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 12/09/2025 has been entered. Claims 14-23 have been amended. Claims 1-8, 14-25 and 27 are currently pending. Claims 1-8, 24-25 and 27 were previously withdrawn. Claims 14-23 are examined herein.
Status of the Rejection
The claim objections have been overcome by the applicant's amendments.
All 35 U.S.C. § 112(b) rejections from the previous office action are withdrawn in view of the Applicant’s amendments.
New grounds of rejection under 35 U.S.C. § 112(b) are necessitated by the amendments as outlined below.
New grounds of rejection under 35 U.S.C. § 112(a) are necessitated by the amendments as outlined below.
New grounds of rejection under 35 U.S.C. § 112(d) are necessitated by the amendments as outlined below.
All 35 U.S.C. § 103 rejections from the previous office action are essentially maintained and modified only in response to the amendments to the claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/13/2026 has been considered by the examiner.
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.
Claim 19 is 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 19 as amended recites “wherein all of the first and second electrically conductive tracks are covered by the electrically insulating cover”. However, the instant specification clearly demonstrates not all of the first and second tracks are covered by the cover 110, rather the cover 110 is disposed in the middle or center of the tracks, with, at least, the ends of each track uncovered [see Fig. 1 of the instant specification and instant claim 14 which further evidences that the cover does not cover all of the tracks since it is not in a region of the first and second ends of the electrically conductive tracks]. The specification and drawings do not support all of the conductive tracks being covered by the insulating cover 110. Therefore, claim 19 is new matter.
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 14-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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 14, the term “dry”, in the last 3 lines of the claim 14, is a relative term which renders the claim indefinite. The term “dry” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Furthermore, it is unclear how “dry” the soil should be in order to meet the claimed limitation of “a dry soil environment”. One of ordinary skill in the at would understand that what is considered “dry” is entirely relative in terms of soil, depending on factors such as, but not limited to, the soil’s physical properties, such as texture and composition, its environmental factors, and the subject context, such as in farming or construction, which changes the meaning of “dry soil”. Dry soil still has some degree or presence of water and moisture, such as in ionic form, with electrolytes present [see Page 3, lines 9-13 of the instant specification]. One of ordinary skill in the art could not ascertain how dry the soil must be to meet a “dry soil environment”, if perhaps there is 1, 5, 10 or 30% moisture present, and one of ordinary skill in the art could not ascertain the metes and bounds of the claim limitations including the relative term “dry”. Furthermore, the instant specification discloses “the electrical conductivity of the soil is dependent on the ionic strength of soil water and therefore the moisture content of the soil, the relationship is complex, however soil is generally less conductive when dry [Page 3, lines 9-13], which further underscores the relativity of the term “dry” as dry soil still has a moisture content [i.e., water present] which is related to its conductivity in a “complex relationship” [i.e., even when the soil is dry it has some conductivity and therefore has water and moisture present]. The specification does not define the relative term “dry” in terms of ionic strength and/or moisture content of the soil and gives no standard for ascertaining the metes and bounds of the limitation “dry soil environment”, which is not even mentioned in the specification. Therefore, the scope of claim 14 is indefinite. Claims 15-23 are further rejected by virtue of its dependence upon and because it fails to cure the deficiencies of claim 14.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 broadens the scope of the independent claim 14, on which it depends, and therefore, fails to further limit the subject matter of the claim 14 on which it depends and fails to include all the limitations. Claim 19, as amended, recites “all of the first and second electrically conductive tracks are covered by the electrically insulating cover”, which directly contradicts and fails to further limit claim 14 which recites “an electrically insulating cover disposed over…in a region of the substrate that is between the first ends and the second ends of the electrically conductive tracks, but not in the region of the first and second ends of the electrically conductive tracks”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 14-15 and 17-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abeyrathne et al. (US20200116664A1) in view of Lee et al. (KR20190083120A, English translation), Schwarz et al. (All-Solid-State Screen-Printed Sensors for Potentiometric Calcium (II) Determinations in Environmental Samples, 2018, American Journal of Analytical Chemistry, 9, 113-123), and Miller et al. (US20150323491A1). Costantino et al. (Polyethylene Terephthalate (PET) 3D Printing Filament Review, 2025, Juggerbot 3D, https://juggerbot3d.com/petfilamentreview/#:~:text=PET%20also%20has%20low%20moisture,%2C%20insulated20bottles%2C%20or%20tupperware) used as evidence for claims 17 and 19.
