CTNF 18/635,965 CTNF 75479 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Objections 07-29-01 Claims 1-22 are objected to because of the following informalities. Appropriate correction is required. In claim 1, line 3, it appears the word -- a -- should be inserted before the word “fluid”. In line 4, it appears the word -- a -- should be inserted before the phrase “fluid pressure”. In line 7, it appears the phrase “the presence” should be changed to -- a presence --. In line 7, it appears the phrase “the target fluid” should be changed to -- a target fluid --. In claim 5, line 3, it appears the word -- the -- should be inserted before the phrase “target fluid”. In line 4, it appears the word -- the -- should be inserted before the phrase “second porous medium”. In line 5, it appears the word -- the -- should be inserted before the word “fluid”. In line 6, what is the word “its” referring to? Please clarify. In line 7, the phrase “the second porous medium gas entry pressure” should be changed to -- a second porous medium gas entry pressure --. In claim 6, it appears this claim should be depended upon claim 5 and not claim 1 to provide proper antecedent basis for the phrases “the first porous medium” and “the second porous medium” in this claim and further claims to follow (e.g. claims 8,12). Further, in line 3, it appears the word -- the -- should be inserted before the phrase “target fluid”. In lines 3-4, it appears the word -- the -- should be inserted before the phrase “second porous medium”. In line 4, it appears the word -- the -- should be inserted before the word “fluid”. In claim 8, line 2, the phrase “the fluid pathway” should be changed to -- a fluid pathway --. In claim 10, line 2, the phrase “the fluid pathway” should be changed to -- a fluid pathway --. In claim 13, line 2, what is the word “it” referring to? Please clarify. In claim 17, line 2, the phrase “the negative or ground terminal” should be changed to -- a negative or ground terminal --. In claim 21, lines 1-2, the phrase “the first porous medium” should be changed to -- the porous medium -- to provide proper antecedent basis. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 12 is 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. In claim 12, lines 2-3, the phrase “the porous medium” is vague. Is this referring to the first porous medium or the second porous medium or the supplementary porous medium. Please clarify. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim s 1-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-17 of U.S. Patent No. 11,977,004 (Beguin et al.) . Although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed elements and limitations in the apparatus claims of the Instant application are claimed in the method claims of the Beguin et al. patent. Claim 1 of Instant application corresponds to claim 1 of the Beguin et al. patent; claims 1,2,6,9,10 corresponds to claim 8; claims 1,3 corresponds to claim 16; claim 4 corresponds to claim 6; claims 1,5 corresponds to claim 17; claims 1,6,7,8 corresponds to claim 7; claim 1,11 corresponds to claims 12,9; claims 12 corresponds to claim 10; claims 1,13 corresponds to claim 11; claim 14 corresponds to claim 3; claim 15 would have been obvious and disclosed in patent; claim 16 corresponds to claim 13; claim 17 corresponds to claim 15; claim 18 corresponds to claim 14; claims 19,20 corresponds to claim 2; claims 1,21 corresponds to claim 4; claim 22 corresponds to claim 5. Therefore, the claims in the Instant application are not patentably distinct from the claims in the Beguin et al. patent . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1, 2, 4, 13, 15, 19 and 20 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by U.S. Patent Application Publication 2007/0259469 (Santagato) . With regards to claim 1, Santagato discloses a liquid detection system comprising, as illustrated in Figures 1-9, a capillary-based pressure threshold sensor 200 (e.g. liquid senso; paragraph [0023]; Figures 2,3) comprising a porous medium 104 (e.g. absorbing material; paragraph [0023]) having at least one porous property and a fluid breakthrough pressure threshold that allows fluid 302 (e.g. liquid; paragraph [0029]) to leak from a first side (e.g. bottom side; Figure 3A) thereof, through the medium to an opposite second side (e.g. top side) thereof when fluid pressure exceeds a porous medium fluid breakthrough threshold (e.g. paragraphs [0023],[0003]); a fluid detection element 106,206A,206B (e.g. conductive material along with conductive surface; paragraph [0023]) disposed at least proximally to the second side of the porous medium and configured to detect the presence of at least the target fluid on the second side of the porous