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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 23, 2026 has been entered.
Status of the Claims
Claim 1 has been amended; and claims 2 and 4 have been cancelled previously. Claims 1, 3, and 5-20 are currently pending and examined herein.
Status of the Rejection
Applicant’s amendment has overcome each claim objection and rejection under
35 U.S.C. 112(a) and 112(d) previously set forth in the Final Rejection mailed 10/21/2025.
New grounds of drawing objection and claim objection as outlined below.
New grounds of claim interpretation as outlined below.
New grounds of claim rejection under 35 U.S.C. 112(b) as outlined below.
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/20/2026 has been considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “45” has been used to designate both “a piezoelectric controller 45” and “the scanning member 45” in paragraph [0119] in PG-Pub. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objection
Claims 1 and 20 are objected to because of the following informalities:
Claim 1: please amend “an electrolyte that is in contact” to – [[an]] the electrolyte that is in contact--; “Formulae 3 or 4” to – Formula[[e]] 3 or 4--; “I-, BF4-,” to -- I-, [[BF4-,]]--; “a combination thereof:” to -- a combination thereof[[:]],--; “is each independently be” (two places) to -- is each independently [[be]]--.
Claim 20: please amend “a first channel and a second channel” to – [[a]] the first channel and [[a]] the second channel--; “a septum” to – [[a]] the septum--; “a first electrode” to – [[a]] the first electrode--; “a second electrode” to – [[a]] the second electrode--; “an at least partially closed capillary tube” to – [[an]] the at least partially closed capillary tube--; “an electrolyte” to – [[an]] the electrolyte--; “a tip” to –[[a]] the tip--; “an outer surface” to – [[an]] the outer surface--; “an outer diameter” to – [[an]] the outer diameter--; “a shape” to –[[a]] the shape--; “a surrounding atmosphere” to – [[a]] the surrounding atmosphere--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 15, “a scanning member that scans a surface of the sample by the gas sensor according to a scan pattern”, is being interpreted under 35 U.S.C. 112(f) . Prong 1: a scanning member (uses the generic placeholder), prong 2: that scans a surface of the sample by the gas sensor according to a scan pattern (functional language), prong 3: sufficient structure for performing the function not recited. Therefore, claim 15 invokes 112(f). The corresponding structure for performing the functions is described in the specification (paragraph [00119]) such as a “The scanning member 40 may be, for example, an x-axis, y-axis, and z-axis piezoelectric positioner. The position of the piezoelectric positioner 40 with respect to the position of the sample may be controlled by an x-axis, y-axis, and z-axis manipulator screw such as a microscrew”.
Claim 16, “an image acquisition member that is electrically connected to the gas sensor and acquires a gas concentration profile image of the surface of the sample”, is being interpreted under 35 U.S.C. 112(f) . Prong 1: an image acquisition member (uses the generic placeholder), prong 2: acquires a gas concentration profile image of the surface of the sample (functional language), prong 3: sufficient structure for performing the function not recited. Therefore, claim 16 invokes 112(f). The corresponding structure for performing the functions is NOT described in the specification.
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.
Claims 9, 11 and 16 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 9, claim 9 recites “wherein the electrolyte is a liquid, a gel, or a solid”, and claim 1 recites “wherein the electrolyte comprises an ionic liquid drop”. Since the electrolyte comprises an ionic liquid drop, it would not be a gel or a solid. Thus, the scope of claim 9 is indefinite.
Regarding claim 11, claim 11 recites “wherein the electrolyte comprises an aqueous solvent, an organic solvent, an ionic liquid, an ionic liquid polymer, an ion conductive polymer, a matrix polymer, or a combination thereof” and claim 1 recites “wherein the electrolyte comprises an ionic liquid drop”. It is unclear if “an ionic liquid” and/or “an ionic liquid polymer” of claim 11 is the same as or different than “an ionic liquid drop” of claim 1. It is unclear if the electrolyte further comprises the component(s) of claim 11 in addition to the ionic liquid drop of claim 1. Thus, the scope of claim 11 is indefinite.
