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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
i. “humidification device” in claim 1 has been interpreted by the examiner as corresponding to an impinger in which a humidification source is placed, a pipe in which a nonwoven fabric wet by the humidification source is attached to an inner wall thereof, and a bubbling device or a spraying device, or structural equivalents thereof, (see para [0028] et seq., of applicant’s corresponding US 2024/0319139);
ii. “sensor element” in claim 1 has been interpreted by the examiner as corresponding to a graphene field effect transistor or structural equivalents thereof (see para [0014] et seq. of applicant’s corresponding US 2024/0319139);
iii. “switching mechanism” in claim 1 has been interpreted by the examiner as corresponding to the a plurality of valves or structural equivalents thereof (see para [0029] et seq. of ‘139); and
iv. “cooling mechanism” in claims 1-5 has been interpreted by the examiner as corresponding to the cooling pipe 44 or Peltier element 51, or structural equivalents thereof (see para [0023] et seq. of ‘139)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-13 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.
Claim 1 recites a “cooling mechanism configured to cool the sensor element”. The term “cool” in claims 1 and 2 is a relative term which renders the claim indefinite. The term “cool” 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. It is not clear from the claims and the specification what temperature range applicant considers a “cool” temperature. Thus, the scope the invention cannot be determined.
Claim 6 and 13 recites “a potential of the regenerator can be fixed” and “a regenerator having a fixed potential”. It is not clear from the claim where the regenerator is relative to any of the other elements of the system. Also it is not clear what applicant means by “can by fixed” or “fixed potential”. Looking to the ‘139 specification for clarification, para [0023] states, “[t]he regenerator 52 is fixed to, for example, a ground potential via a voltage control device 70 shown in FIG. 1 as necessary”. It is unclear how the claimed “regenerator” is fixed or “can be fixed” without positively reciting the voltage control device in electrical communication with the regenerator. The examiner recommends applicant recite the voltage control device in electrical communication with the regenerator for patentable weight.
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 (i.e., changing from AIA to pre-AIA ) 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 5-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Sugizaki (US 2022/0082520).
Regarding claim 1, Sugizaki discloses a chemical sensor system comprising:
a chemical sensor including
a sensor element (graphene, see para [0025] et seq.), and
a probe molecule (molecular probe 19a) located on a surface of the sensor element (see para [0037] et seq.);
a collection unit (he second step (collecting of the specimen gas) is carried out using, for example, a pipe 61 of FIG. 14 and an intake opening (not shown) provided at a distal end thereof, see para [0143] et seq.) for a sample atmosphere;
a humidification device 72 configured to generate a humidification fluid having a humidity higher than a humidity of the sample atmosphere (see para [0137]);
a switching mechanisms 73 connected to the collection unit, the humidification device, and the chemical sensor, the switching mechanism configured to switch between a state in which the sample atmosphere is supplied to the surface of the sensor element and a state in which the humidification fluid is supplied to the surface of the sensor element (FIG. 10 is a diagram showing the configuration of the device used in the experiment which examines the change in source/drain current with time. Dry nitrogen was supplied from a nitrogen gas container 70, and the flow rate is controlled to 200 mL/m by a mass flow controller 71. After that, the gas is humidified to a relative humidity higher than or equal to 98% by a humidifying unit 72, and then it is sent into the sensor element set to an acryl-made transparent cassette 76. An LED light source 77 is placed on the transparent cassette 76 so as to emit and stop the emission light 78 having a wavelength of 660 nm. The acrylic cassette 76 and the LED light source 77 is set in a dark room. A pipe between the humidifying unit 72 and the transparent cassette 76 includes a path to send humidified nitrogen directly to the transparent cassette 76 and a path to send humidified nitrogen containing DMTS to the transparent cassette 76 through an impinger 74 in which DMTS is contained, by a three-way cock 73 (see para [0087] et seq.); and
a cooling mechanism configured to cool the sensor element (although not shown, a temperature regulation device can be incorporated to the sensor unit 40 as needed. For the temperature regulation device, for example, a Peltier element or the like is used, see para [0134] et seq.)
Regarding claim 5, Sugizaki discloses the cooling mechanism includes a Peltier element (see para [0134] et seq.)
Regarding claim 6, Sugizaki discloses a regenerator (reads on gate electrode 18 and/ or conductive layer 20), which upon use with Peltier element the conductive layer would necessarily be contact (which includes direct or indirect contact) with a surface of the Peltier element. Specifically, Sugizaki discloses a regenerator (see para [0039] “[a]lternatively, metal nanoparticles may be arranged to be made conductive by using plasmon. It is natural to use a conductive material for the gate electrode 18, but it is preferable that a substance such as gold, platinum, silver, silver chloride or the like”, and para [0118] and FIG. 1) is formed on the surface of the gate electrode 18, because the charge can be easily given or received with respect to the conductive layer 20.) having a fixed potential” (i.e., ground potential)
Claim 7 recites, a potential of the regenerator “can be” fixed. Note: the “potential of a regenerator” is not a structural element. Thus, this is considered functional/process/intended use language, which does not add any further structure to the apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims. Also, the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim (see MPEP § 2114 & § 2173.05(g)). The phrase “can be” does not positively limit the regenerator in any way since it uses the optional language “can be” (may or may not be fixed). Only explicitly and positively recited elements are considered to be limiting the scope of a claim. This means that if an element is not described as being present or part of the invention, it generally cannot be used to narrow the interpretation of the claim (see MPEP 2115). Nevertheless, Sugizaki discloses the electrical potential of the regenerator can be regulated by the gate electrode 18 (see para [0039] et seq.)