medium (e.g. paragraphs [0029],[0030]). (See, paragraphs [0023] to [0042]). With regards to claim 2, Santagato further discloses two electrodes 206A,206B (e.g. conductive surface; paragraph [0029]; Figures 3A,3B) in contact with the second side of the porous medium. With regards to claim 4, Santagato further discloses the at least one porous property of the porous medium 104 is chosen from pore size, thickness, material, topography, coating, and contact angle with the fluid (e.g. material like sponge; paragraphs [0025],[0026]). With regards to claim 13, Santagato further discloses the fluid detection element 106,206A,206B comprises at least two electrodes 206A,206B (e.g. conductive surface; paragraph [0029]; Figures 3A,3B) operable as a passive switch that is open until it closes upon contact with the fluid (e.g. Figure 3A is open state while Figure 3B is closed state). With regards to claim 15, Santagato further discloses the fluid detection element 106,206A,206B, when closed (e.g. closed state; Figure 4B), triggers a notification 402 (e.g. an alert module; paragraph [0032]) that can be processed by a microcontroller (e.g. data processing system; paragraph [0032]) connected to the electrodes. With regards to claim 19, Santagato further discloses the fluid detection element 106,206A,206B is passive and not activated until the target fluid leaks through the porous medium 104 reaching the opposite second side of the porous medium (e.g. from an open state to a closed state; paragraph [0029]; Figures 3A,3B) With regards to claim 20, Santagato further discloses the fluid detection element 106,206A,206B is active and provides different outputs that distinguish a first state (e.g. open state; Figure 3A) wherein the target fluid 302 has not yet leaked through the porous medium 104 from a second state (e.g. closed state; Figure 3B) wherein the target fluid has leaked through the porous medium . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 3, 14, 16, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2007/0259469 (Santagato) in view of U.S. Patent Application Publication 2020/0333276 (Ikoma) . With regards to claim 3, Santagato does not disclose the porous medium is chosen from a hydrophobic medium, a superhydrophobic medium, an oleophobic medium, and an amphiphobic porous medium. Ikoma discloses a liquid detection sensor comprising, as illustrated in Figures 1-16, a liquid detection sensor 100 (e.g. sensor; paragraph [0028]) comprising a porous medium 30 like hydrophobic (e.g. paragraph [0036]). (See, paragraphs [0027] to [0091]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have readily recognize the advantages and desirability of employing the porous medium is chosen from a hydrophobic medium, a superhydrophobic medium, an oleophobic medium, and an amphiphobic porous medium as suggested by Ikoma to the system of Santagato to have the ability to repel water and not mix with water to create a high contact angle to cause droplets to form. (See, paragraph [0036] of Ikoma). With regards to claim 14, Santagato further discloses an indicator element 402 (e.g. an alert module; paragraph [0032]) configured to change state (e.g. from open state to closed state; Figures 3A,3B) when the target fluid has leaked through the porous medium to the second side thereof; however, Santagato does not disclose changing state is chosen from a color indication and a change in color indication, as presently claimed. To have set such test characteristics as a color change indication for the indicator element as in the claim are considered to have been a matter of choice possibilities and a well-known concept (e.g. as evidenced by U.S. Patent 10,908,031 issued to White et al. in column 39, lines 16-26 indicates change in color) to the operator and/or manufacturer the type of indicator element to use without departing from the scope of the invention and without altering and/or changing the operation and/or performance of the indicator element, namely to indicate a change from a first state (e.g. open state) to a second state (e.g. closed state). With regards to claim 16, Santagato further discloses the electrodes 206A,206B are connected to a microcontroller (e.g. data processing system; paragraph [0032]) via a connection; however, Santagato does not disclose the connection chose from: one of the electrodes is connected to a ground pin of the microcontroller and the other electrode is connected to an input pin of the microcontroller; one of the electrodes is connected to an output pin of a microcontroller and the other electrode is connected to an input pin of the microcontroller and one of the electrodes is connected to a positive rail of a power supply having common ground with the