DETAILED ACTION
Status of the Claims
1. Claims 1-16, 18-42 and 44-52 are pending.
Status of the Rejections
2. Rejection of claims 17 and 43 is withdrawn in view of cancellation of the claim.
Claim Rejections - 35 USC § 103
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.
3. Claim(s) 1-4, 8-30 and 34-52 is/are rejected under 35 U.S.C. 103(a) as being unpatentable over Tran et al. (US 2019/0086432) in view of Ueda et al. (US 2013/0164650) as further evidenced by Darzi et al. (Org. Lett. 2020, 22, 3951-3955).
Claim 1-4, 9-10, 12-14 and 21. Tran et al. teach a method of oxidizing cannabinoid with a fuel cell (method of detecting [Symbol font/0x44]9-THC by oxidation with a fuel cell; [0039]) comprising:
obtaining a sample from a source (sample from exhaled air (gas phase/biofluid); [0039]);
oxidizing the sample electrochemically using a fuel cell (platinum oxidized THC; [0039]);
analyzing at least one signal of the oxidized generated during the oxidation of the sample selected from the group consisting of current, power, current density, power density, and charge (analyzing electrical current based on THC oxidation; [0039]); and
identifying if the cannabinoid is present based on the at least one signal of the oxidized sample analysis (computer measure and calculates the THC level based on electrical current; [0039].
Tran et al. teach the electrodes are made up of platinum but do not teach cathode/anode is supported on a material comprising carbon black. However, Ueda et al. teach membrane electrode based fuel cell for direct oxidation of fuel comprised of platinum anode supported on carbon black and platinum cathode supported on carbon black (abstract and [0049][0050]).
Since, Ueda et al. and Tran et al. are to same field of endeavor i.e. oxidation of fuel with fuel cell, therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention in view of Ueda et al. teaching to place the platinum electrodes of Tran et al. on a carbon support because it was one of the known ways of constructing cathode/anode for fuel cells and thus supporting electrodes on carbon support would yield same results with reasonable expectation OR substituting Tran et al. fuel cell with Ueda et al. fuel cell because simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.) and such substitution would yield claimed fuel cell comprising anode/cathode supported on carbon support.
Claims 15 and 41. Tran et al. in view of Ueda et al. teach the fuel cell comprises a platinum on carbon cloth cathode and a Ru on a carbon support anode (anode comprises Pt/Ru on carbon support and cathode comprises platinum on carbon support; [0049][0050]).
Claims 8 and 11. Tran et al. the fuel cell comprises a cathode comprising a material selected from the group consisting of a transition metal, a metal oxide, a metal, and a metal alloy or an anode comprising a material selected from the group consisting of a transition metal, a metal oxide, a metal, and a metal alloy (two platinum electrodes (reads on anode and cathode comprising transition metal); [0039]).
Claim 12. Tran et al. teach fuel cell which comprises computer is configured to process electrical current signal to analyze signal due to THC [0039]).
Claim 16. Tran et al. teach the fuel cell comprises an ion exchange membrane or a proton conducting membrane (protons move through the lower portion of the fuel cell to other side; [0039], thus it is apparent a proton conducting membrane is present to move protons through).
Claim 18. Tran et al. teach the fuel cell is a H-cell, a flow cell, or a stack cell (exhaled air flows one side of the fuel and proton move through portion of the fuel cell; [0039], thus fuel cell is flow cell).
Claim 19. Tran et al. teach the fuel cell is configured to be integrated in a breathalyzer ([0008]).
Claim 20. Tran et al. teach the identification is in real-time (detecting THC concentration in breath or saliva for heath professional and law enforcement [0008] is real-time).
Claim 22. Tran et al. teach the fuel cell is part of an energy production process (energy generated; [0039]).
Claim 23. Tran et al. teach calibrating the fuel cell to establish a base line signal (calibrating fuel cell to generate a detectable signal; [0020]).
Claim 24. Tran et al. teach the identification of cannabinoid outputs a cannabinoid concentration in the sample (detect concentration in breath or saliva; [0008]).
Claim 25. Tran et al. teach the at least one signal of the oxidized sample has a linear relationship with the cannabinoid concentration (the more THC becomes oxidized, the greater the electrical current; [0039]; thus the signal/electrical current has linear relationship with THC).
Claim 26. Tran et al. teach the cannabinoid is [Symbol font/0x44]9-THC which undergoes oxidation [0039] and the oxidized sample is [Symbol font/0x44]9-THCQ as supported by Darzi et al. (see abstract).
