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 Claims
Applicant’s reply filed 5/26/26 was acknowledged. Claims 3, 8, 14 and 18 were canceled. Claims 1-2, 4-7, 9-13, 15-17 and 19-22 are pending and are under examination.
Response to Reply
Claim Rejections - 35 USC § 101
In light of applicant’s claim amendments, the prior rejection is modified and maintained for the reasons indicated below.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 4-7, 9-13 and 19-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 1, for example, recites “compares the backscattered modified optical signal to test data from previously collected reference solutions, determining the pH of the fluid contacting the sensor”, which recite abstract ideas because the “compares” step is a mental step. With regard to the “optical backscatter reflectometry (OBR)”, this is considered extra-solution activity. See MPEP 2106.05(b)(I), (II) and (III).
This judicial exception is not integrated into a practical application because after the “compares” step, no action is taken. As recited in e.g., [0075] of applicant’s published application, once the user compares the collected modified optical signal with test data in reference solutions to determine the pH, then no action is taken.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps are routine, and the sensor, fiber, pH sensitive material/coating/thin film and optical backscatter reflectometry (OBR) interrogator appear to be conventional in the art, especially in light of the cited prior art references.
Dependent claims 2, 4-7, 9-13 and 20-22 all further refine the method steps and were considered, however, the subject matter does not affect the result established above.
To help overcome the 35 U.S.C. 101 rejection, the Office suggests:
1) including claim language from pending claim 2, “consisting of: Ta2O5,” which includes the metal oxide not disclosed in the cited prior art rejections; and
2) amending the last “determining” step to recite, “calculating the pH of the fluid contacting the sensor based on the OBR interrogator comparing the collected backscattered modified optical signal to test data from previously collected reference solutions.”
Claim Rejections - 35 USC § 112
In light of applicant’s claim amendments, the prior rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are modified and withdrawn, and new rejections follow.
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, 4-7, 9-13 and 19-22 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.
The prior rejection of claim 1 is modified and maintained because the structural relationship between the sensor and the OBR interrogator is unclear. While the amended claim includes “a light source”, the structural relationship between the sensor, OBR interrogator and light source is unclear. Is the light source structurally part of the OBR interrogator? If so, then the Office suggests amending “a light source” to “a light source of an optical backscatter reflectometry (OBR) interrogator;”.
The prior rejection of claim 1 is modified and maintained because the claim language, “determining the pH of the fluid contacting the sensor . . . determining the pH of the fluid contacting the sensor” is unclear. The claim language appears to be redundant. See suggested amended claim language above to overcome this rejection.
Claim 1 is rejected because the “collecting” step is unclear in light of the OBR interrogator. Is the OBR interrogator collecting the backscattered modified optical signal? If so, the Office suggests amending the “collecting” step to recite “collecting with the OBR interrogator the backscattered modified optical signal after the sensor has been interrogated;”.
The prior rejection of claim 1 is modified and maintained because “using an optical backscatter reflectometry (OBR) interrogator” merely recites a use, e.g., “using,” without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q). The Office recommends amending “using” to “with”.
The prior rejection of claim 4 is modified and maintained because the structural relationship between the sensor, OBR interrogator and optical detector is unclear. Is the optical detector structurally part of the OBR interrogator? If so, then the Office suggests amending “an optical detector” to “an optical detector of the OBR interrogator”.
Claim 19 is rejected because the preamble is directed to the sensor, but the claim is dependent on the claimed method of claim 1. For examination purposes, the Office will interpret claim 19 to be directed to the claimed method of claim 1.
Claim 22 is rejected because the structural relationship between the sensor, OBR interrogator and optical detector is unclear. Is the optical detector structurally part of the OBR interrogator? If so, then the Office suggests amending “an optical detector” to “an optical detector of the OBR interrogator”.
Claim Interpretation
A “wherein” clause may have a limiting effect on a claim if the language limits the claim to a particular structure. MPEP 2111.04. The determination of whether a “wherein” clause is a limitation in a claim depends on the specific facts of the case. While all words in each claim are considered in judging the patentability of the claim language, including functional claim limitations, not all limitations provide a patentable distinction. During patent examination, the examined claims must be given their broadest reasonable interpretation consistent with the specification, unless a term has been given a special definition in the specification (“BRI”). See MPEP 2111.
Prior Art Rejections
In light of applicant’s claim amendments, the prior art rejections are modified.
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 1-2, 4-7, 9-13, 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kauffman et al. (“Kauffman,” US 10274431, previously cited and cited in IDS) in view of van Oort et al. (“van Oort,” US Pub. No. 2017/0139076, previously cited) and Jung et al. (“Jung,” KR 20060025078 A, 2006, see English translation as the basis for the prior art rejection, previously cited).
