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 .
Preliminary Amendments
Applicant’s preliminary amendment filed on February 16, 2024 is acknowledged. Claims 1-20 are currently pending.
Claim Objections
Claim(s) 12-13 and 19 is/are objected to because of the following informalities:
Claim 12, line 1: “positive electrode” should be “the positive electrode”
Claim 13, line 11: “electrode securing portion” should be “the electrode securing portion”
Claim 19, line 1: “positive electrode” should be “the positive electrode”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim(s) 6, 11, and 18 is/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 pre-AIA the applicant regards as the invention.
Claim 6 recites the limitation "the surface of the negative electrode" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “a surface of the negative electrode.”
Claim 11 recites the limitation "the surface of the negative electrode" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “a surface of the negative electrode.”
Claim 11 recites the limitation "a surface of the negative electrode" in line 3. It is suggested to be “the surface of the negative electrode.”
Claim 18 recites the limitation "the surface of the negative electrode" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to be “a surface of the negative electrode.”
Claim 18 recites the limitation "a surface of the negative electrode" in line 3. It is suggested to be “the surface of the negative electrode.”
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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(s) 1-2, 7-9, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa (US 2019/0219535) in view of Dumschat (US 2020/0240948).
Regarding claims 1-2, Kitazawa teaches an oxygen sensor (Fig. 1; ¶19: a galvanic cell type oxygen sensor) comprising:
electrolyte (Fig. 1; ¶20: electrolyte solution 7);
a liquid-containing portion (Fig. 1; ¶20: a holder 9) that has an opening (Fig. 1; ¶60: a through hole 16 that serves as an oxygen supply pathway) and that contains the electrolyte therewithin (Fig. 1: the holder 9 holding electrolyte solution 7);
a permeable membrane (Fig. 1; ¶20: the membrane 4A) that has oxygen permeability (¶66: the membrane 4A controls the entry of oxygen) and that covers the opening (Fig. 1); and
positive electrode (Fig. 1; ¶21: positive electrode 45) and negative electrode (Fig. 1; ¶21: negative electrode 8) that are arranged so as to come in contact with the electrolyte (Fig. 1; ¶20: a bore 11 for the supply of the electrolyte solution; thus the electrolyte solution must be in contact with the positive electrode for the sensor function);
wherein the negative electrode contains tin (¶50: the material of the negative electrode is Sn).
Kitazawa does not disclose wherein the electrolyte contains polyol (claim 1) or wherein the polyol includes glycerol (claim 2).
However, Dumschat teaches a galvanic oxygen sensor ([Abstract]) including a housing, a cathode, an anode, and an aqueous electrolyte including a polyol (¶2). The addition of polyol to an aqueous electrolyte prevents passivation of the anode in the galvanic oxygen sensor (¶6) and maintains a constant current ([Abstract]). The polyol can be glycerol (¶15).
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 Kitazawa by incorporating polyol, e.g., glycerol, in the electrolyte as taught by Dumschat because the addition of polyol to an aqueous electrolyte prevents passivation of the anode in the galvanic oxygen sensor (¶6) and maintains a constant current ([Abstract]). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Regarding claim 7, Kitazawa teaches wherein the oxygen sensor is a galvanic cell-type sensor (Fig. 1; ¶19) that causes an electric potential to be spontaneously produced between the positive electrode and the negative electrode (¶18: Specifically, in the galvanic cell type oxygen sensor, a current generated by electrochemical reduction of oxygen on the positive electrode is converted to a voltage at the resistor).
Regarding claim 8, Kitazawa in view of Dumschat teaches a device comprising the oxygen sensor according to claim 1 (as described in claim 1).
The preamble “water quality measuring” 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 apparatus as taught by Kitazawa in view of Dumschat is identical to the presently claimed device and would therefore would have the ability to perform the use recited in the claim.
Regarding claim 9, Kitazawa in view of Dumschat teaches an oxygen measuring method (¶12: operation of the present invention) wherein the oxygen sensor according to claim 1 (as described in claim 1) is used to measure dissolved oxygen at a target liquid (¶2: checking the degree of oxygen deficiency for detecting the oxygen concentration).
