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 .
Response to Amendment
This is an office action in response to applicant’s arguments and remarks filed on May 19, 2026. Claims 1-23 are pending in the application. Claims 1-11 and 23 are withdrawn, and claims 12-22 are being examined herein. Examiner notes that claim 21 has the status identifier “(Original)” but has been amended, so it will be treated as “(Currently Amended)”.
Status of Objections and Rejections
The objections to the claims are withdrawn in view of Applicant’s amendment.
The rejection of the claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of Applicant’s amendment.
All other rejections from the previous office action are maintained.
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.
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 12-22 are rejected under 35 U.S.C. 103 as being unpatentable over Darowicki et al. (US 2024/0167936 A1) in view of Tachibana et al. (JP 2017044609 A) (provided in Applicant's IDS filed on April 7, 2025) (references herein made with respect to English Machine Translation).
Regarding claim 12, Darowicki teaches a conductivity measurement system (a probe, a measuring system, and a computer that are connected, Darowicki, Figs. 1-12, para. [0036]) comprising:
a conductivity analyzer having a voltage measurement device (the measuring system receives the measured electrical voltages, Darowicki, para. [0036]-[0041]).
Darowicki teaches that measured resistances of the electrodes are sent to the measuring system in the form of electrical voltages to calculate corrosion (Darowicki, para. [0036]-[0041]). Darowicki is silent with respect to the conductivity analyzer having a voltage source.
Tachibana teaches a corrosion environment sensor 2 capable of measuring at least the electrical conductivity of reactor cooling water, the corrosion environment sensor 2 comprising two electrodes 24, 25 (Tachibana, para. [0001], [0036], [0040]). Tachibana teaches a measuring device 3 connected to the corrosion environment sensor 2 (Tachibana, Fig. 2, para. [0036]). Tachibana teaches that the measuring device 3 comprises a potentiometer 5, a potentiostat 6, and a frequency response analyzer 7 (Tachibana, Fig. 2, para. [0036], [0051]). Tachibana teaches that the conductivity is measured by measuring the liquid resistance of the reactor water between the two electrodes 24, 25, and the measurement of liquid resistance is carried out by using the potentiostat 6 and the frequency response analyzer 7 simultaneously with the measurement of the corrosion potential by the potentiometer 5 (Tachibana, Fig. 2, para. [0051]). Tachibana teaches that an alternating sinusoidal voltage is applied between the two electrodes 24, 25 via the potentiostat 6, and then the liquid resistance and conductivity can be calculated based on the measurements (Tachibana, Fig. 2, para. [0051]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Darowicki to further include a potentiostat as a voltage source as taught by Tachibana in order to yield the predictable result of generating measurements that determine resistance and thus corrosion. Furthermore, 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).
Modified Darowicki teaches a contacting-type conductivity sensor (the probe, Darowicki, Figs. 1-12, para. [0036]) including:
a first electrode configured to contact a liquid (a first electrode 1 comprising a first arm 3' and a second arm 4' constituting a first resistive element exposed to corrosive agents, Darowicki, Figs. 1-12, para. [0036]);
a second electrode configured to contact the liquid (a second electrode 2 comprising a first arm 3" and a second arm 4" constituting a second resistive element exposed to corrosive agents, Darowicki, Figs. 1-12, para. [0036]), the second electrode having a first end and a second end (the second resistive element of the second electrode 2 having a free end of the first arm 3" and an end of the second arm 4", Darowicki, Figs. 1-12, see Image 1 below, para. [0036]);
a first conductor coupling the first electrode to the conductivity analyzer (a first conductor of a six-conductor signal cable 15 couples the first electrode 1 to the measuring system, Darowicki, Figs. 1-12, para. [0036]);
a second conductor coupling the conductivity analyzer to the first end of the second electrode (a second conductor of the six-conductor signal cable 15 couples the free end of the first arm 3" of the second electrode 2 to the measuring system, Darowicki, Figs. 1-12, see Image 1 below, para. [0036]);
a third conductor coupling the conductivity analyzer to the second end of the second electrode (a third conductor of the six-conductor signal cable 15 couples the substantially half-length point of the second electrode 2 to the measuring system, Darowicki, Figs. 1-12, see Image 1 below, para. [0036]; the end of the second arm 4" of the second electrode 2 is at substantially half-length of the second electrode 2 since the length of the second resistive element 3", 4" of the second electrode 2 exposed to the corrosive agents is equal to the length of the second reference resistive element 5" of the second electrode 2, Darowicki, Figs. 1-12, see Image 1 below, para. [0009], [0036]; thus, the third conductor of the six-conductor signal cable 15 couples the end of the second arm 4" of the second electrode 2 to the measuring system).
The limitations "contact a liquid," "contact the liquid," “generate a conductivity output based on a conductivity measurement of the contacting-type conductivity sensor using the first conductor and one of the second and third conductors," and "generate a corrosion diagnostic output using the second and third conductors" are interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed 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 Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114.
