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 Amendment
The amendment filed on 23 July 2025 fails to place the application in condition for allowance.
Claims 1, 2, and 5-14 are currently pending.
Claims 1, 2, 5-7, and 14 are currently under examination.
Claims 8-13 are currently withdrawn.
Status of Rejections
The rejections of claims 1and 2 over Tanahashi et al (US 2009/0205975 A1) are herein with drawn due to Applicant’s amendment filed 29 December 2025
All other previous rejections are herein maintained.
Claim Rejections - 35 USC § 101
Claims 1, 2, 5-7, and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception without significantly more. The claim recites in line 21 the equation: pH=7x(1-n)+nxlog[96485xV/(((([A-]-[A+])xnxc/d)-Csd)xfxE)], which is considered to be a law of nature and is thus a judicial exception.. This judicial exception is not integrated into a practical application because the equation defines the pH of a solution based on a variety of variables but does not further limit the device as instantly claimed. While the claim recites “a differential determined by the equation…”, the differential referred to is the “[A-]-[A+]” term, which while able to be calculated from a desired pH, merely recites what the pH may be based on the variety of variables when the device is placed in use. Thus, given the amended claim limitations that require the nominal surface areas of the positive electrode and negative electrode to be different, the judicial exception the equation itself is not actually integrated into an application.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim merely links the judicial exception to a particular technological environment in describing how a desired pH of the device may be determined when using the device, without materially limiting the device as claimed. See MPEP 2106.05(h), option iii, analogous to limiting the determination of pH in a generic device for generating an aqueous solution having a desired pH.
Applicant’s amendment “wherein the differential between the first nominal surface area and the second nominal surface area, as calculated by the equation, allows the at least one positive electrode and the at least one negative electrode to generate (1) the aqueous hypochlorous acid solution that is (a) more than 70% of hypochlorous acid and (b) at a pH of 4 to 6 and (2) minimal concentrations of chlorine gas” appears to attempt to integrate the equation into a practical application via defining a function result of forming aqueous hypochlorous acid at a particular pH and minimal concentrations of chlorine. These phrases when read in light of the specification do not further limit any particular structure of the device. It appears Applicant is attempting to define the device’s structure via design intention of forming a device. In other words, the equation implies a structural relationship between the two electrode surface areas – that there is a differential where one is larger than the other, but ultimately does not further limit the device itself as the equation is not integrated into the device in any meaningful way. Thus, the device does not use the equation in performing a function of generating an aqueous hypochlorous acid solution, thereby lacking a practical integration of the judicial exception.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claims 1-3, 5-7, and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
As to claim 1, the phrase “capable of being grounded” is deemed to be new matter because the phrase “capable” or equivalent is not found within the context of the specification.
Claim Rejections - 35 USC § 112(b)
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, 2, and 5-7 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.
As to the recitation of “capable of being grounded” in line 17 of claim 1, the phrase is interpreted in accordance with the instant specification [0182] of the instantly published application of US 2020/0399148 A1. It is unclear what is meant by “grounding” the electrode. At best, it is deemed to strip accumulated charge in accordance with paragraph [0181]. However, the claims are drawn to a device, thus a device per se has no charge associated when either not in operation or before operation. It is indefinite what structural limitations or properties the “grounded” imparts to the electrode as claimed. If it is to be interpreted as merely an absence of charge, then virtually any electrode as made satisfying the surface area limitations of the prior art would meet the instant claim limitation. If the recitation is meant that the electrode is “grounded” in an electrical sense, the claim lacks any description of electrical components or the like to satisfy said requirement in a physical limitation manner. Furthermore, the recitation of “capable” is indefinite because it is unclear what structure, if any, would render an electrode “capable” to be grounded.