Regarding claim 14, a solid-state sensor (Abeyrathne teaches a solid-state ion sensor [Fig. 1a, Figs 4-5, Abstract, Para. 0040 and 0047-0048]), the solid-state sensor comprising:
an electrically insulating substrate bearing a first and second electrically conductive tracks (Abeyrathne teaches a substrate 13, made of any suitable non-conductive material [corresponding to electrically insulated] bearing a first electrically conductive track/ISE 14 and a second electrically conductive track/reference electrode 12 [Fig. 1A and Para. 0038; see annotated Fig. 1A]);
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a sensing solid-state membrane disposed over a second end of the first electrically conductive track, defining an ion-selective electrode (Abeyrathne teaches an ion-selective membrane 25 [corresponding to a sensing solid-state membrane] that can be printed and is disposed over a second end of the first electrically conductive track 14 as small circular pieces, defining the ion-selective electrode; the ion selective membrane ISM is made of an ionophore and a polymer [Fig. 4C-4D, Para. 0053-0054, 0045, 0047-0048, and see annotated Fig. 1A and 4C]. Thus, the ISM is a solid-state membrane because it contains a polymeric structure and also is a solid membrane piece printed over the second end of the track 14, as evidenced by the instant specification which states references to solid state in the present disclosure refer to the final state of the membranes….solid-state encompasses phases of any….crystalline, ….amorphous-solid, and polymeric structures” [see Page 10, lines 19- 23 of the instant specification]);
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a reference solid-state membrane disposed over a second end of the second electrically conductive track, defining a reference electrode (Abeyrathne teaches a reference solid-state membrane 23 disposed and printed over a second end of the second electrically conductive track 12, defining the reference electrode. The membrane 23 contains a polymer such as polyvinyl chloride (PVC) [Para. 0054, 0039-0040, Fig. 4C-4D, and see annotated Fig. 1A and 4C] Thus, it is a solid-state membrane as evidenced by the instant specification [see rejection above and Page 10, lines 19- 23 of the instant specification]);
an electrically insulating cover disposed over the first and second electrically conductive tracks in a region of the substrate that is between the first ends and the second ends of the electrically conductive tracks, but not in the region of the first and second ends of the electrically conductive tracks (Abeyrathne teaches an insulating layer 16 [corresponding to a cover] disposed over the first and second electrically conductive tracks 14, 12 in a region [the middle, as indicated on annotated Fig. 4C, is a region between] of the substrate 13 that is between the first ends [see annotated Fig. 4C indicating the first [bottom] end of each electrically conductive track 14, 12 and its region] and the second ends of the electrically conductive tracks 14, 12, but not in the region of the first and second ends of the electrically conductive tracks 14, 12 [Fig. 4C- 4D, Para. 0053, see annotated Fig. 1 A and 4C which demonstrates the insulating layer 16 in a middle region that is not in the regions of the first and second ends]. The insulating material may be made of PET [Fig. 4C, Para. 0053, see annotated Fig. 1 A and 4C]. PET is electrically insulating as evidenced by the instant specification which recites “an electrically insulating substrate”, where the “substrate” or base may comprise polyethylene terephthalate “PET” [Page 2, lines 11-12 and Page 13, line 7]);
wherein each of the sensing solid-state membrane and the reference solid-state membrane comprises a layer of polymer (As outlined in the rejection above, Abeyrathne teaches the reference solid-state membrane 23 comprises a layer of polymer, such as PVC [Para. 0054, 0039-0040, Fig. 1A and 4C; see rejection above] and the sensing solid-state membrane/ion-selective membrane 25 also comprises a layer of polymer and ionophore [Fig. 4C, Para. 0054, 0045, 0047-0048, and see rejection above])
The limitation “solvent-cast” 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). Specifically, Abeyrathne as outlined in the rejection of claim 14 above teaches each of the sensing solid-state membrane and the reference solid-state membrane comprises a layer of polymer [see rejection above]. Thus, the cited prior art teaches all of the positively recited structure of the claimed sensor structure.
wherein the sensing solid-state membrane comprises a sensing reagent (Abeyrathne teaches the ion-selective membrane 25 “sensing solid-state membrane” comprises a nitrate ionophore [see rejection above, Para. 0048 and 0045], which corresponds to a sensing reagent, as evidenced by the instant specification which discloses the ionophore is a nitrate-selective ion reagent, providing the sensing membrane with its specificity towards the ion/nutrient of interest, and is for nitrate-sensing [see Page 21, last paragraph of the instant specification]).