Regarding claim 16, claim 16 recites “an image acquisition member that is electrically connected to the gas sensor and acquires a gas concentration profile image of the surface of the sample”, which invoke 112(f) and the specification does not provide the corresponding structures for performing the functions above. Therefore, the scope of claim 16 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.
Claims 1, 3, and 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over Schoenfisch et al. (US 20140008221 A1) in view of Toniolo et al. (“Use of an electrochemical room temperature ionic liquid-based microprobe for measurements in gaseous atmospheres,” 2017, Sensors and Actuators B: Chemical, vol. 240, pgs. 239-247) and Lee et al. (Screen-printed graphite electrodes as low-cost devices for oxygen gas detection in room-temperature ionic liquids, Sensors, 2017, 17, 2734). WPI (“Septum Theta,” 2025, World Precision Instruments) is used as evidence for claim 3, and Rogers et al. (“Ionic Liquids,” 2007, Accounts of Chemical Research, vol. 40, pgs. 1077-1078) is used as evidence for claim 12.
Regarding claim 1, Schoenfisch teaches a gas sensor (sensor 100 in Fig. 1A for sensing gaseous species [Abstract; para. 0200]) for measuring a gas content (the gaseous species is nitric oxide or oxygen [para. 0097]) in an electrolyte (hydrogel 114 in Fig. 1 is an internal electrolyte layer [para. 0076, 0200]), the gas sensor comprising:
an at least partially closed capillary tube (a capillary tube with barrels made of insulating material 108 encloses electrodes 104 and 106 to form electrode assembly 102 in Fig. 1A [ para. 0199-0200]), comprising:
a first channel (the barrel accommodating working electrode 104 in Fig. 1A [para. 0200]);
a second channel (the barrel accommodating reference electrode 106 in Fig. 1A [para. 0200]); and
a tip (end 110 of electrode assembly 102 in Fig. 1A [para. 0200]),
wherein the first channel and the second channel are separated by a septum (electrodes 104 and 106 are insulated from each other by insulating material 108 in Fig. 1A [para. 0200]), and
wherein the first channel and the second channel are closed by the tip (electrodes 104 and 106 are surrounded by insulating material 108 at end 110 in Fig. 1A [para. 0199-0200]);
a first electrode that is located in the first channel, extends to an outer surface of the tip, and is exposed on the outer surface of the tip (working electrode 104 extends to end 110 and is exposed on the outer surface of the tip as shown in Fig. 1A [para. 0199-0200]);
a second electrode that is located in the second channel, extends to the outer surface of the tip, is exposed on the outer surface of the tip (reference electrode 106 extends to end 110 and is exposed on the outer surface of the tip as shown in Fig. 1A [para. 0199-0200]), and is spaced apart from the first electrode (electrodes 104 and 106 are insulated from each other by insulating material 108 in Fig. 1A [para.0200]);
the electrolyte that is in contact with the outer surface of the tip and is in contact with the first electrode and the second electrode (hydrogel electrolyte 114 contacts the first and second electrodes 104 and 106 on the tip surface 110 in Fig. 1A [para. 0200]);
a voltage source disposed between the first electrode and the second electrode (fixed voltage potential is applied between the electrodes [para. 0186, 0236, 0242]); and
a current meter disposed between the first electrode and the second electrode (sensor is an amperometric sensor that detects current [para. 0186, 0236]),
wherein the electrolyte is not present in the first channel and the second channel (hydrogel electrolyte 114 is only disposed on the outer surface of the gas sensor in Fig. 1A [para. 0200]), and
wherein the first electrode is a working electrode (working electrode 104 [para. 0200]) and the second electrode is a reference electrode (reference electrode 106 [para. 0200]).
