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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 26, 2025 has been entered.
Status of the Claims
Claims 1 and 7(w) have been amended; claim 10 is new; claims 4 and 7-8 have been withdrawn; and claims 3 and 5-6 have been cancelled. Claims 1-2 and 9-10 are examined herein.
Status of the Rejection
New grounds of claim objection are necessitated by the amendment as outlined below.
New grounds of claim rejection under 35 U.S.C. § 112(a) and 112(b) are 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All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.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 amendment as outlined below.
Claim Objection
Claim 1 is objected to because of the following informalities:
Claim 1, line 2: please amend “an internal electrode; and” to -- an internal electrode; [[and]]--.
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 1-2 and 9-10 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.
Claim 1 recites “an ionic-liquid-containing polymer used as a salt bridge, and an ion-electron conversion layer between the salt bridge and the internal electrode, …, the ionic-liquid-containing polymer is directly adhered to the internal electrode without use of a separate adhesive or fastener”. Fig.5 shows the internal electrode is completely covered by an ion-electron conversion layer 6, which is covered by the ionic-liquid-containing polymer 4. Thus, the ionic-liquid-containing polymer 4 is not “directly” adhered to the internal electrode due to the presence of the ion-electron conversion layer 6. Therefore, the instant specification and drawings do not disclose that “an ion-electron conversion layer between the salt bridge and the internal electrode, …, the ionic-liquid-containing polymer is directly adhered to the internal electrode without use of a separate adhesive or fastener”. Claims 2 and 9-10 depend on the independent claim 1, therefore, they require that the ionic-liquid-containing polymer is directly adhered to the internal electrode without use of a separate adhesive or fastener, which is not supported in the specification/figures. Therefore, claims 1-2 and 9-10 are new matters.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 and 9-10 are 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 1, claim 1 recites “an ionic-liquid-containing polymer used as a salt bridge, and an ion-electron conversion layer between the salt bridge and the internal electrode, …, the ionic-liquid-containing polymer is directly adhered to the internal electrode without use of a separate adhesive or fastener”. Since there is an ion-electron conversion layer disposed between the salt bridge (which is the ionic-liquid-containing polymer) and the internal electrode, it is unclear how the ionic-liquid-containing polymer is directly adhered to the internal electrode due to the presence of the ion-electron conversion layer. Therefore, the scope of claim 1 is indefinite. Claims 2 and 9-10 are further rejected by virtue of their dependence upon and because they fail to cure the deficiencies of indefinite claim 1.
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.
Claims 1-2 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Perween et al. (WO 2017130218 A1, referencing previously furnished copy) in view of Chen (“Development of Electrochemical Sensors for Analytical and Biomedical Applications,” 2019, University of Minnesota, pgs. 1-257) and Hu et al. (US20150338367A1). Liu et al. (“Synthesis and characterization of a novel fluorosilicone resin based on trifluoropropylalkoxylsilane,” 2019, Materials Chemistry and Physics, vol. 224, pgs. 40-46) is used as evidence for claims 1-2.
Regarding claim 1, Perween teaches a comparison electrode (a plastic chip reference electrode [PCRE] in Fig. 1 [pg. 4, lines 26-27]) comprising:
an internal electrode (silver coated PCE in Fig. 1 [pg. 7, lines 26-27]); and
an ionic-liquid-containing polymer used as a salt bridge (ionic liquid-polyvinylidene fluoride film in Fig. 1 acts as a salt bridge [pg. 4, lines 26-27; pg. 7, line 11]),
wherein the ionic-liquid-containing polymer comprises:
a fluorine atom-containing adhesive (flexible plasticizing polymer polyvinylidene fluoride [pg. 5, line 3; pg. 18, claim 4]); and
a hydrophobic ionic liquid (hydrophobic ionic liquid [pg. 8, lines 23-25]),
wherein the ionic-liquid-containing polymer has adhesiveness (the polymer film adheres to the PCE after lamination in Fig. 1 [pg. 8, lines 1-4]).