The limitation “for sensing a specific nutrient” 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, Abeyrathne teaches the sensing reagent/nitrate ionophore that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Abeyrathne teaches the nitrate ionophore “sensing reagent” is for detecting/sensing nitrate ions by the ion-selective electrode [see claim 14 above, Para. 0045, 0048 and 0002]. Nitrate is a specific nutrient as evidenced by the instant specification [see Page 21, last paragraph, and Page 6, Paras. 1-2 of the instant specification]); and
a contact region Abeyrathne teaches a contact region at a first end of each of the electrically conductive tracks 14, 12 [see annotated Fig. 1A and Fig. 4C above]);
Abeyrathne is silent to defined by electrical contacts.
Lee teaches an ion-selective electrode sensor (Para. 0005-0007, 0016 and Fig. 1). Lee discloses a contact region at a first end of each electrically conductive tracks 6, 2 and 7, 3 are defined by electrical contacts 4, 5 which are conductive. As seen in Fig. 1, the electrical contacts 4,5 are integrally formed as part of the first and second electrically conductive tracks 6, 2 and 7, 3, at a first end of each track, as they are patterned on the same substrate and are formed as a single, unified piece. The electrical contacts 4, 5 are beneficial for providing connection to a circuit and for transmitting an electrical signal indicating a potential value [Paras. 0059-0062, 0065 and Fig. 1].
Abeyrathne and Lee are considered analogous art to the claimed invention because they are in the same field of ion-selective electrode sensors (Fig. 1A of Abeyrathne and Para. 0005-0007 and 0016 of Lee). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the contact region of Abeyrathne at a first end of each electrically conductive track to be defined by and provide electrical contacts that are integrally formed as part of the first and second electrically conductive tracks, as taught by Lee, since Lee teaches it would be beneficial for providing connection to a circuit and for transmitting an electrical signal indicating a potential value [Paras. 0059-0062, 0065 and Fig. 1 of Lee]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results, MPEP 2143[I][A].
Modified Abeyrathne does not explicitly disclose wherein a separation between the second end of each electrically conductive track is less than 10 mm.
Schwarz teaches a screen-printed, potentiometric, all solid-state [ASS] sensor for environmental samples with an ion-selective electrode and reference electrode [Fig. 2 and Abstract]. Schwarz teaches the second end of each electrically conductive track are circular pieces defining the ion-selective electrode/working electrode and the reference electrode. The distance/separation between the ion-selective electrode and the reference electrode [the second end of each electrically conductive track] is 5 mm [Fig. 2 a-b and Page 117, Paras. 2-3], falling within the claimed range. Schwarz teaches this suitable alternative manufacturing design for reduce device size of a solid-state sensor and that it is beneficial for developing a miniaturized potentiometric sensor and for saving space on a common substrate [Conclusion and Page 117, Paras. 2-3].
Miller teaches a soil chemistry sensor for in-situ soil chemistry sensing with an ion selective electrode and a reference electrode (Abstract and Fig. 1). Miller further teaches it has also been found to be important to keep the ion-selective and reference electrodes, and their porous plugs/membranes, adjacent to one another where the ion-selective membrane/plug and the reference electrode membrane/plug [each membrane corresponding to the second end of each electrically conductive track/electrode] are separated by less than 10 millimeters (Abstract, Para. 0007-0008) which is beneficial as wider spacings between the two electrodes/electrically conductive tracks can cause the results to be unreliable (Para. 0008).
Given the teachings of Schwarz regarding a 5 mm spacing between the ion-selective electrode and reference electrode allowing for the development of a miniaturized, space-saving potentiometric sensor and the teachings of Miller regarding the importance of keeping the ion-selective electrode and reference electrode adjacent, where the electrodes and their respective membranes are separated by less than 10 mm because wider spacings between the two electrode/electrically conductive tracks are undesirable as they can cause the results to be unreliable, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the second end of each electrically conductive track of modified Abeyrathne to be separated by 5 mm, as taught by Schwarz, which is less than 10 mm, since Schwarz teaches this suitable alternative configuration for reducing device size [Fig. 2 a-b and Page 117, Paras. 2-3 of Schwarz], and Schwarz and Miller both teach it would be beneficial for developing a miniaturized potentiometric sensor and for saving space on a common substrate [Conclusion and Page 117, Paras. 2-3 of Schwarz], where a spacing of less than 10 mm improves the results as wider spacings between the two electrodes/electrically conductive tracks can cause the results to be unreliable [Abstract, Para. 0007-0008 of Miller]. Furthermore, the use of a known technique (i.e., the separation between the second end of each electrically conductive track is less than 10 mm [i.e., 5 mm], taught by Schwarz) to improve similar devices in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143 [I][C]).
