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 .
Status of the Claims
The Amendment filed 01/20/2026 has been entered. Claims 1-2, 7, 9, and 11 have been amended. Claims 46-53 are new. Claims 16-19, 22, 26, 31-34, 36-37 and 39 are canceled. Claim 6 was previously withdrawn. Claims 1-2, 4, 6-7, 9, 11, and 46-53 are currently pending and claims 1-2, 4, 7, 9, 11, and 46-53 are examined herein.
Status of the Rejection
All 35 U.S.C. § 112(b) rejections from the previous office action are withdrawn in view of the Applicant’s amendments.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 for new claim 47 under 35 U.S.C. § 112(b) is necessitated by the amendment.
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.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 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.
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.
Claim 47 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Regarding claim 47, claim 47 recites “to make electrochemical determinations of a phosphate level of a fluid disposed in the first chamber”. However, it is unclear if “a fluid” is the same fluid as recited in claim 1 “a fluid” [the second to last line of claim 1] or a different and newly recited fluid, especially because the fluid in claim 1 is not required to be disposed in the first chamber. Applicant should clarify the relationship between the fluids recited in claim 1 and claim 47, and amend, for example, to say “a first and second fluid” if the fluids are different. Therefore, the scope of claim 47 is indefinite.
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) 1-2, 4, 7, 9, 11, and 46-53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barus et al. (Toward an in situ phosphate sensor in seawater using Square Wave Voltammetry, 2016, Talanta, Vol. 160, Pages 417-424) in view of Jońca et al. (Reagentless and silicate interference free electrochemical phosphate determination in seawater, 2013, Electrochimica Acta, 88, Pages 165-169), both references are cited in the Information Disclosure Statement filed on 01/08/2024.
Regarding claim 1, a phosphate level detection device (Barus teaches a device for in situ detection and measurement of phosphate PO43- in seawater [Abstract and Fig. 1A]), comprising:
a first chamber (Barus teaches a second compartment [corresponding to a first chamber] [Page 418, Col. 2, last paragraph and Col. 2, Para. 3]);
a first molybdenum electrode at least partially disposed within the first chamber (Barus teaches a second molybdenum electrode [corresponding to a first molybdenum electrode] disposed within the second compartment, placed at the bottom of the compartment [Page 418, Col. 2, last paragraph and Col. 2, Para. 3; Figure 1]); and
a working electrode at least partially disposed within the first chamber (Barus teaches a gold working electrode disposed within the second compartment, placed on the side of the compartment [Page 418, Col. 2, last paragraph; Figure 1]),
a reference electrode at least partially disposed within the first chamber (Barus teaches a silver reference electrode disposed within the second compartment, placed on the side of the compartment [Page 418, Col. 2, last paragraph; Figure 1]); and
a counter electrode disposed external to the first chamber (Barus teaches the counter electrode is placed on top of the prototype in the cylindrical reservoir and is separated from the inside of the compartment underneath by a non-proton exchange membrane [Page 418, Col. 2, Para. 5; Figure 1]);
wherein a distance between the counter electrode and each of the first molybdenum electrode and the working electrode (Barus teaches a distance between the counter electrode, which is placed on top of the prototype in the cylindrical reservoir and is separated from inside the compartment, and each of the gold working electrode. which is disposed within the second compartment, placed on the side of the compartment, and the second molybdenum electrode [corresponding to a first molybdenum electrode], which is disposed within the second compartment, placed at the bottom of the compartment [Page 418, Col. 2, Para. 5; Page 418, Col. 2, last paragraph and Col. 2, Para. 3; Figure 1]), the limitation “is such that the counter electrode does not consume protons generated by either of the first molybdenum electrode or the working 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, Barus teaches the phosphate level detection device and counter electrode as shown in Fig. 1a that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Barus teaches a distance between the counter electrode and each of the gold working electrode and the second molybdenum electrode [corresponding to a first molybdenum electrode] [Page 418, Col. 2, Para. 5; Page 418, Col. 2, last paragraph and Col. 2, Para. 3; Figure 1]. Barus further teaches the counter electrode is isolated behind a non-proton exchange membrane in a third compartment (i.e., the cylindrical reservoir) in order to avoid the reduction of protons formed during the two previous oxidations of molybdenum [corresponding to such that the counter electrode does not consume protons generated by either the first molybdenum electrode or the working electrode] [Page 418, Col. 2, Para. 3 and 5]. As the counter electrode is external and isolated from the compartment housing the molybdenum electrode and the working electrode, it is thus at a distance from the first molybdenum electrode and the working electrode such that the counter electrode does not consume protons generated by either the first molybdenum electrode or the working electrode, as evidenced by the instant specification which states “the counter electrode 220 can be positioned at a location that is far enough away from the Mo electrode 202 b and the working electrode 212 such that the counter electrode 220 does not consume protons generated by the Mo-working electrode combination….that means the counter electrode 220 is outside of the chamber in which the Mo electrode 202 b and the working electrode 212 are disposed, e.g., in the environment 210, as shown, that is outside of the device.” [see Para. 0048 of the instant specification]. As outlined above, Barus specifically discloses the counter electrode is outside of the chamber/compartment in which the second “first” molybdenum electrode and the working electrode are disposed. Furthermore, since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, it is contended that the device of the prior art is capable of the claimed property and function. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., is such that the counter electrode does not consume protons generated by either of the first molybdenum electrode or the working electrode), is necessarily present in the prior art material [See MPEP 2112.01 (II)]. Therefore, Barus is specifically configured to perform the functional limitations above.)
