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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/29/2025 has been entered.
Status of the Claims
Claim 17 has been amended and claims 23-25 are new. Claims 1-16 and 18-22 are canceled. Claims 17 and 23-25 are currently pending and examined herein.
Status of the Rejection
New grounds of claim objections are necessitated by the amendments.
All 35 U.S.C. § 112(b) rejections from the previous office action are withdrawn in view of the Applicant’s amendments.
New grounds of rejection under 35 U.S.C. § 112(a) are necessitated by the amendments as outlined below.
All 35 U.S.C. § 102 and 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 103 are necessitated by the amendments as outlined below.
Claim Objections
Claims 23 and 24 are objected to because of the following informalities:
Claim 23, line 2: please amend “by thermal decomposition” to –by a thermal decomposition--.
Claim 24, line 10: please amend “thermal decomposition” to --the thermal decomposition--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 17, 23-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 17, the independent claim 17 has been amended to include a 1) tin-plated electrode (in conjunction to the previous ruthenium-iridium electrode) and 2) “wherein the pH value of the solution to be detected is obtained according to the following formula: pH = -19.96E+11.99; wherein, E is the voltage between the ruthenium-iridium electrode and the tin-plated electrode”. While there is support for a tin-plated electrode as a reference electrode (see canceled claim 12) and for the pH value of the solution to be detected is obtained according to the previous formula wherein, E is the voltage between the ruthenium-iridium electrode and the reference electrode, this formula is not for a tin-plated electrode as the reference electrode, and the original claim set nor the specification and figures support the formula pH = -19.96E+11.99; wherein, E is the voltage between the ruthenium-iridium electrode and the tin-plated electrode. Applicant has introduced new matter by combining these two embodiments. This is further evidenced by the instant specification which says “FIG. 5 illustrates the relationship between the response voltage of a sensor, composed of a ruthenium-iridium electrode and a tin-plated electrode” [see Fig. 5 and Para. 0022 of the instant specification]. Fig. 5 shows the response voltage (i.e, the voltage between the ruthenium-iridium electrode and the tin-plated electrode or E) on the y-axis and the pH on the x-axis. To derive a linear equation, it would be given in the format of E = m * pH + b; where m is the slope of the line and b is the y intercept. Rearranging to solve for pH, the equation would be pH= (E – b)/m. Applicant mentions on page 5 of their arguments that the “pH electrode response slope” is used to quantify how the pH electrode converts the measured voltage signal (in volts) into a corresponding pH value. This slope is typically determined by dividing the change in electrode potential by the change in pH between standard buffer solutions. Therefore, one of ordinary skill in the art would understand the formula “pH = -19.96E + 11.99,” where E is the voltage (in volts) measured between the ruthenium-iridium electrode and the tin- plated reference electrode, as an expression used to determine the pH value of the solution being tested. However, there is no possible way to derive the equation of claim 1 from Fig. 5 which includes the tin-plated electrode to be pH = -19.96E+11.99 and should actually be in the form of pH= (E – b)/m. This is also further evidenced by the instant specification which states “As can be seen Table 7 and FIG. 5 , the measurement voltage of the pH sensor composed of the ruthenium-iridium electrode and the tin-plated electrode has a linear relationship with the pH of the solutions” (see Table 7, Fig. 5 and Para. 0053 of the instant specification). However, using the values from Table 7, and plugging in the response voltages such as 1.0465 into the equation pH = -19.96E + 11.99 does not give the corresponding pH of 2. This is also true if a pH of 2 is plugged into the equation and solved for to get the response voltage, which is not 1.0465 as listed in the table. The above examples are only for illustrative purposes and do not include all of the contradictions between the instant claim and specification. Thus, the equation pH = -19.96E + 11.99 is not between the tin-plated electrode and the ruthenium-iridium electrode. Therefore, claim 17 is new matter. Claims 23-25 are further rejected by virtue of its dependence upon claim 17.
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.
Claim(s) 17 and 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (Binary Metal Oxide (IrO2-RuO2) pH Sensor Prepared by Sol-gel Method, 2014, J. of Korean Oil Chemists Soc., 21, Pages 190-196, Human-assisted English machine translation from the Translations Service Center (TSC) Pages 1-7) in view of Horie et al. (JP-2006162570-A, English translation).
