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 without traverse of Group II, claims 5-8, drawn to an electrochemical system in the reply filed on January 2, 2026 is acknowledged.
Applicant has amended and incorporated claims 1-4 (non-elected Group I) to depend from claim 5, directly or indirectly. Examiner notes that claims 1-4 do not further limit the apparatus claims structurally, for example, “sample preparation” and “electrochemical reading” (e.g., claim 1), “are converted into” (e.g., claim 2), “are added to” (e.g., claim 3), “is delimited” (e.g., claim 4). None of them further limits the recited electrochemical system, but is directed to intended uses, e.g., preparing sample, acidifying the solution, or materials worked upon, e.g., phosphonates, phosphate, or product-by-process, e.g., delimited by a layer of epoxy resin, performed voltammetry tests by the potentiostat. Thus, claims 1-4, as they are, do not necessarily belong to Group II by merely being amended to depend from claim 5.
Claim Objections
Claim(s) 2 and 8 is/are objected to because of the following informalities:
Claim 2, line 3: “pursulfate process” should be “persulfate process”
Claim 8, lines 2-3: “delimited by photolithography, by use of a layer of epoxy resin” should be “delimited photolithographically by use of a layer of epoxy resin”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 5-8 and 1-4 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 recites the limitation "a potentiostat, and equipment to control an interface” in last line, which is not described in the specification as filed. The specification discloses “a potentiostat, which is controlled by a computer, but can also be controlled by cell phones” (PGpub ¶6). Further, the specification discloses “in addition to a potentiostat and equipment to control the same via an appropriate interface (cell phone, computer)” (¶20). It seems the system comprising a potentiostat and a computer or cell phone that controls the potentiostat. In another word, the recited equipment and interface are the same, i.e., the computer or the cell phone. It is suggested to be “a potentiostat controlled by a computer or a cell phone.”
Dependent claim(s) 6-8 and 1-4 is/are rejected based on rejected claim 5.
Claim 6 recites the limitations "further comprising external electrodes, Pt wire, and Au films” and “wherein the counter electrode (CE), the external electrodes, the Pt wire, and the Au films are used” and “wherein, for the reference electrode (RE), photolithographic with Ag/AgCl ink, and external Ag/AgCl 3M electrodes are used”, which are not described in the specification as filed. The specification discloses the system comprises three electrodes, i.e., the working electrode WE, the counter electrode CE, and the reference electrode RE (¶20). The counter electrode CE is made of Pt or Au, and the reference electrode is made of Ag/AgCl (saturated in KCl or paint) (¶20). The specification discloses the CE and RE, in the configuration A of Fig. 2, external electrodes, Pt wire (CE) and Ag/AgCl in KCl 3M (RE) were used (Fig. 2; ¶22). It seems both CE and RE are external electrodes, and there are no additional electrodes or CE, RE are shown in Fig. 2. The specification also discloses Au film (CE) and Ag/AgCl paint (RE) are used in configuration B of Fig. 2 (¶22). Thus, the disclosed electrochemical system is a three-electrode system, wherein CE is Pt wire or Au film and RE is Ag/AgCl paint or Ag/AgCl in KCl 3M as disclosed in Fig. 2; ¶22.
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) 5-8 and 1-4 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 5 recites the limitation "and equipment to control an interface” in last line. It is unclear what the recited equipment and the interface are.
Dependent claim(s) 6-8 and 1-4 is/are rejected based on rejected claim 5.
Claim 6 recites the limitations "further comprising external electrodes, Pt wire, and Au films” and “wherein the counter electrode (CE), the external electrodes, the Pt wire, and the Au films are used” and “wherein, for the reference electrode (RE), photolithographic with Ag/AgCl ink, and external Ag/AgCl 3M electrodes are used.” It is unclear how many electrodes are in the recited electrochemical system.
Claim 1 recites the limitations “sample preparation” and “electrochemical reading” which are not structural limitations of the recited electrochemical system. Instead, the structures are “the sample container” and “the system” which prepares the sample and reads the electrochemical signal.
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) 5-6 and 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jonca (J. Jonca, Phosphate determination in seawater: Toward an autonomous electrochemical method, Talanta 2011(87), pp. 161-167) in view of Wang (Z. Wang, Degradation of nitrilotris-methylenephosphonic acid (NTMP) antiscalant via persulfate photolysis: Implications on desalination concentrate treatment, Water Research 2019(159), pp. 30-37).
Regarding claim 5, Jonca teaches an electrochemical system (p. 162, col. 2, para. 1: electrochemical measurement are carried out with a potentiostat µ-Autolab III) for indirect monitoring of active matter of scale inhibitors in onshore and offshore installations (p. 162, col. 1, para. 1: for electrochemical detection of phosphate in seawater; here, this preamble 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 because 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 system comprising a sample container (p. 162, col. 2, para. 1: a three electrode cell), a working electrode (p. 162, col. 2, para. 1: gold working electrode), a counter electrode (p. 162, col. 2, para. 1: a platinum counter electrode), a reference electrode (p. 162, col. 2, para. 1: an Ag/AgCl/KCl 3M electrode), a potentiostat (p. 162, col. 2, para. 1: potentiostat), and equipment to control the an interface (p. 162, col. 2, para. 1: µ-Autolab III; Examiner notes that the µ-Autolab III equipment must have an interface connected to the three electrode cell for control).
Jonca does not disclose a UV lamp.