Schoenfisch is silent to the following limitations: (1) wherein an outer diameter of the tip is about 10 micrometers or less; (2) the electrolyte is exposed to an outer surface of the gas sensor; (3) a shape of the electrolyte is defined by the tip and a surrounding atmosphere; and (4) wherein the electrolyte comprises an ionic liquid drop, wherein the ionic liquid drop comprises a cation represented by Formula 3 or 4, and an anion is represented by BF4-, PF6-, AsF6-, SbF6-, AlCl4- , HSO4-, ClO4-, CH3SO3-, CF3CO2-, Cl-, Br-, I-, SO4-, CF3SO3-, (OTf-), (FSO2)2N-, (C2F5SO2)2N-, (C2F5SO2)(CF3SO2)N-, or a combination thereof,
Formula 3
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202
409
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wherein, in Formula 3, Z is N or P, andR12 to R18 is each independently hydrogen, an unsubstituted or substituted Cl-C30 alkyl group, an unsubstituted or substituted C1-C30 alkoxy group, an unsubstituted or substituted C6-C30 aryl group, an unsubstituted or substituted C6-C30 aryloxy group, an unsubstituted or substituted C3-C30 heteroaryl group, an unsubstituted or substituted C3-C30 heteroaryloxy group, an unsubstituted or substituted C4-C30 cycloalkyl group, an unsubstituted or substituted C3-C30 heterocycloalkyl group, or an unsubstituted or substituted C2-C100 alkyleneoxy group,
Formula 4
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95
135
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wherein, in Formula 4,Z is N or P, and R12 toR15 is each independently hydrogen, an unsubstituted or substituted Cl-C30 alkyl group, an unsubstituted or substituted C1-C30 alkoxy group, an unsubstituted or substituted C6-C30 aryl group, an unsubstituted or substituted C6-C30 aryloxy group, an unsubstituted or substituted C3-C30 heteroaryl group, an unsubstituted or substituted C3-C30 heteroaryloxy group, an unsubstituted or substituted C4-C30 cycloalkyl group, an unsubstituted or substituted C3-C30 heterocycloalkyl group, or an unsubstituted or substituted C2-C100 alkyleneoxy group.
Schoenfisch further teaches that the diameter of the sensor tip may be between about 1 µm to about 1 mm [para. 0195].
It would have been obvious to have selected and utilized a tip outer diameter within the disclosed range, as taught by Schoenfisch, including those amounts that overlap within the claimed range, since one of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that Schoenfisch specifically teaches the range to be suitable for use as a gas sensor [para. 0195]. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Toniolo teaches a closed capillary tube-based gas sensor for measuring a gas content in an electrolyte (microprobe for the detection of analytes in gaseous atmospheres through a room temperature ionic liquid [RTIL] electrolyte using a sealed theta pipette [Abstract on pg. 239; col. 2, para. 2 on pg. 240]), the gas sensor comprising: first and second electrodes in respective channels of the at least partially closed capillary tube and exposed to the outer surface of the tip of the sensor (see annotated graphical abstract below and Fig. 1 [col. 2, para. 2 on pg. 240]); an electrolyte (RTIL acts as an electrolyte [col. 2, para. 2 on pg. 239]) that is in contact with the outer surface of the tip (RTIL film is adhered to the tip of the microprobe [col. 2, para. 5 on pg. 240]), is in contact with the first electrode and the second electrode (the RTIL ensures connectivity between the two electrodes [Abstract on pg. 239]), and is exposed to an outer surface of the gas sensor (the RTIL is exposed to an outer surface of the gas sensor in the annotated graphical abstract), wherein a shape of the electrolyte is defined by the tip and a surrounding atmosphere (the electrolyte is dip coated onto the sensor tip, such that the shape of the liquid electrolyte is defined by the tip and surrounding air [col. 1, para. 1 on pg. 241]). Toniolo teaches that the RTIL electrolyte enables oxygen gas sensing [pg. 239, Abstract] and offers several advantageous properties compared to membranes with internal electrolytes, such as negligible vapor pressure, wide electrochemical windows, good thermal stability, and tunability [col. 1, para. 2 - col. 2, para. 2 on pg. 239]. The RTIL-EMP is successfully demonstrated to measure O2 concentration (abstract; Figs. 7-8). Toniolo further teaches wherein the RTIL is [BMIM][NTF2] (col. 1, para.2 on pg. 240 and section 2.1).
