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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/25 has been entered.
Status of Claims
Applicant’s reply filed 2/18/26 was acknowledged. Claims 3 and 14 were canceled. Claims 1-2, 4-13 and 15-21 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, 4-13 and 20-21 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 modified optical signal to test data from previously collected reference solutions, calculating the pH of the fluid contacting the sensor”, which recite abstract ideas because the “compares” step is a mental step, and the “calculating” step is math. 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 calculate 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, 4-13 and 20-21 all further refine the method steps and were considered, however, the subject matter does not affect the result established above.
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 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, 4-13 and 15-21 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.
Claim 1 is rejected because the structural relationship between the sensor and the OBR is unclear.
Claim 1 is rejected because “interrogating the sensor with an optical signal” is unclear in light of the OBR interrogator. Is the interrogator performing the step of “interrogating the sensor with an optical signal”?
Claim 1 is rejected because the claim language, “determining the pH of the fluid contacting the sensor . . . calculating the pH of the fluid contacting the sensor” is unclear. The claim language appears to be redundant.
Claim 1 is rejected because “using an optical backscatter reflectometry 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”.
Claim 4 is rejected because “simple” optical detector is unclear. What is meant by “simple”?
Claim 5 is rejected because “an optical backscatter reflectometry interrogator” raises an antecedent basis issue.
Claims 8, 10-13 and 17 are rejected because “the pH sensitive material” raises an antecedent basis issue.
Claim 9 is rejected because “comprises comprising using” is unclear. The Office recommends amending to “comprises applying”.
Claim 15 is rejected because “the pH sensitive” raises an antecedent basis issue. The Office recommends amending to “the pH sensitive coating”.
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 withdrawn, and new rejections follow.
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 and 4-13 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 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 (see col. 11, line 20 et seq., which teaches an interrogator 661 illuminates the pH sensing material);
collecting a modified optical signal after the sensor has been interrogated (see col. 11, line 20 et seq., which teaches interrogator gathers exiting light); and
determining the pH of the fluid contacting the sensor using an interrogator, such that the interrogator compares the modified signal to test data from previously collected reference solutions, calculating 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 in the embodiment of fig. 6. Kauffman teaches in e.g., fig. 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 further 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. 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 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 claim 4, 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 claims 8-9, 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.
Claims 15-17 rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (“Kim,” US Pub. No. 2020/0309571, newly cited) in view of Jung.
As to claim 15, Kim discloses in e.g., figs. 3 and 8, and [0017] et seq., a pH sensor (Kim’s sensor discloses the structural features claimed below to be capable of sensing pH; Jung discloses a sensor capable of measuring pH in abstract) comprising:
a fiber (distributed optical fiber sensor in [0031] et seq.) 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 (conductive metal oxide layer forms a metal-organic framework (MOF) film; MOF films are sensitive to the addition of an acid and/or base in [0017] et seq.) on the medial portion of the fiber, wherein the pH sensitive consists of a film and a metal oxide (figs. 3 and 8; [0017] et seq.).
With regard to claim 15, Kim 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, the combination of Kim and Jung disclose e.g., TiO2, in e.g., claims 1-4 of Jung.
As to claim 17, the combination of Kim and Jung disclose the medial portion of the fiber features a plurality of spaced apart portions that are coated with the pH sensitive material in e.g., figs. 3-7 of Kim.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Jung, as applied to claim 15 above, and further in view of Li (CN 1963400 A, 2007, see English translation as the basis for the prior art rejection, previously cited) and van Oort.
See Kim and Jung above.
As to claim 18, Kim 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).
As to claim 19, the combination of Kim, Jung, Li and van Oort disclose a multi-mode fiber in e.g., [0007] et seq. of van Oort.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kauffman in view of van Oort and Jung, as applied to claim 1 above, and further in view of Li.
See Kauffman, van Oort and Jung above.
As to claim 20, Kauffman does not specifically teach the medial portion of the fiber comprises a coreless fiber. Li teaches 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).
As to claim 21, the combination of Kauffman, van Oort, Jung, and Li teach 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, 4-13 and 15-21 have been considered but are moot because of the new grounds of rejections.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached on 571-272-1254.
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/LORE R JARRETT/Primary Examiner, Art Unit 1797
2/20/2026