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 .
Claim Objections
Claims 11-13, 17, and 18 are objected to because of the following informality:
a) claim 11 is awkwardly written as the first three limitations are not “steps”, that is, actions to be performed and so may be misinterpreted:
PNG
media_image1.png
378
726
media_image1.png
Greyscale
The Examiner suggests instead –
A method for manufacturing a sensor comprising:
providing the electrode according to claim 1;
disposing a reagent layer the reagent layer including an outer peripheral edge portion positioned on the second outer peripheral edge portion of the second region, and a reagent participating in an oxidation-reduction reaction; and
covering the reagent layer with a protective film
coating the first region and the second region of the electrode with a first liquid composition including the reagent in a first solvent, and then drying the first liquid composition to form the reagent layer, and
coating the surface portion of the electrode with a second liquid composition containing a protective film component in a second solvent so as to cover the reagent layer, and then drying the second liquid composition to form the protective film. --
Alternatively, –
A method for manufacturing a sensor comprising:
wherein the sensor includes the electrode according to claim 1;
a reagent layer that is disposed in the first region and the second region of the electrode, and includes an outer peripheral edge portion positioned on the second outer peripheral edge portion of the second region, and a reagent participating in an oxidation-reduction reaction; and
a protective film that covers the reagent layer,
said method comprising:
coating the first region and the second region of the electrode with a first liquid composition including the reagent in a first solvent, and then drying the first liquid composition to form the reagent layer, and
coating the surface portion of the electrode with a second liquid composition containing a protective film component in a second solvent so as to cover the reagent layer, and then drying the second liquid composition to form the protective film. --
b) claim 12 is awkwardly written as the first three limitations are not “steps”, that is, actions to be performed and so may be misinterpreted:
PNG
media_image2.png
482
716
media_image2.png
Greyscale
The Examiner suggests that Applicant adopt similar changes as set forth in the objection to claim 11 above.
c) claim 13 is awkwardly written as it has limitations that are not “steps”, that is, actions to be performed and so may be misinterpreted:
PNG
media_image3.png
202
726
media_image3.png
Greyscale
PNG
media_image4.png
310
744
media_image4.png
Greyscale
The Examiner suggests instead -- A method for manufacturing the electrode according to claim 3, comprising the steps of:
preparing an untreated electrode including:
providing an untreated surface portion having an untreated region for forming the first region, the second region, the third region, and the fourth region in a part of the untreated surface portion and having the first surface free energy, and
providing an insulating layer, at least part of which is disposed on the untreated surface portion, and that includes an opening formed in the untreated region and passing through in the thickness direction; and
irradiating, out of the untreated region of the untreated surface portion in the untreated electrode, an annular fourth untreated region disposed on the outer periphery of the untreated region adjacent to the inner peripheral edge portion of the opening in the insulating layer and an annular second untreated region disposed further toward the inside than the fourth untreated region in a plan view from a direction perpendicular to the untreated surface portion, with a laser beam, thereby converting the fourth untreated region into the fourth region, and converting the second untreated region into the second region. --
d) claim 17 is awkwardly written as the first two limitations are not “steps”, that is, actions to be performed and so may be misinterpreted:
PNG
media_image5.png
80
552
media_image5.png
Greyscale
PNG
media_image6.png
224
754
media_image6.png
Greyscale
The Examiner suggests instead -- A method for manufacturing a sensor comprising:
providing the electrode according to claim 5; and
disposing a reagent layer the reagent layer including an outer peripheral edge portion positioned on the second outer peripheral edge portion of the second region, and a reagent participating in an oxidation-reduction reaction,
coating the first region and the second region of the electrode with a first liquid composition containing the reagent in a first solvent, and then drying the first liquid composition to form the reagent layer. –
e) claim 18 is awkwardly written as the first two limitations are not “steps”, that is, actions to be performed and so may be misinterpreted:
PNG
media_image7.png
408
706
media_image7.png
Greyscale
The Examiner suggests instead -- A method for manufacturing a sensor comprising:
providing the electrode according to claim 5;
disposing a reagent layer the reagent layer including an outer peripheral edge portion positioned on the second outer peripheral edge portion of the second region, and a reagent participating in an oxidation-reduction reaction; and
covering the reagent layer with a protective film
coating the first region and the second region of the electrode with a first liquid composition including the reagent in a first solvent, and then drying the first liquid composition to form the reagent layer, and
coating the surface portion of the electrode with a second liquid composition containing a protective film component in a second solvent so as to cover the reagent layer, and then drying the second liquid composition to form the protective film.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Note that dependent claims will have the deficiencies of base and intervening claims.
