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 .
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/03/2025 has been entered.
Status of the Claims
Claims 13 and 18 have been amended. Claims 17 and 21 have been canceled. Claims 13-14, 16, 18, 20, and 22-23 are currently pending and are examined herein.
Status of the Rejection
All 35 U.S.C. § 103 rejections from the previous office action are essentially maintained and modified only in response to the amendments to the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-14, 16, 18, 20 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ishige et al. (US20160223486A1) in view of Yamaguchi et al. (US-4798664-A) and Grinsteinner et al. (US20190153179A1). Berger et al. (US-20090218237-A1) used as evidence in claims 13 and 18.
Regarding claim 13, an ion-selective electrode (Ishige teaches an ion selective electrode as seen in Fig. 2 [Figs. 2A-2C, Para. 0041, and Abstract]) comprising:
a sensitive membrane containing an ion-selective substance, a base material, and an Ishige teaches the sensitive membrane 205 that contains an ion selective substance, silver halide, such as silver chloride or silver bromide. Ishige further teaches the ion-sensitive membrane is obtained by mixing a plasticizer and a ligand [a substance that selectively binds to an ion as a measurement target, i.e., an ion-selective substance] into a polymer-based substance [base material], such as polyvinyl chloride, in an internal-liquid-type ISE [Figs. 2A-2C, Para. 0041, 0045, and 0003]);
Ishige is silent to an adipic acid ester-based plasticizer.
However, Ishige teaches an example of a plasticizer material which is oNPOE as a plasticizer in an internal-liquid-type ISE [Para. 0045 and 0053, 0003, 0060 and Fig. 2]. oNPOE is o-nitrophenyl octyl ether as evidenced by Berger et al. [see e.g., Para. 0026 of Berger].
Yamaguchi teaches an ion sensor for measuring the ionic concentration of a solution on the basis of electrode potential response, including an ion carrier membrane/sensitive membrane containing A) polyvinyl chloride, B) ion carrier material, C) electrolyte and D) plasticizer (Col. 9, Lines 18 – 32). Yamaguchi further teaches the plasticizer can be for example either dioctyl adipate ester [which is a adipic acid ester] or o-nitrophenyl octyl ether and these compounds are beneficial because the plasticizer does not readily elute (Col. 7, Lines 53 – 57).
Ishige and Yamaguchi are considered analogous art to the claimed invention because they are in the same field of ion-selective electrodes (see e.g., claims 9 and 12 of Yamaguchi and Fig. 2 of Ishige). 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 material of the plasticizer of Ishige with the plasticizer material of dioctyl adipate ester, as taught by Yamaguchi since Yamaguchi teaches either o-nitrophenyl octyl ether or dioctyl adipate ester are suitable materials for the plasticizer in the sensitive membrane and that these compounds, such as dioctyl adipate ester, would be beneficial because it does not readily elute (Col. 9, Lines 18 – 32; Col. 7, Lines 53 – 57 of Yamaguchi). Furthermore, the claimed limitations are obvious because the substitution of one known element for another yields predictable results to one of ordinary skill in the arts (MPEP 2143[I][B]). Additionally, 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].
a casing holding the sensitive membrane (Ishige teaches a cartridge 201 holding the sensitive membrane 205 [Para. 0041 and Figs. 2A-2C]); and
wherein the ion-selective substance comprises a substance selected from the group consisting of phosphate ester, a quaternary ammonium salt, and a silver halide (Ishige teaches the ion selective substance comprises the substance silver halide, such as silver chloride or silver bromide [Figs. 2A-2C, Para. 0041]).
The embodiment of Fig. 2 of Ishige is silent to an adhesion solvent adhering the sensitive membrane to the casing inside the casing;
However, Ishige explicitly teaches it is possible to replace a part of a structure of an embodiment with a structure of another embodiment. In addition, it is also possible to add, to a structure of an embodiment, a structure of another embodiment. Further, it is also possible to, for a part of a structure of each embodiment, add, remove, or substitute a structure of another embodiment [Para. 0060].
