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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 7, 2026 has been entered.
Status of Objections and Rejections
All rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection are necessitated by the amendments.
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.
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:
"a masking element" which at least partially closes the permeable surface section of the membrane in claim 1.
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. The specification discloses the masking element is an element, such as a film (PGpub ¶27), and a synthetic material, in particular a polymer material (¶29).
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 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) 17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “foil” in claim 17 is used by the claim seems to mean an element made of a polymer material (see specification, PGpub ¶28: the making element is configured as a foil covering ≥50% of the permeable surface section; ¶29: the material of the masking element is preferably a synthetic material is preferably a synthetic material, in particular a polymer material), while the accepted meaning is “a very thin sheet metal, e.g., aluminum foil” (as evidenced by Merriam-Webster dictionary). The term is indefinite because the specification does not clearly redefine the term.
Further, the specification discloses the masking element is configured as a foil covering ≥50% of the permeable surface section (PGpub ¶28), which seems to disclose a function of the masking element is to be used as a foil covering ≥50% of the permeable surface section. Thus, the limitation “foil” seems to be a functional group instead of a structural limitation. Applicant is requested to define and clarify the term “foil,” and the amendments regarding the term “foil” must have support in the specification as-filed.
Claim Rejections - 35 USC § 102
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) 15-19, 21, and 23-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen (US 6,080,294).
Regarding claim 15, Shen teaches a closure device (Fig. 3; col. 4, l. 52: an oxygen sensor 10) for a measuring chamber (Fig. 3: the chamber defined by the housing 18) of an electrochemical sensor (Fig. 3; col. 4, ll. 21-22: electrochemical reaction) for determining a constituent in a sample (col. 1, ll. 9-11: gas sensors for sensing oxygen where the amount of oxygen must be measured),
the closure device having a membrane (Fig. 3; col. 4, l. 62: the polymer membrane 20) with a permeable surface section so that the membrane allows a substance to be supplied to and/or discharged from the measuring chamber (col. 4, ll. 62-65: the polymer membrane 20 is impermeable to water vapor and permeable to oxygen); further, this limitation is a functional limitation in apparatus claims regarding intended result. 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)),
wherein the closure device comprises a masking element (Fig. 3; col. 4, ll. 54-55: top spacer or cap 23) which partially closes the permeable surface section of the membrane (Fig. 3) so that
(i) the supply and/or discharge of the substance to and/or from the measuring chamber is blocked for a first part of the permeable surface section which is closed by the masking element, whereas (ii) the supply and/or discharge of the substance to and/or from the measuring chamber is unobstructed for a second part of the permeable surface section which is closed by the masking element (Fig. 3: indicating a first part of the permeable surface of the polymer membrane 20 covered by the cap 23 is blocked and a second part, i.e., the part corresponding to openings 24, of the permeable surface of the polymer membrane 20 is unobstructed).
Regarding claim 16, Shen teaches wherein the masking element closes
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70%, or
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90%, of the permeable surface section (Fig. 3: indicating the cap 23 covering at least 70% of the polymer membrane 20).
Regarding claim 17, Shen teaches wherein the masking element is a foil with openings (Fig. 3: the cap 23 with openings 24).
Regarding claim 18, Shen teaches wherein the masking element is connected to the membrane (Fig. 3).
The designation “in a force-fit, form-fit or material-fit manner” is 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. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113(I).
Regarding claim 19, Shen teaches wherein the membrane comprises or consists of a polymer material (col. 4, ll. 62-63: the polymer membrane 20 is a membrane comprising a polymer such as PTFE).
Regarding claim 21, Shen teaches wherein the membrane is sponge-like (since the membrane is made of PTFE and permeable to oxygen, it must be porous and deemed to be sponge-like).
Further, the designation “track-etched” is 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. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113(I).
Regarding claim 23, Shen teaches wherein the closure device is configured and adapted such that in its operating position closing the measuring chamber, the membrane is arranged between the masking element and the measuring chamber (Fig. 3: the membrane 20 is between the cap 23 and the chamber).
Regarding claim 24, Shen teaches a measuring chamber (Fig. 3: the chamber defined by the housing 18) for an electrochemical sensor (Fig. 3; col. 4, l. 52: an oxygen sensor 10) comprising the closure device according to claim 15 (as described in claim 15).
Regarding claim 25, Shen teaches an electrochemical sensor (Fig. 3; col. 4, l. 52: an oxygen sensor 10) comprising the measuring chamber according to claim 24 (Fig. 3: the chamber defined by the housing 18, as described in claim 24).
Regarding claim 26, the designation “wherein said electrochemical sensor is a chlorine sensor” is deemed to be functional limitation in apparatus claims regarding intended use. MPEP 2114 (II). "[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). Here, Shen teaches all structural limitations of the presently claimed electrochemical sensor which is capable of sensing oxygen, and thus is capable of being a chlorine sensor.
Regarding claim 27, Shen teaches a measuring device (Fig. 3; col. 4, l. 52: an oxygen sensor 10) for determining a constituent of a sample (col. 1, ll. 9-11: gas sensors for sensing oxygen where the amount of oxygen must be measured) comprising the electrochemical sensor (Fig. 3; col. 4, ll. 21-22: electrochemical reaction) according to claim 25 (as described in claim 25).
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) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shen in view of Moeller (US 2019/0246958).
Regarding claim 20, Dicks discloses all limitations of claim 19, but fails to teach wherein the polymer material is polycarbonate (PC).
However, Moeller teaches gas permeable/liquid impermeable membranes that include a silicon polycarbonate composite, a liquid impermeable PTFE membrane, etc. (¶77).
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 Shen by substituting the membrane with the one comprising polycarbonate as taught by Moeller. The suggestion for doing so would have been that polycarbonate is a suitable material forming a membrane that is gas permeable/liquid impermeable and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shen.
Regarding claim 22, Shen discloses all limitations of claim 15 but fails to teach wherein the closure device is configured and adapted such that in its operating position closing the measuring chamber, the masking element is arranged between the membrane and the measuring chamber.
However, Shen teaches the closure device is configured and adapted such that in its operating position closing the measuring chamber, the membrane is arranged between the masking element and the measuring chamber (Fig. 3: the membrane 20 is between the cap 23 and the chamber).
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 Dicks by rearranging the membrane and the cap by swapping their positions with each other because it is a matter of design choice and the rearrangement would not yield nothing more than predictable results 2144.04 (VI)(C). Further, there are only two arrangements of the membrane and the cap above the measuring chamber, and choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. MPEP 2141(III)(E).
Response to Arguments
Applicant’s argument(s) has/have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
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 on M-F: 8:30am - 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V Van can be reached on (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C. SUN/Primary Examiner, Art Unit 1795
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