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 .
Response to Amendment
This is an office action in response to applicant’s arguments and remarks filed on September 2, 2025. Claims 1-2, 5-6, 8, and 22 are pending in the application and are being examined herein.
Status of Objections and Rejections
All objections from the previous office action are withdrawn in view of Applicant’s amendment.
All rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection under 35 U.S.C. 103 are necessitated by the amendments.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-2, 5-6, 8, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (US 2019/0339226 A1) (hereinafter “Yamamoto-1”) in view of Sai (US 2018/0259477 A1) and further in view of Simpson et al. (US 2010/0317074 A1), as evidenced by Yamamoto et al. (WO 2018/003308 A1) (hereinafter “Yamamoto-2”, and is in the same patent family as Yamamoto-1) with respect to claim 1.
Regarding claim 1, Yamamoto-1 teaches a gas detection device comprising a membrane filter disposed between an electrochemical sensor or a semiconductor metal oxide and an environment exterior to the gas detection device (an electrochemical gas sensor 2 comprising a gas diffusion membrane 8 disposed between a MEA 6 and an environment exterior to the electrochemical gas sensor 2, Yamamoto-1, Fig. 1, para. [0039], [0045]);
wherein the membrane filter comprises a polymer (the gas diffusion membrane 8 includes hydrophilic polymer fibers, Yamamoto-1, Fig. 1, para. [0044]).
Yamamoto-1 teaches wherein the gas diffusion membrane 8 includes the hydrophilic polymer fibers and also includes permeable sheets of electrically conductive carbon black or carbon fiber (Yamamoto-1, Fig. 1, para. [0044]). Yamamoto-1 fails to teach wherein the membrane filter further comprises a molecular sieve.
Sai teaches an electrochemical gas sensor comprising a polymer solid electrolyte membrane, a detection electrode, a counter electrode, and an electrically conductive and porous gas diffusion layer covering the detection electrode (Sai, abstract). Sai teaches that the gas diffusion layer comprises carbon and a hydrophilic polymer (Sai, para. [0014]). Sai teaches that the carbon may be carbon fiber, carbon black, or active carbon (Sai, para. [0015], [0019]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the carbon black or carbon fiber in the gas diffusion membrane of Yamamoto-1 with active carbon as taught by Sai in order to yield the predictable result of an electrically conductive and porous gas diffusion layer covering the detection electrode. Simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 U.S.P.Q.2d 1385 (2007); MPEP § 2143(I)(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07. Examiner notes that the active carbon of Modified Yamamoto-1 reads on the claimed molecular sieve.
Modified Yamamoto-1 teaches wherein the membrane filter comprises the molecular sieve dispersed in the polymer (the gas diffusion membrane 8 comprises the active carbon and the hydrophilic polymer fibers, Yamamoto-1, Fig. 1, para. [0044], Sai, para. [0014]-[0015], [0019], see modification supra); and
wherein the polymer is selected from the group consisting of polyamide and low density polyethylene (the gas diffusion membrane 8 includes the hydrophilic polymer fibers such as poly-amid, Yamamoto-1, Fig. 1, para. [0044]; as evidenced by pg. 4, ln. 27 of Yamamoto-2, poly-amid is polyamide).
Modified Yamamoto-1 teaches that the gas diffusion membrane 8 comprises active carbon (Yamamoto-1, Fig. 1, para. [0044], Sai, para. [0014]-[0015], [0019], see modification supra). Modified Yamamoto-1 is silent with respect to the pore size of the gas diffusion membrane 8, and therefore fails to teach wherein the molecular sieve has a pore size between 2 to 10 micrometers.