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615
640
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Annotated Graphical Abstract from Toniolo
Schoenfisch and Toniolo are both considered analogous to the claimed invention because they are in the same field of electrochemical gas sensor comprising at least partially closed capillary tube for measuring gas contents such as oxygen. 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 membrane and electrolyte (xerogel membrane 112 and hydrogel 114 in Fig. 1A [para. 0200 in Schoenfisch]) of the gas sensor in Schoenfisch with a RTIL electrolyte comprising RTIL of [BMIM][NTF2], such that the shape of the electrolyte is defined by the tip and a surrounding atmosphere, as taught in Toniolo, because the substitution would enable oxygen sensing and provide wide electrochemical windows, good thermal stability, and tunability [Abstract; col. 1, para. 2-col. 2, para. 2 on pg. 239 in Toniolo]. Furthermore, the claimed device differs from Schoenfisch by the substitution of some components (the membrane and hydrogel electrolyte in Schoenfisch) with other components (the RTIL electrolyte in Toniolo) 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)).
Since Schoenfisch teaches the combined membrane 112 and hydrogel electrolyte 114 is exposed to an outer surface of the gas sensor (see Fig.1A), and the combined membrane 112 and hydrogel electrolyte 114 is substituted with the RTIL film, the substituted electrolyte is exposed to an outer surface of the gas sensor, and the electrolyte comprise an ionic liquid drop. Since the RTIL comprises [BMIM][NTF2] (col. 1, para.2 on pg. 240 and section 2.1 in Toniolo), the ionic liquid drop comprises a cation represented by Formula 3 as shown below:
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97
104
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Wherein Z is N, and R12-R16 is each independently an unsubstituted C1-C30 alky group.
Since anion of the RTIL [BMIM][NTF2] is NTF2-, modified Schoenfisch is silent to: wherein the anion is represented by BF4-, PF6-, AsF6-, SbF6-, AlCl4- , HSO4-, ClO4-, CH3SO3-, CF3CO2-, Cl-, Br-, I-, SO4-, CF3SO3-, (OTf-), (FSO2)2N-, (C2F5SO2)2N-, (C2F5SO2)(CF3SO2)N-, or a combination thereof.
Lee teaches an oxygen gas sensor comprising electrodes covered by a RTIL drop (see Fig.1), and tested 6 different RTILs including (a) [C2mim][NTf2], (b) [C4mim][NTf2], (c) [C6mim][FAP], (d) [C4mpyrr][NTf2], (e) [C4mim][BF4], and (f) [C4mim][PF6] (section 2.1 and Fig.2). Overall, the gas sensor with [C4mim][PF6] gave the best analytical responses (conclusions and abstract). Note that [C4mim][NTf2] is the same as [BMIM][NTF2], and [C4mim][PF6] is the same as [BMIM][PF6]. Thus, Lee teaches both RTILs of [BMIM][NTF2] and [BMIM][PF6] could be used for the detection of O2, and the RTIL of [BMIM][PF6] provides the best analytical responses.
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 RTIL of [BMIM][NTF2] with the RTIL of [BMIM][PF6], as taught by Lee, since RTIL of [BMIM][PF6] would provide better analytical responses (abstract and conclusions in Lee). The substituted RTIL of [BMIM][PF6] comprises an anion of PF6-.
