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 .
Status of the Rejections pending since the non-final Office action
mailed on April 21, 2026
All of the rejections under 35 U.S.C 103 are maintained. They are reproduced below for Applicant’s convenience.
Response to Arguments
Applicant's arguments filed July 02, 2026 have been fully considered but they are not persuasive. Applicant first argues, on the bottom of page 3, bridging to page 4, of the Amendment,
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The Examiner met the claim 1 limitation at issue1
, by referring to annotated Otani Figure 4 with Figure 5 at the end of the claim 1 rejection2, which is reproduced here
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.
To begin with, the claim limitation at issue is a negative limitation excluding a particular property (capillarity). It requires “the space” to be non-capillary space. As seen from annotated Otani Figure 4 with Figure 5 the space3 is formed by structural elements 12 and 9. Structure 12 is a control unit and structure 9 is a sensor unit. See Otani paragraph [0241]. “The control unit 12 applies voltage to the electrode unit 21 of each sensor 16 included in the sensor unit 9, via connection portions 20a and 20b (see FIG. 11). Then, the control unit 12 transmits information about the cell culture environment of the medium (liquid sample) contained in the wells 8 to a data processing device (such as a personal computer) external to the cell culture device 1.” There is nothing to suggest that the space between these electrical structural elements (again, “space is visible here” in annotated Otani Figure 4) is a capillary space. Moreover, there is nothing to suggest that it would be desirable to have this space be a capillary space. As such, based on annotated Otani Figures 4 and 5 and the indicated functions for structural elements 12 and 9 it is reasonable for one of ordinary skill in the art to assume that the space between them is a non-capillary space. One of ordinary skill in the art would expect that if the space is to be a capillary space, then this would have been explicitly mentioned in Otani. However, if Applicant would point out features in Otani that would lead one to believe that the space is inherently a capillary space the Examiner will reconsider the claim 1 rejection.
Applicant next argues,
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As a first matter, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “This communication pathway is significant because it forms part of the overall structure that controls condensed water around the electrodes and suppresses leakage-current-causing liquid bridging. Neither the cited text nor the cited figures of Otani disclose such a communication structure.”) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As for the non-capillary space allowing communication with a space facing adjacent electrodes of the connection terminal part, the Examiner respectfully disagrees that this clam feature is unsupported by Otani. As just pointed out above, ‘ Structure 12 is a control unit and structure 9 is a sensor unit. See Otani paragraph [0241]. “The control unit 12 applies voltage to the electrode unit 21 of each sensor 16 included in the sensor unit 9, via connection portions 20a and 20b (see FIG. 11). . . . . [underlining added]’
Applicant next argues,
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In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e.,
“Quevy . . . ., does not address condensation-related issues, and does not disclose any structure configured to control condensed water around adjacent electrodes.”)4 are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant next argues,
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In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “The claimed non-capillary space communicates with spaces facing adjacent electrodes and suppresses the growth of condensed water in the vicinity of the electrodes. In addition, condensed water is retained in gap 63 by the strong adsorptive force of a liquid bridge generated in that gap. Through this arrangement, condensed water is controlled so that it is less likely to electrically connect adjacent electrodes, thereby preventing short circuits and leakage current even when a relatively large amount of condensed water is present.”) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
For the reasons set forth above Applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 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:
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 1-8, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Otani et al. WO 2021/117412 A15 based on an English language equivalent
US 2023/0008595 A1 (here after “Otani”)6 in view of Quevy et al. US 2019/0154625 A1 (hereafter “Quevy”).
