DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on December 12, 2025. Claims 1-7 are pending in the application.
Status of Objections and Rejections
All objections from the previous office action are withdrawn in view of Applicant’s amendment.
All rejections under 35 U.S.C. §112 from the previous office action are withdrawn in view of Applicant’s amendment.
All rejections under 35 U.S.C. §103 from the previous office action are maintained.
Claim Objections
Claim(s) 1 is/are objected to because of the following informalities:
Claim 1, line 5: “a second electrode Sb@Cu-Pt cell” is suggested to be “a second Sb@Cu-Pt electrode cell”
Appropriate correction is required.
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) 1-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mosley (US 2012/0234696) in view of Schumann (WO 2021/050867).
Regarding claims 1 and 7, Mosley teaches an electrode system for detecting free chlorine in water (¶160: combination measuring system; ¶161: the pH sensor may be used in combination with the halogen sensor or the TDS sensor or both; ¶4: the pH of the liquid, the concentration of ionic solutes such as chlorine species in the liquid; here the preamble “for detecting free chlorine in water” is deemed to be a statement with regard to the intended use and are not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP § 2111.02(II)), the system comprises:
i. a first electrode cell (Fig. 11; ¶161: sensors 108, 110, and 112) comprised of an antimony rod (Fig. 4: indicating an anode rod; ¶51: antimony pH electrode; ¶153; Examiner notes here that the antimony electrode is the sensing electrode) and a platinum wire (¶15: a platinum wire isolated from the Ag/AgCl internal fill solution; Examiner notes here that the platinum wire is a counter electrode isolated from the Ag/AgCl reference electrode);
ii. a second electrode cell (Fig. 11; ¶161: sensors 108, 110, and 112; ¶161: the pH sensor may be used in combination with the halogen sensor or the TDS sensor or both) separated by oxidant absorptive material (¶154: Nafion tubing with the electrode; ¶56: Nafion acts as a barrier to chlorine; ¶66: the pH-sensor having an anode sealed within a Nafion tube such as to prevent exposure of the anode to ambient oxygen from the environment exterior to the tube; ¶130: the membrane specific to amperometric halogen sensor has the primary function of preventing oxidation of the anode as opposed to preventing the transfer of negatively charged chlorine anions for the antimony pH sensor; here Examiner notes that the two electrode cells, a pH sensor and a chlorine sensor, are separated by Nafion tube that is an oxidant absorptive material blocking chlorine from entering the pH sensing electrode while allowing chlorine to passing through to reach the halogen sensing electrode).
Mosley does not disclose the antimony electrode rod is comprised of an antimony coated copper (claim 1) or wherein the antimony is coated on copper (claim 7).
However, Schumann teaches a pH sensor including a base copper Cu layer disposed on the common substrate, which is disposed a layer of antimony (Sb) over the Cu layer to form a pH sensing electrode (¶6).
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 Mosley by substituting the pH electrode rod comprised of antimony (Fig. 4: Anode rod) with one comprised of antimony coated copper as taught by Schumann. The suggestion for doing so would have been that antimony coated copper is a suitable material for pH electrode 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. Further, the substitution of an antimony rod with an antimony coated copper rod for pH sensing would yield nothing more than predictable results and thus is prima facie obvious. MPEP 2141(III)(B).
The designation “characterized in that, the first Sb@Cu-Pt electrode cell when dipped in an aqueous solution produces a potential that varies as a function of the oxidizing chlorine species in solution to detect the free chlorine in water, and the second Sb@Cu-Pt electrode cell performs measurements in the absence of oxidant for the detection of the changes in pH” is deemed to be functional limitation in apparatus claims. 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, Mosley in view of Schumann teaches all structural limitations of the presently claimed electrode system comprising two Sb@Cu-Pt electrode cells each of which is respectively a chlorine sensor and a pH sensor (Mosley, Fig. 11; ¶161), and thus it capable of sensing chlorine species in water by one electrode cell, i.e., when dipped in an aqueous solution produces a potential that varies as a function of the oxidizing chlorine species in solution, and detecting changes in pH by the other electrode cell in the absence of oxidant due to the Nafion tubing.