Barus does not explicitly disclose the working electrode being positioned within 100 micrometers of the first molybdenum electrode,
However, Barus teaches the electrodes orientation [which is related to all electrodes and includes the orientation of the working electrode and the second “first” molybdenum electrode] will have an influence on phosphate determination, in particular on reagents diffusion and complex formation, and also influence the time [Page 420, Col. 2, last paragraph]. Barus teaches two prototypes as seen in Fig. 1, with prototype A having a different electrodes orientation than prototype B, where the distance and positioning of the working electrode relative to the second “first” molybdenum electrode is changed and different [Fig. 1 and Conclusion]. Changing the electrodes orientation changes the positioning of the electrodes, including the working electrode relative to the second “first” molybdenum electrode, which affects the phosphate determination, reagents diffusion, complex formation, and time. Thus, the working electrode positioning distance relative to the first molybdenum electrode is a results effective variable.
As the influence on phosphate determination, reagents diffusion, complex formation, and time are variables that can be modified (Page 420, Col. 2, last paragraph of Barus), among others, by adjusting the electrodes orientation (including the working electrode being positioned within a certain distance of the first molybdenum electrode) (Page 420, Col. 2, last paragraph of Barus), the precise positioning between the working electrode and the first molybdenum electrode would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed working electrode being positioned within 100 micrometers of the first molybdenum electrode cannot be considered critical. Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to have optimized and would have optimized, by routine experimentation, the positioning of the working electrode relative to the first molybdenum electrode in Barus to have the working electrode being positioned within 100 micrometers of the first molybdenum electrode in order to obtain the desired balance between the influence on phosphate determination, reagents diffusion, complex formation, and time, as taught by Barus. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Modified Barus does not explicitly disclose wherein the working electrode is positioned more proximate to the first molybdenum electrode than the reference electrode is positioned to the first molybdenum electrode.
However, Barus discloses that the electrodes orientation will have an influence on phosphate determination in particular on reagents diffusion and complex formation [Page 420, Col. 2, last paragraph].
Jońca discloses an electrochemical method for phosphate determination in seawater was based on the oxidation of molybdenum electrodes [Abstract]. Jońca teaches the electrochemical cell has a second “first” compartment and a second “first” molybdenum electrode, gold working electrode and Ag/AgCl/Cl reference electrode all disposed within the second compartment [Fig. 1 and Page 166, Col. 2, Para. 4]. Jońca further teaches the Au-gold working electrode is positioned more proximate/closer to the second “first” molybdenum electrode than the Ag/AgCl/Cl reference electrode is positioned to the second “first” molybdenum electrode and this is a suitable configuration for an electrochemical cell for phosphate determination in seawater [Fig. 1 and Page 166, Col. 2, Para. 4; Abstract].