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 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention:
a) in claim 1 it is not clear how the limitation “a surface portion that is positioned on the opposite side from the substrate when the electrode is disposed on the substrate; . . . .[italicizing by the Examiner]” structurally modifies “[An] electrode to be disposed on an insulating substrate, . . . .[italicizing by the Examiner]” That is, how does this possible future positioning of the electrode (“when the electrode is disposed on the substrate”) structurally limit the electrode?
b) claim 1 is for “[An] electrode to be disposed on an insulating substrate, . . . .[italicizing by the Examiner]”, yet, as best understood by the Examiner from Applicant’s original disclosure, the claimed first region, second region, and third region are not actually formed until the electrode has been previously disposed on an insulating substrate. See Applicant’s pre-grant application publication (US 2026/0029365 A1)(hereafter “Applicant’s PG-PUB”) paragraph [0175] and Figures 1-5. This is especially so as Applicant’s disclosed electrode manufacturing technique all presuppose a substrate upon which the electrode is formed: “The conductive layer can be formed from one of the conductive materials mentioned above, by sputtering, vapor deposition, screen printing, or another such method. The conductive layer can be worked into a specific pattern by laser trimming as needed. [italicizing by the Examiner]” See Applicant’s PG-PUB paragraph [0098]. Applicant is requested to clarify what the scope of the term “electrode” is. Is it just a conducive layer, somehow not on a substate, although formed by sputtering, vapor deposition, screen printing, or another such method? If Applicant is being his own lexicographer, please heed MPEP 2173.05(a).
c) in claim 1 the phrase “a [electrode] surface portion that is positioned on the opposite side from the substrate [italicizing by the Examiner]” renders the claim indefinite because it is not clear what is meant by “opposite side from the substrate”. It is not clear what is the reference for the opposite side, that is, what side or surface is the electrode surface portion opposite to?
d) in independent claim 5 it is not clear how the limitation “a surface portion that is positioned on the opposite side from the substrate when the electrode is disposed on the substrate; . . . .[italicizing by the Examiner]” structurally modifies “[An] electrode to be disposed on an insulating substrate, . . . .[italicizing by the Examiner]” That is, how does this possible future positioning of the electrode (“when the electrode is disposed on the substrate”) structurally limit the electrode?
e) claim 5 is for “[An] electrode to be disposed on an insulating substrate, . . . .[italicizing by the Examiner]”, yet, as best understood by the Examiner from Applicant’s original disclosure, the claimed first region, second region, and third region are not actually formed until the electrode has been previously disposed on an insulating substrate. See Applicant’s pre-grant application publication (US 2026/0029365 A1)(hereafter “Applicant’s PG-PUB”) paragraph [0175] and Figures 1-5. This is especially so as Applicant’s disclosed electrode manufacturing technique all presuppose a substrate upon which the electrode is formed: “The conductive layer can be formed from one of the conductive materials mentioned above, by sputtering, vapor deposition, screen printing, or another such method. The conductive layer can be worked into a specific pattern by laser trimming as needed. [italicizing by the Examiner]” See Applicant’s PG-PUB paragraph [0098]. Applicant is requested to clarify what the scope of the term “electrode” is. Is it just a conducive layer, somehow not on a substate, although formed by sputtering, vapor deposition, screen printing, or another such method? If Applicant is being his own lexicographer, please heed MPEP 2173.05(a).
f) in claim 5 the phrase “a [electrode] surface portion that is positioned on the opposite side from the substrate [italicizing by the Examiner]” renders the claim indefinite because it is not clear what is meant by “opposite side from the substrate”. It is not clear what is the reference for the opposite side, that is, what side or surface is the electrode surface portion opposite to?
Allowable Subject Matter
Claims 1 and 5 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-4 and 6-18 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 1 the combination of limitations requires the following underlined features
PNG
media_image8.png
404
710
media_image8.png
Greyscale
a)(i) the International Search Report for international application no. PCT/JP2023/028101 cites JP 2007-278981 A as a “X” document against claims 1, 4, 6, 8-10 and as a “Y” document against claims 5-11; cites JP 2005-249530 A as “Y” document against claims 5-11; and WO 2019/176339 A1 as a “Y” document against claims 7 and 11. The corresponding Written Opinion rejects claim 1 and 4 as lacking novelty over Document 1 (JP 2007-278981 A) alone. The U.S. Examiner has obtained an English language translation of Document 1. The rejection of claim 1 states,
PNG
media_image9.png
40
726
media_image9.png
Greyscale
However, in none of the embodiments disclosed in Document 1 is either region T1 (dam 4) or region T2 (counter electrode J2, conductive pattern D1, and insulating substrate 2)1, let alone both T1 and T2, part of working electrode J1. Recall that claim 1 of U.S. application 18/994196 requires the first region, the second region, and the third region to all be part of an electrode (“An electrode to be disposed on an insulating substrate, comprising . . . .[italicizing by the Examiner]”). Neither JP 2005-249530 A (based on an English language translation) nor WO 2019/176339 A1 (based on English language equivalent US 2021/0000393 A1 cures this deficiency).