Examiner further notes that Modified Darowicki teaches that the first electrode 1 and the second electrode 2 comprise arms 3', 4', 3", 4" that are exposed to corrosive agents (Darowicki, Figs. 1-12, para. [0036]), so the first and second electrodes are capable of the recitations "contact a liquid" and "contact the liquid". Modified Darowicki also teaches that the corrosion rate measurement in the probe comprising the electrodes 1, 2 involves comparing the electrical resistance of the resistive element 3, 4 of each electrode exposed to corrosive agents with the electrical resistance of the reference resistive element 5 of the same electrode, that the six-conductor signal cable 15 is connected to the measuring system that measures the electrical resistance of individual resistive elements 3, 4, and 5 of the electrodes 1 and 2, and that the measurement results are relayed from the measuring system to a computer which archives the received results and calculates the corrosion rate based on the results and visualizes it on a screen display (Darowicki, Figs. 1-12, para. [0036]), so the probe, measuring system, and computer of Modified Darowicki teach all of the structural limitations of the claim and thus are configured for and capable of performing the functional language "generate a conductivity output based on a conductivity measurement of the contacting-type conductivity sensor using the first conductor and one of the second and third conductors" and "generate a corrosion diagnostic output using the second and third conductors".
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Image 1. Annotated version of Fig. 9 of Darowicki.
Regarding claim 13, Modified Darowicki teaches wherein the contacting-type conductivity sensor includes a reference element having a first end and a second end (the rectilinear section 5" of the second electrode 2 constitutes a second reference resistive element having a first end and a second end, Darowicki, Figs. 1-12, see Image 1 above, para. [0036]), wherein the second end of the reference element is coupled to the third conductor (the second end of the second reference resistive element 5" is at substantially half-length of the second electrode 2 since the length of the second resistive element 3", 4" of the second electrode 2 exposed to the corrosive agents is equal to the length of the second reference resistive element 5" of the second electrode 2, Darowicki, Figs. 1-12, see Image 1 above, para. [0009], [0036]; the third conductor of the six-conductor signal cable 15 is coupled to the substantially half-length point of the second electrode 2, Darowicki, Figs. 1-12, see Image 1 above, para. [0036]; thus, the second end of the second reference resistive element 5" is coupled to the third conductor of the six-conductor signal cable 15).
Regarding claim 14, Modified Darowicki teaches a fourth conductor coupling the first end of the reference element to the conductivity analyzer (a fourth conductor of the six- conductor signal cable 15 couples the first end of the second reference resistive element 5" which is another free end of the second electrode 2 to the measuring system, Darowicki, Figs. 1-12, see Image 1 above, para. [0036]).
Regarding claim 15, Modified Darowicki teaches wherein the voltage measurement device is operably coupled to the second electrode and the reference element (the measuring system receives the measured electrical voltages and is operably coupled to the second resistive element 3", 4" of the second electrode 2 and the second reference resistive element 5" of the second electrode 2 via the second through fourth conductors of the six-conductor signal cable 15, Darowicki, Figs. 1-12, para. [0036]-[0037]).
The limitation "provide an indication of resistance change of the second electrode, wherein the resistance change is indicative of corrosion of the second electrode" is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed 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 Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114.
Examiner further notes that Modified Darowicki teaches that the measured resistances of the first and second electrodes 1, 2 are sent to the measuring system in the form of electrical voltages and are compared with their values measured before mounting the probe, which allowed real-time determination of change in the electrical resistance over time for each of the first and second electrodes 1, 2, and the corrosion rate can be calculated based on the change of the resistance for each electrode 1, 2 (Darowicki, Figs. 1-12, para. [0036]-[0041]), so the measuring system of Modified Darowicki teaches all of the structural limitations of the claim and thus is configured for and capable of performing the functional language "provide an indication of resistance change of the second electrode, wherein the resistance change is indicative of corrosion of the second electrode."
Regarding claim 16, Modified Darowicki teaches wherein the reference element is configured to be the same length as the second electrode (the length of the second resistive element 3", 4" of the second electrode 2 exposed to the corrosive agents is equal to the length of the second reference resistive element 5" of the second electrode 2, Darowicki, Figs. 1-12, see Image 1 above, para. [0009], [0036]; Examiner notes that the second resistive element 3", 4" reads on the claimed second electrode, and the second reference resistive element 5" reads on the claimed reference element).
Regarding claim 17, Modified Darowicki teaches wherein the reference element is disposed within a body of the contacting-type conductivity sensor and is isolated from the liquid (the second reference resistive element 5" is disposed within a tube 14 of the probe and is isolated from the corrosive agents, Darowicki, Figs. 1-12, para. [0036], abstract).
Regarding claim 18, the limitation "the corrosion diagnostic output is an alert" is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed 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 Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114.