Given the teachings of Barus regarding the electrodes orientation having an influence on phosphate determination in particular on reagents diffusion and complex formation, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to rearrange the working electrode, the second “first” molybdenum electrode, and the reference electrode of Modified Barus such that the working electrode is positioned more proximate to the second “first” molybdenum electrode than the reference electrode is positioned to the second “first” molybdenum electrode, as taught by Jońca, since Jońca teaches this suitable alternative configuration of the electrodes orientation for electrochemical phosphate determination in seawater [Jońca: Fig. 1 and Page 166, Col. 2, Para. 4; Abstract]. Furthermore, rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
The limitation “wherein the device is configured such that oxidization of the first molybdenum electrode in the presence of a fluid that includes phosphate ions results in the formation of a 12- molybdophosphoric acid” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Barus teaches a second molybdenum electrode and a gold working electrode disposed within the second compartment and a fluid that includes phosphate ions [Page 418, Col. 2, Paras 2-4; Figure 1; Abstract]. Barus further teaches in the second compartment, a second molybdenum electrode is oxidized to obtain the ratio protons over molybdates of 70 allowing to detect phosphate without the interference of silicate. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4]. Furthermore, Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the claimed property and function. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., oxidization of the first molybdenum electrode in the presence of a fluid that includes phosphate ions results in the formation of a 12- molybdophosphoric acid), is necessarily present in the prior art material [See MPEP 2112.01 (II)].)
Regarding claim 2, the phosphate level detection device of claim 1, further comprising: a second chamber (Barus teaches another compartment for the first oxidation of Mo [corresponding to a second chamber] [Page 418, Col. 2, Paras. 3-6 and Fig. 1A]),
each of the first chamber and the second chamber being enclosed chambers (Barus teaches each of the first and second compartments are enclosed compartments in an INOX 316L housing which encloses the compartments, with a fumapen proton exchange membrane between the two compartments. The inside of the compartments are separated by the reservoir on top by a non-proton exchange membrane, thus being enclosed on all sides, which is in contrast to the previous open cell compartments configuration [see e.g., Fig. 1, Page 418, Col. 2, Paras. 3-6]);
a second molybdenum electrode at least partially disposed in the second chamber (Barus teaches a primary molybdenum electrode [corresponding to a second molybdenum electrode] disposed within the first compartment for the first oxidation of Mo [see e.g., Fig. 1, Page 418, Col. 2, Paras. 3-6]); and
a proton exchange membrane disposed between the first chamber and the second chamber (Barus teaches a very thin (30 µm) proton exchange membrane (FuMaTech, fumapem®F-930) disposed between the first and second compartments, separating the first compartment from the second, that allows only protons to pass through from the first to the second compartment [see e.g., Page 418, Col. 2, Paras. 3-6]),
the limitation “wherein the device is configured such that oxidization of the second molybdenum electrode in the presence of the fluid results in protons migrating from the second chamber, across the proton exchange membrane, and to the first chamber to reduce a pH level of the fluid disposed in the first chamber” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Barus teaches the first oxidation of the primary molybdenum electrode disposed within the first compartment in the presence of a fluid electrolyte, which results in protons that can only pass through to the second compartment by the proton exchange membrane [thus migrating from the second chamber/first compartment across the proton exchange membrane to the second compartment/first chamber] to reach a pH = 1, thus reducing a pH level of the fluid electrolyte disposed in the second compartment/first chamber [see e.g., Fig. 1, Page 418, Col. 2, Paras. 1-6; Page 421, Col. 1, Para. 1; Page 422, Col. 2, Para. 5]. Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Therefore, the device of Modified Barus is specifically configured to perform the functional limitations above).
Regarding claim 4, the phosphate level detection device of claim 2, wherein the first molybdenum electrode and the working electrode are disposed directly adjacent to the proton exchange membrane (Modified Barus teaches the second molybdenum electrode [corresponding to a first molybdenum electrode] disposed within the second compartment, placed at the bottom of the second compartment and the gold working electrode disposed within the second compartment, placed on the side of the second compartment, where the proton exchange membrane separates the first and second compartments. As there is nothing disposed in the middle or between the second molybdenum electrode and the proton exchange membrane, or the Au working electrode and the proton exchange membrane in the small volume μL compartment, the working electrode and the second molybdenum electrode are thus disposed directly adjacent to the proton exchange membrane [Barus: Page 418, Col. 2, Para. 3-6, Fig. 1A, Abstract]).
Regarding claim 7, the phosphate level detection device of claim 1, Modified Barus is silent to wherein the device has a total chamber volume of 6 microliters or less.