Regarding claim 3, modified Schoenfisch teaches the gas sensor of claim 1, wherein a volume of the electrolyte is less than a volume of the at least partially closed capillary tube, and the volume of the electrolyte is about 1 milliliter or less (As shown in the graphical abstract of Toniolo, the electrolyte forms a cylindrical layer on the sensor tip surface [col. 1, para. 1 on pg. 241 in Toniolo]. The electrolyte has a thickness of 155 µm [col. 1, para. 1 on pg. 241 in Toniolo], and the sensor tip has a diameter less than 10 micrometers [see the rejection of claim 1 above]. Thus, the electrolyte volume is less than 1.22e-8 milliliters [electrolyte volume = π*r2*h = π*0.0052*0.155 = 1.22e-5 mm3]. The capillary tubes supplied by WPI are used to form the sensor [para. 0199 in Schoenfisch]. As evidenced by WPI, the referenced glass capillary [septum theta capillary for microelectrodes] has an overall length of 152 mm and an inner diameter of 1.02 mm with a septum thickness of 0.2 mm [see Special Configuration Borosilicate Glass Tubing]. Thus, the volume of the capillary tube is 0.080 milliliters (capillary volume = π*r2*h = π*((1.02-0.2)/2)2*152 = 80 mm3). Therefore, the volume of the electrolyte is both less than the capillary tube volume and less than 1 milliliter).
Regarding claim 5, modified Schoenfisch teaches the gas sensor of claim 1, but is silent to wherein a diameter of the first electrode and a diameter of the second electrode are each independently less than about 1 micrometer.
Schoenfisch further teaches that the electrodes can have outer diameters ranging from between a few millimeters and a few tenths of a micrometer [para. 0200], overlapping with the claimed diameter range of less than about 1 micrometer.
It would have been obvious to have selected and utilized electrode outer diameters within the disclosed range, as taught by Schoenfisch, including those amounts that overlap within the claimed range, since one of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that Schoenfisch specifically teaches the range to be suitable for use in a sensor [para. 0200]. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding claim 6, modified Schoenfisch teaches the gas sensor of claim 1, and further teaches wherein a distance between the first electrode and the second electrode on the outer surface of the tip is less than about 10 micrometers (as stated in the rejection of claim 1 above, the tip diameter is less than about 10 µm. Thus, the distance between the first and second electrodes must be less than about 10 µm).
Regarding claim 7, modified Schoenfisch teaches the gas sensor of claim 1, and Schoenfisch further teaches wherein the first electrode and the second electrode each independently comprises platinum (Pt), gold (Au), tungsten (W), silver (Ag), carbon (C), or a combination thereof (the working electrode comprises a material selected from platinum, platinized platinum, tungsten, gold, carbon, carbon fiber, and combinations thereof; and the reference electrode comprises silver/silver chloride [para. 0194]).
Regarding claim 8, modified Schoenfisch teaches the gas sensor of claim 1, and Schoenfisch further teaches wherein the at least partially closed capillary tube further comprises: a third channel; and a third electrode that is located in the third channel, extends to the outer surface of the tip, and is spaced apart from the first electrode and the second electrode (the electrode assembly can comprise three electrodes insulated from each other [para. 0192, 0210]).
Regarding claim 9, modified Schoenfisch teaches the gas sensor of claim 1, and further teaches wherein the electrolyte is a liquid (as stated in the rejection of claim 1 above, the electrolyte is an ionic liquid of [BMIM][PF6]).
Regarding claim 10, modified Schoenfisch teaches the gas sensor of claim 1, and further teaches wherein the electrolyte is an electrolyte liquid drop or an electrolyte film (the ionic liquid is formed as a film [col. 2, para. 4 on pg. 240 in Toniolo]).
Regarding claim 11, modified Schoenfisch teaches the gas sensor of claim 1, and further teaches wherein the electrolyte comprises an ionic liquid (as outlined in the rejection of claim 1 above, the electrolyte comprises an ionic liquid of [BMIM][PF6]).
Regarding claim 12, modified Schoenfisch teaches the gas sensor of claim 1, and further teaches wherein the electrolyte comprises a salt (as outlined in the rejection of claim 1 above, the electrolyte comprises an ionic liquid of [BMIM][PF6], which is a salt as evidenced by Rogers [col. 1, para. 2 on pg. 1077]).
