UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/005,451
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`06/11/2018
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`HONAMI NARIYAMA
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`PANDPOZSSUS
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`7899
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`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
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`C0NLEY~ 01 K
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`ART UNIT
`1725
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/ 1 5/2021
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
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`Application No.
`16/005,451
`Examiner
`HELEN OI KCONLEY
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`Applicant(s)
`NARIYAMA et al.
`Art Unit
`AIA (FITF) Status
`1725
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 12/3/2020.
`III A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:J Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`1—5 and 7—16 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`
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`[I Claim(ss)
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`is/are allowed.
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`Claim(ss) 1 —5 and 7— 16 is/are rejected.
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`[:1 Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`E) Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)[:| The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 6/11/2018 is/are: a)[:] accepted or b). objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)C] All
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`b)[:] Some**
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`c)D None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) [3 Notice of References Cited (PTO-892)
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`2) [:1 Information Disclosure Statement(s) (PTO/SB/OBa and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20210409
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`2.
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`The Applicants amendment was received on 12/3/2020. Claim 1 has been
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`amended. Claim 6 is cancelled.
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`3.
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`The text of those sections of Title 35, U.S.C. code not included in this action can
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`be found in the prior Office Action.
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`Continued Examination Under 37 CFR 1. 1 14
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`7.
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`12/3/2020 has been entered.
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`Drawings
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`4.
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`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
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`every feature of the invention specified in the claims. Therefore, the redox mediator and
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`the discharge mediator in the first liquid and first circulator must be shown or the
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`feature(s) canceled from the claim(s). No new matter should be entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in
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`reply to the Office action to avoid abandonment of the application. Any amended
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
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`Page 3
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`replacement drawing sheet should include all of the figures appearing on the immediate
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`prior version of the sheet, even if only one figure is being amended. The figure or figure
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`number of an amended drawing should not be labeled as “amended.” If a drawing figure
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`is to be canceled, the appropriate figure must be removed from the replacement sheet,
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`and where necessary, the remaining figures must be renumbered and appropriate
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`changes made to the brief description of the several views of the drawings for
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`consistency. Additional replacement sheets may be necessary to show the renumbering
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`of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New
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`Sheet” pursuant to 37 CFR 1.121 (d).
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`If the changes are not accepted by the examiner,
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`the applicant will be notified and informed of any required corrective action in the next
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`Office action. The objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 1 12
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`5.
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`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
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`(a) IN GENERAL—The specification shall contain a written description of the
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
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`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
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`Page 4
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`6.
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`Claims 1-5, 7-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA),
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`first paragraph, as failing to comply with the written description requirement. The
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`claim(s) contains subject matter which was not described in the specification in such a
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`way as to reasonably convey to one skilled in the relevant art that the inventor or a joint
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`inventor, or for applications subject to pre-AlA 35 U.S.C. 112, the inventor(s), at the time
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`the application was filed, had possession of the claimed invention. It appears the
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`specification discloses the first liquid to comprise only one redox mediator and not both
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`the redox and discharge mediator. Appropriate corrections or further clarification is
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`required.
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`Claim Rejections - 35 USC § 103
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`7.
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`The rejection under 35 U.S.C. 103 as being unpatentable over Wang in view of
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`Huang et al. on claims 1-7, 9-15 are withdrawn because the Applicant amended the
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`claims.
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`8.
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`The rejection under 35 U.S.C. 103 as being unpatentable over Wang in view of
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`Huang et al. in further view of Girault et al. on claims 8 and 16 withdrawn because the
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`Applicant amended the claims.
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`Conclusion
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`

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`Application/Control Number: 16/005,451
`Art Unit: 1725
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`Page 5
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`2.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HELEN OI K CONLEY whose telephone number is
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`(571)272-5162. The examiner can normally be reached on 8:30 am - 5:00 pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Basia Ridley can be reached on 571-272—1453. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see https://ppair-
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`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
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`272-1000.
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`/Helen Oi K CONLEY/
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`Primary Examiner, Art Unit 1725
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