Jońca discloses an electrochemical method for phosphate determination in seawater was based on the oxidation of molybdenum electrodes [Abstract]. Jońca teaches oxidation of the first molybdenum electrode was performed at a stable potential of 2 V since such high potential will ensure fast molybdenum oxidation and effective acidification of the solution in the second compartment, with a device having at least two compartments/chambers [Fig. 1 and Page 167, Col. 1, Para. 1]. Jońca further teaches the large volume of the cell [corresponding to a total chamber volume] affects the time, by increasing the time. When the total volume is decreased for example to the μL scale from a mL scale, the reaction time will be much shorter [Page 167, Col. 1, Para. 1]. Thus, the total chamber volume affects the reaction time for the sensor and thus is a results effective variable.
As the reaction time for the sensor are variables that can be modified (Page 167, Col. 1, Para. 1 of Jońca), among others, by adjusting the total chamber volume of the device (Page 167, Col. 1, Para. 1 of Jońca), the precise total chamber volume would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed total chamber volume of 6 microliters or less cannot be considered critical. Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to have optimized and would have optimized, by routine experimentation, the total chamber volume in the device of Modified Barus to have a total chamber volume of 6 microliters or less in order to obtain the desired balance between the reaction time for the sensor, as taught by Jońca. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claim 9, the phosphate level detection device of claim 1, the limitation “wherein a molybdenum consumption level is 0.08 milligrams or less per measurement” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a second molybdenum electrode, a gold working electrode, and a reference electrode disposed within the second compartment, a counter electrode disposed external to the second compartment, and a fluid that includes phosphate ions [Page 418, Col. 2, Paras 2-last paragraph; Figure 1; Abstract] and Modified Barus teaches the specific electrode spacing and orientation [see rejection of claim 1 above]. Barus further teaches in the second compartment, a second molybdenum electrode is oxidized to obtain the ratio protons over molybdates of 70 allowing to detect phosphate without the interference of silicate. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4]. Furthermore, Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the same molybdenum consumption level per measurement. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., wherein a molybdenum consumption level is 0.08 milligrams or less per measurement), is necessarily present in the prior art material [See MPEP 2112.01 (II)].)
Regarding claim 11, the phosphate level detection device of claim 1, the limitation “wherein an energy consumption level for oxidization of the first molybdenum electrode is 0.2 Joules or less per measurement for each 1 millimeter2 of exposed first molybdenum electrode surface area” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a second molybdenum electrode, disposed at the bottom of the second compartment, a gold working electrode and a reference electrode disposed within the second compartment, a counter electrode disposed external to the second compartment and a fluid that includes phosphate ions [Page 418, Col. 2, Paras 2-last paragraph; Figure 1; Abstract] and Modified Barus teaches the specific electrode spacing and orientation [see rejection of claim 1 above]. Barus further teaches in the second compartment, a second molybdenum electrode is oxidized to obtain the ratio protons over molybdates of 70 allowing to detect phosphate without the interference of silicate, the second molybdenum electrode having an exposed electrode surface area [Page 419, Col. 1, Para. 2, Page 418, Col. 2, Paras 2-6; Page 422, Col. 2, Para. 3]. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4]. Furthermore, Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the same energy consumption level per measurement for each mm2 of exposed first molybdenum electrode surface area. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., wherein an energy consumption level for oxidization of the first molybdenum electrode is 0.2 Joules or less per measurement for each 1 millimeter2 of exposed first molybdenum electrode surface area), is necessarily present in the prior art material [See MPEP 2112.01 (II)]. )
Regarding claim 46, the phosphate level detection device of claim 2, the limitation “wherein the device is configured such that the protons that migrate from the second chamber, across the proton exchange membrane, and to the first chamber reduce the pH level to a range of 0.8 to 1.2” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Barus teaches the first oxidation of the primary molybdenum electrode disposed within the first compartment in the presence of a fluid electrolyte, which results in protons that can only pass through to the second compartment by the proton exchange membrane [thus migrating from the second chamber/first compartment across the proton exchange membrane to the second compartment/first chamber] to reach a pH = 1, thus reducing a pH level to 1, falling within the claimed range of 0.8 to 1.2 [see e.g., Fig. 1, Page 418, Col. 2, Paras. 1-6; Page 421, Col. 1, Para. 1; Page 422, Col. 2, Para. 5]. Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Therefore, the device of Modified Barus is specifically configured to perform the functional limitations above).
