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
Amendments to the drawings, abstract, specification, and claims filed on 7 January 2026 are acknowledged. Claim 1 is amended; claims 3-7 and 9-20 are canceled; and claims 21-30 are newly added. Claims 1, 2, 8, and 21-30 are pending and are presented for examination on the merits.
In response to the amendments filed on 7 January 2026, the priority statement is modified; the objections to the drawings are withdrawn; the objections to the abstract are withdrawn; the objections to the specification are withdrawn; the objections to the claims are withdrawn; a duplicate claim warning is added; the rejections under 35 U.S.C. 112(b) are partially withdrawn and modified; the rejections under 35 U.S.C. 112(a) are changed; and the rejections over the prior art are maintained with modification.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/181469, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application.
Regarding independent claim 1, the provisional application does not disclose that magnetic nanoparticle composites are "heavy-metal free."
Regarding independent claim 1, the provisional application has no teaching regarding a "statistically significant change," statistical significance, or the like.
Regarding independent claim 1, the provisional application does not contain the term "polarized," or the like.
Regarding dependent claim 24, the provisional application does not contain the term "1.5 Tesla," or the like.
Regarding dependent claim 26, the provisional application does not contain the term "reciprocal space," or the like.
Regarding dependent claim 27, the provisional application does not contain the terms "radius," "28-29 nm," "polydispersity," "0.31," or the like.
Regarding dependent claim 30, the provisional application does not link 0.007 Tesla to a hysteretic state or hysteresis.
Duplicate Claim Warning
Applicant is advised that should claim 2 be found allowable, claim 28 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Interpretation
Claim 1 recites the limitation "wherein the sensor is configured such that the presence of a heavy metal in contact therewith is determinable by a statistically significant change between a heavy metal free state and a heavy metal exposed state in at least one of: … (iii) a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla." Regarding the meaning of a "non spin flip difference signal," the specification teaches that "The non-spin-flip difference (↓↓−↑↑) is a measure of magnetism parallel to the applied field modulated by the structure factor of whatever the magnetic scattering" ([0014] of published application).
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, 8, and 21-30 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The terms "heavy metal," "heavy metal free state," "heavy metal exposed state" in claim 1 are relative terms which render the claim indefinite. The term "heavy metal" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Moreover, the claim appears to contradict itself by reciting that the sensor can have a "heavy metal free state" as well as the limitation "said magnetic nanoparticle composites comprising carbon nanotubes intercalated with CoFe2O4." Cobalt has an atomic number of 27, and iron has an atomic number of 26. The specification and claims 2 and 28 recite that an example of the heavy metal is chromium. Chromium has an atomic number of 24, less than both cobalt and iron. If chromium is a heavy metal, then heavier cobalt and iron must also be heavy metals. Accordingly, if the magnetic nanoparticle composites comprise CoFe2O4, by this understanding of heavy metal, the magnetic nanoparticle composites cannot have a "heavy metal free state." Elsewhere in this office action, the limitations "heavy metal free state" and "heavy metal exposed state" are interpreted as an "analyte-free state" and an "analyte-exposed state," where the analyte is a heavy metal.
Dependent claims 2, 8, and 21-30 are rejected for inheriting the deficiencies of the independent claim.
Claims 2 and 28 recite the limitation "said heavy metal." There is insufficient antecedent basis for this limitation because claim 1 previously introduces "heavy metal" in the preamble and within the limitation "the presence of a heavy metal."
Claim 8 recites the limitation "A sensor according to claim 5." There is insufficient antecedent basis for this limitation in the claim. Elsewhere in this office action, claim 8 is interpreted as depending from claim 1.
Claim 23 recites the limitation "the field." There is insufficient antecedent basis for this limitation because claim 1 previously introduces "coercive field" and claim 23 previously introduces "a remanent field."
Claim 24 recites the limitation "the non spin flip difference signal." There is insufficient antecedent basis for this limitation because claim 1 previously introduces "a polarized small angle neutron scattering non spin flip difference signal" and claim 23 previously introduces "a non spin flip difference signal corresponding to moments aligned with the field."
