DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on July 1, 2026. Claims 1-8 are pending in the application.
Status of Objections and Rejections
All objections from the previous office action are withdrawn in view of Applicant’s amendment.
Rejections under 35 U.S.C. §112 regarding claim 1-4 from the previous office action are maintained.
All other rejections under 35 U.S.C. §112 and under 35 U.S.C. §103 from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 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 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. It is suggested to change “the system further comprising: (a) sample preparation by use of the sample container; and (b) electrochemical reading by use of the system” into “wherein: (a) a sample is prepared by use of the sample container; and (b) an electrochemical signal is read by use of the system.” As a result, it is suggested to change “to allow the electrochemical reading to be carried out” into “to allow the electrochemical signal to be read” In claim 3.
Dependent claim(s) 2-4 is/are rejected based on rejected claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 Compton (US 2008/0245670), and further 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).
Jonca does not explicitly disclose one or more of a computer or a cell phone to control the potentiostat.
However, Compton teaches instrumentation for electrochemical measurements recorded using an Autolab PGSTAT 30 computer controlled potentiostat with a standard 3-electrode system (¶42).
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 a computer as taught by Compton because a computer controlled potentiostat in the Autolab instrumentation is known for electrochemical measurements in the prior art. 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).
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 because the UV degradation would transform the antiscalant into phosphonate that is detectable, for example, by the electrochemical method of Jonca to autonomous determine phosphate in the seawater. 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:
(a) sample preparation by use of the sample container (p. 162, col. 2, para. 1: a three electrode cell); and
(b) 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” 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). The limitation “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” 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), which is one of the product from the degradation of NTMP as disclosed by Wang ([Abstract]).
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 Compton and Wang, and further in view of Ehsan (US 2020/0274135).
Regarding claim 7, Jonca, Compton, and Wang disclose all limitations of claim 5, and Jonca further discloses wherein for the counter electrode (CE), Pt is used (p. 162, col. 2, para. 1: a platinum counter electrode), and wherein, for the reference electrode (RE), an external Ag/AgCl 3M electrode is used (p. 162, col. 2, para. 1: an Ag/AgCl/KCl 3M electrode) are used.
Jonca, Compton, 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, Compton, 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 Compton and Wang, and further in view of Bian (CN 105973955).
Regarding claim 8, Jonca, Compton, and Wang discloses all limitations of claim 5, but fail to teach wherein an electrically active region of the working electrode (WE) is delimited photolithographically, 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, Compton, and Wang by delimiting the WE photolithographically by a layer of epoxy resin (e.g., SU8) as taught by Bian because it is a 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, Compton, 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, Compton, 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, Compton, 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).
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive in light of new grounds for rejection.
Applicant argues Jonca and Wang each fails to recognize the problem of the source of the problem to which Applicant’s claimed embodiments are directed or teach Applicant’s elegant solution as discussed (Response, p. 7, last para.). Examiner notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues the Office Action fails to consider the claim as whole (p. 8, section II) and adding a UV lamp to the system of Jonca would transform the antiscalant into phosphonate that is detectable to quantify the removal of the antiscalant, which would change the principle of operation of Jonca not to detect phosphate (p. 10, para. 2). This argument is unpersuasive. Here, the independent claim 5 is an apparatus claim, i.e., an electrochemical system for indirect monitoring of active matter of scale inhibitors. The claim recites the components of the system including the sample container, electrodes, potentiostat, and the processing device, e.g., a computer or a cell phone, which are anticipated by Jonca. The UV lamp as disclosed by Wang is used to degrade antiscalant, NTMP, into intermediates including iminodi(methylene)phosphonate, which were eventually mineralized into phosphate (Wang, [Abstract]). Thus, Wang teaches UV lamp that would transform the antiscalant into a product that is detectable by Jonca’s electrochemical system for indirect monitoring the scale inhibitors.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
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
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