As to claim 1, the recitation “by a differential determined by the equation…” is deemed indefinite because it is unclear how it further limits the device as claimed. The desired pH is deemed to be a product of using the system with different electrodes with different surface areas, thus any such system will be capable of calculating the desired pH based on the formula as claimed with variables and conditions accounted for within the equation. The claim seems to be attempting to define what the surface areas are based on a hypothetical desired pH, but based on the equation, there are a variety of different surface area combinations to arrive at the same pH based only on their difference, assuming other variable constant. Thus, the equation itself is actually unbound in defining the specific physical parameters of the electrodes. By inclusion of the formula, the claim raises questions as to the metes and bounds of the instant claim and questions to the public with respect to avoiding infringing. For example, a device may satisfy the surface area requirements as claimed, i.e. the physical properties of the device, yet unclear if the formulaic limitation is met. If there is a limit as to what the differential may be, it is not defined to claimed because to the multitude of variables claimed, such that the scope is further deemed indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanahashi et al (US 2017/0137305 A1 herein referred to as Tanahashi ‘305).
As to claims 1 and 2, Tanahashi ‘305 discloses a device for generating an aqueous hypochlorous acid solution having a desired pH of 4-6 (Title, [0041]) using an asymmetric electrochemical cell consisting of:
(A) a cell housing (#11 in all figures) having a single inlet/outlet aperture (See Fig. 1 open top) ;
(B) a single positive electrode (#21) (a) within the cell housing, (b) has a first surface defined by the at least positive electrodes width and length, and within that first surface area is either a first nominal surface area or a second nominal surface area wherein the second nominal surface area has a smaller surface area than the first nominal surface area, and the firsts surface area’s nominal surface area is the area within the first surface area that allows the ions having a hydration layer to enter through the positive electrode’s porous structure in m2/gr ([0047] );
(C) a single negative electrode (#22) (a) within the cell housing, and (b) has as second surface area defined by the at least negative electrode’s width and length, and within that second surface area is (i) the first nominal surface area when the at least one positive electrode has the second nominal surface area and (ii) the second nominal surface area when the at least one positive electrode has the first nominal surface area, and second surface area’s nominal surface area is within the second surface area that allows the ions having ahydration layer to enter through the negative electrode’s porous structure in m2/gr ([0047]) ; and
- a power supply that transmits a single current, the single current is applied between the positive and negative electrodes to produce a hypochlorous acid solution having a pH of 4-6 (#12 [0082] note the recitation does not preclude application of more than a single current, just that the power supply is capable of applying a single current);
wherein the first nominal surface area electrode is surface-treated and grounded (absent recitation as to the specific surface treatment, the prior art is devoid of charge when not in operation thus satisfying the instant claim recitation provided the interpretation above);
As to the limitation of “wherein the differential between the first nominal surface area and the second nominal surface area, as calculated by the equation, allows the at least one positive electrode and the at least one negative electrode to generate (1) the aqueous hypochlorous acid solution that is (a) more than 70% of hypochlorous acid and (b) at a pH of 4 to 6 and (2) minimal concentrations of chlorine gas.” , since the surface areas are an inherent feature that can have a range of value as cited above and Tanahashi disclose the surfaces areas which satisfy the physical characteristic of the device as claimed, the intended result of forming hypochlorous acid is deemed to be a functional capability of the structural limitations of the instant claim language under MPEP 2114, and thus prior art is deemed capable of forming hypochlorous acid as claimed when provided appropriate reactants. Tanahashi ‘305 further discloses controlling the pH via the voltage application ([0087]).
As to the recitation of “by a differential determined by …E is the overall electric potential of the electrochemical cell…” and the definition of normalizing factor of instant claim 2, the formula is deemed to be a natural law as defined above and deemed met because the pH is ultimately dependent upon the different in surface areas of the electrodes where the prior art discloses the electrodes have different surface areas. In other words, the prior art discloses the device which satisfies all the structurally required limitations of the instant claim language, and when provided different numbers would naturally result in different desired pHs. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (MPEP 2114 (II)).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tanahashi ‘305 in view of Yang et al (US 2010/0140096 A1).