Regarding claim 13, modified Schoenfisch teaches the gas sensor of claim 1, wherein the electrolyte is gas permeable (the ionic liquid electrolyte acts as a solvent for gaseous analytes [col. 2, para. 2 on pg. 239 in Toniolo]; the gases are partitioned into the RTIL at the gas-ionic liquid interface [para. 1 on pg. 4 and Fig.1 in Lee]).
Regarding claim 14, modified Schoenfisch teaches the gas sensor of claim 1, and the limitation “wherein the gas comprises oxygen (O2), carbon dioxide (CO2), carbon monoxide (CO), sulfur dioxide (SO2), nitrogen dioxide (NO2), hydrogen (H2), methane (CH4), hydrogen fluoride (HF), or a combination thereof” further limits the sample but fails to further limit the apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." See MPEP 2115. Since the claims further limit the gas to be measured (material worked upon) but fails to limit the gas sensor (by a structure being claimed), the limitations of the claim have no patentable weight. However, examiner notes that the gas sensed by the sensor of modified Schoenfisch comprises oxygen [0097 in Schoenfisch; pg. 239, Abstract in Toniolo; title and abstract in Lee].
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bulter et al. (“Observation of Dynamic Interfacial Layers in Li-Ion and Li-O2 Batteries by Scanning Electrochemical Microscopy,” 2016, Electrochimica Acta, vol. 199, pgs. 366-379) in view of Schoenfisch, Toniolo, and Lee.
Regarding claim 15, Bulter teaches a scanning electrochemical gas microscope (scanning electrochemical microscope in Fig. 1b), comprising:
a sample (the microscope is used to investigate the gas diffusion electrode of a lithium-air battery [col. 2, para. 2 on pg. 375]);
a gas sensor (Pt microelectrode [col. 2, para. 3 on pg. 375]); and
a scanning member that scans a surface of the sample by the gas sensor according to a scan pattern (a positioning system in the microscope moves the microelectrode over the sample using patterned increments to generate a scan of the sample, see Fig. 7 [col. 1, para. 1 on pg. 369; col. 2, para. 3 on pg. 375]).
Bulter is silent to wherein the gas sensor is the gas sensor according to claim 1.
Modified Schoenfisch teaches the gas sensor of claim 1 (see the rejection of claim 1 above). The gas sensor in modified Schoenfisch has a small size [para. 0034 in Schoenfisch], wide electrochemical windows, and good thermal stability due to the RTIL electrolyte on the sensor tip [col. 2, para. 2 on pg. 239 in Toniolo].
Bulter and modified Schoenfisch are both considered analogous to the claimed invention because they are in the same field of electrochemical gas sensors. 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 microelectrode gas sensor in Bulter with a small microelectrode gas sensor with a RTIL electrolyte-coated tip, as taught in modified Schoenfisch, because the substitution would minimize size while widening the sensor’s electrochemical windows, and improve thermal stability [para. 0034 in Schoenfisch; col. 2, para. 2 on pg. 239 in Toniolo]. Furthermore, the claimed device differs from Bulter by the substitution of some components (the microelectrode gas sensor in Bulter) with other components (the microelectrode gas sensor with a coated tip in modified Schoenfisch) 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)).
Regarding claim 16, modified Bulter teaches the scanning electrochemical gas microscope of claim 15, and Butler further teaches wherein the scanning electrochemical gas microscope comprises an image acquisition member that is electrically connected to the gas sensor and acquires a gas concentration profile image of the surface of the sample (the scanning electrochemical microscope [SECM] includes an image acquisition member, as it acquires an oxygen concentration flux profile image of the surface of the sample in Fig. 9 [col. 2, para. 2-3 on pg. 376]. This image is based on the gas sensor position and detected current measurements that are received via an electrical connection to the gas sensor [col. 2, para. 3 on pg. 375]).