Claim 24 recites the limitation "the spin flip difference signal." There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 2, 8, and 21-30 are rejected under 35 U.S.C. 112(a) 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, at the time the application was filed, had possession of the claimed invention.
The examiner respectfully reminds the Applicant that according to MPEP §2163:
"2163.02. Standard for Determining Compliance with Written Description Requirement:
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed. The test for sufficiency of support in a parent application is whether the disclosure of the application relied upon “reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)). Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the University of California v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharmaceutical, 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by “whatever characteristics sufficiently distinguish it”).
(I)
Independent claim 1 has been amended to recite the limitation "wherein the sensor is configured such that the presence of a heavy metal in contact therewith is determinable by a statistically significant change between a heavy metal free state and a heavy metal exposed state in at least one of: (i) coercive field; (ii) saturation magnetization at ±15 kOe; and (iii) a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla."
The closest written description support in the original disclosure is found in the teaching of "a method for detecting trace amounts of heavy metal in a liquid comprising contacting a sample of said liquid with a magnetic nanoparticle composite comprising carbon nanotubes intercalated with CoFe2O4 and measuring the neutron scattering, X-ray diffraction and/or magnetic properties of the magnetic nanoparticle composite, where a statistical difference in the neutron scattering, X-ray diffraction, X-ray absorption, or magnetic properties of the magnetic nanoparticle composite before and after contact between the sample of liquid and the magnetic nanoparticle composite indicates the presence of a heavy metal in the liquid" ([0021] of published application; see also abstract and original claim 14).
The broad teaching in the original disclosure of a statistical difference in "neutron scattering" does not provide sufficient written description support for the claimed statistically significant change in "(iii) a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla."
The broad teaching in the original disclosure of a statistical difference in "magnetic properties" does not provide sufficient written description support for the claimed statistically significant change in "(i) coercive field" or "(ii) saturation magnetization at ±15 kOe."
Sufficient support for the stand-alone limitation of the sensor being configured such that the presence of [chromium] in contact therewith is determinable by a change between [an analyte-free] state and [an analyte-exposed] state in "(i) coercive field" is found in the specification's description that the Fig. 3 inset on the top left compares the coercive field of CFO/CNT and CFO/CNT-K2Cr2O7 ([0027] of published application) and the illustration in the top left inset of Fig. 3 of the HC(Oe) values of CFO/CNT versus CFO/CNT-Cr.
Sufficient support for the stand-alone limitation of the sensor being configured such that the presence of [chromium] in contact therewith is determinable by a change between [an analyte-free] state and [an analyte-exposed] state in "(ii) saturation magnetization at ±15 kOe" is found in Fig. 3 and the specification's description thereof.
Dependent claims 2, 8, and 21-30 are rejected for inheriting the deficiencies of the independent claim.
(II)
Independent claim 1 has been amended to recite the limitation "(iii) a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla."
Dependent claims 23-26 and 30 also recite the limitation "about 0.007 Tesla."
The original disclosure supports the stand-alone limitation of determining a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla (Figs. 4A and 4B and associated description of the specification).
There is no disclosure in the original description of "about 0.007 Tesla." This is new matter.
Dependent claims 2, 8, and 21-30 are rejected for inheriting the deficiencies of the independent claim.
(III)
Independent claim 1 has been amended to recite the limitation "wherein the sensor is configured such that the presence of a heavy metal in contact therewith is determinable by a … change between [an analyte-]free state and [an analyte-]exposed state in at least one of: … (iii) a polarized small angle neutron scattering non spin flip difference signal at … 0.007 Tesla."
As noted above in the rejections under 35 USC 112(b), the indefinite limitations "heavy metal free state" and "heavy metal exposed state" are interpreted as an "analyte-free state" and an "analyte-exposed state," where the analyte is a heavy metal.
The original disclosure does not support for determining the presence of a heavy metal in contact with the sensor by a change between an analyte-free state and an analyte-exposed state in (iii) a polarized small angle neutron scattering non spin flip difference signal at … 0.007 Tesla.
