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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/07/2024 has been considered by the examiner.
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 3 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of an oxide, a fluoride, a nitride, a carbide, and a metal is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: The elements are structurally dissimilar constituents. For example a metal is not in the same class of compounds as a nitride or an oxide. Similar rationale is applicable to the grouping of aluminum oxide, magnesium oxide, hafnium oxide, silicon oxide, magnesium fluoride, aluminum nitride, silicon nitride, silicon carbide, tungsten, hafnium, diamond and graphite. Diamond for example is not the same class as silicon oxide or tungsten.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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) 1-4 and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by JP 2021-124344.
Regarding claim 1, ‘344 discloses a sample support ([0079], sample support 1B), comprising a substrate 2 having first and second surfaces with a porous alumina structure embodied as porous anodized aluminum film thereon [0030], a protective layer (metal oxide film 7) covering the porous structure, and a conductive layer 5 covering substrate 2 [0045] to cover at least a portion of the protective layer.
Regarding claim 2-3, ‘344 discloses that metal oxide film 7 is an aluminum oxide film.
Regarding claim 4, ‘344 discloses that the metal oxide film is formed by atomic layer deposition [0079].
Regarding claim 8, ‘344 discloses that the substrate may be formed by anodizing a metal or silicon [0030].
Regarding claim 9, ‘344 discloses a first step of preparing the sample support according to claim 1; a second step of transferring the sample to the first surface; and a third step of ionizing a component of the sample by irradiating the first surface with an energy beam at [0081, 0090].
Regarding claim 10, ‘344 discloses a first step of preparing the sample support according to claim 1, the sample support having the porous structure configured to allow the first surface and the second surface to communicate with each other; a second step of placing the sample support on the sample so that the second surface faces the sample; and a third step of ionizing the component of the sample by irradiating the first surface with an energy beam after the component of the sample has moved from the second surface side to the first surface side by a capillary phenomenon at [0030, 0060, 0081-0090].
Regarding claim 11, ‘344 discloses a mass spectrometry method including: the first step, the second step, and the third step of the ionization method according to claim 9 and a fourth step of detecting the component ionized in the third step at [0081, 0082, 0088, and 0089].
Allowable Subject Matter
Claims 5-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or suggest the apparatus of claim 1 including wherein the porous structure is formed of an aggregate of a plurality of particles, the porous structure has a joint in which the particles adjacent to each other are bonded to each other to form a recessed portion between the particles, and the protective layer is provided so as to cover at least a portion of surfaces of the plurality of particles and the joint, the portion constituting the first surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A VANORE whose telephone number is (571)272-2483. The examiner can normally be reached Monday to Friday 7AM to 6 PM.
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DAVID A. VANORE
Primary Examiner
Art Unit 2881
/DAVID A VANORE/Primary Examiner, Art Unit 2878
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