Regarding claim 2, the designation “wherein the signal from the second Sb@Cu-Pt electrode cell is used for the pH compensation of chlorine signal” is deemed to be functional limitation in apparatus claims as 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, Mosley in view of Schumann teaches all structural limitations of the presently claimed electrode system comprising two Sb@Cu-Pt electrode cells which are each a chlorine sensor and a pH sensor (Mosley, Fig. 11; ¶161), and thus it capable of using the pH signal from the second pH electrode cell for the pH compensation of the first chlorine signal.
Regarding claim 3, the designation “wherein the said electrode system detects free chlorine in the range of 0.1 to 4 ppm, in water” is deemed to be functional limitation in apparatus claims. 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, Mosley in view of Schumann teaches all structural limitations of the presently claimed electrode system comprising two Sb@Cu-Pt electrode cells which include a chlorine sensor (Mosley, Fig. 11; ¶161) in swimming pools (¶94) which is commonly kept between about 1 and about 3 ppm (¶18), and thus it capable of detecting free chlorine in the range 0.1 to 4 ppm in water.
Regarding claim 4, Mosley teaches wherein the oxidizing species chlorine includes HOCl and ClO- (¶7: the measurement of the free chlorine level in the water is based on the solute level, e.g., hypochlorous acid and hypochlorite; which have strong oxidizing properties).
Regarding claim 5, the designation “wherein the second Sb@Cu-Pt cell is used as a reference to detect the changing pH” is deemed to be functional limitation in apparatus claims as 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, Mosley in view of Schumann teaches all structural limitations of the presently claimed electrode system comprising two Sb@Cu-Pt electrode cells each of which is respectively a chlorine sensor and a pH sensor (Mosley, Fig. 11; ¶161), and thus it capable of using the second Sb@Cu-Pt cell that detects the changing pH values as a reference.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mosley in view of Schumann, and further in view of Li (US 2014/0326600).
Regarding claim 6, Mosley and Schumann disclose all limitations of claim 1, but fails to teach wherein the oxidant absorptive layer is activated carbon.
However, Li teaches free chlorine in tap water is removed after filtration over activated carbon (¶163).
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 Mosley and Schumann by substituting the Nafion tubing with one made of activated carbon as taught by Li. The suggestion for doing so would have been that activated carbon is a suitable material for absorbing chlorine species and thus preventing them from reaching pH electrode 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.
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive.
Applicant argues Mosley does not teach or suggest the dual Sb@Cu-Pt electrode system with differential oxidant solution as disclosed or any antimony-coated electrodes or their behavior in oxidizing chlorine environments (Response, p. 4, last para.). Applicant argues the present electrode is a two-step electrochemically coated, oxygen-and sulfur-modified Sb@Cu system (p. 5, para. 1). This argument is unpersuasive because how the electrode is prepared is deemed to product-by-process limitation and the patentability of a product does not depend on its method of production. Further, these steps are not recited in the instant claims, which are apparatus claims but not method claims.
In response to Applicant argument that the synergistic operation of (i) the sulfur-stabilized Sb@Cu coating, (ii) the paired electrode architecture, and (iii) the oxidant-blocking cartridge produces improvement in cross-interference suppression (p. 5, para. 3), Examiner notes that Mosley and Schumann teaches all structural limitations of the claim and the combination of them renders it obvious to one of ordinary skill in the art to arrive the claimed subject matter, which would be capable of performing with this synergistic effect.
Applicant argues the limitations of claims 2-3 and 5 are not functional/intended use limitation, but structural limitations (pp. 5-7). These arguments are unpersuasive because “creating a true oxidant-free environment” (p. 6, para. 1), “demonstrated stable, linear, low-ppm chlorine detection” (p. 6, para. 3), “as chlorine still permeate or partially pass through Mosley’s membrane system” (p. 7, para. 1), and “the completely different function, mechanism, and electro chemical role of activated carbon” (p. 7, last para.) do not result in structural difference of the recited system from the device disclosed in the prior art. Similarly, Applicant does not point out how “detecting HOCl and ClO-“ (p. 6, last para.) would result in any structural difference.
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.
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 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.
/C. SUN/Primary Examiner, Art Unit 1795