Claims 27-30, 35-36, 38-40, 47 and 49. Tran et al. teach a cannabinoid fuel cell ([Symbol font/0x44]9-THC fuel cell; [0039]) comprising:
a cathode and an anode (two platinum electrodes; [0039]);
an ion exchange membrane (protons move through the lower portion of the fuel cell to other side; [0039], thus it is apparent a proton conducting membrane is present to move protons through); and
an electrolyte (porous acid-electrolyte [0039]);
wherein the ion exchange membrane is disposed between the cathode and the anode, and the electrolyte is in contact with the anode; and
wherein the fuel cell is configured to oxidize a sample electrochemically (platinum oxidized exhaled air THC; [0039]); analyze at least one signal generated during an oxidation process of the sample selected from the group consisting of current, power, current density, power density, and charge (analyzing electrical current based on THC oxidation; [0039]); and output a cannabinoid concentration from the sample (computer measure and calculates the THC level based on electrical current; [0039]).
Tran et al. teach the electrodes are made up of platinum but do not teach cathode/anode is supported on a material comprising carbon black. However, Ueda et al. teach membrane electrode based fuel cell for direct oxidation of fuel comprised of platinum anode supported on carbon black and platinum cathode supported on carbon black (abstract and [0049][0050]).
Since, Ueda et al. and Tran et al. are to same field of endeavor i.e. oxidation of fuel with fuel cell, therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention in view of Ueda et al. teaching to place the platinum electrodes of Tran et al. on a carbon support because it was one of the known ways of constructing cathode/anode for fuel cells and thus supporting electrodes on carbon support would yield same results with reasonable expectation OR substituting Tran et al. fuel cell with Ueda et al. fuel cell because simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.) and such substitution would yield claimed fuel cell comprising anode/cathode supported on carbon support.
Claims 34 and 37. Tran et al. the fuel cell comprises a cathode comprising a material selected from the group consisting of a transition metal, a metal oxide, a metal, and a metal alloy or an anode comprising a material selected from the group consisting of a transition metal, a metal oxide, a metal, and a metal alloy (two platinum electrodes (reads on anode and cathode comprising transition metal); [0039]).
Claim 38. Tran et al. teach fuel cell which comprises computer is configured to process electrical current signal to analyze signal due to THC [0039]).
Claim 42. Tran et al. teach the fuel cell comprises an ion exchange membrane or a proton conducting membrane (protons move through the lower portion of the fuel cell to other side; [0039], thus it is apparent a proton conducting membrane is present to move protons through).
Claim 44. Tran et al. teach the fuel cell is a H-cell, a flow cell, or a stack cell (exhaled air flows one side of the fuel and proton move through portion of the fuel cell; [0039], thus fuel cell is flow cell).
Claim 45. Tran et al. teach the fuel cell is configured to be integrated in a breathalyzer ([0008]).
Claim 46. Tran et al. teach the identification is in real-time (detecting THC concentration in breath or saliva for heath professional and law enforcement [0008] is real-time).
Claim 48. Tran et al. teach the fuel cell is part of an energy production process (energy generated; [0039]).
Claim 50. Tran et al. teach the at least one signal of the oxidized sample has a linear relationship with the cannabinoid concentration (the more THC becomes oxidized, the greater the electrical current; [0039]; thus the signal/electrical current has linear relationship with THC).
Claim 51. Tran et al. do not teach fuel cell comprise of an anode gas diffusion layer, an anode flow plate, an anode current collector, an anode end plate, a cathode gas diffusion layer, a cathode flow plate, a cathode current collector, and a cathode end plate. However, Ueda et al. teach direct oxidation fuel cell comprised of anode 11 comprised of catalyst layer 16, anode diffusion layer 17, current collector plate 24, end plate 30, a cathode 12 comprised of catalyst layer 18, cathode diffusion layer 19, current collector plate 25, end plate 31 [0042]-[48].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute Tran et al. fuel cell with Ueda et al. fuel cell because simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
Claim 52 Tran et al. teach the cannabinoid is [Symbol font/0x44]9-THC which undergoes oxidation [0039] and the oxidized sample is [Symbol font/0x44]9-THCQ as supported by Darzi et al. (see abstract).
Claim(s) 5, 6, 7 and 31-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tran et al. as applied to claims 1 and 27 and further in view of Suh et al. (US 2007/0108068).