In another embodiment, Ishige teaches an ion-selective electrode and a sensitive membrane 105 and a cartridge 101 [corresponding to a casing], Figure 1 and Para. 0038. Ishige further teaches a solvent, tetrahydrofuran, used for attaching the sensitive membrane 105 to the casing/cartridge 101, which is inside the casing [Para. 0038-0039 and Figure 1]. The solvent, tetrahydrofuran, is an adhesion solvent, since it is used for attaching, as evidenced by the instant specification which discloses tetrahydrofuran is an adhesion solvent [Para. 0004 of the instant specification].
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 sensitive membrane and casing/cartridge of the embodiment of Fig. 2 of Ishige, to include an adhesion solvent adhering the sensitive membrane to the casing inside the casing as taught by the embodiment of Fig. 1 of Ishige, since Ishige teaches it would be beneficial for attaching the sensitive membrane to the casing and Ishige explicitly discloses it is possible to add, to a structure of an embodiment, a structure of another embodiment and it is also possible to, for a part of a structure of each embodiment, add, remove, or substitute a structure of another embodiment [Para. 0038-0039, 0060 and Figure 1 of Ishige]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results, MPEP 2143[I][A].
Modified Ishige is silent to wherein a material of the casing contains a resin having a solubility parameter (SP value) of 20.6 to 21.1;
However, Ishige teaches the cartridge is made of a resin, such as polyvinyl chloride, polystyrene, or polypropylene [Para. 0039]
Grinsteinner discloses a polymer composition [equivalent to a resin] for use in an electronic module (Abstract and title). The electronic module contains the fiber-reinforced polymer and one or more electronic components positioned in the interior (claim 23) and the fiber-reinforced polymer composition may be used to form all or a portion of the cover 108 and/or the housing 102 [Para. 0055]. Grinsteinner further teaches the polymer composition contains an additive, methacrylate-acrylonitrile-butadiene-styrene copolymers (MABS), which is beneficial for improving the impact resistance of the composition [Para. 0042].
Ishige and Grinsteinner are considered analogous art to the claimed invention because they are in the same field of electronic components and polymer compositions for housing electronics (Para. 0039 and Figs. 1-2 of Ishige and Para. 0042 of Grinsteinner). 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 casing material of Ishige, which contains a resin, with the casing material taught by Grinsteinner including a material of methacrylate-acrylonitrile-butadiene-styrene (MABS) resin, since Grinsteinner discloses MABS would be beneficial for improving the impact resistance of the composition and thereby, the casing/housing [Para. 0042 of Grinsteinner]. Furthermore, the claimed limitations are obvious because the substitution of one known element for another yields predictable results to one of ordinary skill in the arts (MPEP 2143[I][B]). Additionally, 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].
Since the prior art does disclose an electronics/electrode housing comprising substantially the same elements or components as that of the applicant, it is contended that the electrode housing of Ishige when substituted by Grinsteinner to include MABS of the prior art would have a solubility parameter falling within the claimed range of 20.6 to 21.1 as claimed in claim 13 above. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. a material of the casing containing a substance having a solubility parameter of 20.6 to 21.1), is necessarily present in the prior art material. [See MPEP 2112.01 (II)].
Regarding claim 14, the ion-selective electrode according to claim 13, wherein the resin is a methyl methacrylate acrylonitrile butadiene styrene resin (Modified Ishige teaches the resin is methacrylate-acrylonitrile-butadiene-styrene copolymers (MABS) resin [see rejection of claim 13 above and Para. 0055, 0042 of Grinsteinner]).
Regarding claim 16, the ion-selective electrode according to claim 13, wherein the base material is polyvinyl chloride (Ishige teaches the polymer-based substance [base material] is polyvinyl chloride in the internal-liquid-type ISE [Figs. 2A-2C, Para. 0041 and 0003]).