Regarding claim 17, modified Bulter teaches the scanning electrochemical gas microscope of claim 15, wherein the electrolyte is spaced apart from the sample (the gas sensor electrode is positioned a high distance above the gas diffusion electrode sample to prevent contact between the electrode and sample [col. 1, para. 1 on pg. 376 in Bulter], such that the thin film RTIL electrolyte disposed on the electrode surface would be spaced apart from the sample [Abstract in Toniolo]).
Regarding claim 18, modified Bulter teaches the scanning electrochemical gas microscope of claim 15, and the limitation “wherein a gas content on an outer surface of the sample detected by the gas sensor is 0.0014 percent by volume or greater” 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 Bulter teaches a scanning electrochemical gas microscope that is configured to perform the functional limitations above (as stated in the rejection of claim 15 above, the gas sensor in modified Bulter is the gas sensor in modified Schoenfisch, which is capable of detecting an oxygen content of 0.1-100 percent by volume [see Fig. 7b in Toniolo]. This falls within the claimed range).
Regarding claim 19, modified Bulter teaches the scanning electrochemical gas microscope of claim 15, and the limitation “wherein the sample is a metal-air battery” further limits the sample but fails to further limit the apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." See MPEP 2115. Since the claims further limit the sample (material worked upon) but fails to limit the microscope (by a structure being claimed), the limitations of the claim have no patentable weight.
Examiner further notes that Bulter teaches that the sample is a metal-air battery (the microscope is used to investigate the gas diffusion electrode of a lithium-air battery [col. 2, para. 2 on pg. 375]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Schoenfisch, in view of Toniolo, Lee and Yang et al. (“Fabrication and Characterization of a Dual Submicrometer-Sized Electrode,” 2009, Analytical Chemistry, vol. 81, pgs. 7496-7500).
Regarding claim 20, modified Schoenfisch teaches a method of manufacturing the gas sensor of claim 1 (see the rejection of claim 1 above), the method comprising:
preparing a theta capillary tube comprising the first channel and the second channel, wherein the first channel and the second channel are separated by the septum (a capillary tube with two barrels separated by glass [para. 0199 in Schoenfisch]);
placing the first electrode in the first channel and the second electrode in the second channel (the working and reference electrodes are each inserted into separate barrels of the capillary [para. 0199 in Schoenfisch]);
preparing the at least partially closed capillary tube (electrodes 104 and 106 are surrounded by insulating material 108 at end 110 in Fig. 1A by forming a tapered tip shape as in Fig. 2A [para. 0199-0200, 0202 in Schoenfisch]); and
contacting the electrolyte and the tip of the at least partially closed capillary tube (the RTIL electrolyte is dip coated onto the sensor tip [col. 1, para. 1 on pg. 241 in Toniolo]; the RTIL of Toniolo is further substituted with the RTIL of [BMIM][BF6] of Lee as outlined in the rejection of claim 1 above),
wherein the electrolyte is in contact with the first electrode and the second electrode, and is exposed to the outer surface of the gas sensor (the RTIL ensures connectivity between the two electrodes and is exposed to an outer surface of the gas sensor in the annotated graphical abstract [Abstract in Toniolo]),
wherein the outer diameter of the tip is about 10 micrometers or less (as stated in the rejection of claim 1 above, the outer diameter of the sensor tip is within the range of about 10 micrometers or less), and
wherein the shape of the electrolyte is defined by the tip and the surrounding atmosphere (the RTIL electrolyte is dip coated onto the sensor tip, such that the shape of the liquid electrolyte is defined by the tip and surrounding air [col. 1, para. 1 on pg. 241 in Toniolo]).
Modified Schoenfisch is silent to how the partially closed capillary tube is prepared, thus modified Schoenfisch is silent to the limitation wherein the at least partially closed capillary tube is prepared by applying energy on a center portion of the theta capillary tube while pulling both ends of the theta capillary tube in opposite directions.
