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 .
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.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 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 is: “protective agent” in claims 1 and 9.
Because this claim limitations is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation 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 to avoid it 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 recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
Note that dependent claims will have the deficiencies of base and intervening claims.
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.
Claims 1-3 and 5-9 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:
a) claim 1 requires “. . . .; and wherein the holding structure comprises a guide that guides the lead wire along an introduction path from the outside of the case body to the electrode structure via the connection point of the external electrode.[italicizing by the Examiner]” The scope of “an introduction path” is indefinite because it does not appear to be illustrated in any of Applicant’s figures nor explained in the application specification. It is not clear, for example, whether this introduction oath entails any specific structural elements (and if so, what they may be) or is just an open space. An example of such an introduction path would be helpful to the Examiner and public to better understand this claim limitation.
b) claim 5 requires “a first guide that guides the lead wire . . . . ; and a second guide that guides the lead wire. . . .[italicizing by the Examiner]” However, underlying claim 1 requires “at least two lead wires . . . .” It is not clear which of the at least two lead wires is the lead are referred to by claim 5.
c) claim 7 recites the limitation “. . . ., wherein the at least two lead wires comprise at least two lead wires for reaction electrode connected to the at least two reaction electrodes, respectively, . . . .[italicizing by the Examiner]” This claim limitation is indefinite because on the one hand it requires at least two lead wires for [a] reaction electrode, and on the other hand requires at least two lead wires connected to the at least two reaction electrodes, respectively. Does Applicant mean – at last two reaction electrode lead wires --?
d) claim 7 recites the limitation “a lead wire for counter electrode connected to the counter electrode, . . . .” This claim limitation is indefinite because it could be interpreted to mean -- a lead wire for a counter electrode connected to the counter electrode, . . . .-- . Does Applicant mean – a counter electrode lead wire --?
e) claim 7 recites the limitation “a lead wire for reference electrode connected to the reference electrode, . . . .” This claim limitation is indefinite because it could be interpreted to mean -- a lead wire for a reference electrode connected to the reference electrode, . . . .-- . Does Applicant mean – a reference electrode lead wire --?
f) claim 7 recites the limitation “. . . ., wherein the at least two external electrodes comprise at least two external electrodes for reaction electrode connected to the at least two lead wires for reaction electrodes, respectively, . . . .[italicizing by the Examiner]” This claim limitation is indefinite because on the one hand it requires at least two external electrodes for [a] reaction electrode, and on the other hand requires at least two external electrodes connected to reaction electrodes through two lead wires.
g) claim 7 recites the limitation ”an external electrode for counter electrode connected to the lead wire for counter electrode, . . . . [italicizing by the Examiner]” What is meant by an external electrode for a or the counter electrode?
h) claim 7 recites the limitation ”an external electrode for counter electrode connected to the lead wire for counter electrode, . . . .” This claim limitation is indefinite because it is ambiguous. It could be interpreted to mean -- an external electrode for a counter electrode [not necessarily the counter electrode of line 4 of claim 7, that is, another counter electrode] connected to the lead wire for a counter electrode, . . . . – or -- an external electrode for the counter electrode connected to the lead wire for the counter electrode, . . . .”
i) claim 7 recites the limitation ”an external electrode for reference electrode connected to the lead wire for reference electrode, . . . . [italicizing by the Examiner]” What is meant by an external electrode for a or the reference electrode?
k) claim 7 recites the limitation ”an external electrode for reference electrode connected to the lead wire for reference electrode, . . . .” This claim limitation is indefinite because it is ambiguous. It could be interpreted to mean -- an external electrode for a reference electrode [not necessarily the reference electrode of line 5 of claim 7, that is, another reference electrode] connected to the lead wire for a reference electrode, . . . . – or -- an external electrode for the reference electrode connected to the lead wire for the reference electrode, . . . .”
l) claim 8 require “. . . ., wherein the at least two external electrodes for reaction electrode are arranged so that the connection points of the at least two external electrodes for reaction electrode are located at heights corresponding to the at least two reaction electrodes.[italicizing by the Examiner]” This claim is confusing because on the one hand it seems to require at least two external electrodes for a [single] reaction electrode, but, on the hand, require at least two external electrodes corresponding to the at least two reaction electrodes.
