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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/30/2024 has been considered by the examiner.
Election/Restrictions
Applicant's election of Group I, Claims 1-4, with traverse in the reply filed on 06/08/2022 is acknowledged.
The traversal is on the ground(s) that “each of claims 5-7, 8-10 and 11, as presently amended, recites the electrochemical biofilm sensor claimed in at least one of the claims of Group I. Therefore, each of claims 5-7, 8-10 and 11 includes all of the elements of the electrochemical biofilm sensor of Group I. The Office Action has asserted that the electrochemical biofilm sensor would not be a special technical feature because it allegedly makes no contribution over the prior art. Applicant respectfully disagrees and will provide the necessary evidence and argument in the course of prosecution”. As applicant points out that claims in Groups I-IV include all of the elements of the electrochemical biofilm sensor of claim 1. As outlined in the unity restriction of 08/13/2025, the technical feature of an electrochemical biofilm sensor of claim 1 is not a special technical feature as it does not make a contribution over the prior art of Cappello and in view of Parto and Dotel. Note that Applicant does not provide the necessary evidence and argument regarding the technical feature allegedly makes no contribution over the prior art in the current response to the restriction.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objection
Claims 1-3 are objected to because of the following informalities:
Claim 1: please amend “of the first electrode, and” in line 8 to -- of the first electrode, [[and]]--; “electrode (201) electrodes” in line 18 to -- electrode (201)
Claim 2: please amend “the third” to -- the third electrode--.
Claim 3: please amend “the third electrodes..” to -- the third electrodes.[[.]]--.
Appropriate correction is required.
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 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention.
Regarding claim 1, claim 1 recites “a stable reference potential”, wherein the term “stable” is a relative term which also renders the claim indefinite. The term “stable” 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. In this instant claim, it is unclear what is the requirement of the variation of the reference potential be considered as a “stable” reference potential. Claims 2-4 are further rejected by virtue of their dependence upon and because they fail to cure the deficiencies of indefinite claim 1.
Regarding claim 2, claim 2 recites “wherein the second electrode (401) and the third (201) form a single electrode having a simultaneous function of counter-electrode and pseudo reference”. Claim 1 recites a second electrode and a third electrode, thus each of the second and third electrodes is an individual element. It is unclear if each of the second and third electrodes is an individual element or the second and third electrodes as a single electrode. Thus, the scope of claim 2 is indefinite.
Regarding claim 3, claim 3 recites “a service electrode (301) connectable individually, or in groups, to each electrode of the electrochemical biofilm sensor a generator circuit configured to deliver a current for local self-cleaning of one or more of the first, the second, or the third electrodes”, which is unclear if the sensor further comprises a generator circuit or the service electrode connectable individually, or in groups, to each electrode of the electrochemical biofilm sensor forming a generator circuit. Therefore, the scope of claim 3 is indefinite. Claim 4 is further rejected by virtue of its dependence upon and because it fails to cure the deficiencies of indefinite claim 3.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Cappello et al. (WO2009125354A2), and in view of Parot et al. (Acetate to enhance electrochemical activity of biofilms, Electrochimica Acta, 2008, 53, 2737-2742) and Dotel et al. (Experimental study of silver cathode for electrochemical deoxygenation of seawater for enhanced oil recovery, I& EC Research, 2016, 55, 8235-8242). Cappello is provided in IDS filed on 1/30/2024. Parot and Dotel are provided by the Examiner in the unity restriction mailed on 8/13/2025.
