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 with traverse of Group I, claims 1-10, drawn to a water quality monitoring method in the reply filed on January 6, 2026 is acknowledged. Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-IV, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 6, 2026.
The traversal is on the ground(s) that the Group II and Group III claims both require all of the features of at least independent claim 1, and thus can be considered related based at least on their incorporation of the inventive concepts of the Group I claims. This is not found persuasive because these Groups are restricted under Unity of Invention, based on the principle that even though the inventions of these groups require the same technical feature, this technical feature is not a special technical feature as it does not make a contribution over the prior art. Applicant asserts that the present claims incorporate multiple features which are not disclosed, taught, or suggested by the cited reference, but it does not point out which features are.
The requirement is still deemed proper and is therefore made FINAL.
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) 1-10 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 received data" in line 7. It is unclear whether the received data are the received sensor data or the received parameter.
Dependent claim(s) 2-10 is/are rejected based on rejected claim 1.
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) 1-3 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang (U.S. 2014/0353170).
Regarding claim 1, Huang teaches a water quality monitoring method, the method comprising:
receiving BioElectrochemical System, BES, sensor data indicating an output from at least one BES sensor exposed to a water sample (¶22: BES, such as microbial fuel cells; during the metabolic process, the electrically active microbe will donate electrons to an electrode of a circuit or receive electrons from a circuit resulting in a measurable change in electrical potential or electric current within the circuit; BES output);
receiving data indicating at least one piece of configuration data for the BES sensor (¶31: the size/shape of the electrode); and
processing the received data according to a calibration algorithm (Fig. 6: the correlation between BOD with current; ¶46: calibrated by exposing the cell to a number of standardized BOD samples, and measuring the current to construct a correlation) to generate a parameter indicative of organic compound concentration (¶46: the correlation may be programmed into a processor to interpret BOD values from measurements).
Regarding claim 2, Huang teaches wherein the BES sensor comprise a Microbial Fuel Cell, MFC (¶24), comprising an electrode (Fig. 1: anode) coated with electrogenic bacteria (Fig. 1: microbes coated on the anode) arranged such that as the water sample flows past the electrode, organic matter is consumed by the electrogenic bacteria to generate an electrical current, the BES sensor output being indicative of that electrical current (¶24: at the anode side of the MFC, microbes metabolize organic matter, using water, to produce carbon dioxide and protons; electrons are produced and donated to the anode; ¶23: the current produced by this metabolic activity; further, this limitation “such that…” is directed to intended result without positively recited active steps to be performed and thus does not further limit the recited method).
Regarding claim 3, Huang teaches wherein the BES sensor data is indicative of the sum of BES sensor outputs from a plurality of BES sensors arranged hydraulically in series (¶34: five identical BES sensors; Fig. 2: indicating these BES sensors arranged in series along the flow) such that the water sample flows through the plural BES sensors or the outputs of each BES sensor individually (¶34: the mixture of buffer solution and sample will be pumped into each cell continuously; further, this limitation “such that…” is directed to intended result without positively recited active steps to be performed and thus does not further limit the recited method).
Regarding claim 5, Huang teaches wherein the at least one environmental parameter data comprises data indicative of the temperature of the water sample (¶33: temperature); wherein the at least one piece of configuration data for the BES sensor comprises data indicative of electrode size (¶31: the size/shape of the electrode); and wherein the at least one parameter for a system in which the BES sensor is implemented comprises data indicative of water flow rate (¶31: the flow rate).
Regarding claim 6, Huang teaches wherein the calibration algorithm comprises multiple regression (¶46: the correlation shown in Fig. 6) trained according to a data set comprising, for a plurality of water samples, BES sensor data, validation data indicating organic compound concentration for the water samples determined according to an alternative test, and at least one of environmental parameter data or BES sensor configuration data (¶46: a number of standardized BOD samples, measured current; ¶31: the response of a BES may be modified by the size/shape of the electrode).
Regarding claim 7, Huang teaches wherein the alternative test comprises Biological Oxygen Demand (¶21).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang in view of Masakari (US 2018/0355022).
Regarding claim 4, Huang disclose all limitations of claim 3, but fails to teach wherein for a plurality of BES sensors the BES sensor data is indicative of normalised current data for each BES sensor.
However, Masakari teaches electrochemical measurement of glucose (¶212) for establishing a calibration curve by plotting the current values relative to the corresponding glucose concentrations with known concentration (¶214). Instead of current, current densities normalized by the working electrode may be plotted (¶214).
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 Huang by substituting the current with current density for establishing calibration curve to calculate the analyte concentration as taught by Masakari because the normalized current density is an alternative approach for establish a calibration curve and the substitution of current for current density would yield nothing more than predictable results. MPEP 2141(III)(B).
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang.