Regarding claim 8, Sugizaki discloses the surface of the sensor element contains graphene 14 (see para [0032] et seq.)
Regarding claim 9, Sugizaki discloses the probe molecule 19a contains at least one of a protein, a peptide, an antibody, a DNA aptamer, and a derivative biomolecule thereof (see para [0037] et seq.)
Regarding claim 10, Sugizaki discloses a pipe configured to connect the collection unit 61 and the switching mechanism 73; a pipe configured to connect the humidification device 72 and the switching mechanism 73; and a pipe 62 configured to connect the chemical sensor and the switching mechanism (see para [0123], and Figs. 10 and 14).
Regarding claim 11, Sugizaki discloses a fan or a pump (suction pump; not shown) configured to cause a gas to flow from the switching device toward the chemical sensor in the pipe configured to connect the chemical sensor and the switching mechanism and out to the exhaust system (see para [0131] et seq.)
Regarding claim 12, Sugizaki discloses the humidification fluid contains water (see para [0137] et seq.)
Regarding claim 13, Sugizaki discloses a regenerator (reads on gate electrode 18 and/ or conductive layer 20 (see para [0039] “[a]lternatively, metal nanoparticles may be arranged to be made conductive by using plasmon. It is natural to use a conductive material for the gate electrode 18, but it is preferable that a substance such as gold, platinum, silver, silver chloride or the like”, and para [0118] “which is shown by a reference symbol “19′” in FIG. 1) is formed on the surface of the gate electrode 18, because the charge can be easily given or received with respect to the conductive layer 20.) having a fixed potential” (i.e., ground potential).
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Sugizaki in view of Sugizaki (US 2021/0080440; hereinafter “Sugizaki II”).
Regarding claim 2, Sugizaki discloses the cooling mechanism to cool the sensor includes a Peltier element (see para [0134] et seq.) However, Sugizaki does not explicitly disclose the cooling mechanism includes a cooling pipe configured to allow a cooling water to flow therethrough. In the related art of chemical sensors, Sugizaki II discloses in one embodiment a cooling mechanism used to cool the sensor 1 with a cooling pipe 11 configured to allow a cooling water to flow therethrough.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the claimed invention as effectively filed to have substituted the Peltier element cooling mechanism in Sugizaki with the well-known art equivalent cooling mechanism that uses of a cooling pipe configured to allow a cooling water to flow therethrough, as taught by Sugizaki II. It would have obvious to the skilled artisan to substitute the cooling mechanism based on considerations such as cost and size of the sensor system.
Note: the applicant is advised that the Supreme Court clarified that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp." An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR Int'l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007) (see MPEP § 2143). In this case, the predictable result is cooling the sensor with a cooling pipe containing water.
Note: the water itself is not considered part of the chemical sensor system since the water is not positively recited and therefore an intended use. This means that if an element (e.g., water) is not described as being part of the invention, it generally cannot be used to narrow the scope of the claim. This applies to the recitation “cool water”, since the temperature range or means to cool the water are not recited in the claim. Nevertheless, Sugizaki II does teach examples of the solvent of the liquid reagent which constitutes the liquid phase 8 are water, physiological solution, an ionic liquid, or a PB buffer, a PBS buffer or an organic solvent such as DMSO or an alcohol, or a mixture of any of those. Moreover, the liquid phase 8 may further contain a solute such as a pH adjuster, a preservative or a stabilizer (see para [0035] et seq.)
Regarding claim 3, Sugizaki II does disclose a non-polarizable electrode (sensitive film 3, see para [0069] et seq., In particular, even if the target substance 23a is a substance difficult as it is to cause variation in physical properties on the sensitive film 3, that is, for example, if it is a highly hydrophobic substance or a substance with less or no polarity, the detection sensitivity of the chemical sensor of the embodiment for such a molecule can be improved by subjecting the substance to the treatment.) However, Sugizaki II does not disclose the electrode location at least partially located in the cooling pipe. However, it would have been obvious to the skilled artisan to determine the desired location of the electrode based on considerations such as providing the desired bond interaction between the target substance and the electrode 3
Regarding claim 4, Sugizaki II discloses the non-polarizable electrode (reads on electrochemically stable sensitive film 3) which can include Ag (see para [0026 et seq.) With respect to the cooling water containing a chlorine ion flows through the cooling pipe, the cooling water and contents are not further limiting for the reasons discussed above. Regardless, Sugizaki II does disclose water including a chlorine ion (see para [0041] et seq.)
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include:
i. Sugizaki (US 2023/0068448) which discloses a chemical sensor apparatus includes a buffer solution including not less than 0.5 mM and not more than 6 mM of chlorine ions; a sensor element including a surface immersed in the buffer solution; and a silver/silver chloride electrode immersed in the buffer solution. The silver/silver chloride electrode applies a potential to the buffer solution, and includes silver chloride at a surface of the silver/silver chloride electrode (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached between 9:30am-7pm EST.
Examiner interviews are available via telephone 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.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached on 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P. Kathryn Wright/Primary Examiner, Art Unit 1798