Regarding claim 47, the phosphate level detection device of claim 1, the limitation “wherein the at least one of the reference electrode or the counter electrode, in conjunction with the working electrode, are configured to make electrochemical determinations of a phosphate level of a fluid disposed in the first chamber when the first molybdenum electrode is oxidized” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a device for in situ detection and measurement of phosphate PO43- in seawater [Abstract and Fig. 1A] and Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Barus further teaches the silver reference electrode in conjunction with the gold working electrode are configured to make electrochemical determinations via square wave voltammetry of a phosphate level PO43- of a fluid disposed in the second compartment [corresponding to first chamber] when the second molybdenum electrode is oxidized [see e.g., Fig. 4; Fig. 1; Conclusion; Abstract Page 421, Col. 1, Para. 3 and Col. 2, Paras. 1-3; Page 418, Col. 2, Paras 2-4]. Therefore, Modified Barus is specifically configured to perform the functional limitations above. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, as evidenced by the rejection of claim 1 above, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property (i.e., wherein the at least one of the reference electrode or the counter electrode, in conjunction with the working electrode, are configured to make electrochemical determinations of a phosphate level of a fluid disposed in the first chamber when the first molybdenum electrode is oxidized), is necessarily present in the prior art material).
Regarding claim 48, the phosphate level detection device of claim 1, Modified Barus is silent to wherein the device has a total chamber volume of 1.5 microliters or less.
Jońca discloses an electrochemical method for phosphate determination in seawater was based on the oxidation of molybdenum electrodes [Abstract]. Jońca teaches oxidation of the first molybdenum electrode was performed at a stable potential of 2 V since such high potential will ensure fast molybdenum oxidation and effective acidification of the solution in the second compartment, with a device having at least two compartments/chambers [Fig. 1 and Page 167, Col. 1, Para. 1]. Jońca further teaches the large volume of the cell [corresponding to a total chamber volume] affects the time, by increasing the time. When the total volume is decreased for example to the μL scale from a mL scale, the reaction time will be much shorter [Page 167, Col. 1, Para. 1]. Thus, the total chamber volume affects the reaction time for the sensor and thus is a results effective variable.
As the reaction time for the sensor are variables that can be modified (Page 167, Col. 1, Para. 1 of Jońca), among others, by adjusting the total chamber volume of the device (Page 167, Col. 1, Para. 1 of Jońca), the precise total chamber volume would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed total chamber volume of 1.5 microliters or less cannot be considered critical. Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to have optimized and would have optimized, by routine experimentation, the total chamber volume in the device of Modified Barus to have a total chamber volume of 1.5 microliters or less in order to obtain the desired balance between the reaction time for the sensor, as taught by Jońca. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding claim 49, the phosphate level detection device of claim 1, the limitation “wherein a molybdenum consumption level is 0.0008 milligrams or less per measurement 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a second molybdenum electrode, a gold working electrode, and a reference electrode disposed within the second compartment, a counter electrode disposed external to the second compartment, and a fluid that includes phosphate ions [Page 418, Col. 2, Paras 2-last paragraph; Figure 1; Abstract] and Modified Barus teaches the specific electrode spacing and orientation [see rejection of claim 1 above]. Barus further teaches in the second compartment, a second molybdenum electrode is oxidized to obtain the ratio protons over molybdates of 70 allowing to detect phosphate without the interference of silicate. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4]. Furthermore, Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the same molybdenum consumption level per measurement. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., wherein a molybdenum consumption level is 0.0008 milligrams or less per measurement), is necessarily present in the prior art material [See MPEP 2112.01 (II)].)
Regarding claim 50, the phosphate level detection device of claim 1, the limitation “wherein an energy consumption level for oxidization of the first molybdenum electrode is 0.00025 Joules or less per measurement for each 1 millimeter2 of exposed first molybdenum electrode surface area” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a second molybdenum electrode, disposed at the bottom of the second compartment, a gold working electrode and a reference electrode disposed within the second compartment, a counter electrode disposed external to the second compartment and a fluid that includes phosphate ions [Page 418, Col. 2, Paras 2-last paragraph; Figure 1; Abstract] and Modified Barus teaches the specific electrode spacing and orientation [see rejection of claim 1 above]. Barus further teaches in the second compartment, a second molybdenum electrode is oxidized to obtain the ratio protons over molybdates of 70 allowing to detect phosphate without the interference of silicate, the second molybdenum electrode having an exposed electrode surface area [Page 419, Col. 1, Para. 2, Page 418, Col. 2, Paras 2-6; Page 422, Col. 2, Para. 3]. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4]. Furthermore, Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the same energy consumption level per measurement for each mm2 of exposed first molybdenum electrode surface area. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., wherein an energy consumption level for oxidization of the first molybdenum electrode is 0.00025 Joules or less per measurement for each 1 millimeter2 of exposed first molybdenum electrode surface area), is necessarily present in the prior art material [See MPEP 2112.01 (II)].).