microcontroller and the other electrode is connected to an input pin of the microcontroller. To have set such test structural characteristics for the connection as in the claim are considered to have been a matter of choice possibilities to the operator and/or manufacturer the type of electronic connection to use without departing from the scope of the invention and without altering and/or changing the operation and/or performance of the connection, namely to provide connection from the electrodes to the microcontroller for processing the data from the electrodes to indicate a change state from a first state (e.g. open state) to a second state (e.g. closed state). With regards to claims 17 and 18, Santagato does not disclose such parameters (a pulldown resistor connected between the input pin and a negative rail connected to the negative or ground terminal of the microcontroller; a pullup resistor connected to a positive rail of the power supply or reference voltage for the microcontroller and the input pin such that the resistor having a resistance on the order of 1k Ohm to 100M Ohm) as in these claims. However, to have set such test structural characteristics as in the claims are considered to have been a matter of choice possibilities to the operator and/or manufacturer the type of electronics parts to use without departing from the scope of the invention and without altering and/or changing the operation and/or performance of the connection, namely to provide connection from the electrodes to the microcontroller for processing the data from the electrodes to indicate a change state from a first state (e.g. open state) to a second state (e.g. closed state) . 07-21-aia AIA Claim s 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2007/0259469 (Santagato) in view of U.S. Patent 10,908,031 (White et al.) . With regards to claims 21 and 22, Santagato does not disclose a thermoresponsive material coating the first porous medium to detect a condition chosen from a designated temperature and a designated pressure change in the target fluid wherein the thermoresponsive material is poly-N-isopropylacrylamide (PNIPAM), as in these claims. White et al. discloses a device for evidencing a sensitive product comprising, as illustrated in Figures 1A-5A, a stimulus indicating system 100 (e.g. column 39, lines 1-15) comprising a thermoresponsive material coating 110, 120 (e.g. stimulus sensitive gel; column 39, lines 27-38) chosen from a designated temperature and a designated pressure change in the target fluid wherein the thermoresponsive material is poly-N-isopropylacrylamide (PNIPAM) (e.g. column 39, lines 1-15,27-38). (See, column 29, line 7 to column 83, line 29). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have readily recognize the advantages and desirability of employing a thermoresponsive material coating the first porous medium to detect a condition chosen from a designated temperature and a designated pressure change in the target fluid wherein the thermoresponsive material is poly-N-isopropylacrylamide as suggested by White et al. to the system of Santagato to have an initially shrunken sensitive thermoresponsive material coating expand or swell when cooled below predetermined or trigger temperature and thereby absorb liquid which consequently hides an indicator spot exhibiting a change in color or indication. (See, column 39, line 27-38 of White et al.) . Allowable Subject Matter 07-43 Claims 5-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references cited, particularly Kronberg, Gibbs, Furuuchi, Webb, are related to leak detection systems comprising a porous medium and a fluid detection element disposed near the porous medium. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Helen C Kwok whose telephone number is (571)272-2197. The examiner can normally be reached Monday to Friday, 7:30 to 4:00 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, Peter Macchiarolo can be reached at 571-272-2375. 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. /HELEN C KWOK/Primary Examiner, Art Unit 2855 Application/Control Number: 18/635,965 Page 2 Art Unit: 2855 Application/Control Number: 18/635,965 Page 3 Art Unit: 2855 Application/Control Number: 18/635,965 Page 4 Art Unit: 2855 Application/Control Number: 18/635,965 Page 5 Art Unit: 2855 Application/Control Number: 18/635,965 Page 6 Art Unit: 2855 Application/Control Number: 18/635,965 Page 7 Art Unit: 2855 Application/Control Number: 18/635,965 Page 8 Art Unit: 2855 Application/Control Number: 18/635,965 Page 9 Art Unit: 2855 Application/Control Number: 18/635,965 Page 11 Art Unit: 2855 Application/Control Number: 18/635,965 Page 12 Art Unit: 2855
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