DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the De Keersmaecker, et al. application filed with the Office on 7 December 2023.
Claims 1-30 are currently pending, and claims 1-10 have been fully considered.
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 Invention I, claim 1-10 in the reply filed on 9 June 2026, is acknowledged.
Claims 11-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9 June 2026.
Priority
The instant application is the US National Stage Application of an International Patent Application, PCT/US2022/33102, filed on 10 June 2022, which claims priority to two US Provisional Patent Applications, 63/320,698 and 63/209,339, which were filed on 17 March 2022 and 10 June 2021, respectively. Thus, the instant application has an earliest effective filing date of 10 June 2021.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted regarding the present application filed on 8 April 2024 and 25 March 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the Examiner.
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.
Claim 4 is 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.
The terms “low oxygen transport”, “high solubility”, “low molecular weight”, and “high dielectric constant” in claim 4 are relative terms which renders the claim indefinite. The terms are 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.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 4-6 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published paper by J. Lee, et al. (“Thin film of poly(vinylidene fluoride-co-hexafluoropropylene) – ionic liquid mixtures as amperometric gas sensing materials for oxygen and ammonia”, Analyst, 145(5): p. 1915-1924, 2020; hereinafter, “Lee”).
Regarding claim 1, Lee discloses an apparatus (an amperometric gas sensor per Abstract), comprising:
a potentiostat (1st ¶, Gas sensing experiments, p. 1917);
a counter electrode electrically connected to said potentiostat (“… all three electrodes (working, reference and counter) are 150 nm thick platinum …”, Chemicals and gases, p. 1917);
a solid electrolyte attached to a surface of said counter electrode at a first surface of said solid electrolyte, said solid electrolyte comprising a second surface opposite said first surface (a gel polymer electrolyte drop casted onto thin film electrodes, Figure 2a);
a reference electrode embedded within at least a portion of said solid electrolyte and electrically connected to said potentiostat (“… all three electrodes (working, reference and counter) are 150 nm thick platinum …”, Chemicals and gases, p. 1917); and
a probe electrically connected to said potentiostat, wherein said probe is configured to be electrically connected to said device electrode to provide a working electrode (“… all three electrodes (working, reference and counter) are 150 nm thick platinum …”, Chemicals and gases, p. 1917); and
wherein said solid electrolyte comprises a solid porous material (poly(vinylidene fluoride-co-hexfluoropropylene, Chemicals and gases, p. 1916) and an ionic liquid (1-ethyl-3-methylimidazolium tetrafluoroborate ([C2mim][BF4], 99%) and 1-butyl-3-methylimidazolium tetrafluoroborate ([C4mim][BF4], 99%), Chemicals and gases, p. 1916) disposed within said solid porous material.
As to the limitation, “… for characterizing a substructure of a semiconductor device”, this is a statement of intended use of the claimed apparatus. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
As to the limitations, “wherein said substructure of said semiconductor device comprises a device electrode and at least one layer of material formed on said device electrode, said at least one layer of material comprising a layer of a semiconductor”, and “wherein said counter electrode and said solid electrolyte are configured to contact said second surface of said solid electrolyte with at least a portion of a surface of said substructure of said semiconductor device”, these recite the inclusion of material worked upon by a claimed structure. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claims 2, 4 and 5, Lee teaches poly(vinylidene fluoride-co-hexfluoropropylene (Chemicals and gases, p. 1916).
Regarding claim 6, Lee teaches 1-ethyl-3-methylimidazolium tetrafluoroborate ([C2mim][BF4], 99%) and 1-butyl-3-methylimidazolium tetrafluoroborate ([C4mim][BF4], 99%) (Chemicals and gases, p. 1916).
Regarding claim 9, Lee teaches electrode of platinum (“… all three electrodes (working, reference and counter) are 150 nm thick platinum …”, Chemicals and gases, p. 1917).
Allowable Subject Matter
Claims 3, 7, 8 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Lee is considered the closest prior art reference to the instant claims. However, Lee does not anticipate nor render obvious the apparatus comprises redox probes (as required by instant claims 3, 7 and 8), nor that the probe is configured to be disconnected and subsequently electrically reconnected to provide a working electrode (as required by instant claim 10).
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J. Christopher Ball/ Primary Examiner, Art Unit 1795
Prosecution Insights