Detailed Action
This is a Non-Final Office action based on application 16/931,943. The application is a 111(a) with priority to provisional application 62/876,226 filed July 19, 2019. Claims 1-20 are pending, claims 1-10 and 20 are withdrawn, and claims 11-19 have been fully considered.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 January 2026 has been entered.
Status of the Rejection
The §112(a) and §112(b) rejections of record are maintained
New §112(a) enablement grounds of rejection are presented
The §103 rejections of record are moot at this time because the claim language now defines non-enabled subject matter
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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 or joint inventor of carrying out the invention.
Claims 11-19 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 12-19 are rejected under 35 U.S.C. 112(a) by extension, because they are dependent claims which incorporate the subject matter of claim 11.
Claim 11, at the bottom of pg 4 and top of pg 5 in the claim set filed 1/15/2026, recites the claimed system is configured to:
“apply ... potential to the at least one SP3 substituted solid carbon electrode ... the potential producing an oxidizing species at a surface of the ... electrode ... wherein the production of oxidizing species at the surface of the at least one SP3 substituted carbon electrode comprises air in a concentration sufficient to oxidize organic compounds in the sample”
(emphasis added). However, the specification does not disclose that air is among the oxidizing species produced at the electrode surface.
Claim 11, in the second paragraph of pg 5 of the claim set filed 8/8/2025, recites “wherein the sparging solely uses the air produced at the surface of the at least one SP3 substituted carbon electrode, wherein the sparging does not use sparge gas from an ozone generator”. The most pertinent portion of the specification appears to be paragraph [0021] which states that, because the analyte is thoroughly oxidized by electrochemical means, satisfactory performance can be achieved by using air as a sparge gas rather than concentrated oxygen. However, the specification does not say that the sparging is carried out using exclusively the air generated at the surface of the SP3 substituted carbon electrode. Instant para [0035] and figure 3 disclose that sparge gas is introduced from an outside sparge gas source 302 via sparge gas flow controller 308. No other portion of the disclosure says or suggests that the sparge gas may be sourced exclusively from the air generated at the surface of the SP3 substituted carbon electrode. Nor does the specification say or clearly imply that air even is generated at the SP3 substituted carbon electrode.
These claim limitations are therefore matter which lacks written support in the originally filed specification.
Claims 11-19 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Particularly, claim 11, at the bottom of pg 4 and top of pg 5 in the claim set filed 1/15/2026, recites the claimed system is configured to:
“apply ... potential to the at least one SP3 substituted solid carbon electrode ... the potential producing an oxidizing species at a surface of the ... electrode ... wherein the production of oxidizing species at the surface of the at least one SP3 substituted carbon electrode comprises air in a concentration sufficient to oxidize organic compounds in the sample”
(emphasis added). Air is a mixture of gases containing roughly 78% nitrogen, 21% oxygen, 0.9% argon, and trace other gases.1 However, the instant specification, in describing the species produced at the electrode, says only that hydroxyl radicals or other oxidizing species are produced at the surface of the electrode (instant para [0030]). The disclosure does not describe, in such a way as would enable one of ordinary skill in the art to construct it, an electrochemical device that can apply potential to an sp3 substituted carbon electrode to produce a gaseous mixture comprising a mixture of 78% nitrogen, 21% oxygen, 0.9% argon, and trace other gases.
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.
Claims 11-19 are rejected under 35 U.S.C. 112(b) 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. Claims 12-19 are rejected under 35 U.S.C. 112(b) by extension, because they are dependent claims which incorporate the subject matter of claim 11.
Specifically, Claim 11, at the second paragraph of pg 5 of the claim set filed 8/8/2025, recites “wherein the sparging solely uses the air produced at the surface of the at least one SP3 substituted carbon electrode, wherein the sparging does not use sparge gas from an ozone generator”. Functional language does not in and of itself render a claim improper, however, in this instance the functional limitation is considered indefinite because the claim language does not “provide a clear-cut indication of the scope of the subject matter embraced by the claim” (In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). The claim only recites that the air produced at the electrode is used, and fails to indicate what the air is used to do.
Response to Arguments
Applicant's arguments filed 15 January 2026 have been fully considered.
With respect to the 112(a) and 112(b), Applicant argues that the rejections are overcome by the amendments filed 15 January 2026. This argument is not persuasive.
In the previous action, a 112(a) rejection was made on new matter grounds, on the basis that, since the only species that the original disclosure describes forming at the electrode surface is “hydroxyl radicals or other oxidizing species”, there is no support in the disclosure for the recitation wherein oxygen is produced at the electrode surface. Applicant’s amendment, changing “oxygen” to “air”, does not overcome this ground of rejection because the disclosure still lacks any written support for the recitation wherein air is produced at the surface.
Previously a 112(a) rejection was also applied on the basis that the original disclosure does not describe using, as the sparge gas, oxygen gas that is formed in situ at the electrode surface. Applicant’s response, which amends claim 11 to instead recite that air formed at the electrode surface is the sole gas used for sparging, fails to overcome this grounds of rejection, because the claimed feature is still not supported in the specification. Instant para [0021] says that air could be used as the sparge gas, however, para [0035] and figure 3 show the sparge gas being introduced into the analyzer chamber from outside gas source 302 via sparge gas flow controller 308. There is nothing in the disclosure that says or suggests that the sole source of the sparge gas could be gas generated at the sp3 substituted carbon electrode surface.
Previously a 112(b) rejection was applied on the basis that a claim limitation merely recited using oxygen, without specifying in what way oxygen was to be used. Applicant’s amendment, which alters the limitation in question to recite using air rather than using oxygen, does not address the underlying basis of the rejection because it still merely recites using air without specifying how the air is used.
Since the claims now recite a device that produces air at the electrode surface, but the disclosure does not contain an enabling description of a device that is capable of forming a gaseous mixture of nitrogen, air, argon, and other gases at the electrode surface, new 112(a) enablement grounds are presented with respect to claim 11 and its dependent claims.
Applicant’s arguments with respect to the §103 rejections have been considered, but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/ANDREW KOLTONOW/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
1 The plain meaning of “air” per American Heritage Dictionary:
noun
1.
a. A colorless, odorless, tasteless, gaseous mixture, mainly nitrogen (approximately 78 percent) and oxygen (approximately 21 percent) with lesser amounts of argon, carbon dioxide, hydrogen, neon, helium, and other gases.
b. This mixture with varying amounts of moisture and particulate matter, enveloping the earth; the atmosphere.