m) claim 9 requires the step of “arranging the lead wire between the surface of the electrode and the connection point of the external electrode; . . . .[italicizing by the Examiner]” However, the earlier part of claim 9 recites “an electrode structure comprising at least two electrodes”, “at least two lead wires”, and “at least two external electrodes”.
n) claim 9 requires the step of “connecting the lead wire to the external electrode at the connection point of the external electrode with the lead wire being arranged on the surface of the electrode; . . . .[italicizing by the Examiner]” However, the earlier part of claim 9 recites “an electrode structure comprising at least two electrodes”, “at least two lead wires”, and “at least two external electrodes”.
o) claim 9 requires the step of “. . . .; supplying the predetermined amount of protective agent to the holding structure so as to cover the connection point of the external electrode with the protective agent.[italicizing by the Examiner]” However, the earlier part of claim 9 implicitly requires at least two connection points, one for each of at least two external electrodes: “. . . ., wherein the at least two external electrodes are arranged so that a connection point of the external electrode to which the lead wire is connected . . . .[italicizing by the Examiner]”
p) claim 9 requires
PNG
media_image1.png
228
770
media_image1.png
Greyscale
PNG
media_image2.png
140
744
media_image2.png
Greyscale
It is not clear whether the electrolytic gas sensor described earlier in
claim 9 is an intermediate product that these steps act upon (for example, “arranging the lead wire between the surface of the electrode and the connection point of the external electrode; . . . .[italicizing by the Examiner]”) or is the desired final product of the method.
Allowable Subject Matter
Claims 1 and 9 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2, 3, and 5--8 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
a) in claim 1 the combination of limitations requires the following limitations
PNG
media_image3.png
372
774
media_image3.png
Greyscale
a)(i) the International Search Report (ISR), for International Application Number PCT/JP2022/027605, mailed September 27, 2022 (hereafter “Search Report”), cites JP 11-18333 A as a “Y” document against claims 1-3 and 7-9; cites JP 2007-248313 A as a “Y” document against claims 1-3 and 7-9; cites JP 2005-61991 A as a “Y” document against claims 1-3 and 7-9; cites JP 2020-139894 A as a “Y” document against claims 7-8; and cites US 20060124458 A as a “Y” document against claims 7-8. The Written Opinion for International Application Number PCT/JP2022/027605 deems claims 1-9 to have novelty and deems claims 4-6 to have an inventive step, but deems claims 1-3 and 7-9 to lack an inventive step. In particular, claims 1-3 and 9 are rejected over the first three “Y” documents cited in the Search Report, which are referred to as Documents 1-3, respectively. Claims 7 and 8 are rejected over Documents 1-3 along with the last two listed “Y” documents above, which are referred to as Document 4 and Document 5, respectively. The U.S. Examiner has obtained English language translations of all of the Japanese language “Y” documents.
The rejection of clams 1-3 and 9 in the Written Opinion turns to Documents 2 and 3 for a protective agent. This claim rejection, though, merely states,
PNG
media_image4.png
166
1184
media_image4.png
Greyscale
So, it is not clear what is supposed to be the protective agent and what is supposed to be the holding structure in Documents 2 and 3. Presumably, in Document 2 the protective agent is either water retention sheet 4A or 4B mentioned in paragraph [0034] of the translation; in Document 3 it is the peripheral portion 26 of the ring-shaped insulating member for the working electrode 21 mentioned in paragraph [0019] of the translation. Even if so, in neither Document 2 nor Document 3 is there a holding structure as set forth in claim of U.S. application 18/578494. Neither Document 4 nor Document 5, which are only relied upon for “at least two reaction poles for detecting different gases”, cures this deficiency.