Examiner further notes that Modified Darowicki teaches that the corrosion rate measurement in the probe comprising the electrodes 1, 2 involves comparing the electrical resistance of the resistive element 3, 4 of each electrode exposed to corrosive agents with the electrical resistance of the reference resistive element 5 of the same electrode, that the six-conductor signal cable 15 is connected to the measuring system that measures the electrical resistance of individual resistive elements 3, 4, and 5 of the electrodes 1 and 2, and that the measurement results are relayed from the measuring system to a computer which archives the received results and calculates the corrosion rate based on the results and visualizes it on a screen display (Darowicki, Figs. 1-12, para. [0036]), so the probe, measuring system, and computer of Modified Darowicki are capable of performing the functional language "the corrosion diagnostic output is an alert" since the corrosion rate is visualized on a screen display.
Regarding claim 19, the limitation "the corrosion diagnostic output is an adjustment to a calibration interval" is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed 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 Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114.
Examiner further notes that Modified Darowicki teaches that the probe has been calibrated for rate measurement of both types of corrosion by exposing both electrodes 1, 2 to an environment of demineralized water saturated with hydrogen sulphide gas, that the studies allowed developing an algorithm and calibration curve for determining the corrosion and hydrogenation rate based on the resistance measurement of the electrodes 1, 2 of the probe, that the six-conductor signal cable 15 is connected to the measuring system that measures the electrical resistance of individual resistive elements 3, 4, and 5 of the electrodes 1 and 2, and that the measurement results are relayed from the measuring system to a computer which archives the received results and calculates the corrosion rate based on the results (Darowicki, Figs. 1-12, para. [0036]-[0037], [0045]), so the probe, measuring system, and computer of Modified Darowicki are capable of performing the functional language "the corrosion diagnostic output is an adjustment to a calibration interval".
Regarding claims 20-21, the limitations "the corrosion diagnostic output is a compensated conductivity output" and "the compensated conductivity output includes an indication that the compensated conductivity output is compensated for corrosion" are interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed 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 Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114.
Examiner further notes that Modified Darowicki teaches that studies allowed developing an algorithm and calibration curve for determining the corrosion and hydrogenation rate based on the resistance measurement of the electrodes 1, 2 of the probe, that the six-conductor signal cable 15 is connected to the measuring system that measures the electrical resistance of individual resistive elements 3, 4, and 5 of the electrodes 1 and 2, that the measurement results are relayed from the measuring system to a computer which archives the received results and calculates the corrosion rate based on the results and visualizes it on a screen display, and that the conversion corrosion rate of the materials of the electrodes are calculated to determine the theoretical hydrogenation level based on the calibration curve of hydrogenation level as a function of the conversion corrosion rates (Darowicki, Figs. 1-12, para. [0036]-[0037], [0045]), so the probe, measuring system, and computer of Modified Darowicki are capable of performing the functional language "the corrosion diagnostic output is a compensated conductivity output" and "the compensated conductivity output includes an indication that the compensated conductivity output is compensated for corrosion".
Regarding claim 22, the limitation "the corrosion diagnostic output is provided in real-time" is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed 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 Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114.
Examiner further notes that Modified Darowicki teaches that the measured resistances of the first and second electrodes 1, 2 are sent to the measuring system in the form of electrical voltages and are compared with their values measured before mounting the probe, which allowed real-time determination of change in the electrical resistance over time for each of the first and second electrodes 1, 2, and the computer can calculate the corrosion rate based on the real-time change of the resistance for each electrode 1, 2 (Darowicki, Figs. 1-12, para. [0036]-[0041]), so the probe, measuring system, and computer of Modified Darowicki are capable of performing the functional language "the corrosion diagnostic output is provided in real-time."
Response to Arguments
Applicant's arguments filed May 19, 2026 have been fully considered but they are not persuasive.
In the arguments presented on page 7 of the amendment, Applicant argues that Darowicki does not teach or suggest a conductivity measurement system, but rather is directed to a corrosion rate measurement system. Applicant asserts that the corrosion measurement probe of Darowicki does not measure conductivity.
Examiner respectfully disagrees. In response to applicant's argument that Darowicki does not teach measuring conductivity, a recitation of the intended use 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. In this case, Modified Darowicki teaches a probe, a measuring system, and a computer that are connected (Darowicki, Figs. 1-12, para. [0036]). Modified Darowicki teaches that a six-conductor signal cable 15 of the probe is connected to the measuring system that measures the electrical resistance of individual resistive elements 3, 4, and 5 of the electrodes 1 and 2 of the probe, and that the measurement results are relayed from the measuring system to the computer which archives the received results and calculates the corrosion rate based on the results (Darowicki, Figs. 1-12, para. [0036]). Furthermore, the measured resistance of Darowicki is related to conductivity since conductivity = length / (resistance * cross-sectional area). The instant specification also provides evidence that resistance is related to conductivity (see para. [0016], [0021] of the instant US PGPub). Therefore, the probe, measuring system, and computer of Modified Darowicki teach all of the structural limitations of the claim and thus are capable of measuring conductivity and/or calculating the conductivity from the measured resistance.
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 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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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794
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