DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on March 11, 2026. Claims 15-27 are pending in the application.
Status of Objections and Rejections
All objections and rejections from the previous office action are withdrawn in view of Applicant’s amendment.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 § 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) 15-16, 18-22, and 24-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dicks (US 6,197,172).
Regarding claim 15, Dicks teaches a closure device for a measuring chamber of an electrochemical sensor (Fig. 2; col. 6, l. 23: electrochemical sensor 110) for determining a constituent in a sample (col. 1, l. 22: determining a particular chemical species concentration),
the closure device having a membrane (Fig. 2-3, 5: modified membrane 44 including a membrane layer 145 and a gel layer 146) with a permeable surface section (col. 6, ll. 45-53: the membrane layer 145 is a plastic sheeting having pores; col. 3, l. 67 to col. 4, l. 3: the gel coating is specially formulated to improve the performance of standard ion-selective electrodes when combined with the membrane sheeting; col. 4, ll. 8-9: it acts as a semi-permeable barrier which allows the passage of the species to be measured; thus the modified membrane 44 having a permeable surface on its both sides) so that the membrane allows a substance to be supplied to and/or discharged from the measuring chamber (col. 12, ll. 16-17: the use of modified membrane 44 has great reduced the interference effects; here, the modified membrane 44 is selective to allow the analyte to be tested passing through; 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. 2, 5: active sensor membrane 117) which partially closes the permeable surface section of the membrane by partially covering the same (Fig. 2, 5: indicating the active sensor membrane 117 partially closes the modified membrane 44) so that the supply and/or discharge of the substance to and/or from the measuring chamber is partially blocked or at least inhibited (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)).
Regarding claim 16, Dicks teaches wherein the masking element closes
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70%, or
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90%, of the permeable surface section (e.g., Fig. 5-6: indicating the active sensor membrane 117 covering at least 70% of the membrane layer 145 of the modified membrane layer 44).
Regarding claim 18, Dicks teaches wherein the masking element is connected to the membrane (Fig. 3, 5).
The designation “in a force-fit, form-fit or material-fit manner, preferably in a force-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, Dicks teaches wherein the membrane comprises or consists of a polymer material (col. 6, ll. 46-48: membrane layer 145 is generally made from plastic sheeting, preferably polyester, polyethylene or polycarbonate).
Regarding claim 20, Dicks teaches wherein the polymer material is polycarbonate (PC) (col. 6, ll. 46-48: membrane layer 145 is generally made from plastic sheeting, preferably polyester, polyethylene or polycarbonate).
Regarding claim 21, Dicks teaches wherein the membrane is sponge-like (col. 6, ll. 46-48: membrane layer 145 having an average pore size of about 0.1 micrometers to about 1/0 micrometers; thus a porous membrane layer is sponge-like).
Regarding claim 22, Dicks teaches 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 (Fig. 2: the active sensor membrane 117 between the modified membrane 44 and the measuring chamber containing electrolyte 122).
Regarding claim 24, Dicks teaches a measuring chamber (Fig. 2; col. 6, ll. 21-33: second sensor body cavity 118 contains a second sensor electrolyte 122) for an electrochemical sensor (Fig. 2: electrochemical sensor 110) comprising the closure device according to claim 15 (as described in claim 15).
Regarding claim 25, Dicks teaches an electrochemical sensor (Fig. 2: electrochemical sensor 110) comprising the measuring chamber according to claim 24 (Fig. 2; col. 6, ll. 21-33: second sensor body cavity 118 contains a second sensor electrolyte 122), wherein the electrochemical sensor is for sensing a specific chemical species such as sodium, potassium, chloride, magnesium, lithium, and the like (col. 5, ll. 40-43).
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, Dicks teaches all structural limitations of the presently claimed electrochemical sensor which is capable of sensing specific chemical species such as chloride, and thus is capable of being a chlorine sensor or a total chlorine sensor.
Regarding claim 27, Dicks teaches a measuring device (Fig. 2: electrochemical sensor 110) for determining a constituent of a sample comprising the electrochemical sensor 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) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dicks in view of Ishige (US 2016/0223486).
Regarding claim 17, Dicks discloses all limitations of claim 15, but fails to teach wherein the masking element is a foil with openings.
However, Ishige teaches an ion-selective electrode with an ion-sensitive membrane adapted to be in contact with a measurement solution ([Abstract]). A sensitive membrane is in contact with the flow channel and the opposite side of the flow channel is filled with an internal solution with an immersed platinum wire (Fig. 1: 103-105, Fig. 2: 203-205; ¶¶38, 41). The sensitive membrane is an ion-selective membrane for detecting sodium or potassium ions (Fig. 5; ¶45). For example, a sodium or potassium ion-selective membrane contains polyvinyl chloride (PVC) as a base substance (¶45). Since Dicks teaches the active membrane (Fig. 1: 17) is a thin film for sensing sodium or potassium (Dicks, col. 5, ll. 40-42), and Ishige teaches a sodium or potassium ion-selective membrane contains polyvinyl chloride (PVC) as a base substance (Ishige, ¶45), which is a thin film made of PVC and has the same material and structure as disclosed in the specification (PGpub ¶29: the material of the masking element is a synthetic polymer material, preferably PVC; ¶30: the masking element is a film). Thus, the combined active membrane made of PVC would have the capable of being configured as a foil as disclosed in the specification (PGpub ¶28).
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 substituting the active membrane with the one made of PVC as taught by Ishige. The suggestion for doing so would have been that PVC is a suitable material for the active sensing membrane of sodium or potassium detection 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) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dicks.
Regarding claim 23, Dicks 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 membrane is arranged between the masking element and the measuring chamber.
However, Dicks teaches the masking element is arranged between the membrane and the measuring chamber (Fig. 5: the active sensor membrane 117 between the modified membrane 44 and the measuring chamber containing electrolyte 122).
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 modified membrane and active sensor membrane 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).
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive in light of new grounds for rejection.
Applicant argues the examples such as a foil/film are merely illustrative and do not limit the concept of the masking element (Response, p. 7, para. 3). This argument is unpersuasive because the limitation for the making element is merely recited as a functional limitation “which partially closes the permeable surface section of the membrane by partially covering the same” without a structural modifier. Thus, it has to be interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalent thereof.
Applicant argues that Dicks teaches a full-surface coverage which is distinguishable from the claimed partial closure (pp. 8-9). This argument is moot because the active sensor membrane 117 (Fig. 1: 17; Fig. 2: 117) are now read as the masking element that only partially covers the modified membrane 44.
Applicant’s argument regarding the prior art, Allen, is moot because newly cited reference, Ishige, is now relied on to teach the limitation of claim 17.
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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