Simpson teaches using a molecular sieve for separation of gases, including isolating carbon monoxide from the gas stream and removing other gases from the gas stream so that the remainder may be more efficiently used (Simpson, para. [0167]). Simpson teaches that the molecular sieve comprises active carbon, and contains pores of a precise and uniform size such that molecules that are small enough to pass through the pores are adsorbed while larger molecules are not (Simpson, para. [0171]). Simpson teaches wherein the pore size of the molecular sieve is a result-effective variable. Specifically, Simpson teaches that the pore size of the molecular sieve controls the size of gaseous molecules that can pass through for separation (Simpson, para. [0167], [0171]). Since this particular parameter is recognized as a result- effective variable, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F. 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pore size of the gas diffusion membrane 8 comprising active carbon of Modified Yamamoto-1 to be between 2 to 10 micrometers through routine experimentation because doing so would yield the predictable desired separation and passing through of gases through the gas diffusion membrane (Yamamoto-1, para. [0044], Simpson, para. [0167], [0171]).
The limitation “selectivity of the polymer for a target compound being detected” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114.
Examiner further notes that the polyamide of the gas diffusion membrane 8 disclosed by Modified Yamamoto-1 teaches all of the structural limitations of the claim and thus is configured for and capable of having selectivity for a target compound being detected. Generally, when the structure or composition recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of anticipation has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Regarding claim 2, Modified Yamamoto-1 teaches wherein the electrochemical sensor comprises a membrane electrode assembly (the MEA 6, Yamamoto-1, Fig. 1, para. [0043]).
Regarding claim 5, Modified Yamamoto-1 teaches wherein the molecular sieve comprises one or more of zeolites, metal organic frameworks, engineered activated carbon, and clay (the active carbon, Sai, para. [0014]-[0015], [0019], see modification supra).
Regarding claim 6, Modified Yamamoto-1 teaches the polymer (the polyamide of the gas diffusion membrane 8, Yamamoto-1, Fig. 1, para. [0044], Yamamoto-2, pg. 4, ln. 27), and the gas detection device (the electrochemical gas sensor 2, Yamamoto-1, Fig. 1, para. [0039]).
The limitations “has the selectivity for the target compound” and “capable of detecting the target compound” are interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114. The electrochemical gas sensor 2 disclosed by Modified Yamamoto-1 teaches all of the structural limitations of the claim and thus is configured for and capable of detecting the target compound.
Examiner further notes that the polyamide of the gas diffusion membrane 8 disclosed by Modified Yamamoto-1 teaches all of the structural limitations of the claim and thus is configured for and capable of having the selectivity for the target compound. Generally, when the structure or composition recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of anticipation has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Regarding claim 8, Modified Yamamoto-1 teaches that the thickness of the gas diffusion membrane 8 under pressure is determined according to the height of the wall surface 17 (Yamamoto-1, Fig. 1, para. [0044], [0049]). Modified Yamamoto-1 is silent with respect to values of the thickness of the gas diffusion membrane 8, and therefore fails to teach wherein the membrane filter has a thickness of 10 to 5000 micrometers.
Sai teaches an electrochemical gas sensor comprising a polymer solid electrolyte membrane, a detection electrode, a counter electrode, and an electrically conductive and porous gas diffusion layer covering the detection electrode (Sai, abstract). Sai teaches that the gas diffusion layer 25 comprises carbon and a hydrophilic polymer (Sai, Fig. 2, para. [0014]-[0015], [0019], [0053]-[0054]). Sai teaches that the gas diffusion layer 25 has a thickness of 200 µm (Sai, Fig. 2, para. [0053]-[0054]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the gas diffusion membrane 8 of Modified Yamamoto-1 to be 200 µm as taught by Sai in order to yield the predictable result of gas diffusion in an electrochemical gas sensor.
Regarding claim 22, Modified Yamamoto-1 teaches wherein the polymer comprises polyamide (the polyamide of the gas diffusion membrane 8, Yamamoto-1, Fig. 1, para. [0044], Yamamoto-2, pg. 4, ln. 27).
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in light of new grounds of rejection. Prior art Yamamoto-1 in view of Sai is now relied on for the feature of wherein the membrane filter comprises the molecular sieve dispersed in the polymer as recited in the rejection supra.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794