Further, the limitation “used to measure dissolved oxygen at a target liquid” does not further limit the method as claimed because it is the intended result of the measuring method. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. In method claims, it is the overall method steps that are given patentable weight not the intended result thereof because the intended result does not materially alter the overall method. Here, this designation is not given patentable weight when it simply expresses the intended result of a method without positively performed steps. MPEP 2111.04.
Regarding claim 15, Kitazawa and Dumschat disclose all limitations of claim 1. Kitazawa does not disclose wherein a specific volume of polyol within the electrolyte is not less than 10%
However, Dumschat teaches addition of polyol, e.g., glycerol, into an aqueous electrolyte, and the glycerol can be present in the range of about 20% to about 30% by volume (¶15), which overlaps the claimed range.
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 Kitazawa by adjusting the polyol amount in the electrolyte within the claimed range as suggested because it provides a suitable amount of polyol for suppressing passivation of the anode (¶15). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa in view of Dumschat, and further in view of Neti (US 4,268,370).
Regarding claim 3, Kitazawa and Dumschat disclose all limitations of claim 1. Kitazawa further discloses wherein the positive electrode contains gold (¶23).
Kitazawa and Dumschat do not disclose wherein pH of the electrolyte is not less than 12.2.
However, Neti teaches an electrochemical sensor for determining the O2 content of a fluid ([Abstract]). A typical electrolyte has a pH of approximately 13.5 (col. 2, ll. 38-39), which lies in the claimed range.
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 Kitazawa and Dumschat by adjusting the pH of electrolyte solution within the claimed range as suggested because it provides a suitable pH range of the electrolyte for an electrochemical oxygen sensor. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Claim(s) 4-6 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa in view of Dumschat, and further in view of Hayashi (JP 2004-132915, machine translation used for citation).
Regarding claim 4, Kitazawa and Dumschat disclose all limitations of claim 1, but fails to teach wherein the oxygen sensor further comprises a retainer that retains the positive electrode and the negative electrode; the negative electrode is formed so as to be cylindrical; the retainer is arranged at an interior of the negative electrode so as to cause a tip thereof to protrude beyond the negative electrode; and a surface of the positive electrode is arranged at the tip of the retainer.
However, Hayashi teaches a galvanic type oxygen electrode suitable for a biosensor (¶10). The sensor includes a retainer (Fig. 3; ¶10: insulator 10) that retains the positive electrode (Fig. 3; ¶10: Anode 3) and the negative electrode (Fig. 3; ¶10: Cathode 1); the negative electrode is formed so as to be cylindrical (Fig. 3; ¶10: outer cylinder 7; thus Anode 3, Cathode 1, and the insulator 10 are also cylinder); the retainer is arranged at an interior of the positive electrode (Fig. 3: Anode 3) so as to cause a tip thereof to protrude beyond the positive electrode (Fig. 3: the insulator 10 protrudes beyond Anode 3); and a surface of the negative electrode is arranged at the tip of the retainer (Fig. 3: Cathode 1 having a bottom surface arranged at the tip of the insulator 10).
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 Kitazawa and Dumschat by using a cylindrical oxygen cell with the structure as taught by Hayashi because it is a well-known conventional galvanic oxygen electrode (Fig. 3; ¶10). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A). Further, it would also have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to swap the anode and cathode of Hayashi to arrive the claimed subject matter because the combined Kitazawa, Dumschat, and Hayashi teaches all structural limitations as claimed and would have the ability of applying with a voltage across the two electrodes having opposite polarity. Here, there are only two ways to use the two electrodes as anode and cathode respectively. Thus, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. MPEP 2141(III)(E).
Regarding claim 5, Kitazawa, Dumschat, and Hayashi discloses all limitations of claim 4, and further discloses wherein a minimum distance between the surface of the positive electrode and a surface of the negative electrode is not greater than 4.5 mm (Hayashi, ¶46: the insulator 10 having a diameter 4 mm; as described in claim 4, the modified Kitazawa, Dumschat, and Hayashi would necessarily have a positive electrode (e.g., Hayashi, Fig. 3: Cathode 1) and a negative electrode (e.g., Fig. 3: Anode 3); Fig. 3 indicates the distance between the bottom surface of Cathode 1 and the bottom surface of Anode 3 is less than the diameter of the insulator 10, and thus must be not greater than 4.5 mm).