Regarding claim 17, a water pH detection sensor (Lee teaches a pH detection sensor for solutions, which contains water since it is an aqueous buffer solution [Abstract and Page 3, Para. 3]), comprising: a ruthenium-iridium electrode (Lee teaches a ruthenium oxide-iridium oxide pH electrode [corresponding to a ruthenium-iridium electrode] [Page 3, Para. 3]. The Examiner notes the ruthenium oxide-iridium oxide pH electrode of Lee is coated on a titanium base and heated at 400ºC for 30 minutes, and repeated 10 times [Page 3, Paras 1-3], and this process is the same as the instant application which states “evenly spreading the base coating solution on a titanium base, obtaining the ruthenium oxide-iridium oxide titanium based-material and carrying out thermal decomposition for 350-450 ºC for 3 hrs-5 hrs, to obtain the ruthenium-iridium electrode, as evidenced by instant claims 23-25 and Para. 0006-0011 of the instant specification. As Lee teaches heating the ruthenium oxide-iridium oxide titanium-based material, at 400ºC for 30 minutes, 10 times [a total of 5 hours], this corresponds to thermal decomposition occurring and the final product obtained by Lee would be a ruthenium-iridium electrode. Table 3 of Lee also shows Ir-Ru compositions for the pH electrode, thus teaching a ruthenium-iridium electrode) and
Lee is silent to and a tin-plated electrode.
However, Lee teaches a saturated calomel electrode [corresponding to a reference electrode] and a ruthenium oxide-iridium oxide pH electrode [corresponding to a ruthenium-iridium electrode] [Page 3, Para. 3 and see rejection above].
Horie teaches a pH electrode sensor with a reference electrode that has a substantially constant electrode potential even if the pH of the liquid to be tested varies (Abstract and Fig. 1 and 3, Para. 0006). Horie further teaches tin (Sn) as a metal in the layer 90 of the reference electrode substrate 80, where the layer 90 is formed on the surface of the reference electrode by sputtering or vapor deposition in the reference electrode 70, which corresponds to a tin-plated electrode [see e.g., Paras. 0013-0014, 0020, 0031 and Fig. 3].
Lee and Horie are considered analogous art to the claimed invention because they are in the same field of pH detection sensors [Abstract of Lee and Abstract and Fig. 1 and 3, Para. 0006 of Horie]. 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 saturated calomel [reference] electrode of Lee with a tin-plated [reference] electrode as taught by Horie, since Horie teaches it would be beneficial as the reference electrode for providing a substantially constant electrode potential even if the pH of the liquid to be tested varies (Abstract and Fig. 1 and 3, Para. 0006). Furthermore, the claimed limitations are obvious because the substitution of one known element for another [i.e., a saturated calomel reference electrode with a tin-plated reference electrode] yields predictable results to one of ordinary skill in the arts [maintaining a constant electrode potential when measuring pH, see e.g., Para. 0006 and Abstract of Horie] (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].
The examiner notes the limitation “plated” is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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 In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
the limitation “wherein a pH value of a solution to be detected is obtained by a voltage between the ruthenium-iridium electrode and the tin-plated electrode” is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Modified Lee teaches the above ruthenium-iridium pH electrode and tin-plated [reference] electrode that is specifically configured to perform the functional limitations above (Lee teaches a pH value of the detected solution is obtained by a potential mV [voltage] between the ruthenium-iridium pH electrode and the reference electrode, [Page 4, Para. 2; Figs. 3-4 showing the potential values for each pH, and Fig. 1 demonstrates the pH dependence of the open-circuit potential of Lee] and Modified Lee as outlined in the rejection above yields the reference electrode as a tin-plated electrode [see rejection above], thus a pH value of the detected solution is obtained by a potential mV [voltage] between the ruthenium-iridium pH electrode and the tin-plated [reference] electrode).
The limitation “wherein the pH value of the solution to be detected is obtained according to the following formula: pH = -19.96E+11.99; wherein, E is the voltage between the ruthenium-iridium electrode and the tin-plated electrode” is an intended use limitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Modified Lee teaches the above ruthenium-iridium electrode and tin-plated electrode that is specifically configured to perform the intended use limitations above (Since the prior art of Modified Lee does disclose a pH detection sensor comprising substantially the same elements or components as that of the applicant [a ruthenium-iridium electrode and a tin-plated electrode, see rejection above], it is contended that the pH sensor of the prior art inherently obtains the pH value of the solution according to the following formula pH = -19.96E+11.99; wherein, E is the voltage between the ruthenium-iridium electrode and the tin-plated electrode. Accordingly, products of identical chemical composition cannot have mutually exclusive properties, and thus, the claimed property (i.e. the pH value of the solution according to the formula equation, relating pH to voltage, wherein, E is the voltage between the ruthenium-iridium electrode and the tin-plated electrode), is necessarily present in the prior art material. Furthermore, when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent [See MPEP 2112.01(I) and MPEP 2112.01 (II)].)