a)(ii) The Extended European Search Report issued October 21, 2025 in European Patent Application No. 23850080.5 cites JP 2007-278981 A as a ‘X” document against claims 1-7 and cites US 2012/298528 A1 as an “X” document against claims 1 and 5-10. No “Y” documents are cited. JP 2007-278981 A has already been commented upon just above, in item 7(a)(i). Regarding US 2012/298528 A1, the rejection of claim 1 states,
PNG
media_image11.png
120
1006
media_image11.png
Greyscale
However, as noted above, claim 1 of U.S. application 18/994196 requires the first region, the second region, and the third region to all be part of an electrode (“An electrode to be disposed on an insulating substrate, comprising . . . .[italicizing by the Examiner]”). If the whole surface of working electrode 1 is the first region it is not possible for it to also have the second region and the third region. Additionally, the EPO appears to not give the second region any patentable weight as it states, “. . . ., this second region does not have any technical effect.” It does not seem that the second region in claim of U.S. application 18/994196 may be so readily dismissed under U.S. patent practice.
a)(iii) The Notice of Reasons for Refusal (Office Action) issued March 31, 2026 in Japanese Patent Application No. 2024-539169, with English-language Translation rejects claims 1 and 4 as being anticipated by Document 1, rejects claim 5, 6, and 8-10 as being obvious over Document 1 with Document 2, and rejects claims 7 and 11 as being obvious over Document 1 along with Document 2 and Document 3. Document 1, Document 2, and Document 3 are respectively, JP 2007-278981 A, JP 2005-249530 A, and WO 2019/176339 A1, have already been commented upon above, in item 7(a)(i).
a)(iv) Urakawa et al. US 2022/0244210 A1 (hereafter “Urakawa”) discloses a cell potential measurement device comprising an electrode, a substrate, and a first region that is formed on a surface portion, includes a first outer peripheral edge portion, and has a first surface free energy;
a second region that is formed on the surface portion, surrounds the first region, includes a second inner peripheral edge portion in contact with the first outer peripheral edge portion of the first region, and a second outer peripheral edge portion positioned more to the outside than the second inner peripheral edge portion, and has a second surface free energy that is greater than the first surface free energy; and
a third region that is formed on a surface portion, surrounds the second region, includes a third inner peripheral edge portion in contact with the second outer peripheral edge portion of the second region, and has a third surface free energy that is less than the second surface free energy.
See the title, Abstract, Figures 1-3 and 6, and paragraphs [0069]-[0075]2.
However, in contrast to the electrode of claim 1 U.S. application 18/994196, the third region is formed on a surface portion outside of any single electrode, that is, the third region Is not part of any “an electrode”. For example, as indicated in annotated Urakawa Figure 3 below claim 1 third regio is formed by the exposed upper Z direction substrate 40 surface regions.
PNG
media_image12.png
570
916
media_image12.png
Greyscale
b) claims 2-4 and 6-15 depend directly or indirectly from allowable claim 1.
c) in independent claim 5 the combination of limitations requires the following underlined features
PNG
media_image13.png
414
742
media_image13.png
Greyscale
The discussions of the prior art documents above relating to the allowability of claim 1 pertains to claim 5 also. Note that even if any of the “third region” in any of the prior art documents could also (or alternatively) be construed as an insulating layer it does not seem it would include “an opening formed in the first region and the second region, having an inner peripheral edge portion that defines the second outer peripheral edge portion of the second region, and passing through in the thickness direction.”
d) claims and 16-18 each depend directly from allowable claim 5.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER S NOGUEROLA/Primary Examiner, Art Unit 1795
1 From the claim 1 rejection
PNG
media_image10.png
40
722
media_image10.png
Greyscale
2 The portions specially treated to be hydrophobic, such as region R2, will inherently have a different surface free energy than neighboring portions not so specially treated. Also note the discussion of controlling droplet contact angle, which implies a certain surface energy.
Prosecution Insights