However, Wang teaches oxidative degradation of nitrilotris-methylenephosphonic acid (NTMP), an antiscalant, by UV photolysis of persulfate at 254 nm into phosphate ([Abstract]). Since this study demonstrates that UV/persulfate is a promising technology to remove phosphonate antiscalants from reverse osmosis (RO) desalination ([Abstract]), it does not only provide a way to remove the antiscalant (e.g., NTMP), but transform this antiscalant into phosphonate that is detectable for desalination treatment.
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 Jonca by incorporating an UV lamp for antiscalant degradation as taught by Wang to transform the antiscalant into phosphonate that is detectable to quantify the removal of the antiscalant. 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).
Regarding claim 6, Jonca teaches wherein the working electrode (WE) comprises a photolithographic WE (here, the limitation “photolithographic” refers to the WE is formed by photolithographic method and is directed to a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production), the photolithographic WE including Au (p. 162, col. 2, para. 1: gold working electrode).
Regarding claim 1, Jonca teaches the system further comprising:
sample preparation by use of the sample container (p. 162, col. 2, para. 1: a three electrode cell); and
electrochemical reading by use of the system (p. 162, col. 2, para. 1: electrochemical measurement are carried out with a potentiostat µ-Autolab III), and
wherein the active matter of the scale inhibitors is composed of phosphonates that are converted into phosphate (this limitation is directed to a material or article worked upon. "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Young, 75 F.2d. 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). MPEP 2115).
Regarding claim 2, the limitation “wherein the phosphonates, phosphonic acid (H3PO3), ATMP (C3H12NO9P3), and DTPMP (C9H28N3O15P5), are converted into phosphate (this limitation is directed to a material or article worked upon. "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Young, 75 F.2d. 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). MPEP 2115) through an ultraviolet (UV)/pursulfate process, and wherein solutions containing a strong oxidant are exposed to UV light of 5-13 W, l = 254 nm for 3-15 minutes (this limitation is functional limitation in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)). Here, Jonca teaches the electrochemical determination is for phosphate (p. 162, col. 2, para. 1).
Regarding claim 3, the limitation “wherein after acidifying the solutions exposed to UV light with sulfuric acid, acetone and ammonium molybdate are added to generate the a phosphomolybdenum complex, thereby to allow the electrochemical reading to be carried out” is functional limitation in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, Jonca teaches the electrochemical determination of the non electroactive phosphate is based on the formation of a complex with molybdate (p. 162, col. 2, para. 4).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jonca in view of Wang, and further in view of Ehsan (US 2020/0274135).
Regarding claim 7, Jonca and Wang disclose all limitations of claim 5, and Jonca further discloses wherein the counter electrode (CE) is Pt electrode (p. 162, col. 2, para. 1: a platinum counter electrode), and wherein, for the reference electrode (RE), external Ag/AgCl 3M electrodes (p. 162, col. 2, para. 1: an Ag/AgCl/KCl 3M electrode) are used.
Jonca and Wang do not disclose the Pt counter electrode is a wire (Pt wire).
However, Ehsan teaches electrochemical detection of hydrazine (title). The electrochemical sensor uses a conventional three electrode setup, including a working electrode, a Ag/AgCl/3M KCl reference electrode and a platinum wire counter electrode (¶115).
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 Jonca and Wang by substituting the Pt counter electrode with one of Pt wire as taught by Ehsan because Pt wire as the counter electrode is well-known in the art for a conventional three electrode sensor for electrochemical detection (¶115). Here, the substitution of Pt wire CE for Pt CE would yield nothing more than predictable results. MPEP 2141(III)(B).
Claim(s) 8 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jonca in view of Wang, and further in view of Bian (CN 105973955).
Regarding claim 8, Jonca and Wang discloses all limitations of claim 5, but fail to teach wherein an electrically active region of the working electrode (WE) is delimited by photolithography, by use of a layer of epoxy resin.
However, Bian teaches preparing an electrochemical three-electrode system by (1) providing silicon wafer as a substrate to be insulated by oxidation and nitriding; (2) spin-coating the photoresist on the silicon wafer to photoetching the electrode pattern; (3) sputtering the electrodes; (4) spinning coating SU8 glue and photolithography forms an insulating layer so that the active electrode area is encapsulated with epoxy glue (p. 4, Example 1).
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 Jonca and Wang by delimiting the WE photolithographically by a layer of epoxy resin (e.g., SU8) as taught by Bian because it is a well-known electrode preparation method for electrochemical sensor to define the active area of the electrode to contact with the sample. 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).
Regarding claim 4, Jonca and Wang disclose all limitations of claim 1. Further, the limitation “whereby voltammetry tests are performed on the potentiostat” is functional limitation in apparatus claims. MPEP 2114 (II). It does not differentiate the claimed apparatus from a prior art apparatus because the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Jonca and Wang do not disclose wherein for the electrochemical measurements on the working electrode (WE), an electrically active region is delimited by a layer of epoxy resin via a photolithographic method.
However, Bian teaches preparing an electrochemical three-electrode system by (1) providing silicon wafer as a substrate to be insulated by oxidation and nitriding; (2) spin-coating the photoresist on the silicon wafer to photoetching the electrode pattern; (3) sputtering the electrodes; (4) spinning coating SU8 glue and photolithography forms an insulating layer so that the active electrode area is encapsulated with epoxy glue (p. 4, Example 1).
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 Jonca and Wang by delimiting the WE photolithographically by a layer of epoxy resin (e.g., SU8) as taught by Bian because it is a well-known electrode preparation method for electrochemical sensor to define the active area of the electrode for contact with the sample. 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).
Conclusion
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/C. SUN/Primary Examiner, Art Unit 1795