Regarding claim 1, Cappello teaches an electrochemical biofilm sensor (a biofilm-based electrochemical sensor device 10 [abstract; the 1st paragraph on page 1; Fig.1]) comprising:
a first electrode (a first metal working electrode 14 in Fig.1 [the last paragraph on page 7 and the first paragraph on page 8]),
a second electrode (a reference electrode 19 in Fig.1 [2nd paragraph on page 8]), and
a third electrode (counter electrode 18 in Fig.1 [the 1st paragraph on page 8]),
wherein the first electrode is a working electrode (a first metal working electrode 14 in Fig.1 [the last paragraph on page 7 and the first paragraph on page 8]), on a surface of which a biofilm growth is to be measured (a biofilm 16 in Fig.1 grown on the working electrode 14 [the first paragraph on page 8]),
wherein the second electrode is a reference electrode (a reference electrode 19 in Fig.1 [2nd paragraph on page 8]); and the limitation “providing a stable reference potential for a polarization of the first electrode” is an inherent characteristic of the reference electrode in an electrochemical sensor. Since the prior art does disclose the reference electrode and a predetermined potential difference between the working electrode and a reference electrode is imposed [claim 3], it is contended that the disclosed reference electrode is capable of providing a stable reference potential for a polarization of the working electrode, and
wherein the third electrode is a counter-electrode (counter electrode 18 in Fig.1 [the 1st paragraph on page 8]) connectable to the first electrode with an electric circuit (a programmable electronic control unit 20 in Fig.1 [the 5th paragraph on page 8]); and the limitations “so as to allow, at a fixed potential, a circulation of current from the first electrode to the third electrode or vice versa, as a function of an alteration induced by the biofilm on kinetics of evolving reactions on the surface of the first electrode, so as to allow, at a fixed current, a measurement of a voltage of the first electrode with respect to the second electrode” are functional 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, Cappello teaches the electronic control unit 20 (Figs. 1-2) is coupled to the electrodes of the sensor device, and it is arranged to control the operation of the sensor 10 in a potentiostatic or intensiostatic mode. In the first case, the unit 20 is arranged to impose a preset constant potential to the working electrode, providing to this aim the required current, even if, due to the effect of the gradual biofllm formation, the required current varies over time. In the second case, the unit 20 is arranged to impose a preset constant current on the working electrode by applying to this aim the required voltage, even if it is variable over time (the 5th to 7th paragraphs on page 8), wherein the control and processing means 20 are arranged to: impose a current with predetermined intensity on the working electrode 14 for at least one predefined time interval; detect, with a preset sampling frequency, the potential of said working electrode 14 compared to a reference electrode 19; individuate the growth rate and the current development degree of the biofilm 16 at the working electrode 14 as a function of the imposed current and the temporal sequence of the potential values detected (Claim 2). Thus, the electric circuit and the working, counter and reference electrodes are configured to and capable of performing the claimed functions above,
wherein the first electrode is made of titanium (the working electrode 14 made of titanium [the first paragraph on page 8]).
Cappello is silent to: wherein one or more of the first electrode, the second electrode, or the third electrode are coated with a coating based on mixed oxides of different noble metals, and wherein the coating has a thickness of between 0.1 and 50 microns.
Parot teaches biofilm grown on a dimensionally stable anode (DSA) working electrode, wherein the DSA working electrode was made of titanium coated with iridium and tantalum oxides (sections 2.2 and 2.3, Fig.1 and abstract). DSA electrode was chosen because of the high catalytic efficiency, mechanical properties and long-term stability they show in many oxidation processes on the industrial scale, and the promising opportunity they would thus offer to scale up very fast to large scale MFS pilots (the 2nd paragraph in Col. 2 on page 2737).
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 titanium working electrode in Cappello to titanium coated with iridium and tantalum oxides, as taught by Parot, since titanium coated with iridium and tantalum oxides would provide dimensionally stable anode, which would provide high catalytic efficiency, mechanical properties and long-term stability (the 2nd paragraph in Col. 2 on page 2737 in Parot).
Modified Cappello is silent to: wherein the coating has a thickness of between 0.1 and 50 microns.
Dotel teaches anode of an electrochemical cell, wherein the anode is titanium coated with iridium-tantalum based coating. The coating precursor was applied and heated in order to decompose the precursor, thus forming a noble metal oxide on the titanium substrate. The process of coating and heat treatment was continued until a layer thickness of 5 µ m (section 2.1 on page 8236).
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 unknow thickness of the coating of iridium and tantalum oxides in modified Cappello to a thickness of 5 µm, as taught by Dotel, since Dotel teaches a DSA made of titanium coated with iridium and tantalum oxides with a 5 µ m thick coating would provide high corrosion resistance (the 5th paragraph in Col. 1 on page 8236).
Regarding claim 2, modified Cappello teaches the electrochemical biofilm sensor according to claim 1, and Cappello teaches wherein the second electrode (401) and the third electrode (201) form a single electrode having a simultaneous function of counter-electrode and pseudo reference (the counter electrode can be, in practice, concurrently used as a pseudo-reference electrode instead of the distinct reference electrode 19 [the 3rd paragraph on page 8], thus the second electrode and the third electrode form a single electrode having a simultaneous function of counter-electrode and pseudo reference).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Cappello, Parot and Dotel, as applied to claim 1 above, and in view of Santoli et al. (US20080202944A1), Zhao et al. (US20210087082A1) and Sultana et al. (Electrochemical scaffold generates localized, low concentration of hydrogen peroxide that inhibits bacterial pathogens and biofilms, Scientific Reports, 2015, 5, 14908).