Perween is silent to: (1) the fluorine atom-containing adhesive being a synthetic resin adhesive selected from the group consisting of acrylic adhesive, olefin adhesive, urethane adhesive, silicone adhesive, vinyl chloride adhesive, epoxy adhesive, polyamide adhesive, polyimide adhesive, and combinations thereof; and (2) an ion-electron conversion layer between the salt bridge and the internal electrode.
Chen teaches an ionic-liquid-containing polymer used as a salt bridge of a comparison electrode (a reference membrane doped with ionic liquid is used as a salt bridge for a reference electrode [pg. 85, para. 2]), the ionic-liquid-containing polymer comprising: a fluorine atom-containing adhesive (fluorosilicone in Scheme 3.1 is adhered to the electrode [pg. 23, para. 1; pg. 89, para. 2; pg. 93, para. 1-pg. 94, para. 1]); and a hydrophobic ionic liquid (the ionic liquids used for doping the membrane have moderate hydrophobicity [pg. 105, para. 1]), the fluorine atom-containing adhesive is a synthetic resin adhesive that is a silicone adhesive (fluorosilicone contains silicone and is adhesive [see Scheme 3.1; pg. 86, para. 2-pg. 87, para. 1]. As evidenced by Liu, fluorosilicones are a type of resin [pg. 40, col. 1, para. 1]). Chen teaches that the fluorosilicone adhesive provides biocompatibility and ease in manufacturing (pg. 86, para. 2).
Perween and Chen are both considered analogous to the claimed invention because they are in the same field of ionic-liquid-containing polymers with fluorine atom-containing adhesives for use as a salt bridge of a reference electrode. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the polyvinylidene fluoride adhesive in Perween with fluorosilicone adhesive, such that the fluorine atom-containing adhesive is a synthetic resin silicone adhesive, as taught in Chen, because the substitution would provide biocompatibility and ease in manufacturing (pg. 86, para. 2 in Chen). Furthermore, the claimed device differs from Perween by the substitution of some components (the polyvinylidene fluoride in Perween) with other components (the fluorosilicone adhesive in Chen) whose functions were known in the prior art. One of ordinary skill in the art could substitute one known element for another to yield predictable results (MPEP 2143(I)(B)). Furthermore, 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).
Modified Perween is silent to: (2) an ion-electron conversion layer between the salt bridge and the internal electrode.
Hu teaches a solid-state (SS) reference electrode (corresponding to the claimed comparison electrode) with an interlayer of mesoporous carbon includes a solid electron conductor, an interlayer including mesoporous carbon, and a polymeric reference membrane including a polymer and a hydrophilic ionic liquid with/without a hydrophobic redox couple [para. 0040], wherein the CIM carbon interlayer is disposed between the solid electron conductor and the reference membrane [para. 0011 ]. Thus, Hu teaches a reference electrode comprising an ion-electron conversion layer (CIM carbon interlayer) between the salt bridge (polymeric reference membrane) and the internal electrode (solid electron conductor).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the comparison electrode in modified Perween by adding an ion-electron conversion layer made of mesoporous carbon disposed between the salt bridge and the internal electrode, as taught by Hu, since it would give the resulting electrochemical devices a high capacitance and thereby, a large resistance to potential drift, which would result in an exceptionally high long-term stability of the sensor signal [para. 0033 in Hu].
The limitation “the ionic-liquid-containing polymer is directly adhered to the internal electrode without use of a separate adhesive or fastener” is considered 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). In the instant case, the final PCRE in modified Perween includes a laminated ionic liquid polymer film that does not include a separate adhesive or fastening component (e.g., a clamp, shell, or holder) keeping the film in place (see Fig. 1 of Perween). Furthermore, the fluorine atom-containing adhesive is fluorosilicone, which is adhesive, thus does not need a separate adhesive or fastener.
Regarding claim 2, modified Perween teaches the comparison electrode according to claim 1, and further teaches wherein the fluorine atom-containing adhesive is an epoxy-based or silicon-based synthetic resin-based adhesive (as stated in the rejection of claim 1 above, the fluorine atom-containing adhesive is fluorosilicone. Fluorosilicone has a silicone backbone and is adhesive [see Scheme 3.1; pg. 86, para. 2-pg. 87, para. 1 in Chen]. As evidenced by Liu, fluorosilicones are a type of resin [pg. 40, col. 1, para. 1]).