Addressing claim 1, Otani discloses a sensor unit for measuring components of a liquid sample placed in a culture container (see the title and Abstract), the sensor unit comprising:
a sensor having a main body (16a in Figure 13; paragraph [0291]), a sensing part that is disposed on the main body and is immersed in the liquid sample (the Examiner is construing 21a in Figure 13 as this sensing part; compare with 31a in Applicant’s
Figure 9), and a connection terminal part (20a or 20b in Figure 11; paragraph [0263]) including a plurality of electrodes (21 in Figure 13) that are electrically connected to the sensing part this feature may be inferred with Figures 11-13 taken together. Also see paragraphs [0271]-[0273]) and to which a specific voltage is applied when the components of the liquid sample are measured (see paragraph [0282]);
a connection part (either portion of 12 in Figures 3-5 that is aligned with connection terminal part 20a or 20b in Figure 11; see annotated Figure 4 with Figure 7 at the end of this claim rejection) configured to make a contact with the electrodes of the connection terminal part of the sensor and apply a specific voltage (see paragraph [0241]); and
a connection part holder configured to hold the connection part (see annotated Figure 4 at the end of this claim rejection) that has an opposing surface that is disposed opposite the connection terminal part of the sensor (this feature may be inferred from Figures 5 and 21), and forms a non-capillary space between the opposing surface and the connection terminal part of the sensor to allow communication with a space facing the adjacent electrodes of the connection terminal part of the sensor (this feature may be inferred from annotated Figure 4 with Figure 5 at the end of this claim rejection)
As for the limitation of the “connection part holder configured to hold the connection part so that the connection part protrudes toward the connection terminal part of the sensor, . . . . [italicizing by the Examiner]”, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have connection part holder so configured, indeed necessary, because as may be seen from Figures 7, 8, and 11 the upper surface of the connection terminal part (20a or 20b) is flat and recessed, so the connection part will have to protrude toward the connection terminal part of the sensor in order to make electrical contact with the connection terminal part of the sensor. Additionally, Quevy discloses an all-electric high-throughput analyte detection system comprising a multiwell sample plate (450), and an array of sensors (412), each sensor comprising a working electrode, a counter electrode, and a reference electrode, and each sensor being aligned with a respective well of the multiwell plate. See Quevy Figure 4 and paragraph [0062]. Quevy further discloses a planar contact fixture (440) that has conducting pins (411a and 411b), which can be geometrically arranged to make electrical contact with the sensors. See Quevy Figure 4 and paragraph [0062]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the connection part holder of Otani configured to hold the connection part so that the connection part protrudes toward the connection terminal part of the sensor in a similar manner as taught by Quevy (at least by adopting the contact pins) because it is prima facie obvious as simple substitution of one known element (connection part holder for contacting an array of sensors in a multiwell plate apparatus) for another to obtain predictable results (MPEP 2143(I)(B)). Note in this regard that Otani does disclose having the connection part holder have the connection parts protruding upwards from the connection part holder. See Otani Figures 4 and 19 with perhaps some magnification of the connection parts.
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Addressing claim 2, as a first matter, as the additional limitations of this claim are best understood by the Examiner, Applicant’s Figure 25, noting especially the shape of connection part 10c, illustrates how these features may be implemented. See also Applicant’s pre-grant application publication US 20250012755 A1 (hereafter “PG-PUB”) paragraph [0169].7 When the sensor unit of Otani is modified as discussed in the rejection of underlying claim 1 the corresponding diameter first end portion and second end portion are the same. See annotated Quevy Figure 4 at the end of this claim rejection. However, having the relative diameters be as claimed is prima facie obvious as a change in shape with no material effect on the operation of the connection part, connection holder, or more broadly the sensor unit. See MPEP 2144.04(IV)(B) and annotated Quevy Figure 4 at the end of this claim rejection.
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Addressing claim 3, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have a plurality of the small diameter portions be provided in a one-to-one with respect to the plurality of connection parts because as may be inferred from Otani Figure 11 Otani discloses a one-to-one correspondence of connection parts to electrodes.
Addressing claim 4, the additional limitation of this clam may be inferred from annotated Otani Figure 4 with Figure at the end of the claim 1 rejection above, noting especially “space is visible here”.
Addressing claim 5, as for the additional limitation “. . . ., wherein the sensor is a disposable member, . . . .” it may be inferred from Otani Figures 11-13 from which it may be seen that the sensor is part of a separable circuit board or sheet.