Regarding claim 18, an ion-selective electrode (Ishige teaches an ion selective electrode as seen in Fig. 2 [Figs. 2A-2C, Para. 0041, and Abstract]) comprising:
a sensitive membrane containing an ion-selective substance, a base material, and an Ishige teaches the sensitive membrane 205 that contains an ion selective substance, silver halide, such as silver chloride or silver bromide. Ishige further teaches the ion-sensitive membrane is obtained by mixing a plasticizer and a ligand [a substance that selectively binds to an ion as a measurement target, i.e., an ion-selective substance] into a polymer-based substance [base material], such as polyvinyl chloride, in an internal-liquid-type ISE [Figs. 2A-2C, Para. 0041, 0045, and 0003]); and
Ishige is silent to an adipic acid ester-based plasticizer.
However, Ishige teaches an example of a plasticizer material which is oNPOE as a plasticizer in an internal-liquid-type ISE [Para. 0045 and 0053, 0003, 0060 and Fig. 2]. oNPOE is o-nitrophenyl octyl ether as evidenced by Berger et al. [see e.g., Para. 0026 of Berger].
Yamaguchi teaches an ion sensor for measuring the ionic concentration of a solution on the basis of electrode potential response, including an ion carrier membrane/sensitive membrane containing A) polyvinyl chloride, B) ion carrier material, C) electrolyte and D) plasticizer (Col. 9, Lines 18 – 32). Yamaguchi further teaches the plasticizer can be for example either dioctyl adipate ester [which is an adipic acid ester] or o-nitrophenyl octyl ether and these compounds are beneficial because the plasticizer does not readily elute (Col. 7, Lines 53 – 57).
Ishige and Yamaguchi are considered analogous art to the claimed invention because they are in the same field of ion-selective electrodes (see e.g., claims 9 and 12 of Yamaguchi and Fig. 2 of Ishige). 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 material of the plasticizer of Ishige with the plasticizer material of dioctyl adipate ester, as taught by Yamaguchi since Yamaguchi teaches either o-nitrophenyl octyl ether or dioctyl adipate ester are suitable materials for the plasticizer in the sensitive membrane and that these compounds, such as dioctyl adipate ester, would be beneficial because it does not readily elute (Col. 9, Lines 18 – 32; Col. 7, Lines 53 – 57 of Yamaguchi). Furthermore, the claimed limitations are obvious because the substitution of one known element for another yields predictable results to one of ordinary skill in the arts (MPEP 2143[I][B]). Additionally, 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].
a casing holding the sensitive membrane (Ishige teaches a cartridge 201 holding the sensitive membrane 205 [Para. 0041 and Figs. 2A-2C]); and
wherein the ion-selective substance comprises a substance selected from the group consisting of phosphate ester, a quaternary ammonium salt, and a silver halide (Ishige teaches the ion selective substance comprises the substance silver halide, such as silver chloride or silver bromide [Figs. 2A-2C, Para. 0041]).
The embodiment of Fig. 2 of Ishige is silent to an adhesion solvent adhering the sensitive membrane to the casing inside the casing;
However, Ishige explicitly teaches it is possible to replace a part of a structure of an embodiment with a structure of another embodiment. In addition, it is also possible to add, to a structure of an embodiment, a structure of another embodiment. Further, it is also possible to, for a part of a structure of each embodiment, add, remove, or substitute a structure of another embodiment [Para. 0060].
In another embodiment, Ishige teaches an ion-selective electrode and a sensitive membrane 105 and a cartridge 101 [corresponding to a casing], Figure 1 and Para. 0038. Ishige further teaches a solvent, tetrahydrofuran, used for attaching the sensitive membrane 105 to the casing/cartridge 101, which is inside the casing [Para. 0038-0039 and Figure 1]. The solvent, tetrahydrofuran, is an adhesion solvent, since it is used for attaching, as evidenced by the instant specification which discloses tetrahydrofuran is an adhesion solvent [Para. 0004 of the instant specification].