As to claim 5, Tanahashi ‘305 fails to explicitly disclose oxide functional groups.
Yang teaches that the active material for a capacitive adsorption electrode may include an oxygen containing functional group, including a phenol group, a phenoxy group, a lactone group, a carboxyl group, a carbonate group, or a carbonyl group (see paragraph 0013).
It would have been obvious to a person having ordinary skill in the art at the time of the effective filing date of the application to modify the apparatus taught by Tanahashi ‘305 by having the active material for the high surface area adsorption electrode comprise oxide functional groups as taught by Yang. Combining prior art elements according to known methods to yield predictable results is a rationale that may support a conclusion of obviousness (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) (see MPEP 2143 (I)(A)).Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tanahashi in view of Peters et al (US 2012/0121731 A1).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tanahashi ‘305 in view of Peters et al (US 2012/0121731 A1).
As to claim 6, Tanahashi ‘305 fails to explicitly disclose the device being a sprayer. Peters discloses a spray sanitizing system (Title) with an electrolytic cell (See Fig. 1 #132A) and sprayer (#172) to produce hydrochloric acid ([0086]). Thus the use of an electrolytic cell such as Tanahashi ‘305 with the sprayer of Peters provides either a recognized device for formation of treatment liquids necessary in Peters OR using a spraying device in order to apply the solutions formed in Tanahashi ‘305. See MPEP 2143 A.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tanahashi ‘305in view of Joshi et al (US 2015/0001066 A1).
As to claim 7, Tanahashi ‘305 fails to explicitly disclose the device being a towellet. Joshi discloses a disinfectant wipe (Title) with an electrolytic cell (“ion source”). Thus the use of an electrolytic cell such as Tanahashi with the wipe of Jopshi provides either a recognized device for formation of treatment liquids necessary in Peters OR using a wiping device in order to apply the solutions formed in Tanahashi ‘305. See MPEP 2143 A.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tanahaski ‘305 as applied to claim 1 above, and further in view of Tanahashi et al (US 2009/0205975 A1).
As to claim 14, Tanahashi ‘305 discloses the use of a titanium metallic sponge ([0145] = “titanium expanded metal”) to form the net electrodes. Tanahashi ‘305 fails to disclose wherein the first nominal surface area is activated carbon.
Tanahashi discloses using activated carbon for the electrode with a surface area greater than the other electrode. ([0014], [0043] with large specific surface areas).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used activated carbon to form the first nominal surface area electrode as taught by Tanahashi for the high surface area electrode in Tanahashi ‘305 because it allows for a low and uniform solution resistance be obtained which reduces the polarization and thus increasing the current efficiency ([0041], [0045] Tanahashi) and allows got a high surface area allowing solution to pass through easily thus improving the speed of producing the acid or alkaline solution ([0045] Tanahashi).
Response to Arguments
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive.
Applicant presents arguments towards previously cited Tanahashi on pgs. 8-10 of the response filed 29 December 2025 without directly addressing the previous rejections under Tanahashi ‘305. Thus, the current rejections of record maintain the rejections over Tanahasi ‘305 with respect to Fig. 1 showing only a singular opening for an inlet/outlet and only a singular negative and positive electrode thus satisfying the amended consisting of transitional phrase.
In response to Applicant’s argument that the electrode does define the device by a differential on pg. 10, this argument is not persuasive for the reasons outlined above as Applicant concedes, the insinuation is reliant upon a determination a manufacturer has to make as a design choice. The actual differential is defined arbitrarily based on a variety of variable which are not constant, i.e. permittivity of different solution, distances, discharge capacity, etc.
In response to Applicant’s arguments towards the phrase “Grounded”, the amended limitation has been addressed above.
No further arguments are presented.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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 at 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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LOUIS J RUFO/Primary Examiner, Art Unit 1795
Prosecution Insights