a)(iii) Cuomo et al. US 5,284,566 (hereafter “Cuomo”).discloses a constant potential electrolytic gas sensor (see the title, Abstract, Figures 1-4 and col. 1:34-51, noting especially,” The reference electrode is used in conjunction with an electronic circuit to maintain a predetermined potential difference between the sensing and reference electrodes. This potential difference also is selected so as to encourage the desired oxidation or reduction reaction of the object gas at the sensing electrode. . . . . The predetermined potential difference between the reference electrode and the sensing electrode is maintained by the electronic circuit without drawing current from the reference electrode.[italicizing by the Examiner]“) comprising:
a case with a case body (cylindrically-shaped housing or body 4. See Figure 4 and col. 4:9-16.);
an electrode structure comprising at least two electrodes provided in the case body (the Examiner is construing the stack subset in Figure 6 comprising sensing electrode 34 along with reference electrode 42, counter electrode 50, and all intervening structural elements between any two of these electrodes as being the claimed electrode structure. See also Figures 4 and 5, and col. 5:15-48.);
at least two lead wires (sensing ribbon 104, reference electrode ribbon 110, and counter electrode ribbon 116) that extend along respective surfaces of the at least two electrodes and are connected to the respective surfaces of the at least two electrodes (this feature of the at least two lead wires may be inferred from col. 7:34-60 along with annotated Figure 6 at the end of this discussion of Cuomo); and
at least two external electrodes (contact pins 96, 98, and 100. See
col. 7:34-60 and Figures 3-6.) that extend from the outside of the case to the inside of the case (see col. 7:34-60 and Figures 3-6), are provided in the case body (see col. 7:34-60 and Figures 3-6), and are connected to the at least two lead wires, respectively (see col. 7:34-60 and Figures 3-6),
wherein the at least two external electrodes are arranged so that a connection point of the external electrode to which the lead wire is connected is located at a height corresponding to the electrode structure (this feature may be inferred from annotated Figure 6 at the end of this discussion of Cuomo, noting especially the explanation as to why the top end of electrode ribbons are bent).
However, in contrast to claim 1 Cuomo does not disclose “wherein the case body has a holding structure that can hold a predetermined amount of protective agent so as to cover the connection point, with respect to each of the at least two external electrodes, and wherein the holding structure comprises a guide that guides the lead wire along an introduction path from the outside of the case body to the electrode structure via the connection point of the external electrode.” Nor is such a holding structure an obvious or simple modification to make.
PNG
media_image5.png
824
758
media_image5.png
Greyscale
a)(iv) Austen et al. US 7,022,213 B1 (hereafter “Austen”) discloses a constant potential electrolytic gas sensor (see the title, Figure 3, and col. 1:31-43, noting especially, “A further electrode (the reference electrode) may be employed, for example, in combination with a potentiostat circuit, to maintain a constant potential difference between the sensing electrode and the electrolyte. This increases the stability of operation of the gas sensor.[italicizing by the Examiner]” ) comprising:
a case (102 with 144 in Figure 3. See col. 7:14-18 and col. 8:3-5.) with a case body (102);
an electrode structure comprising at least two electrodes (sensing electrode 136, reference electrode 124, and counter electrode 138. See Figure 3 and col. 8:11-15.) provided in the case body;
at least two lead wires that extend along respective surfaces of the at least two electrodes and are connected to the respective surfaces of the at least two electrodes; and
at least two external electrodes (contact pins 110, 114, and 118. See col. 7:18-21.) that extend from the outside of the case to the inside of the case (Figure 3), are provided in the case body (Figure 3), and are connected to the at least two lead wires, respectively,
wherein the at least two external electrodes are arranged so that a connection point of the external electrode to which the lead wire is connected is located at a height corresponding to the electrode structure, and
wherein the case body has a holding structure that can hold a predetermined amount of protective agent so as to cover the connection point, with respect to each of the at least two external electrodes (the Examiner is construing conducting polymers 112, 116, and 120 as each inherently functioning as a protective agent as claimed for a respective electrode. The respective reservoir in the case body for each of conducting polymers 112, 116, and 120 is a holding body as claimed.).
However, in contrast to claim 1, Austen does not disclose “wherein the holding structure comprises a guide that guides the lead wire along an introduction path from the outside of the case body to the electrode structure via the connection point of the external electrode.” There is no lead wire in Austen; instead, conducting polymers 112, 116, and 120 provide electrical connection between the external electrodes and their respective electrodes of the electrode structure.