Regarding claim 9, modified Perween teaches the comparison electrode according to claim 1, and further teaches wherein the ionic-liquid-containing polymer is arranged to cover an entire surface of the internal electrode that is in contact with a sample solution (the ionic liquid polymer film is wrapped around the Ag/AgCl layer, such that solution contact only occurs on the polymer film in Fig. 1 [pg. 8, lines 1-4 in Perween]; as outlined in the rejection of claim 1 above, the added ion-electron conversion layer of mesoporous carbon is disposed between the internal electrode and the ionic-liquid-containing polymer; Furthermore, Fig.1A in Hu shows the ionic-liquid-containing polymer (reference membrane 120) covers an entire surface of the interlayer 130 (the ion-electron conversion layer), which covers the entire surface of the internal electrode (solid electron conductor 100a) such that the internal electrode does not directly contact the reference membrane [para. 0037 in Hu]. Thus in the modified comparison electrode, the ionic liquid polymer film is arranged to cover an entire surface of the internal electrode that is in contact with a sample solution through the ion-electron conversion layer and the ionic-liquid-containing polymer).
Regarding claim 10, modified Perween teaches the comparison electrode according to claim 1, and Perween is silent to wherein the ion-electron conversion layer covers an entire surface of the internal electrode, and an entire surface of the ion-electron conversion layer is covered with the ionic liquid-containing polymer.
As outlined in the rejection of claim 1 above, the ion-electron conversion layer is disposed between the internal electrode and the ionic liquid-containing polymer.
Hu further teaches wherein the interlayer 130 disposed between conductor 100a and the reference membrane 120, and Fig.1A shows an entire surface of the ion-electron conversion layer (interlayer 130) is covered with the ionic liquid-containing polymer (reference membrane 120) such that the ion-electron conversion layer does not directly contact the sample solution, and the interlayer 130 covers an entire surface of the internal electrode (solid electron conductor 100a) such that the internal electrode 100a does not directly contact the ionic liquid-containing polymer 120 [para. 0037; Fig.1A ].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the ion-electron conversion layer covering an entire surface of the internal electrode such that the internal electrode does not directly contact the ionic liquid-containing polymer, and an entire surface of the ion-electron conversion layer is covered with the ionic liquid-containing polymer such that the ion-electron conversion layer is not directly contact the sample solution, as taught by Hu, since the resulting electrochemical device would have a high capacitance and thereby a large resistance to potential drift, which would result in an exceptionally high long-term stability of the sensor signal [para. 0033 in Hu].
Response to Arguments
Applicant's arguments, see Remarks Pgs. 5-8, filed 12/26/2025, with respect to the 35 U.S.C. § 103 rejections have been fully considered, and all rejections from the previous office action are withdrawn in response to the amendment to claims.
Applicant’s Argument #1:
Regarding claims 1-2 and 9, Applicant argues at pages 5-6 that Srivastava and Chen fail to disclose or suggest an ion electron conversion layer disposed between the salt bridge and the internal electrode recited in the amended claim 1. Claims 2 and 9 depend from claim 1 and thus are also in condition for allowance at least for the reason of dependence from an allowable claim.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection for the amended claim 1 above.
Applicant’s Argument #2:
Regarding new claim 10, Applicant argues at pages 6-7 that the cited references Srivastava, Chen, and Liu fail to disclose or suggest at least the above features of the ion-electron conversion layer as recited in claim 10.
Examiner’s Response #2:
Applicant’s arguments are moot in view of the new ground of rejection for the new claim 10 above.
Examiner suggests applicant to amend claim 1 by further reciting a base material comprising a through hole, wherein the internal electrode is disposed on a surface of the base material near the through hole, the ion-electron conversion layer covers an entire surface of the internal electrode, and the ionic-liquid-containing polymer covers an entire surface of the ion-electron conversion layer and the through hole of the base material, as shown in Fig.5.
Conclusion
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/SHIZHI QIAN/Examiner, Art Unit 1795