Regarding claim 51, the phosphate level detection device of claim 1, the limitation “wherein a phosphate level detection time of the device is two minutes or less in the absence of stirring the 12- molybdophosphoric acid” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a device for in situ detection and measurement of phosphate PO43- in seawater [Abstract, Conclusion, and Fig. 1A] and Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Barus discloses the solution is not stirred during molybdenum oxidations [Page 420, Col. 2, last paragraph of Barus]. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4 of Barus]. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the same phosphate level detection time in the absence of stirring the 12-molybdophosphoric acid. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., wherein a phosphate level detection time of the device is two minutes or less in the absence of stirring the 12- molybdophosphoric acid), is necessarily present in the prior art material [See MPEP 2112.01 (II)].)
Regarding claim 52, the phosphate level detection device of claim 1, the limitation “wherein a phosphate level detection time of the device is 30 seconds or less in the absence of stirring the 12- molydophosphoric acid” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a device for in situ detection and measurement of phosphate PO43- in seawater [Abstract, Conclusion, and Fig. 1A] and Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Barus discloses the solution is not stirred during molybdenum oxidations [Page 420, Col. 2, last paragraph of Barus]. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4 of Barus]. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the same phosphate level detection time in the absence of stirring the 12-molybdophosphoric acid. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., wherein a phosphate level detection time of the device is 30 seconds or less in the absence of stirring the 12- molybdophosphoric acid), is necessarily present in the prior art material [See MPEP 2112.01 (II)].).
Regarding claim 53, the phosphate level detection device of claim 1, the limitation “wherein a phosphate level detection time of the device is 10 seconds or less in the absence of stirring the 12- molydophosphoric acid” 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 Barus teaches the phosphate level detection device that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 1 above, Barus teaches a device for in situ detection and measurement of phosphate PO43- in seawater [Abstract, Conclusion, and Fig. 1A] and Modified Barus as outlined in the rejection of claim 1 yields the phosphate level detection device of claim 1. Barus discloses the solution is not stirred during molybdenum oxidations [Page 420, Col. 2, last paragraph of Barus]. The molybdenum electrodes are oxidized at 2 V in order to produce molybdates and protons necessary to form the phosphomolybdic complex which is detected on gold electrode, where phosphate ions are included in the fluid [see equations 1 and 2 and Page 418, Col. 2, Paras 2-4 of Barus]. Since the prior art does disclose a phosphate level detection device comprising substantially the same elements or components as that of the applicant, as evidenced by the rejection of claim 1 above, it is contended that the device of the prior art is capable of the same phosphate level detection time in the absence of stirring the 12-molybdophosphoric acid. Accordingly, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent and cannot have mutually exclusive properties, and thus, the claimed property and function (i.e., wherein a phosphate level detection time of the device is 10 seconds or less in the absence of stirring the 12- molybdophosphoric acid), is necessarily present in the prior art material [See MPEP 2112.01 (II)].).
Response to Arguments
Applicant's arguments, see Remarks Pgs. 6-7, filed 01/20/2026, with respect to the 35 U.S.C. § 103 rejections have been fully considered and all 103 rejections from the previous office action are withdrawn.
Applicant’s Argument #1:
Applicant argues on page 6 that the pending rejections pursuant to 35 U.S.C. § 103 are overcome in view of amendments. Accordingly, claims 1, 2, 4, 7, 9, and 11 distinguish over the cited references and represent allowable subject matter.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection.
Applicant’s request:
Applicant requests on page 6 full examination of the withdrawn claims if the subject matter of claim 1, from which claim 6 depends, is deemed allowed.
Examiner’s Response #2:
Examiner will consider the request when claim 1 is allowable in future. However, as outlined in the new grounds of rejection and the above response #1, the amended claim 1 is unpatentable over the prior art of record.
Applicant’s Argument #2:
Applicant argues on page 6 that Claims 46-53 distinguish over the cited references by virtue of their dependence from independent claim 1. Further, at least some of claims 46-53 independently distinguish over the cited references at least because the cited references fails to disclose, teach, or even suggest the subject matter thereof.
Examiner’s Response #3:
Based on the above responses #1, applicant’s arguments regarding the amended claim 1 are moot in view of the new grounds of rejection.
Furthermore, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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.
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/S.Y.O./Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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