II teaches using an additional hydrophilic coating on top of a conductive coating in order to promote movement of sample solution through a sample plate (see Kotani II, e.g. [0056,65]). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Kotani II in the system of Kotani because a skilled artisan would have been motivated to look for ways to improve directing the sample to wherever it is needed on the sample substrate, in the manner taught by Kotani II.
Regarding claim 2, the combined teaching of Kotani and Kotani II teaches the protective layer is formed of at least one of an oxide (see Kotani II, [0056]), a fluoride, a nitride, a carbide, and a metal.
Regarding claim 4, the combined teaching of Kotani and Kotani II fails to explicitly disclose an average diameter of the joint in the porous structure is equal to or greater than one tenth of an average diameter of the particle in the porous structure and less than the average diameter of the particle. However, some degree of joint, less than the average diameter of particles, would have been required given the sintering of the beads in the material to fuse them together while maintaining a desired degree of porosity (see e.g. Kotani, claim 4). It is unclear if the average joint diameter is greater than 1/10 of the average diameter, but to the extent that a skilled artisan would have been motivated to adjust porosity (see claim 4, 40-50%), it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to select a configuration of beads, including wherein the sintering produces joints having the specified average diameter. Further, it has held that when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§2112-2112.02.
Regarding claim 5, the combined teaching of Kotani and Kotani II teaches the particles are glass beads (see Kotani, [0025]).
Regarding claim 6, the combined teaching of Kotani and Kotani II teaches the protective layer is an ALD layer (see Kotani II, [0056]).
Regarding claim 7, the combined teaching of Kotani and Kotani II teaches the protective layer is thinner than or equal to 10 nm (see Kotani II, [0056]).
Claim(s) 3 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Kotani and Kotani II, as applied to claim 1 above, and further in view of Bae et al., “Investigation of the Hydrophobic Nature of Metal Oxide Surfaces Created by Atomic Layer Deposition” Langmuir 2019, 35, 5762−5769 (2019) [hereinafter Bae].
Regarding claim 3, the combined teaching of Kotani and Kotani II may fail to explicitly disclose the protective layer is formed of at least one of aluminum oxide, magnesium oxide, hafnium oxide, silicon oxide, magnesium fluoride, aluminum nitride, silicon nitride, silicon carbide, tungsten, hafnium, diamond, and graphite. However, the use of these materials to provide hydrophilic surfaces was well known in the art. For example, Bae teaches titanium oxide (note Kotani II, [0056]), and e.g. aluminum oxide were all known in the art to produce effective hydrophobic (i.e. similarly hydrophilic) coatings (see e.g. Bae, 5767, conclusion). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to select the use of e.g. aluminum oxide to form the hydrophilic surface to enable the intended operation of the system. It is noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness. See MPEP 2144.07.
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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Choi whose telephone number is (571) 272 – 2689. The examiner can normally be reached on 9:30 am – 6:00 pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Georgia Epps can be reached on (571) 272 – 2328. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 – 8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES CHOI/Examiner, Art Unit 2878
Prosecution Insights