Regarding claim 6, Kitazawa, Dumschat, and Hayashi discloses all limitations of claim 4, and further discloses a minimum distance between the permeable membrane and the surface of the negative electrode is not greater than 4.0 mm (¶46: the insulator 10 having a diameter 4 mm; as described in claim 4, the modified Kitazawa, Dumschat, and Hayashi would necessarily have a negative electrode (e.g., Fig. 3: Anode 3); Fig. 3 indicates the minimum distance between the bottom surface of Anode 3 and the membrane 5 is less than the diameter of the insulator 10, and thus must be not greater than 4.0 mm).
Regarding claim 10, Kitazawa, Dumschat, and Hayashi discloses all limitations of claim 1, and further discloses wherein the positive electrode is formed so as to be columnar (as described in claim 4, the modified Kitazawa, Dumschat, and Hayashi would necessarily have a positive electrode (Hayashi, Fig. 3: Cathode 1) being columnar); the positive electrode is arranged at an interior of retainer; and an outside circumferential portion of the positive electrode is secured to an inside circumferential portion of retainer (Fig. 3: Cathode 1 being secured inside of the insulator 10).
Regarding claim 11, Kitazawa, Dumschat, and Hayashi discloses all limitations of claim 4, and further discloses wherein a minimum distance between the permeable membrane and the surface of the negative electrode is less than minimum distance between the surface of the positive electrode and a surface of the negative electrode (as described in claim 4, the modified Kitazawa, Dumschat, and Hayashi would necessarily result in the claimed subject, e.g., Hayashi, Fig. 3: the minimum distance between the membrane 5 and Anode 3 is less than the minimum distance between the bottom surface of Cathode 1 and the bottom surface of Anode 3).
Regarding claim 12, Kitazawa, Dumschat, and Hayashi discloses all limitations of claim 4, and further discloses wherein the surface of positive electrode comes in contact with the permeable membrane (as described in claim 4, the modified Kitazawa, Dumschat, and Hayashi would necessarily result in the claimed subject, e.g., Hayashi, Fig. 3: the bottom surface of Cathode 1 in contact with the membrane 5).
The designation “wherein the surface of positive electrode … presses upon the permeable membrane” is product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113(I).
Regarding claim 13, Kitazawa, Dumschat, and Hayashi discloses all limitations of claim 4, and further discloses wherein the liquid-containing portion further comprises a housing that is formed so as to be cylindrical (Hayashi, Fig. 3: outer cylinder 7); and an electrode securing portion that causes the positive electrode and the negative electrode to be secured to the housing (Fig. 3: sealing materials 8, 11); the electrode securing portion is formed so as to be cylindrical (Fig. 3; ¶33: the seal material 8 is an O-ring); the negative electrode is arranged at an interior of electrode securing portion (as described in claim 4, the modified Kitazawa, Dumschat, and Hayashi would necessarily result in the claimed subject, e.g., Hayashi, Fig. 3: Anode 3 is inside the O-ring 8); an outside circumferential portion of the negative electrode is secured to an inside circumferential portion of the electrode securing portion (Fig. 3; since the O-ring 8 seals the housing of the cell, it would necessarily secure the outside circumferential portion of Anode 3 by its inside circumferential portion); the electrode securing portion is arranged at an interior of the housing (Fig. 3); and an outside circumferential portion of electrode securing portion is secured to an inside circumferential portion of the housing (Fig. 3: the O-ring 8 is secured inside the housing portion 6).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa in view of Dumschat, and further in view of Kiesele (EP 0546291, machine translation used for citation).
Regarding claim 14, Kitazawa and Dumschat disclose all limitations of claim 1, but fails to teach wherein a freezing point of the electrolyte is -30 ⁰C to -5 ⁰C.
However, Kiesele teaches an electrochemical measuring cell for the amperometric determination of ammonia or hydrazine in a gaseous or liquid measuring sample (p. 1, Description, para. 1), which has a reduced minimum working temperature (para. 4). The hygroscopic salts cause the freezing point of the electrolyte to be lowered so that the sensors can be used in cold at temperatures down to approx. -50 ⁰C (p. 2, para. 1), which overlaps the claimed range.
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 Kitazawa and Dumschat by incorporating hygroscopic salts into the electrolyte as taught by Kiesele to reduce the minimum operation temperature of the electrochemical censor. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Claim(s) 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa in view of Hayashi.
