DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Fanselow, et al. application filed with the Office on 12 April 2024.
Claims 1-10 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The instant application claims priority to a German Patent Application, DE 10 2023 110 233.8, filed on 21 April 2023. Thus, the instant application has an effective filing date of 21 April 2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted regarding the present application filed on 12 April 2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the Examiner.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, and 4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published German Patent Document (DE 298 18 621 U1; hereinafter, “Schwabe”; reference to a machine translation to English).
Regarding claim 1, Schwabe discloses an ion-selective PVC membrane electrode for potentiometric determinations ([0002]; which reads upon the claimed, “[a]n ion-selective half-cell”).
a carrier that extends in a sleeve-like manner along an axis and has a first open end and a second end opposite the first open end (as a membrane holder, 2),
an insert that extends in a sleeve-like manner along the axis and is arranged in the first open end (as an electrode shaft, 6),
a membrane that is arranged in the first open end and at least partially in the insert in such a way that the first open end is closed by the membrane (as an ISE membrane, 1),
an electrolyte that is arranged in the carrier and is in electrolytic contact with the membrane (as an internal electrolyte solution, 8), and
a lead that is arranged in the carrier and is in electrical contact with the electrolyte (as an outer AgCl, inner AgCl, and Ag wire, 3, 4, 5, respectively).
Regarding claim 2, Schwabe teaches the electrode shaft, 6, has a bottom with a passage opening (Figure 1), wherein the membrane is in electrolytic contact with the electrolyte through the passage opening (Figure 1).
Regarding claim 4, Schwabe teaches the internal electrolyte solution 8 is filled into a screw-on electrode shaft 6 made of polypropylene and is in direct contact with the membrane 1 ([0022]; Figure 1).
Regarding claim 5, Schwabe teaches the cylindrical ISE is provided with a membrane holder 2 in which the ion-selective membrane 1 is clamped ([0022]).
Regarding claim 6, Schwabe teaches wherein the carrier (2) has a recess at the first open end which extends over a recess length along the axis, wherein the recess is suitable for receiving the insert (6) and the membrane (1), wherein the insert extends along the first axis with an insert length, and the insert length is smaller than the recess length so that the membrane is partially in direct contact with the carrier (Figure 1).
Regarding claim 7, Schwabe teaches wherein the carrier comprises a first plastic that is suitable for being integrally bonded to the membrane ([0010]), wherein the insert comprises a second plastic different from the first plastic (epoxy resin, [0019]), wherein the membrane comprises a third plastic different from the second plastic (PVC, [0018], [0020]).
Regarding claim 8, the taught limitation by Schwabe in relation to the limitations of claim 1 are necessarily providing and introduced to form the taught ISE electrode (Figure 1).
Regarding claim 9, Schwabe teaches the easy replacement of the electrode shaft with ion-selective membrane and a novel membrane holder with snap closure ([0010]).
Regarding claim 10, Schwabe teaches that the membrane is inserted into the provided electrode holder using a snap fastener ([0020]).
Claim Rejections - 35 USC § 103
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Schwabe.
Regarding claim 3, Schwabe teaches the insert has an insert diameter that spans an insert surface, wherein the at least one passage opening defines a passage diameter (Figure 1).
Schwabe does not explicitly teach the passage diameter relative size to the insert surface.
However, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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 at (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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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
