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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/21/2023 has been considered by the examiner.
Election/Restrictions
Applicant's election of Group I, Claims 1-6, 8, 10-11, in the reply filed on 09/18/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objection
Claims 2-6, 8, and 10-11 are objected to because of the following informalities:
Claims 2-6, 8 and 10-11: please amend “The article” to -- The RHE article--.
Claim 2: please amend “in the form” to – in [[the]] a form--.
Claim 6: please amend “about 2 mm in diameter” to -- about 2 mm --.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams (Development of a nanostructured palladium microelectrode for pH monitoring in scanning electrochemical microscopy, PhD thesis of University of Southampton, 2008).
Regarding claim 1, Williams teaches a reversible hydrogen electrode (RHE) article (a palladium microelectrode loaded with hydrogen to form a Pd-H electrode for pH monitoring [title; abstract; Fig.4 on page 22 and Fig. 50 on page 124; chapters 3 and 4 detail dynamic loading of hydrogen]); comprising:
Palladium (palladium microelectrode [title; abstract; Fig.4 on page 22 and Fig. 50 on page 124; section 2.4 details deposition of Pd film), wherein the palladium is palladium metal (palladium film [section 2.4]); and wherein the palladium is dynamically loaded with hydrogen atoms to reversibly form Pd-H species (chapters 3 and 4 detail dynamic loading of hydrogen to reversibly form Pd-H species; Fig.3 on page 14 shows adsorption and desorption relationships between the hydrogen content of Pd and electrodes potential; Equations 14 and 15 on pages 18-19 show the hydrogen atoms adsorbed on the Pd surface and hydrogen desorption, respectively).
Regarding claim 2, Williams teaches the article of claim 1, wherein the palladium is in the form of a palladium film (palladium film [section 2.4 on page 53]).
Regarding claim 3, Williams teaches the article of claim 2, further comprising a sulfonated polytetrafluoroethylene membrane coating disposed on the palladium film (Nafion protective membrane [Table 3 on pages 44-45]; by coating the electrode with Nafion, it should be possible to extend the lifetime of the electrode [section 3.3 Nafion covered electrodes on page 76]. Nafion membrane is a sulfonated polytetrafluoroethylene membrane) .
Regarding claim 4, Williams teaches the article of claim 2, wherein the palladium film has a thickness in a range of from about 100 nm to about 2000 nm (film thickness of 1.7µm [Table 6 on page 99], which is 1.7x1000=1700 nm, falling within the claimed thickness range).
Regarding claim 5, Williams teaches the article of claim 1, wherein the palladium retains atomic hydrogen for at least one minute (results in Table 5 show that the Nafion membrane increases the stable time of the pH microsensor by approximately 50% compared to the electrodes without the protective membrane. The 5th column shows the lifetime of 6, 40, 15 and 67 minutes [page 81 in section 3.3], each of which falls within the claimed range. Thus, the palladium is capable of performing the claimed function of retaining atomic hydrogen for at least one minute).
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 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 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Williams, as applied to claims 1-2 above, and in view of Imokawa (Fabrication and characterization of nanostructured palladium hybrid microelectrode pH sensors, Ph.D. thesis of University of Southampton, 2003).
Regarding claim 6, Williams teaches the article of claim 2, and is silent to wherein the palladium wire has a diameter in a range of from about 0.2 mm to about 2 mm in diameter.
Imokawa teaches a similar Pd-H electrode as a pH sensor (title), and Fig.1.3 teaches wherein the Pd-H electrode is in the form of a Pd wire of diameter d=0.0125 inches loaded with hydrogen (caption of Fig.1.3 on page 18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Pd film in Williams to a Pd wire of diameter d=0.0125 inches, as taught by Imokawa, since Imokawa teaches Pd wire of diameter of 0.0125 inches as a suitable alternative to the Pd film for a Pd-H electrode as a pH sensor (Fig.1.3 on page 18). The disclosed diameter of 0.0125 inches, which is equivalent to 0.3175 mm, falls within the claimed diameter range from about 0.2 mm to about 2 mm.
Regarding claim 8, Williams teaches the article of claim 1, and further teaches wherein the Pd film is deposited on a Pt microdisc (section 2.4.1.1 and Fig.15), thus is silent to wherein said article comprising less than 0.01% by weight of platinum, or no platinum.