the limitations “soil nutrient” in “soil nutrient sensor” and “the soil nutrient sensor comprising” in lines 1-2 as well as the limitation “for in-situ sensing of soil nutrients” in line 2 are intended use limitations. 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 Abeyrathne teaches the above solid-state sensor that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Modified Abeyrathne teaches the disclosed sensing elements of claim 14. When the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent [MPEP 2112.01(I)]. 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 (i.e., for in-situ sensing of soil nutrients and soil nutrient sensor), is necessarily present in the prior art material [see rejection of claim 14 above]. Furthermore, Abeyrathne specifically discloses the sensor may be used in the fields of agriculture, wastewater, livestock and manufacturing, where the ion-selective electrode is configured to detect/sense an ion such as nitrate [corresponding to soil nutrients] [Para. 0064 and 0009 of Abeyrathne]. Thus, the solid-state sensor of modified Abeyrathne is specifically configured to perform the intended use of in-situ sensing of soil nutrients and the intended use of a soil nutrient sensor.)
the limitations “wherein the solid-state soil nutrient sensor is configured to be inserted into a dry soil environment, exposing the sensing solid-state membrane and reference solid-state membrane directly to the dry soil to sense nutrients within the dry soil” is an intended use limitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Modified Abeyrathne teaches the above solid-state sensor that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Modified Abeyrathne teaches the disclosed sensing elements of claim 14. When the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent [MPEP 2112.01(I)]. 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 (i.e., wherein the solid-state soil nutrient sensor is configured to be inserted into a dry soil environment, exposing the sensing solid-state membrane and reference solid-state membrane directly to the dry soil to sense nutrients within the dry soil), is necessarily present in the prior art material [see rejection of claim 14 above]. Furthermore, as indicated in the 112b rejection above of “dry soil environment”, dry soil still has some degree or presence of water and moisture, such as in ionic form, with electrolytes present, therefore, dry soil still has a moisture content [i.e., water present] which is related to its conductivity in a “complex relationship” [i.e., even when the soil is dry it has some conductivity and therefore has water and moisture present] [see Page 3, lines 9-13 of the instant specification and the 112b rejection above]. As outlined in the rejection above, Abeyrathne teaches an ion-selective membrane 25 [corresponding to a sensing solid-state membrane] that can be printed and is disposed over a second end of the first electrically conductive track 14 as small circular pieces, defining the ion-selective electrode; the ion selective membrane ISM is made of an ionophore and a polyme,r and the reference solid-state membrane 23 disposed and printed over a second end of the second electrically conductive track 12, defining the reference electrode. [Para. 0039-0040, 0053-0054, 0045, 0047-0048, Fig. 4C-4D, of Abeyrathne; and see annotated Fig. 1A and 4C and rejection of claim 14 above]. Thus, the solid-state sensor of Modified Abeyrathne, which includes the sensing solid-state membrane and the reference solid-state membrane is capable of performing the intended use of being inserted into a dry soil environment and exposed directly to the dry soil to sense nutrients [nitrates] within the dry soil, which still has necessarily has a moisture content and water present [see 112b rejection above and Page 3, lines 9-13 of the instant specification]. Furthermore, Abeyrathne specifically discloses the sensor may be used in the fields of agriculture, wastewater, livestock and manufacturing, where the ion-selective electrode is configured to detect an ion such as nitrate [corresponding to soil nutrients] [Para. 0064 and 0009 of Abeyrathne]. Thus, the solid-state sensor of modified Abeyrathne is specifically configured to perform the intended use of “wherein the solid-state soil nutrient sensor is configured to be inserted into a dry soil environment, exposing the sensing solid-state membrane and reference solid-state membrane directly to the dry soil to sense nutrients within the dry soil”.).