The original disclosure provides stand alone support for determining a state of the sensor in "(iii) a polarized small angle neutron scattering non spin flip difference signal at … 0.007 Tesla" in either an analyte-free state (Fig. 4A) or a chromium-exposed state (Fig. 4B). The original disclosure does not teach comparing Fig. 4A to Fig. 4B in order to determine the presence of any heavy metal in contact with the sensor. This is new matter.
Dependent claims 2, 8, and 21-30 are rejected for inheriting the deficiencies of the independent claim.
(IV)
Original dependent claim 2 recites that "said heavy metal is selected from the group consisting of chromium, arsenic, cadmium, mercury and lead."
Dependent claim 28 recites similar limitations.
Independent claim 1 has been amended to recite the limitation "wherein the sensor is configured such that the presence of a heavy metal in contact therewith is determinable a … (i) coercive field; (ii) saturation magnetization at ±15 kOe; and (iii) a polarized small angle neutron scattering non spin flip difference signal at … 0.007 Tesla."
As set forth in section (I) above, written description support for the stand-alone limitations regarding techniques (i) and (ii) above are limited to Fig. 3 and the specification's description of the Fig. 3, which pertain to an analyte of K2Cr2O7. The original disclosure provides no support for determining a general "heavy metal" or of determining arsenic, cadmium, mercury or lead using (i) coercive field or (ii) saturation magnetization at ±15 kOe. This combination of embodiments is new matter.
As set forth in section (III) above, the closest written description support for the stand-alone limitations regarding techniques (iii) above are limited to Figs. 4A and 4B and the specification's description thereof. Figure 4B is data in the presence of chromium. The original disclosure provides no support for determining a general "heavy metal" or of determining arsenic, cadmium, mercury or lead using (iii) a polarized small angle neutron scattering non spin flip difference signal at … 0.007 Tesla. This combination of embodiments is new matter.
(V)
New dependent claim 22 recites the limitations "about 1.01 Oe" and "about 200 Oe."
While the original disclosure teaches that "The coercivity of the composite CNT-CFO increased from 1.01 to 200 Oesterds (Oe) when infiltrated with a smaller amount of chromium," there is no disclosure in the original description of "about 1.01 Oe" and "about 200 Oe." This is new matter.
(VI)
New dependent claim 22 recites the limitation "wherein, relative to a heavy metal free state, saturation magnetization increases by about 66.4 percent upon exposure to hexavalent chromium when measured at ±15 kOe."
The original disclosure supports for "saturation magnetization increased by 66.4%" ([0015] of published specification).
There is no disclosure in the original description of "about 66.4 percent." This is new matter.
(VII)
New dependent claims 24 and 26 recite the limitation "about 1.5 Tesla."
While the original disclosure discloses 1.5 Tesla, there is no disclosure in the original description of "about 1.5 Tesla." This is new matter.
(VIII)
New dependent claim 24 recites the limitation "the spin flip difference signal indicates a magnetic only component at … 0.007 Tesla that is reduced at … 1.5 Tesla due to alignment of magnetic moments with the remanent field."
This teaching concerning the "spin flip difference signal " is unsupported and is new matter.
The closest support appears to be the specification's teaching that "the spin-flip sum (↑↓+↑↓) gives a measure of the magnetic-only component of moments that don't follow the applied field" ([0014] of published application) and "It is also evident in both samples that the magnetic-only spin-flip scattering (↑↓+↑↓), which arises from the component of magnetic moments not aligned with the applied external field, is significant at 0.007 T (though a factor of about 100 lower than the structural scattering), but not at 1.5 T …" ([0044] of published application). The disclosed spin-flip sum is distinct from the claimed spin flip difference signal.
(IX)
New dependent claim 24 recites the limitations "about 28-29 nm" and "about 0.31."
While the original disclosure discloses a polydispersity of 0.31 of nanoparticle spheres of either radius (28±2) nm or radius (29±2) nm ([0045] of published application), there is no disclosure in the original description of "about 0.31" or of a polydispersity of 0.31 of nanoparticle spheres having a radius of "about 28-29 nm." This is new matter.