a)(v) Dodgson et al. US 5,914,019 (hereafter “Dodgson”) discloses a constant potential electrolytic gas sensor (see the title, Figure 1, and col. 1:6-24, noting especially, “A reference electrode may be employed in combination with a potentiostat circuit to maintain the potential between the sensing electrode and the cell electrolyte in order to increase stability of operation.[italicizing by the Examiner]”) comprising:
a case (4 with 34 in Figure 1. See col. 5:24-26 and col. 5:27-31.) with a case body (4));
an electrode structure (the Examiner is construing wick 31 in Figure 2 together on its top surface as an electrode structure. See col. 5:56 to col. 6:7. ) comprising at least two electrodes (22, 24, 25. See col. 5:20-24 and col. 5:56 to col.6:7.) provided in the case body (see Figures 1 and 2);
at least two lead wires that extend along respective surfaces of the at least two electrodes and are connected to the respective surfaces of the at least two electrodes; and
at least two external electrodes (contact pins 10. See Figure 1 and col. 5:27-30.) that extend from the outside of the case to the inside of the case (Figure 1), are provided in the case body (Figure 1), and are connected to the at least two lead wires, respectively,
wherein the at least two external electrodes are arranged so that a connection point of the external electrode to which the lead wire is connected is located at a height corresponding to the electrode structure, and
wherein the case body has a holding structure (recesses 16 in Figure 1. See col. 5:27-30.) that can hold a predetermined amount of protective agent so as to cover the connection point, with respect to each of the at least two external electrodes (the Examiner is construing conducting masses 26, which fill the recesses 16, as each inherently functioning as a protective agent as claimed for a respective electrode. See col. 5:14-15 and col. 5:27-34.).
However, in contrast to claim 1, Dodgson does not disclose “wherein the holding structure comprises a guide that guides the lead wire along an introduction path from the outside of the case body to the electrode structure via the connection point of the external electrode.” There is no lead wire in Dodgson; instead, conducting masses 26 provide electrical connection between the external electrodes and their respective electrodes of the electrode structure.
a)(vi) Pratt et al. US 2019/0277801 A1 (hereafter “Pratt”) discloses an electrolytic gas sensor (the title, Abstract, Figure 1, and paragraphs [0004], [0035], and [0038]) comprising:
a case with a case body (26 in Figure 1 and paragraph [0029]);
an electrode structure (the Examiner is construing 20 together with 12-1, 22, 14-1, 24, and the top and bottom Charcoal cloth discs in Figure 1 as this electrode structure) comprising at least two electrodes (in Figure 1 note Sensing Electrode 20, Reference Electrode Assy 22, and Counter Electrode 24.) provided in the case body (Figure 1 is an exploded view of the gas sensor (paragraph [0009]. One of ordinary skill in the art would understand that in an actual gas sensor all of the layers shown separated in space would be stacked upon each other within the case body.);
at least two lead wires that extend along respective surfaces of the at least two electrodes and are connected to the respective surfaces of the at least two electrodes (these lead wires are clearly visible in Figure 1, although unlabeled. See annotated Figure 1 below.); and
at least two external electrodes that extend from the outside of the case to the inside of the case, are provided in the case body, and are connected to the at least two lead wires, respectively (for these “at least two external electrodes” see Figure 1 noting 26-1 and the following in paragraph [0031], “Electrical connecting elements, indicated at 26-1, carried by housing 26 are coupled to the various electrodes in the housing 26.”),
wherein the at least two external electrodes are arranged so that a connection point of the external electrode to which the lead wire is connected is located at a height corresponding to the electrode structure (this limitation may be inferred from annotated Figure 1 below, noting especially the horizontal (perpendicular) portion of each lead wire, which is clearly intended to be intimate contact with either the top surface or bottom surface of its associated electrode and so is at a height “corresponding” to the electrode structure).
However, in contrast to claim 1 the electrolytic gas sensor of Pratt is not a constant potential electrolytic gas sensor, but a variable potential electrolytic gas sensor. See paragraphs [0025], [0035], and [0062]-[0069]. More importantly, Pratt does not disclose “wherein the case body has a holding structure that can hold a predetermined amount of protective agent so as to cover the connection point, with respect to each of the at least two external electrodes, and wherein the holding structure comprises a guide that guides the lead wire along an introduction path from the outside of the case body to the electrode structure via the connection point of the external electrode.” Nor is such a holding structure an obvious or simple modification to make.
PNG
media_image6.png
748
736
media_image6.png
Greyscale
b) claims 2, 3, and 5-8 depend directly or indirectly from allowable claim 1.
c) in independent claim 9 the combination of limitations requires the following limitations
PNG
media_image7.png
338
760
media_image7.png
Greyscale
The discussion above regarding the allowability of claim 1 pertains to claim 9 also.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER STEPHAN NOGUEROLA whose telephone number is (571)272-1343. The examiner can normally be reached on Monday - Friday 9:00AM-5:30 PM EST.
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 on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
Prosecution Insights