As to claim 1, Kauffman teaches in e.g., fig. 6, a method to determine the pH of a fluid contacting a sensor consisting of:
providing the sensor (e.g., pH sensing material is a sensing head 660) to an environment that comprises temperatures more than 80 degrees Celsius (see col. 1, line 40 et seq.) such that the sensor is in contact with the fluid (e.g., aqueous solution S), wherein the sensor extending between a first end and a second end along a longitudinal axis, wherein the sensor further comprises a medial portion positioned between the first and second ends, the medial portion featuring a pH sensitive coating, wherein the pH sensitive coating comprises a film comprising a metal oxide (e.g., see figs. 3a-c and col. 4, line 64 et seq., which teaches pH sensing materials 332 comprises metal-oxide”);
interrogating the sensor with an optical signal generated by a light source (see col. 11, line 20 et seq., which teaches an interrogator 661 illuminates the pH sensing material with incident light);
collecting a backscattered modified optical signal after the sensor has been interrogated (see col. 11, line 20 et seq., which teaches interrogator gathers exiting light);
generating a spatially resolved backscatter profile along the length of the fiber using an interrogator (see figs. 4, 8, 9 and 11); and
determining the pH of the fluid contacting the sensor using the interrogator, such that the interrogator compares the backscattered modified optical signal to test data from previously collected reference solutions, determining the pH of the fluid contacting the sensor (see col. 11, line 20 et seq., which teaches “an indication of the pH of aqueous solution S is provided by comparison of the observed meter reading and a reference meter reading, where the reference meter reading results from a reference measurand generated under reference conditions, such as when aqueous solution S has a neutral pH or some other condition”).
With regard to claim 1, Kauffman does not specifically teach the sensor comprises a fiber with a plurality of spaced apart portions that are coated with the pH sensitive material in the embodiment of fig. 6. Kauffman teaches in e.g., col. 4, line 27 et seq., a pH sensing material (“sensor”) illuminated by a wave propagating along a waveguide, such as a fiber optic cable. The waveguide is comprised of a core material 223 in contact with a cladding material 224, where core material 223 has a refractive index greater than cladding material 224. For example, core material 223 and cladding material 224 may be comprised of silica and various additions. Kauffman discloses in e.g., col. 5, line 4 et seq., the pH sensing material comprises metal-oxide/inorganic core-shell nanoparticles. Metal-oxide/inorganic core-shell nanoparticles are comprised of metals commonly referred to as noble or precious metals which tend to exhibit improved resistance to corrosion, reduced reactivity, and relatively high melting points such as gold, palladium, silver, platinum, ruthenium, rhodium, osmium, or iridium, or alloys or compounds thereof, at least partially surrounded by an inorganic oxide shell. Kauffman further discloses in e.g., fig. 3 and col. 6, line 53 et seq., a plurality of spaced apart portions that are coated with pH sensitive coating. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to specifically have a sensor comprising a fiber with a plurality of spaced apart portions that are coated with the pH sensitive material in the embodiment of fig. 6 of Kauffman because it would allow for mapping of information about pH in real-time spatially within harsh conditions such as wellbores and throughout geological formations (col. 2, line 62 to col. 3, line 5 of Kauffman).
With regard to claims 1 and 5, Kauffman does not specifically teach an optical backscatter reflectometry (OBR) interrogator. van Oort teaches the change in the property of the optical fiber can be measured at the surface of the wellbore using a surface read-out machine. In one embodiment, the surface read-out machine may be a hybrid Brillouin-Rayleigh distributed fiber optic sensing system. Examples of commercially available fiber optic sensing systems that could be used as the surface read-out machine include DITEST STA-R™ from Omnisens, FORESIGHT™ from OZ Optics, Ltd., NEUBRESCOPE™ from Neubrex Co. Ltd., Optical Backscatter Reflectometer™ (OBR) from LUNA. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to specifically have an optical backscatter reflectometer because it would be desirable to utilize a commercially available surface read-out machine that can provide reliable results ([0046] of van Oort).
With regard to claim 1, Kauffman does not specifically teach the thickness of the pH sensitive coating. Jung teaches in claim 8, and above claim 8 in the claims section, the metal oxide thickness of the metal/metal oxide composite on the metal surface is 0.01 to 10 um; a metal oxide thickness of the metal / metal oxide composite on the metal surface is 0.001 to 100 um. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to specifically have the claimed thickness range because such dimensions are result-effective variables, and thus, a person of ordinary skill in the art can determine, through routine experimentation, the claimed dimensions because discovering the optimum or workable ranges involves only routine skill in the art. Furthermore, sizes and dimensions of claimed features are not sufficient to define over the prior art, absent some evidence of unexpected results in using the claimed dimensions.
As to claims 2 and 10, see e.g., col. 4, line 64 et seq. of Kauffman.
As to claims 4 and 22, see fig. 6 and col., 11, line 20 et seq. of Kauffman.
As to claim 6, see col. 1, line 40 et seq. of Kauffman.
As to claim 7, see col. 3, line 36 et seq. of Kauffman.
As to claim 9, see e.g., fig. 3, and col. 6, line 53 et seq. of Kauffman.
As to claim 11, col. 7, line 3 et seq. of Kauffman.
As to claims 12 and 13, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. Here, Kauffman teaches the claimed product, as explained in the rejection above.