Regarding claim 15, the solid-state sensor as claimed in claim 14, the limitation “wherein the sensing reagent is for sensing a concentration of nitrate” 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, Abeyrathne teaches the sensing reagent/nitrate ionophore that is specifically configured to perform the functional limitations above (As outlined in the rejection of claim 14 above, Abeyrathne teaches the nitrate ionophore “sensing reagent” for detecting and measuring the concentration of nitrate ions by the ion-selective electrode [see claim 14 above, Para. 0045, 0048 and 0002])
Regarding claim 17, the solid-state sensor as claimed in claim 14, wherein the substrate comprises plastic or ceramic (Abeyrathne teaches a substrate 13 made of polyethylene terephthalate (PET) [Fig. 1A and Para. 0038; see annotated Fig. 1A]. PET is a plastic, specifically a thermoplastic, as evidenced by Costantino et al. [Page 3, PET applications, line 1])
Regarding claim 18, the solid-state sensor as claimed in claim 14, wherein each of the first and second electrically conductive tracks comprise carbon or silver chloride (Abeyrathne teaches the first electrically conductive track/ISE 14 is made of silver/silver chloride and carbon. Abeyrathne further teaches the second electrically conductive track/reference electrode 12 contains silver/silver chloride [Fig. 1A; Para. 0047 and 0041; see annotated Fig. 1A])
Regarding claim 19, the solid-state sensor as claimed in claim 14, wherein all of the first and second electrically conductive tracks are covered by the electrically insulating cover (As outlined in the rejection of claim 14 above, Abeyrathne teaches all of the insulating layer 16/electrically insulating cover is positioned over the first and second electrically conductive tracks 14, 12 in a region [middle] that is between the first ends [see annotated Fig. 4C indicating the first [bottom] end of each electrically conductive track 14, 12 and its region] and the second ends of the electrically conductive tracks 14, 12 [Fig. 4C-4D, Para. 0053 of Abeyrathne; see annotated Fig. 1 A and 4C as well as the rejection of claim 14 above]. Thus, all of the first and second electrically conductive tracks in the rejection outlined above are covered by the insulating layer 16/electrically insulating cover.), and
The limitation “wherein the electrically insulating cover provides waterproofing” 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, as outlined in the rejection of claim 14 above, Abeyrathne teaches the insulating layer 16/electrically insulating cover is made of PET [see rejection of claim 14 above]. PET is a material that provides waterproofing as evidenced by Costantino et al. [Page 2, Para. 1, lines 1-13], thus the insulating layer 16/electrically insulating cover of Abeyrathne is specifically configured to perform the functional limitations above of providing waterproofing.)
Regarding claim 20, the solid-state sensor as claimed in claim 14, the limitation “wherein each of the first and second electrically conductive tracks are formed by screen-printing onto the substrate” 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). Specifically, Abeyrathne teaches each of the first electrically conductive track/ISE 14 and the second electrically conductive track/reference electrode 12 are on the substrate [Fig. 1A and Para. 0038; see annotated Fig. 1A and rejection of claim 14 above]. Thus, the cited prior art teaches all of the positively recited structure of the claimed sensor structure. However, the Examiner notes that Abeyrathne teaches the first electrically conductive track/ISE 14 and the second electrically conductive track/reference electrode 12 are formed by screen-printing onto the substrate 13 [Para. 0038 and claim 19 of Abeyrathne])
Regarding claim 21, the solid-state sensor as claimed in claim 14, wherein the electrical contacts are integrally formed as part of the first and second electrically conductive tracks (As outlined in the rejection of claim 14 above, Modified Abeyrathne teaches the electrical contacts are integrally formed as part of the first and second electrically conductive tracks [see rejection of claim 14 above and Paras. 0059-0062, 0065 and Fig. 1 of Lee]. Furthermore, the examiner notes that the use of a one-piece, integrated construction would have been within the ambit of a person of ordinary skill in the art. See In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (see MPEP § 2144.04)).
Regarding claim 22, the solid-state sensor as claimed in claim 14, Modified Abeyrathne is silent to wherein each of the sensing solid-state membrane and the reference solid-state membrane contain the same polymer.
However, Abeyrathne teaches the reference solid-state membrane 23 comprises a layer of polymer, such as PVC [Para. 0054, 0039-0040, Fig. 1A and 4C; see rejection of claim 14 above] and the sensing solid-state membrane/ion-selective membrane 25 also comprises a layer of polymer and ionophore [Fig. 4C, Para. 0054, 0045, 0047-0048, and see rejection of claim 14 above].
Lee teaches the reference electrode is coated with a layer of polyvinyl chloride (PVC) [Paras. 0186-0188]. Lee further teaches any polymer binder known in the art can be used to prepare the ion-selective membrane containing the ionophore and the polymer binder can be polyvinyl chloride (PVC), and the ion-selective membrane may be formed by solvent-casting [Para. 0153-0154].