Claims 5, 6, 31 and 32. Tran et al. teach fuel cell is comprised of porous acid-electrolyte [0039] but do not teach at least one electrolyte comprising at least one solid electrolyte or at least one electrolyte salt selected from the group consisting of NBu4PF6, NEt4PF6, LiPF6, LiPF4, NBu4BF4, NEt4BF4, NBu4ClO4, and LiClO4, dissolved in a solvent selected from the group consisting of an aqueous solvent, an organic solvent, and a mixture of an aqueous solvent and an organic solvent. However, Suh et al. teach fuel cell for detection of alcohol with use of various organic liquid, gel and solid electrolytes, wherein the gel electrolytes comprise lithium salts such as LiClO4 with organic solvents [0215].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention in view of Suh et al. teaching to substitute acid-electrolyte of Tran et al. with lithium salt or solid electrolyte because simple substitution of one known element for another is likely to be obvious when predictable results are achieved. (see MPEP § 2143, B.).
Claims 7 and 33. Suh et al. teach the at least one electrolyte has a concentration from 0.01 M to 1 M [0214] with solvent [0215], thus the solvent would have volume fraction from 96% to 100%.
Response to Arguments
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 2-3 of remarks that cited prior Tran et al. does not teach THC is oxidized by fuel cell but instead teach oxidation of alcohol in cited paragraph [0039]. In response, examiner respectfully disagrees with applicant’s assertion. Tran et al. in paragraph [0039] clearly teaches platinum oxidizes THC and alcohol by fuel cell and computer measures the electrical current associated with THC and alcohol. Examiner agrees oxidation of alcohol yields acetic acid, protons and electrons as asserted by applicant but oxidation of THC also yields p-THCQ as supported by Darzi et al. (see abstract) in addition to electrons such that computer measures electrical current associated with THC.
Applicant argues on pages 3-4, Tran et al. teaching of “fuel cell is used to oxidize THC and alcohol and electrical disaggregation approach to decipher measurement results” is not sufficient to teach any mechanism that would enable electrochemically oxidize cannabionoid using fuel cell.
In response, applicant’s independent claims 1 and 27 are broadly directed to oxidation of cannabionioid by fuel cell. Applicant does not claim any mechanism that the arguments are related too. Tran et al. teaching of fuel cell oxidized THC using platinum electrodes (reads on electrochemically) reads on claimed invention. Burden of proof shifts on applicant to provide objective evidence on the contrary that Tran et al. teaching of oxidation of THC using fuel cell would yield different product or different mechanism than applicant’s invention (see MPEP 2112.01, I).
Applicant argues on page 4 of remarks regarding claims 16 and 42 that teaching of “protons move through the lower portion of the fuel cell to other side” by Tran et al. is not teaching that a proton conducting membrane is present to move protons through. In response, a generic bio fuel cell operates by transferring protons and electrons from anode to cathode side and protons pass through the electrolyte membrane to reach the cathode side as evidenced by Ueda [0006]-[0007], thus it is apparent in Tran et al., the fuel cell with protons moving to “other side” i.e. cathode side, which comprises porous electrolyte is proton conducting.
Applicant argues on page 4 of remarks regarding claims 18 and 44 that Tran et al. do not teach H cell or stack cell as described in the claims. In response, claims 18 and 44 recites fuel cell is a H-cell, a flow cell or stack cell. Limitation as written is in an alternative form and does not require all species of fuel cell to be examined but instead only one specie needs to be taught or suggested by the prior art in order to meet the claim (see MPEP 803.02).
Applicant argues on pages 4-5 of remarks regarding claims 25 and 50 that Tran et al. teaching of detected signal correlates to concentration of THC does not correlate to linear relationship between signal and cannabinoid concentration as claimed. Examiner agrees with applicant’s assertion and made correction in the rejection citing paragraph [0039] of Tran et al. teaching “the more THC becomes oxidized, the greater the electrical current”. This relationship indicates linear relationship between the electrical current with THC as supported by applicant’s Fig 7).
Applicant argues on pages 5-6 of remarks that combination of Tran and Ueda would yield cathode/anode to include a catalyst, particulate conductive carbon support and polymer electrolyte and thus alleged combination indicated by Office to select only part of Ueda teaching i.e. particulate conductive carbon support is hindsight and does not provide reason to combine.
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. Since, Ueda et al. and Tran et al. are to same field of endeavor i.e. oxidation of fuel with a fuel cell, therefore, it would have been obvious in view of Ueda et al. teaching to place the platinum electrodes of Tran et al. on a carbon support because it was one of the known ways of constructing cathode/anode for fuel cells and thus supporting electrodes on carbon support would have yield same results with reasonable expectation
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/GURPREET KAUR/
Primary Examiner
Art Unit 1759
Prosecution Insights