As to claim 19, the combination of Kauffman, van Oort, Jung teach a multi-mode fiber in e.g., [0007] et seq. of van Oort.
Claims 15-17 and 20-21 rejected under 35 U.S.C. 103 as being unpatentable over Kauffman in view of Li (CN 1963400 A, 2007, see English translation as the basis for the prior art rejection, previously cited), Jung and van Oort.
As to claim 15, Kauffman discloses in col. 4, line 27 et seq., a pH sensor comprising:
a fiber (fiber optic cable) extending between a first end and a second end along a longitudinal axis, wherein the fiber further comprises a medial portion positioned between the first and second ends; and
a pH sensitive coating (pH sensing material) on the medial portion of the fiber, wherein the pH sensitive consists of a film and a metal oxide (col. 4, line 64 et seq.).
With regard to claims 15 and 20, Kauffman does not specifically disclose the medial portion of the fiber comprises a coreless fiber. Li discloses in FIG. 2, a reflection type sensor structure. In this structure, the coreless optical fiber 103 only with the input single mode fiber 101 at one end of the other end face of the coreless fibre 103 using optical coating technology to manufacture a reflecting film, the light reflection by the coreless fiber 103, transmitted along the opposite direction, and then coupled to the input single mode fiber 101 to form the temperature-refractive index sensor is single-end sensor. See page 3 of English translation. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to specifically have a coreless fiber advantage of the invention is that the device has simple structure, easy to manufacture, the cost is low (p. 3 of Li).
With regard to claim 15, Kauffman does not specifically disclose the thickness of the pH sensitive coating. Jung discloses in claim 8, and above claim 8 in the claims section, the metal oxide thickness of the metal/metal oxide composite on the metal surface is 0.01 to 10 um; a metal oxide thickness of the metal / metal oxide composite on the metal surface is 0.001 to 100 um. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to specifically have the claimed thickness range because such dimensions are result-effective variables, and thus, a person of ordinary skill in the art can determine, through routine experimentation, the claimed dimensions because discovering the optimum or workable ranges involves only routine skill in the art. Furthermore, sizes and dimensions of claimed features are not sufficient to define over the prior art, absent some evidence of unexpected results in using the claimed dimensions.
As to claim 16, see e.g., col. 4, line 64 et seq. of Kauffman.
As to claim 17, Kauffman further discloses in e.g., fig. 3 and col. 6, line 53 et seq., a plurality of spaced apart portions that are coated with pH sensitive coating.
As to claim 21, the combination Kauffman, Li, Jung and van Oort disclose a multi-mode fiber in e.g., [0007] et seq. of van Oort.
Response to Arguments
Applicant's arguments, with respect to claims 1-2, 4-7, 9-13 and 19-22, filed 5/26/26 have been fully considered but they are not persuasive.
In response to applicant’s argument on p. 7-8 that the references are from non-analogous arts, the Office respectfully disagrees. In response to applicant's argument that the references are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kauffman is in the field of inventor’s endeavor because Kauffman relates to the method for sensing the pH of an aqueous solution through evaluation of the optical signal of a pH sensing material comprising optically active nanoparticles where the optically active nanoparticles comprise an inorganic oxide, have a localized refractive index modulation, and are fixed to a substrate. See e.g., col. 1, line 24 et seq. of Kauffman. Furthermore, when more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See MPEP 2141.01(a).
In response to applicant’s arguments on p. 8-9 of the reply that there is no valid reason or motivation to combine the references, the Office respectfully disagrees. 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). Applicant should further note that if the search of the prior art and the resolution of the Graham factual inquiries reveal that an obviousness rejection may be made using the familiar teaching-suggestion-motivation (TSM) rationale, then such a rejection should be made. Because of KSR, the Office recognizes that rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 82 USPQ2d at 1396. Below are exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
In this case, the Office has clearly shown that there is an articulated reasoning with rational underpinning to support the legal conclusion of obviousness by applying rationale (G), which is the teaching-suggestion-motivation (TSM) rationale. The Office has clearly and properly met the obviousness standard by articulating that one of ordinary skill in the art would be motivated to combine the teachings of Kauffman, van Oort and Jung because Kauffman, for example, explicitly teaches the benefit of having a sensor comprising a fiber with a plurality of spaced apart portions that are coated with the pH sensitive material because it would allow for mapping of information about pH in real-time spatially within harsh conditions such as wellbores and throughout geological formations (col. 2, line 62 to col. 3, line 5 of Kauffman). Therefore, the combination of Kauffman, van Oort and Jung is proper because persons skilled in the art would appreciate the teachings of the cited prior art references to improve Kauffman’s claimed invention.
Applicant’s arguments with respect to claims 15-17 have been considered but are moot because of the new ground of rejection.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORE RAMILLANO JARRETT whose telephone number is (571)272-7420. The examiner can normally be reached Monday to Friday.
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/LORE R JARRETT/Primary Examiner, Art Unit 1797
9/26/2026