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the polymer in the ion-selective membrane/sensing solid-state membrane of Modified Abeyrathne with the PVC polymer of Lee, since Lee discloses this polymer is well-known in the art and can be used to prepare an ion-selective membrane containing an ionophore [Para. 0153 of Lee]. Furthermore, the claimed limitations are obvious because the substitution of one known element for another yields predictable results to one of ordinary skill in the arts (MPEP 2143[I][B]). Additionally, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Thus, modified Abeyrathne yields each of the sensing solid-state membrane and the reference solid-state membrane containing the same polymer, polyvinyl chloride (PVC) [see rejection above].
Regarding claim 23, the solid-state sensor as claimed in claim 14 Modified Abeyrathne does not explicitly disclose further comprising a voltage sensor coupled to the contact region, and a wireless network transmitter coupled to said voltage sensor.
Miller teaches a system 300 which includes a soil chemistry sensor with an ion-selective electrode and a reference electrode, with a contact region [the top of wires 112 outside of the tubing, where they are connected externally to a voltage sensor], and the system comprises a voltage amplifier 302a [corresponding to a voltage sensor as it provides voltage data to a data logger 304] coupled to the contact region [as seen in Fig. 3], and a wireless network transmitter coupled to said voltage amplifier/sensor to enable wireless collection of soil chemistry data from said soil chemistry sensor. A wireless connection is employed and an RF transceiver 310 communicates with a computer or mobile phone network, to provide a link to a remote data collection/analysis computer/network and to communicate sensor data from the probe [claims 15 and 16; Para. 0012, 0061, 0068 and Figs. 1 and 3].
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the solid-state sensor including the contact region of modified Abeyrathne to provide a voltage sensor coupled to the contact region, and a wireless network transmitter coupled to said voltage sensor, as taught by Miller, since Miller teaches it would be beneficial for communicating with a computer or mobile phone network, to provide a link to a remote data collection/analysis computer/network, to communicate sensor data from the probe and to enable wireless collection of soil chemistry data from said soil chemistry sensor [claims 15 and 16; Para. 0012, 0061, 0068 and Figs. 1 and 3 of Miller]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results, MPEP 2143[I][A].
The limitation “to enable wireless collection of soil chemistry data from said solid-state sensor” 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 Abeyrathne teaches the voltage sensor, wireless network transmitter and solid-state sensor that is specifically configured to perform the functional limitations above (As outlined in the rejection above, Modified Abeyrathne teaches a voltage sensor coupled to the contact region, and a wireless network transmitter coupled to said voltage sensor to enable wireless collection of soil chemistry data from said solid-state sensor of Modified Abeyrathne [see rejection above and claims 14-16; Para. 0012, 0061, 0068 and Figs. 1 and 3 of Miller])
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abeyrathne et al. in view of Lee et al., Schwarz et al., and Miller et al., as applied to claim 14 above, and further in view of Uchiyama et al. (US20220334077A1).
Regarding claim 16, the solid-state sensor as claimed in claim 14, Modified Abeyrathne is silent to wherein each of the sensing solid-state membrane and the reference solid-state membrane comprises two layers of polymer.
However, Abeyrathne teaches each of the sensing solid-state membrane/ion-selective membrane 25 and the reference solid-state membrane 23 comprises a single layer of polymer [see rejection of claim 14 above; Para. 0054, 0039-0040, 0045, 0047-0048; Fig. 1A and 4C].
Uchiyama teaches an ion sensor with an all solid-state ion-selective electrode and reference electrode [Para. 0003, claim 20, Fig. 2-3 and 7; Abstract]. Uchiyama teaches an ion selective membrane that contains polyvinyl chloride [polymer] and the layer structure of the ion selective membrane is not limited, the ion-selective membrane may have a single layer structure composed of one layer having a single composition or may have a multi-layer structure consisting of a plurality of layers having the same composition from each other [Para. 0091 and 0087; Fig. 2]. Thus, Uchiyama teaches the ion-selective electrode membrane [sensing solid-state membrane] can have a multi-layer structure, thus comprising two layers, and each layer has the same composition including a polymer [corresponding to two layers of polymer]. Uchiyama further teaches the reference electrode has a reference solid-state membrane, referred to as a salt bridge layer, the layer being an ionic liquid gel film that is gelled using a polymer compound, such as polyvinyl chloride [Fig. 3; Para. 0099, 0095, 0097]. The layer structure of the salt bridge layer/membrane is not limited; it may be a single-layer structure having a single composition or a multi-layer structure composed of a plurality of layers having the same composition from each other [Para. 0098]. Thus, Uchiyama teaches the reference solid-state membrane/salt bridge layer can have a multi-layer structure, thus comprising two layers, and each layer has the same composition including a polymer [corresponding to two layers of polymer].