Regarding claims 8-10, Huang disclose all limitations of claim 3, but fails to teach determining a change in BES sensor data between a first time point and a second time point for each of the plurality of BES sensors; and determining, based on the change for each BES sensor, an indication whether the change is indicative of a change in organic compound concentration (claim 8) or monitoring organic compound concentration based on the parameter indicative of organic compound concentration (claim 9) or wherein monitoring organic compound concentration is further based on the indication whether the change is indicative of a change in organic compound concentration (claim 10).
However, Huang teaches the response of a BES may be modified by the microbial density of the cell (¶31). Thus, it is possible to tune each BES cell to achieve a beneficial linear range throughout which current may be correlated to a BOD level. Since a change in BOD level will quickly result in a change in measured current, it allows a change in BOD to be quickly recognized to achieve a real-time monitoring of BOD (¶31).
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 Huang by determining a change in the BES sensor data, e.g., measured current, at two different times to determine whether the change is indicative of a change in organic compound concentration because it would be able to quickly recognize the BOD change based on the current change and to tune the BES cell to achieve a beneficial linear range (¶31). 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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1, the 101 analysis on the patentable eligible subject matter is presented as follows:
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 2106.03. Claim 1 is directed to a water quality monitoring method, which is a process and falls within four statutory categories of invention.
Step 2A Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. MPEP 2106.04(II). Claim 1 recites “(a) receiving, BioElectrochemical System, BES, sensor data indicating an output from at least one BES sensor exposed to a water sample; (b) receiving data indicating at least one environmental parameter, at least one piece of configuration data for the BES sensor or at least one parameter for a system in which the BES sensor is implemented; and (c) processing the received data according to a calibration algorithm to generate a parameter indicative of organic compound concentration for the water sample.” These limitations are directed to one of the judicial exceptions, i.e., abstract idea, because limitations (a)-(c) recite receiving data and processing the received data, which is simple enough that it can be practically preformed in the human mind and falls into the “mental process” group of abstract ideas.
Step 2A Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55. Claim 1 recites the additional element of the BES sensor, but the “receiving” steps are not performed by the BES sensor, which merely gathers data that is necessary for use of the recited judicial exception and is recited at a high level of generality. Thus, these limitations in the claim are recited so generically that they represent no more than mere instructions to apply the judicial exceptions on a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the measuring circuit and the processor does not affect this analysis. MPEP 2106.05(I). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05. Claim 1 recites receiving the BES sensor data and its environmental parameter for processing, which are at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. As explained in Step 2A Prong Two, the BES sensor merely provides data for use of the recited judicial exception. In sum, these limitations do not amount to significantly more because the additional element represent mere data gathering to apply an exception, which do not provide an inventive concept. The claim is not eligible.
Regarding claims 2-7, the limitations regarding the types of the BES sensor (claim 2), the BES sensor data (claims 3-4), the environmental parameter data (claim 5), the calibration algorithm (claim 6), the data from alternative tests (claim 7), are directed to data gathering and calculation of a process, which falls within four statutory categories of invention and “mental process” group of abstract ideas. These additional elements, various types of the BES sensor and its outputted data, do not integrate the recited judicial exception into a practical application because it merely represent data gathering that is necessary for use of the recited judicial exception and is recited at a high level of generality. As a whole, the claim does not amount to significantly more than the recited exception or adds an inventive concept to the claim.
Regarding claim 8, the limitations “(i) determining a change in BES sensor data between a first time point and a second time point for each of the plurality of BES sensors; and (ii) determining, based on the change for each BES sensor, an indication whether the change is indicative of a change in organic compound concentration, the presence of toxicity, excessive organic compound concentration or sensor recovery from excessive organic compound concentration or toxicity” are directed to steps of a process, which falls within four statutory categories of invention and “mental process” group of abstract ideas. The additional element, the BES sensor, does not integrate the recited judicial exception into a practical application because it merely represent data gathering that is necessary for use of the recited judicial exception and is recited at a high level of generality. As a whole, the claim does not amount to significantly more than the recited exception or adds an inventive concept to the claim.
Regarding claims 9-10, the limitation “monitoring organic compound concentration based on the parameter indicative of organic compound concentration” (claim 9) “wherein monitoring organic compound concentration or controlling process flows is further based on the indication whether the change is indicative of a change in organic compound concentration, the presence of toxicity, excessive organic compound concentration or sensor recovery from excessive organic compound concentration or toxicity” (claim 10) or “controlling process flows in a waste water treatment plant or industrial process based on the parameter indicative of organic compound concentration in order to maintain organic compound concentration within a predetermined tolerance” (claim 9) are directed to steps of a process, which falls within four statutory categories of invention and “mental process” group of abstract ideas. The additional element, the BES sensor, does not integrate the recited judicial exception into a practical application because it merely represent data gathering that is necessary for use of the recited judicial exception and is recited at a high level of generality. As a whole, the claim does not amount to significantly more than the recited exception or adds an inventive concept to the claim.
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