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 sensitive membrane and casing/cartridge of the embodiment of Fig. 2 of Ishige, to include an adhesion solvent adhering the sensitive membrane to the casing inside the casing as taught by the embodiment of Fig. 1 of Ishige, since Ishige teaches it would be beneficial for attaching the sensitive membrane to the casing and Ishige explicitly discloses it is possible to add, to a structure of an embodiment, a structure of another embodiment and it is also possible to, for a part of a structure of each embodiment, add, remove, or substitute a structure of another embodiment [Para. 0038-0039, 0060 and Figure 1 of Ishige]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results, MPEP 2143[I][A].
Modified Ishige is silent to wherein a material of the casing is a methyl methacrylate acrylonitrile butadiene styrene resin;
However, Ishige teaches the cartridge is made of a resin, such as polyvinyl chloride, polystyrene, or polypropylene [Para. 0039]
Grinsteinner discloses a polymer composition [equivalent to a resin] for use in an electronic module (Abstract and title). The electronic module contains the fiber-reinforced polymer and one or more electronic components positioned in the interior (claim 23) and the fiber-reinforced polymer composition may be used to form all or a portion of the cover 108 and/or the housing 102 [Para. 0055]. Grinsteinner further teaches the polymer composition contains an additive, methacrylate-acrylonitrile-butadiene-styrene copolymers (MABS), which is beneficial for improving the impact resistance of the composition [Para. 0042].
Ishige and Grinsteinner are considered analogous art to the claimed invention because they are in the same field of electronic components and polymer compositions for housing electronics (Para. 0039 and Figs. 1-2 of Ishige and Para. 0042 of Grinsteinner). 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 casing material of Ishige, which contains a resin, with the casing material taught by Grinsteinner including a material of methacrylate-acrylonitrile-butadiene-styrene (MABS) resin, since Grinsteinner discloses MABS would be beneficial for improving the impact resistance of the composition and thereby, the casing/housing [Para. 0042 of Grinsteinner]. Furthermore, the claimed limitations are obvious because the substitution of one known element for another yields predictable results to one of ordinary skill in the arts (MPEP 2143[I][B]). Additionally, 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].
Regarding claim 20, the ion-selective electrode according to claim 18, wherein the base material is polyvinyl chloride (Ishige teaches the polymer-based substance [base material] is polyvinyl chloride in the internal-liquid-type ISE [Figs. 2A-2C, Para. 0041 and 0003]).
Regarding claim 22, the electrolyte concentration determination device comprising the ion- selective electrode according to claim 13 (Ishige teaches an electrolyte measuring device [corresponding to an electrolyte concentration determination device], that contains the ISE of Figs. 1 or 2 [Fig. 3 and Para. 0042], and Modified Ishige teaches the modified ion-selective electrode of Fig. 2 according to claim 13, thus Modified Ishige teaches the electrolyte measuring device comprising the ion-selective electrode according to claim 13 [see rejection of claim 13 above; see e.g., Figs. 1-3 and Para. 0041-0042, 0039, 0060, 0003 of Ishige; and Para. 0055, 0042 of Grinsteinner]).
Regarding claim 23, the electrolyte concentration determination device comprising the ion- selective electrode according to claim 18 (Ishige teaches an electrolyte measuring device [corresponding to an electrolyte concentration determination device], that contains the ISE of Figs. 1 or 2 [Fig. 3 and Para. 0042], and Modified Ishige teaches the modified ion-selective electrode of Fig. 2 according to claim 13, thus Modified Ishige teaches the electrolyte measuring device comprising the ion-selective electrode according to claim 18 [see rejection of claim 18 above; see e.g., Figs. 1-3 and Para. 0041-0042, 0039, 0060, 0003 of Ishige; and Para. 0055, 0042 of Grinsteinner]
Response to Arguments
Applicant's arguments, see Remarks Pgs. 4-6, filed 12/03/2025, with respect to the 35 U.S.C. § 103 rejections have been fully considered and are not persuasive.