Regarding claim 3, modified Cappello teaches the electrochemical biofilm sensor according to claim 1, and Cappello further a generator circuit configured to deliver a current for local self-cleaning of one or more of the first, the second, or the third electrodes (the invention implements a new electrochemical sensor … to give the sensible element the possibility to self-clean from the biofilm, thus restoring the sensor initial status [the 3rd paragraph on page 6]. The unit 20 is arranged to activate a self-cleaning function of the working electrode, consisting in supplying for a short period of time a strong anodic or cathodic current on the working electrode in order to hinder or inhibit the biofilm formation, or eliminate it, if it is already present [the last paragraph on page 9]).
Cappello is silent to: (1) further comprising a service electrode (301) connectable individually, or in groups, to each electrode of the electrochemical biofilm sensor (of claim 3); and wherein the service electrode (301) is coated with a coating based on mixed metal oxides (of claim 4).
Santoli teaches a service electrode (a generating electrode [abstract; para. 0003]) connectable individually, or in groups, to each electrode of an electrochemical sensor (the electrochemical sensor comprises a working electrode, a reference electrode and a counter electrode [para. 0003]), wherein the generating electrode is configured to generate changes in the concentration of the species present in solution, and it is possible to locally control the environment of the working electrode [para. 0003]. The invention more particularly relates to a method for self-calibrating an electrochemical sensor and to a method for self-cleaning this sensor [para. 0002]. The self-cleaning method according to the invention comprises the following steps: first measurement of the current of the working electrode representative of the concentration of dissolved oxygen in the medium before applying a current to the generating electrode; application of an anode current with determined density and duration to the generating electrode producing a defined increase in the local concentration of dissolved oxygen; second measurement of the current of the working electrode representative of the oxygen concentration after applying a current to the generating electrode; and computation, from said first and second measurements, of a calibration factor of said one or more species, which links the oxygen concentration of the medium to be analyzed and the current actually measured between the working electrode and its counter electrode [para. 0019].
Zhao teaches electrogeneration of reactive oxygen species without external oxygen supply by applying electrical current to at least one anode (title and abstract), wherein the anode is Ti/mixed metal oxides (Ti/MMO) [para. 0044]. The Ti/MMO electrode consists of IrO2 and Ta2O5 coating on titanium mesh [para. 0131]. Fig.11 illustrates the mechanism of “self-cleaning” electrochemical regeneration wherein O2 was generated on Ti/MMO anode and transported to cathode vicinity, and it was then electroreduced to H2O2 to clean the cathode [para. 0052; Fig.11].
Sultana teaches electrochemically generated H2O2 near biofilm surface can eliminate the biofilm (conclusions).
Given the teachings of Cappello regarding “self-cleaning” biofilm from the sensible element to restore the sensor initial status; the teachings of Santoli regarding a service electrode for producing a defined increase in the local concentration of dissolved oxygen to self-clean an electrochemical sensor; the teachings of Zhao regarding “self-cleaning” electrochemical regeneration wherein O2 was generated on Ti/MMO anode (serving as a service electrode) and transported to cathode (which is the electrode that needs to be cleaned) vicinity, and it was then electroreduced to H2O2; and the teachings of Sultana regarding electrochemically generated H2O2 near biofilm surface can eliminate the biofilm, 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 electrochemical biofilm sensor by providing a service electrode connectable individually or in groups to each electrode of the electrochemical biofilm sensor, wherein the service electrode consists of IrO2 and Ta2O5 coating on titanium mesh, as taught by combined Cappello, Santoli, Zhao, and Sultana, since it would self-clean biofilm from the sensible element of the electrochemical sensor and restore the sensor initial status [the 3rd paragraph on page 6 in Cappello].
Conclusion
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure: Burge et al. (US20200333287A1) teaches an electrochemical sensor comprising an array of working electrodes wherein a biofilm is attached to at least one of the working electrodes. Nekoksa et al. (US5356521A) teaches an electrochemical probe/sensor to monitor biofilm activity.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V. Van can be reached on (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHIZHI QIAN/Examiner, Art Unit 1795