Modified Abeyrathne and Uchiyama are considered analogous art to the claimed invention because they are in the same field of ion sensors with ion-selective electrodes [Fig. 1A of Abeyrathne and claim 20 of Uchiyama]. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sensing solid-state membrane and the reference solid-state membrane comprising a single layer of polymer of Modified Abeyrathne to provide a multi-layer structure composed of a plurality of layers of polymer [thus comprising two layers of polymer] as taught by Uchiyama, since Uchiyama specifically teaches this suitable alternative configuration where an ion-selective membrane and reference solid-state membrane may have a multi-layer structure instead of a single-layer structure of polymer, where the layer structure is not limited [Para. 0094 and 0098 of Uchiyama]. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results, MPEP 2143[I][A].
The limitation “solvent cast” 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). Specifically, Modified Abeyrathne as outlined in the rejection above yields each of the sensing solid-state membrane and the reference solid-state membrane comprising two layers of polymer [see rejection above]. Thus, the cited prior art teaches all of the positively recited structure of the claimed sensor structure.
Response to Arguments
Applicant's arguments, see Remarks Pgs. 12-18, filed 12/09/2025, with respect to the 35 U.S.C. § 103 rejections have been fully considered and are not persuasive.
Applicant’s Argument #1:
Applicant argues on pages 14-15 in regards to Abeyrathne that the sensor in this document works very differently to the presently claimed solid-state sensor, and will only work with liquids. Abeyrathne does not present a sensor that would be suitable for, or even work as, a dry soil sensor.
Applicant further argues that Abeyrathne does not disclose: 1) a soil-nutrient sensor; 2) where the insulation is disposed in a region of the substrate that is between the first ends and the second ends of the electrically conductive tracks, but not in the region of the first and second ends of the electrically conductive tracks; and 3) wherein, the solid-state soil nutrient sensor is configured to be inserted into a dry soil environment, exposing the sensing solid-state membrane and reference solid-state membrane directly to the dry soil to sense nutrients within the dry soil.
Examiner’s Response #1:
The examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection of the claims above is made based on the modification of Abeyrathne as a 103 rejection, which applicant has failed to argue. Rather applicant has attacked each reference individually, when the rejection is based on the combination of the prior art.
Furthermore, the arguments are unpersuasive because modified Abeyrathne teaches all structural limitations as presently claimed device and thus anticipate the claims or render the claims obvious in view of other cited references. The distinctions as argued by applicant are for intended use, e.g., using the solid-state sensor in a dry soil environment, or as functional limitations, which do not add patentable weight to the presently claimed device.
As outlined in the rejection above, Modified Abeyrathne teaches the disclosed sensing elements of claim 14. When the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent [MPEP 2112.01(I)]. 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 (i.e., for in-situ sensing of soil nutrients and sensing nutrients within the dry soil envirnoment), is necessarily present in the prior art material [see rejection of claim 14 above]. Furthermore, Abeyrathne specifically discloses the sensor may be used in the fields of agriculture, wastewater, livestock and manufacturing, where the ion-selective electrode is configured to detect an ion such as nitrate [corresponding to soil nutrients] [Para. 0064 and 0009 of Abeyrathne]. Thus, the solid-state sensor of modified Abeyrathne is specifically configured to perform the intended use argued above of detecting soil nutrients in dry soil environments. Thus, the rejection is maintained.
Regarding applicant’s arguments that Abeyrathne fails to disclose “where the insulation is disposed in a region of the substrate that is between the first ends and the second ends of the electrically conductive tracks, but not in the region of the first and second ends of the electrically conductive tracks”, the examiner respectfully disagrees. As outlined in the rejection above, Abeyrathne discloses the insulation layer disposed in a region of the substrate [the middle] that is between the first and second ends of the conductive tracks, but not in the region of the first and second ends of the conductive tracks [see annotated Figures above and rejection of claim 14]. The current claim language does not recite that the insulating cover is disposed…. only in a region that is only between the first and second ends of the electrically conductive tracks, and thus Abeyrathne meets the current claim language and amendments as recited and rejected above.
Applicant’s Argument #2:
Applicant argues on pages 15-16 that in contrast to Abeyrathne, the unique arrangement of the electrical insulation and solid-state membranes disposed over conductive tracks and the distance between the contacts, enables the presently claimed solid-state sensor to detect ions in a dry soil environment through direct contact between the membranes and the dry soil.