A polydispersity that characterizes both a first group of nanoparticle spheres having a radius of (28±2) nm and a second group of nanoparticle spheres having a radius of (29±2) nm would not also characterize a mixture of the first group and the second group.
Therefore, the Applicants did not show possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention, by description of an actual reduction to practice, or by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention.
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, 2, 4, 8, and 21-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mekuria, T. ("Carbon Nanotube Magnetic Nanoparticle Composite as Nano Sensor for Monitoring Heavy Metals in Water," Morgan State University. ProQuest Dissertations & Theses, 2020; previously relied upon), hereafter "Mekuria Dissertation."
Regarding claim 1, Mekuria Dissertation discloses a sensor for the detection of trace amounts of heavy metal in a liquid (abstract), the sensor comprising
magnetic nanoparticle composites (abstract; CNT-CFO nanocomposite, page 68, where CFO is ferromagnetic, page 74, second para.) and
a carrier (VSM powder cup containing the CNT-CFO, page 68; or sample holder glass for X-Ray Diffraction, page 59; or flask 1 containing solution of CNT-CFO nanoparticles, page 99),
said magnetic nanoparticle composites comprising carbon nanotubes intercalated with CoFe2O4 ("The CNTs and CFO were intercalated by ultrasonication," page 68; abstract; see also page 133 for definitions of abbreviations).
Mekuria Dissertation does not explicitly disclose that "the sensor is configured such that the presence of a heavy metal in contact therewith is determinable by a statistically significant change between a heavy metal free state and a heavy metal exposed state in at least one of: (i) coercive field; (ii) saturation magnetization at ±15 kOe; and (iii) a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla.
However, the CNT-CFO sensor of the Mekuria Dissertation is the same as the claimed and disclosed sensor. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claims 2, 28, and 29, Mekuria Dissertation discloses that said heavy metal is selected from the group consisting of hexavalent chromium (abstract, sections 4.2.4, 4.3, 4.4.4, 4.5.4, 4.6.4, and 4.7), arsenic (abstract), cadmium (abstract, section 4.1.4), mercury (abstract, section 4.1.7), and lead (abstract, section 4.1.5).
Regarding claim 4, Mekuria Dissertation does not explicitly disclose that the CNT-CFO sensor is capable of detecting presence of heavy metals [in] liquids in amounts as low as about 1 ppm. However, the CNT-CFO sensor disclosed by Mekuria Dissertation is the same as the claimed and disclosed sensor. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 8, Mekuria Dissertation discloses that said carrier is a substrate (sample holder glass for X-Ray Diffraction, page 59).
Regarding claims 21-27 and 30, Mekuria Dissertation does not explicitly disclose the functional and intended use limitations recited in these claims. However, the CNT-CFO sensor disclosed by Mekuria Dissertation is the same as the claimed and disclosed sensor. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Claims 1, 2, 8, and 21-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mekuria, T. et al. ("Carbon Nanotubes and CoFe2O4 Nanoparticles Composite for Nanomagnetic Sensors," Conference: 2018 IEEE 18th International Conference on Nanotechnology; previously relied upon), hereafter "Mekuria 2018," as evidenced by Mekuria, T. et al. ("Cobalt ferrite nanoparticle intercalated carbon nanotubes for a nanomagnetic ultrasensitive sensor of Cr-VI in water," AIP Advances, June 2020; previously relied upon), hereafter "Mekuria 2020."
Regarding claim 1, Mekuria 2018 discloses a sensor (title) for the detection of trace amounts of heavy metal in a liquid (abstract, Fig. 1), the sensor comprising
magnetic nanoparticle composites (title, pristine CNT/CFO, section III) and
a carrier (VSM vial, section III),
said magnetic nanoparticle comprising carbon nanotubes and CoFe2O4 (title).
Mekuria 2018 does not explicitly teach that said magnetic nanoparticle composites comprise carbon nanotubes intercalated with CoFe2O4.