Regarding claims 23-25, the limitations “wherein the ruthenium-iridium electrode is obtained by thermal decomposition of a ruthenium oxide-iridium oxide titanium-based material” (claim 23); “wherein the ruthenium-iridium electrode is prepared by: dissolving ruthenium trichloride and chloro-iridic acid in absolute ethyl alcohol to obtain a base coating solution, wherein in the base coating solution, a ratio of a molar concentration of the ruthenium trichloride to a molar concentration of the chloro-iridic acid is 1:3-2:3, and a total metal molar concentration is 40mM-60mM; evenly spreading the base coating solution on a titanium base, and obtaining the ruthenium oxide-iridium oxide titanium-based material after a solvent thereof is volatilized and dried; and carrying out thermal decomposition on the ruthenium oxide-iridium oxide titanium- based material to obtain the ruthenium-iridium electrode” (claim 24); “wherein the thermal decomposition is carried out at 350 ºC-450 ºC for 3hrs-5hrs” (claim 25) are considered product-by-process limitations. The cited prior art above teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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 In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). As outlined in the rejection of claim 17 above, Lee teaches a ruthenium-iridium electrode, and thus the cited prior art teaches all of the positively recited structure of the claimed ruthenium-iridium electrode in the sensor.
The examiner also notes that Lee teaches the ruthenium oxide-iridium oxide titanium-based material and the thermal decomposition process, as explained in the rejection of claim 17 above. Lee further teaches a temperature of 400ºC falling within the claimed range of 350-400ºC and a duration of 30 minutes, repeated 10 times, for a total of 5 hours, falling within the claimed range of 3 hrs-5 hrs [Page 3, Paras 1-3 ])
Response to Arguments
Applicant's arguments, see Remarks Pgs. 5-7, filed 07/29/2025, with respect to the 35 U.S.C. § 102 and 35 U.S.C. § 103 rejections have been fully considered and all 102 and 103 rejections from the previous office action are withdrawn.
Applicant’s Argument #1:
Applicant argues on page 6 that Lee combined with Kahn discloses a pH detection sensor comprising a ruthenium-iridium electrode and a saturated calomel electrode or comprising a ruthenium-iridium electrode and an Ag/AgCI electrode, which is different from the water pH detection sensor of the present application comprising a ruthenium-iridium electrode and a tin- plated electrode. Applicant argues on page 7 that Applicant respectfully submits, however, that Kahn fails to remedy the newly added features of the pH detection sensor in Lee. Therefore, even if the combination of Lee and Kahn is assumed to be proper, the combination fails to teach every element of the claimed invention. Moreover, there is no substantial evidence, nor clear and particular evidence, within the record of motivation for modifying Lee by incorporating Kahn. Without such motivation and absent improper hindsight reconstruction,’ a person of ordinary skill in the art would not be motivated to perform the proposed modification and claim 17 is believed to be non- obvious and patentable over the applied prior art.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection. Examiner notes the new grounds of rejection does not rely on any teachings from Kahn applied in the prior rejection of record.
Applicant’s Argument #2:
Applicant argues on page 7 that because claims 23-25 depend from independent claim 17, if independent claim 17 is allowable, dependent claims 23-25 are likewise allowable.
Examiner’s Response #2:
Based on the responses #1 and #3, applicant’s arguments regarding the amended claim 17 are moot in view of the new grounds of rejection and the amended claim 17 is still unpatentable over the prior art of record.
Applicant’s Argument #3:
Applicant argues on page 6 that amended claim 17 recites a specific method of calculating pH values based on the voltage measured between the ruthenium-iridium electrode and the tin-plated electrode. Neither Lee nor Kahn discloses or suggests this particular method of pH calculation. Notably, to the best of the Applicant's knowledge, conventional techniques for calculating pH values via electrode sensors typically rely on the Nernst equation (e.g., E = EO — (2.303RT/F) x pH), which is substantially different from the method disclosed in the present application.
Examiner’s Response #3:
The arguments are unpersuasive because Modified Lee teaches all structural limitations as presently claimed device and thus anticipate the claims or render the claims obvious in view of other cited references (see rejection of claim 17 above). The distinctions as argued by applicant are for intended use, e.g., using a specific method of calculating pH values based on the voltage measured between the ruthenium-iridium electrode and the tin-plated electrode, or as functional limitations, which do not add patentable weight to the presently claimed device. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Furthermore, Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection. Examiner notes the new grounds of rejection does not rely on any teachings from Kahn applied in the prior rejection of record.
Conclusion
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/S.Y.O./Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794