Examiner’s Response #2:
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Furthermore, the arguments are unpersuasive because modified Abeyrathne teaches all structural limitations as presently claimed device and thus anticipate the claims or render the claims obvious in view of other cited references. The distinctions as argued by applicant are for intended use, e.g., using the solid-state sensor to detect ions in a dry soil environment, or as functional limitations, which do not add patentable weight to the presently claimed device. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Additionally, in response to applicant's argument that the presently claimed solid-state sensor is enabled to detect ions in a dry soil environment through direct contact between the membranes and the dry soil, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s Argument #3:
Applicant argues on pages 16-17 that none of the cited documents discloses or teaches a solid-state soil nutrient sensor that is a soil nutrient sensor configured to be inserted into a dry soil environment to expose the membranes directly to the dry soil so that the soil-nutrients can be detected in the dry soil. Lee for example describes a liquid flowing system with an internalised chamber that contains the ion-selective sensor - this is very different from the presently claimed solid-state sensor, which does not use a liquid flowing system. Schwarz only discloses sampling liquids with their arrangement that uses intermediate (conducting polymer) layers between the ion-selective membrane and the substrate, which are not present in the presently claimed solid- state sensor.
Applicant further argues that Miller refers to the prior art solutions of sampling soil nutrients in that it provides a sensor containing an aqueous back-filling solution. Miller therefore does not disclose a solid-state soil sensor, and neither does it disclose the solid-state soil nutrients sensor comprising a reference solid-state membrane over the sensing region of the electrode and a nitrate sensing solid-state membrane over the sensing region of the second electrode that are disposed on a substrate. Both reference and sensor regions of Miller require an aqueous back filling solution, so could never be described as a solid-state reference and sensor region provided by a solid-state membrane. In the arrangement disclosed by Miller, the drying soil could 'pull' water from the backfilling solution, thus affecting its sensitivity.
Examiner’s Response #3:
The examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, the examiner notes that Miller is not relied on to disclose a solid-state soil sensor and thus applicant’s arguments regarding the structure of Miller are moot.
Additionally, claim 14 uses the transitional term “comprising”, which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method step [see MPEP 2111.03].
Applicant’s Argument #4:
Applicant argues on pages 16-17 that regarding dependent claim 16, the Office Action relies on Abeyrathne et al. in view of Lee et al., Schwarz et al. and Miller et al. as in connection with claim 14, and Uchiyama et al. does not remedy the deficiencies of the cited references for not disclosing or suggesting a solid-state sensor. Applicant further argues that any of the cited documents and their combination are all sensors for detecting ions in liquids, we submit that the cited art as combined fails to disclose or reasonably suggest to a person of skill the solid-state sensor as claimed. There is no motivation or sound reason for a person of skill when starting from any of these documents, to develop a solid-state sensor since all cited documents detect ions in liquids, not dry soils. None of the cited documents disclose or teach sensors with the same arrangement as claimed that enable the sensors to detect soil nutrients in dry soil environments, as presently claimed. Even if the person of skill were to consider combining the documents, they still would not arrive at the presently claimed solid-state sensor without relying in hindsight on the present application.
Examiner’s Response #4:
The examiner respectfully disagrees. Abeyrathne clearly teaches a solid-state sensor as outlined in the rejection of claim 14 above. Furthermore, the arguments are unpersuasive because modified Abeyrathne teaches all structural limitations as presently claimed device and thus anticipate the claims or render the claims obvious in view of other cited references. The distinctions as argued by applicant are for intended use, e.g., using the solid-state sensor in a dry soil environment, or as functional limitations, which do not add patentable weight to the presently claimed device.
As outlined in the rejection above, Modified Abeyrathne teaches the disclosed sensing elements of claim 14. When the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent [MPEP 2112.01(I)]. 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 (i.e., for in-situ sensing of soil nutrients and sensing nutrients within the dry soil), is necessarily present in the prior art material [see rejection of claim 14 above]. Furthermore, Abeyrathne specifically discloses the sensor may be used in the fields of agriculture, wastewater, livestock and manufacturing, where the ion-selective electrode is configured to detect an ion such as nitrate [corresponding to soil nutrients] [Para. 0064 and 0009 of Abeyrathne]. Thus, the solid-state sensor of modified Abeyrathne is specifically configured to perform the intended use argued above of detecting soil nutrients in dry soil environments.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. 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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