Evidence that the magnetic nanoparticle composites of Mekuria 2018 comprise carbon nanotubes intercalated with CoFe2O4 is provided by Mekuria 2020, which is co-authored by the inventor. Regarding Mekuria 2018 (reference 1), Mekuria 2020 teaches that "Magnetic nanoparticles of CoFe2O4 (CFO) intercalated on CNTs form nanocomposites that are excellent candidates for a nanomagnetic ultrasensitive sensor for Cr-VI in water" (first sentence, page 1).
Evidence that the magnetic nanoparticle composites of Mekuria 2018 comprise carbon nanotubes intercalated with CoFe2O4 is also provided by the instant specification, which teaches that "the CNTs and CFO were intercalated by ultrasonication" ([0010] of published specification). Mekuria 2018 discloses an ultrasonification procedure (section II) that is the same as the procedure disclosed in the instant specification ([0035] of published specification).
Mekuria 2018 teaches that "Magnetic measurements revealed significant changes in remnant and saturation magnetization with the introduction of 1 in thousand parts of Cr (page 2) and in Fig. 1 illustrates measured magnetization at ±15 kOe (page 2).
Mekuria 2018 does not explicitly disclose that "the sensor is configured such that the presence of a heavy metal in contact therewith is determinable by a statistically significant change between a heavy metal free state and a heavy metal exposed state in at least one of: (i) coercive field; (ii) saturation magnetization at ±15 kOe; and (iii) a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla." However, this CNT-CFO sensor is the same as the claimed and disclosed sensor (especially compare to section II of Mekuria 2018 to [0035] of published specification). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claims 2, 28, and 29, Mekuria 2018 discloses that said heavy metal is selected from the group consisting of hexavalent chromium (abstract, section III, Fig. 1).
Regarding claim 8, Mekuria 2018 discloses that said carrier is a substrate (VSM vial, section III).
Regarding claims 21-27 and 30, Mekuria 2018 does not explicitly disclose the functional and intended use limitations recited in these claims. However, this CNT-CFO sensor is the same as the claimed and disclosed sensor (especially compare to section II of Mekuria 2018 to [0035] of published specification). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Response to Arguments
Applicant's arguments filed on 7 January 2026 have been considered and are not fully persuasive and/or are moot in view of the new grounds of rejection.
Applicant's arguments do not specifically address the maintained or modified grounds of rejection under 35 USC 112(b).
Regarding the rejections based on the Mekuria Dissertation, Applicant argues that the amended and new claims are fully supported by the provisional application. This argument is not persuasive for the reasons set forth in the Priority section. Applicant further argues "As the current claims are fully supported by prior application 63/181,469, and because the Mekuria Dissertation was published less than one year before the filing of application 63/181,469, the rejection of claims as anticipated by the Mekuria Dissertation may be properly withdrawn."
In response, even if the claims were amended to be fully supported by the provisional application, the Mekuria Dissertation would still be treated as prior art because it is a printed publication available to the public before the effective filing date of the claimed invention. The sole author of the Mekuria Dissertation is not listed as a joint inventor of the instant application, and there is no evidence of record that a prior art exception under 35 U.S.C. 102(b)(1) applies.
Regarding the rejections based on Mekuria 2018 as evidenced by Mekuria 2020, Applicant argues that the prior art fails to teach that "the sensor is configured such that the presence of a heavy metal in contact therewith is determinable by a statistically significant change between a heavy metal free state and a heavy metal exposed state in at least one of: (i) coercive field; (ii) saturation magnetization at ±15 kOe; and (iii) a polarized small angle neutron scattering non spin flip difference signal at about 0.007 Tesla."
This argument is not persuasive because the CNT-CFO sensor of Mekuria 2018 is the same as the claimed and disclosed sensor (especially compare to section II of Mekuria 2018 to [0035] of published specification). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Moreover, Mekuria 2018 teaches that "Magnetic measurements revealed significant changes in remnant and saturation magnetization with the introduction of 1 in thousand parts of Cr (page 2) and in Fig. 1 illustrates measured magnetization at ±15 kOe (page 2).
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 MICHELLE ADAMS whose telephone number is (571)270-5043. The examiner can normally be reached M, T, Th, and F, 12-4 P.M.
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/MICHELLE ADAMS/ Examiner, Art Unit 1797
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797