Applicant’s Argument #1:
Applicant argues on pages 5-6 that Yamaguchi simply teaches that "Compounds are used in which the plasticizer does not readily elute. Examples of such a plasticizer are dioctyl sebacate ester, dioctyl adipate ester, dioctyl maleate ester and di-n-octyl phenylphosphonate, o-nitrophenyl octyl ether." Nothing in Yamaguchi suggests or motivates a person skill in the art to replace oNPOE with an adipic acid ester as the plasticizer. Yamaguchi does not even indicate that adipic acid ester is preferred over oNPOE. Also, selecting a plasticizer that does not readily elute does not mean it can be prevented from transferring to the material of the casing.
The present inventors have found that in the ion-selective electrode, when MABS resin (e.g., methyl methacrylate acrylonitrile butadiene styrene resin) having the SP value of 20.6 to 21.1 is used as the material of the casing, the transfer of an adipic acid ester-based plasticizer contained in the sensitive membrane can be prevented, and both stability and adhesion between the casing and the sensitive membrane can be achieved.
Thus, a person skill in the art would not have been motivated to arrive at the claimed ion- selective electrode comprising "a sensitive membrane containing an ion-selective substance, a base material, and an adipic acid ester-based plasticizer" and "wherein a material of the casing is a methyl methacrylate acrylonitrile butadiene styrene resin" from the cited references. Thus, for at least the above reasons, Applicants respectfully submit that the amended claims 13 and 18, and all claims depending therefrom, are allowable over the art of record.
Examiner’s Response #1:
The examiner respectfully disagrees. As outlined in the rejection above, Yamaguchi further teaches the plasticizer can be for example either dioctyl adipate ester [which is an adipic acid ester] or o-nitrophenyl octyl ether and these compounds are beneficial because the plasticizer does not readily elute (Col. 7, Lines 53 – 57). Thus, it would have been obvious to one of ordinary skill in the art to substitute one known plasticizer material of oNPOE with another known plasticizer material of dioctyl adipate ester, as taught by Yamaguchi, since Yamaguchi specifically teaches either o-nitrophenyl octyl ether or dioctyl adipate ester are suitable materials for the plasticizer in the sensitive membrane (Col. 7, Lines 53 – 57). Furthermore, the claimed limitations are obvious because the substitution of one known element for another [i.e., an oNPOE plasticizer material with a dioctyl adipate ester plasticizer material] yields predictable results [e.g., a plasticizer which functions as a suitable plasticizer in the sensitive membrane and which also does not readily elute] to one of ordinary skill in the arts (MPEP 2143[I][B]). Additionally, 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].
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Yamaguchi specifically teaches the plasticizer can be for example either dioctyl adipate ester [which is an adipic acid ester] or o-nitrophenyl octyl ether and these compounds are beneficial because the plasticizer does not readily elute (Col. 7, Lines 53 – 57). Therefore, 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 material of the plasticizer [oNPOE plasticizer] of Ishige with the plasticizer material of dioctyl adipate ester, as taught by Yamaguchi, since Yamaguchi teaches either o-nitrophenyl octyl ether or dioctyl adipate ester are suitable materials for the plasticizer in the sensitive membrane and that these compounds, such as dioctyl adipate ester, would be beneficial because it does not readily elute (Col. 9, Lines 18 – 32; Col. 7, Lines 53 – 57 of Yamaguchi).
In response to applicant's argument that the plasticizer can be prevented from transferring to the material of the casing and the transfer of an adipic acid ester-based plasticizer contained in the sensitive membrane can be prevented, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the plasticizer can be prevented from transferring to the material of the casing; the transfer of an adipic acid ester-based plasticizer contained in the sensitive membrane can be prevented) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Therefore, applicant’s arguments are unpersuasive and the rejection is maintained.
Conclusion
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/S.Y.O./Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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