Imokawa teaches a similar Pd-H electrode as a pH sensor (title), and further teaches wherein the Pd film is deposited on either a Pt microdisc or Au microdisc electrode (section 3-1-2 on pages 49-50). In fact, an H1-e Pd(B) film deposited on a 25 µm diameter Au microdisc electrode showed an identical voltammogram to Fig.3.12 (line 2), confirming that the current from the substrate does not affect the overall response (the last paragraph on page 61).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Pt substrate in Williams with an Au substrate wherein the Pd film is deposited on the Au substrate, as taught by Imokawa, since Imokawa teaches Au substrate as a suitable alternative to the Pt substrate since the current from the substrate does not affect the overall response (the last paragraph on page 61). The simple substitution of one known element for another (i.e., Au substrate for Pt substrate) is likely to be obvious when predictable results are achieved (i.e., Pd-H electrode for pH sensing) [MPEP § 2143(I) (B)]. Furthermore, 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]. With the above substitution, the modified article comprises no platinum.
In the alternative, Imokawa teaches a similar Pd-H electrode as a pH sensor (title), and Fig.1.3 teaches wherein the Pd-H electrode is in the form of a Pd wire of diameter d=0.0125 inches loaded with hydrogen (caption of Fig.1.3 on page 18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Pd film disposed on a Pt substrate in Williams to a Pd wire, as taught by Imokawa, since Imokawa teaches Pd wire as a suitable alternative to the Pd film disposed on a Pt substrate for a Pd-H electrode as a pH sensor (Fig.1.3 on page 18). With the above modification, the article comprises no platinum.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over
Williams, as applied to claim 1 above, and in view of Wu (US20160202202A1).
Regarding claim 10, Williams teaches the article of claim 1, and is silent to
wherein the palladium is an alloy of palladium with a metal chosen from Ag, Cu, Mn, Ni, Cr, or combinations thereof.
Wu teaches a pH sensor contains a potentiometric sensing electrode made of palladium (abstract; Pd sensing electrode 101 in Figs. 1-2 [para. 0036]), wherein the Pd sensing electrode is prepared from a thermally decomposable palladium precursor, which can be used with liquid-based deposition processes to make a palladium layer on an object or a substrate [para. 0038]. The precursor composition can further include another metal species, for example silver (Ag), gold (Au), copper (Cu), nickel (Ni), rhodium (Rh), cobalt (Co), zinc (Zn), platinum (Pt), and the like [para. 0064]. Thus, Wu teaches a pH sensing electrode comprising an alloy of Pd with a metal chosen from Ag, Cu, and Ni.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Pd metal in Williams with an alloy of Pd with a metal chosen from Ag, Cu, and Ni, as taught by Wu, since Wu teaches an alloy of Pd with a metal chosen from Ag, Cu, and Ni as a suitable alternative to the Pd for the Pd sensing electrode of a pH sensor [para. 0064]. The simple substitution of one known element for another (i.e., alloy of Pd with a metal chosen from Ag, Cu and Ni for Pd) is likely to be obvious when predictable results are achieved (i.e., pH sensing electrode for a pH sensor) [MPEP § 2143(I) (B)]. Furthermore, 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 11 is rejected under 35 U.S.C. 103 as being unpatentable over
Williams, as applied to claim 1 above, and in view of Lee et al. (KR20090123042A, English translation).
Regarding claim 11, Williams teaches the article of claim 1, and further teaches wherein the Pd film is deposited on a Pt microdisc (section 2.4.1.1 and Fig.15). Thus, Williams is silent to wherein the reversible hydrogen electrode is disposed on a substrate comprising a plastic, glass, alumina, or silicon.
Lee teaches a pH sensor comprising a Pd layer formed on a silicon substrate (claim 1, Pd on Si/SiO2 substrate as shown in Fig.1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Pt substate in Williams with a silicon substrate, wherein the Pd film is disposed on the silicon substrate, as taught by Lee, since Lee teaches a suitable alternative silicon substrate on which Pd film is disposed as a pH sensor (claim 1 and Fig.1). The simple substitution of one known element for another (i.e., a silicon substrate for another substrate) is likely to be obvious when predictable results are achieved (i.e., a Pd-H electrode for a pH sensor) [MPEP § 2143(I) (B)]. Furthermore, 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].
Conclusion
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure: Kreider et al. (Sputtered thin-film pH electrodes of platinum, palladium, ruthenium, and iridium oxides, Sensors and Actuators B, 1995, 28, 167-172) teaches thin-film pH electrodes of PdO on alumina and silicon substrates (abstract). Liu et al. (A palladium- palladium oxide miniature pH electrode, Science, 1980, 207, 188-189) teaches pH electrode of Pd-Ag alloy having characteristics identical to those of pure Pd. Alshadokhi (Design and characterization of nanostructured microelectrodes for biomedical applications, PhD thesis of University of Southampton, 2014) teaches Pd-H electrode for pH sensor. Serrapede (Nanostructured palladium hydride microelectrodes: from the potentiometric mode in SECM to the measure of local pH during carbonation, PhD thesis of University of Southampton, 2014) teaches Pd-H electrode of a pH sensor.
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/SHIZHI QIAN/Examiner, Art Unit 1795