Yang teaches a method of manufacturing a sensor (electrode assembly [col. 1, para. 1 on pg. 7469]), the method comprising: preparing a theta capillary tube comprising a first channel and a second channel (theta glass pipet with two barrels [col. 1, para. 1 on pg. 7498]), wherein the first channel and the second channel are separated by a septum (theta glass pipet has two separate channels [col. 1, para. 1 on pg. 7498]); placing a first electrode in the first channel and a second electrode in the second channel (electrode wires are inserted into each barrel of the theta glass pipet [col. 1, para. 1 on pg. 7498]); applying energy on a center portion of the theta capillary tube while pulling both ends of the theta capillary tube in opposite directions to prepare an at least partially closed capillary tube (the glass capillary is heated and pulled via a laser puller until the electrode wires are sealed in the glass tube, then the capillary is broken into two halves to form a tip [col. 1, para. 2-3 on pg. 7498]). Yang teaches that this manufacturing method for a partially closed capillary tube completely seals the electrodes in the glass tube with no trapped air bubbles [col. 1, para. 2 on pg. 7498].
Modified Schoenfisch and Yang are both considered analogous to the claimed invention because they are in the same field of capillary tube sensors comprising electrodes in theta capillaries. 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 method of preparing the partially closed capillary tube in modified Schoenfisch by applying energy on a center portion of the theta capillary tube while pulling both ends of the theta capillary tube in opposite directions, as taught in Yang, since this would completely seal the electrodes in the glass tube with no trapped air bubbles [col. 1, para. 2 on pg. 7498 in Yang]. Furthermore, Yang teaches the claimed improvement as a known technique that is applicable to the base method in modified Schoenfisch. One skilled in the art could have applied the partially closed capillary preparation method in Yang in the same way to the base device in modified Schoenfisch, yielding predictable results (MPEP 2143(I)(D)).
Response to Arguments
Applicant's arguments, see Remarks Pgs. 8-14, filed 2/23/2026, 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 claim 1, Applicant argues at pages 8-13 that: (1) the combination of Schoenfisch and Toniolo does not disclose or teach the specific ionic liquids of the amended claim 1; (2) there would have been no motivation to derive the subject matter of amended claim I when starting from the combination of Schoenfisch and Toniolo since the gas sensor of Schoenfisch is to measure concentrations of CO and O2 in a stirring PBS solution instead of in an air atmosphere, and the RTIL of Toniolo will then be diffused into the stirring PBS solution; (3) the gas permeable membrane of Schoenfisch substantially teaches away from an application using the room temperature ionic liquid (RTIL) film of Toniolo, and the other prior arts could not cure the deficiency of Schoenfisch and Toniolo; and (4) the electrolyte of the claimed object matter includes an ionic liquid drop 18, while the gas permeable membrane of Schoenfisch is a film and Toniolo also discloses that the RTIL is formed as a homogeneous layer on the whole microtip surface.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection for claim 1 above. Firstly, Schoenfisch as modified by Toniolo and Lee teaches the amended RTIL. Secondly, “measure concentrations of CO and O2 in a stirring PBS solution” in Schoenfisch is an intended use of the gas sensor of Schoenfisch, and the gas sensor further modified by Toniolo and Lee can be used to measure O2 in an air atmosphere (see section 2.5 in Toniolo and Fig.1 in Lee). When the gas sensor is to measure gas contents in an air atmosphere, the RTIL would not diffuse into PBS. Thirdly, using a gas permeable membrane does not teach away the use of RTIL as the electrolyte of the gas sensor. The substitution of the gas permeable membrane and electrolyte in Schoenfisch with RTIL film would enable oxygen sensing and provide wide electrochemical windows, good thermal stability, and tunability [pg. 239, Abstract; pg. 239, col. 1, para. 2-pg. 239, col. 2, para. 2 in Toniolo]. Fourthly, RTIL film reads upon RTIL drop since the claimed limitation does not recite that the drop is a spherical drop. Furthermore, claim 10 recites wherein the electrolyte is an electrolyte liquid drop or an electrolyte film. Examiner further notes that Fig.1 in Lee shows the RTIL is a drop.
Conclusion
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/SHIZHI QIAN/Examiner, Art Unit 1795