As for the additional limitation “the connection part and the connection part holder are reusable members, and the sensor is configured to be detachable from the connection part and the connection part holder…” there does not appear to be anything in Otani that suggest otherwise. See, for example, Otani Figure 5.
Addressing claim 6, although not said to be drawn to scale the additional limitation of this claim is strongly suggested by Otani Figure 13. In any event, the required gap to width relationship is prima facie obvious as a change in size or proportion of the gap and/or width. See MPEP 2144.04(IV)(A). Alternatively, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to set the stated gap and width to on the one hand minimize the size of sensor and on the other hand set the stated gap and width to minimize short circuiting of the electrodes and/or contamination by a reaction that may occur at one electrode that may interfere with electrical activity at another of the electrodes.
Addressing claim 7, the additional limitation of this claim is prima facie obvious as a change in shape of the connection part with no material effect on the operation of the connection part. See MPEP 2144.04(IV)(B).
Addressing claim 8, Otani as modified by Quevy appears to be silent as to the possible composition of the connection part in particular that of the conducting pins (411a, 411b) adopted from Quevy (see the rejection of underlying claim 1 above). Nevertheless, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the conducting pins be made of at least any of a palladium alloy or palladium because Quevy does disclose having the counter electrode or working electrode made or these substances or other metals. See Quevy paragraph [0087].
Addressing claim 14, for the claimed linking portion the Examiner is construing 32 in Otani Figure 10 as this linking portion (compare with 33 in Applicant’s Figure 10 and PG-PUB paragraph [0063]).
As for the claimed bent portion, note bent portion 17 in Otani Figure 10. See also Otani paragraph [0252] (compare with 32 in Applicant’s Figure 10 and PG-PUB paragraphs [0063] and [0077]).
Addressing claim 15, for the additional limitation of this claim see in Otani the title, Figures 1-3, and paragraphs [0001] and [0177]-[0179].
Final Rejection
THIS ACTION IS MADE FINAL. 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.
Allowable Subject Matter
Claims 9-13 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:
a) in claim 9 the combination of limitations has the following underlined feature
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Otani as modified by Quevy does disclose providing a protective layer over one or more of the electrodes; however, it is not said to be water repellant nor does it appear to be inherently so. See Otani paragraphs [0274] and [0277]-[0279]. Also see EP 3747364 A1, which is an English language equivalent of WO 2019/146788 referred to in Otani paragraph [0279] for further details about the protective layer.
b) claims 10-13 each depend from allowable claim 10.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER STEPHAN NOGUEROLA whose telephone number is (571)272-1343. The examiner can normally be reached on Monday - Friday 9:00AM-5:30 PM EST.
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, Luan Van can be reached on 571 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
1
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2 “. . . . forms a non-capillary space between the opposing surface and the connection terminal part of the sensor to allow communication with a space facing the adjacent electrodes of the connection terminal part of the sensor (this feature may be inferred from annotated Figure 4 with Figure 5 at the end of this claim rejection).” See page 7 of the previous Office Action.
3 “space is visible here” in annotated Otani Figure 4.
4 Regarding Applicant’s comment, “Quevy does not disclose a non-capillary space,. . . .”, the Examiner does not rely upon Quevy for the non-capillary space, but, as already discussed, relies upon Otani.
5 Note that this document was published on June 17, 2021, which is more than one earlier than the instant application’s earliest priority date of July 01, 2022.
6 Note that US 2023/00085965 A1 is the publication of the U.S. national stage application of WO 2021/117412 A1. So, US 2023/00085965 A1 is presumed to be a faithful English language translation. See MPEP 1893.01(d). All citations in the rejections are to the US document, although the rejection is based on WO 2021/117412 A1.
7 Note that in Applicant’s specification “probe holder” and “control part” are synonymous. See PG-PUB paragraph [0047].
Prosecution Insights