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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-3, 9-11 and 19 in the reply filed on October 28, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-3, 9-11, and 19 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the junction" in lines 11-12. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “a junction.”
Dependent claim(s) 2-3, 9-11, and 19 is/are rejected based on rejected claim 1.
Claim 3 recites the limitation "the in" in lines. There are insufficient antecedent bases for these limitations in the claim. It is suggested to be “the internal insulating components” and “the external insulating components” respectively.
Claim 3 recites the limitation "the insulating layers are" in lines. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “the plurality of insulating layers is” in these places.
Dependent claim(s) 9 is/are rejected based on rejected claim 3.
Claim 19 recites the limitation "the insulated sleeve component" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “the sleeve component.”
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cary (US 2,256,733).
Regarding claim 1, Cary teaches probe apparatus for use in testing pH (p. 1, col. 1, ll. 1-2: an electrode for the electrical determination of pH), the apparatus comprising:
a sensing end component (Fig. 4; p. 2, col. 1, l. 71: bulb portion 3);
a sleeve component (Fig. 2, 4; p. 2, col. 2, ll. 18-21: plug 6) for housing a sensor signal wire (Fig. 4; p. 2, col. 2, l. 29: electrode wire 7) that terminates at one end at a sensor electrode within the sensing end component (Fig. 4: indicating the electrode wire 7 inside the plug 6 and the bulb portion 3); and
an insulating component (Fig. 2. 4: insulation 11, wax filling, shielding 10, lead cable 8, tube 5) provided to the sleeve component;
wherein the insulating component has a layered construction formed of a plurality of insulating layers (Fig. 4: a layered construction of insulation 11, wax filling, shielding 10, lead cable 8); wherein the sensing end component and sleeve component are coupled and contain a buffer solution (Fig. 4; p. 3, col. 1, ll. 5-6: electrolyte; col. 2, l. 18: a buffer solution), and wherein the insulating component comprises internal (Fig. 2, 4: shield 10 and rubber insulation 11) and external insulating components (Fig. 4: wax filing, lead cable 8, tube 5) provided respectively internally and externally of the sleeve component (Fig. 2, 4), the internal and external insulating components extending along the sleeve component from the junction of the sleeve component with the sensing end component (Fig. 4; p. 2, col. 1, l. 74: joint portion 4).
The preamble “for use in testing pH of soft tissues, bodily fluids or bone” is deemed to be a statement with regard to the intended use and are not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use 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. MPEP § 2111.02(II). The apparatus as taught by modified Cary is identical to the presently claimed structure and would therefore would have the ability to perform the use recited in the claim.
Regarding claim 3, Cary teaches wherein the internal insulating component (Fig. 2, 4: shield 10 and rubber insulation 11) comprises one or more inner tubes provided within the sleeve component (Fig. 2, 4: indicating shield 10 and rubber insulation 11 are within the plug 6).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cary in view of Hanko (WO 2010/072601).
Regarding claims 2 and 10, Cary teaches discloses all limitations of claim 1 and wherein the sleeve component takes the form of a capillary component (for claim 2) and wherein the sleeve component coupled to the sensing end component (for claim 10) (Fig. 2, 4: indicating the plug 6 coupled to the bulb portion 3) and into which extends a pair of concentric inner tube (Fig. 2, 4: two concentric inner tubes of insulation 11 and shielding 10 inside the plug 6).
Cary does not disclose wherein the sleeve component takes the form of a capillary component (claim 2) or wherein the sleeve component comprises a capillary glass tube (claim 10).
However, Hanko teaches a measuring probe (Fig. 2, 5: measuring probe 201, 501) including a glass membrane (Fig. 2, 5: 205, 505) which terminates at an electrically insulating inner tube (Fig. 2, 5: 203, 503) and is filled with a pH buffer solution (Fig. 2, 5: 213, 513). The electrically insulating inner tube 503, which is preferably formed of glass (p. 7, last para.) and in a form of a capillary (Fig. 2, 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cary by substituting the bulb portion 3 and the plug 6 with the dome-shaped glass membrane 205 and inner tube 203 as taught by Hanko because they are both suitable configuration for a glass pH sensor and the substitution of one known element for another would yield nothing more than predictable results. MPEP 2141(III)(B). Further, since glass is a suitable material for the inner tube and 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.
Regarding claim 11, Cary teaches the probe apparatus further comprising a middle tube (Fig. 4: lead cable 8) extending around the inner tubes (Fig. 4: the lead cable 8 surrounding the insulation 11 and shielding 10), a probe main tubing (Fig. 4: tube 5) extending around the middle tube, and an outer bushing extending around the probe main tubing (Fig. 4: the bake-lite cap 12 around the tube 5). Since the lead cable 8 extending around the plug 6 (Fig. 4), the combined Cary and Hanko would necessarily result in the lead cable 8 extending around the capillary glass tube 503 (Hanko, Fig. 5) and the inner tubes (Cary, Fig. 4: the insulation 11 and shielding 10) would project from the capillary glass tube 503, as they project from the plug 6 in Cary, Fig. 4.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cary in view of Walter (US 2007/0218792).
Regarding claim 9, Cary discloses all limitations of claim 3 and the insulating layers are provided with a coupling material (Fig. 4: wax filling), which inhibits the coating of the interior of the electrode surface with solution or moisture and thus materially avoids leakage currents (p. 1, col. 2, ll. 40-43). Cary further discloses the electrode assembly has approximately zero temperature coefficient so the temperature effects are negligible (p. 3, col. 2, ll. 2-7).
Cary does not disclose wherein the coupling material is provided with one or more air pockets.
However, Walters teaches a laminated sheet material (title), and each of the layers is joined to the adjacent layer or layers using a polyurethane hot melt adhesive (¶9). Application of the adhesive allows formation of air pockets in the interstices between the points of adhesion, providing valuable added insulating qualities to the laminate (¶9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cary by incorporating air pockets as taught by Walters to add insulating qualities to the laminate (¶9). Here, 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).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cary.
Regarding claim 19, Cary discloses all limitations of claim 1, but fails to teach wherein the ratio of the impedance of the glass bulb and the insulated sleeve component is in the range 1:5 to 1:9.
However, Cary teaches the bulb may possess a resistance of 100 megohms, 500 or 1,000 megohms (p. 2, col. 2, ll. 13-17). Further, the electrode also comprises a plug 6 which has a ground fit with the ground portion 4 of the electrode body (Fig. 4; p. 2, col. 2, ll. 18-20). The plug serves to receive the end of a lead cable 8, which contains an insulating material having a resistance of over 10,000,000 megohms per foot (p. 2, col. 2, ll. 26-27, 31-33). Thus, the resistances of the bulb and the insulating component as well as the sleeve component are parameters for the performance of the pH sensor.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cary by adjusting the resistances or the impedances of the bulb and the sleeve component to obtain the claimed impedance ratio because these impedances and thus the impedance ratio can be optimized through routine experimentation. MPEP 2144.05 (II)(B). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A). Furthermore, there is no indication in the present application that the recited impedance ratio is critical to the invention, which would have supported the non-obvious of the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached M-F: 8:30am - 5:30pm.
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/C. SUN/Primary Examiner, Art Unit 1795