Regarding claim 16, Kitazawa teaches an oxygen sensor (Fig. 1; ¶19: a galvanic cell type oxygen sensor) comprising:
electrolyte (Fig. 1; ¶20: electrolyte solution 7);
a liquid-containing portion (Fig. 1; ¶20: a holder 9) that has an opening (Fig. 1; ¶60: a through hole 16 that serves as an oxygen supply pathway) and that contains the electrolyte therewithin (Fig. 1: the holder 9 holding electrolyte solution 7);
a permeable membrane (Fig. 1; ¶20: the membrane 4A) that has oxygen permeability (¶66: the membrane 4A controls the entry of oxygen) and that covers the opening (Fig. 1); and
positive and negative electrodes (Fig. 1; ¶21: positive electrode 45 and negative electrode 8) that are arranged so as to come in contact with the electrolyte (Fig. 1).
Kitazawa does not disclose a retainer that retains the positive electrode and the negative electrode; the negative electrode is formed so as to be cylindrical; the retainer is arranged at an interior of the negative electrode so as to cause a tip thereof to protrude beyond the negative electrode; and a surface of the positive electrode is arranged at the tip of the retainer.
However, Hayashi teaches a galvanic type oxygen electrode suitable for a biosensor (¶10). The sensor includes a retainer (Fig. 3; ¶10: insulator 10) that retains the positive electrode (Fig. 3; ¶10: Anode 3) and the negative electrode (Fig. 3; ¶10: Cathode 1); the negative electrode is formed so as to be cylindrical (Fig. 3; ¶10: outer cylinder 7; thus Anode 3, Cathode 1, and the insulator 10 are also cylinder); the retainer is arranged at an interior of the positive electrode (Fig. 3: Anode 3) so as to cause a tip thereof to protrude beyond the positive electrode (Fig. 3: the insulator 10 protrudes beyond Anode 3); and a surface of the negative electrode is arranged at the tip of the retainer (Fig. 3: Cathode 1 having a bottom surface arranged at the tip of the insulator 10).
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 Kitazawa by using a cylindrical oxygen cell with the structure as taught by Hayashi because it is a well-known conventional galvanic oxygen electrode (Fig. 3; ¶10). Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A). Further, it would also have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to swap the anode and cathode of Hayashi to arrive the claimed subject matter because the combined Kitazawa and Hayashi teaches all structural limitations as claimed and would have the ability of applying a voltage across the two electrodes having opposite polarity. Here, there are only two ways to use the two electrodes as anode and cathode respectively. Thus, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. MPEP 2141(III)(E).
Regarding claim 17, Kitazawa and Hayashi discloses all limitations of claim 16, and further discloses wherein the positive electrode is formed so as to be columnar (as described in claim 16, the modified Kitazawa and Hayashi would necessarily have a positive electrode (Hayashi, Fig. 3: Cathode 1) being columnar); the positive electrode is arranged at an interior of retainer; and an outside circumferential portion of the positive electrode is secured to an inside circumferential portion of retainer (Fig. 3: Cathode 1 being secured inside of the insulator 10).
Regarding claim 18, Kitazawa and Hayashi discloses all limitations of claim 16, and further discloses wherein a minimum distance between the permeable membrane and the surface of the negative electrode is less than minimum distance between the surface of the positive electrode and a surface of the negative electrode (as described in claim 16, the modified Kitazawa and Hayashi would necessarily result in the claimed subject, e.g., Hayashi, Fig. 3: the minimum distance between the membrane 5 and Anode 3 is less than the minimum distance between the bottom surface of Cathode 1 and the bottom surface of Anode 3).
Regarding claim 19, Kitazawa and Hayashi discloses all limitations of claim 16, and further discloses wherein the surface of positive electrode comes in contact with the permeable membrane (as described in claim 4, the modified Kitazawa and Hayashi would necessarily result in the claimed subject, e.g., Hayashi, Fig. 3: the bottom surface of Cathode 1 in contact with the membrane 5).
The designation “wherein the surface of positive electrode … presses upon the permeable membrane” is product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113(I).
Regarding claim 20, Kitazawa and Hayashi discloses all limitations of claim 16, and further discloses wherein the liquid-containing portion further comprises a housing that is formed so as to be cylindrical (Hayashi, Fig. 3: outer cylinder 7); and an electrode securing portion that causes the positive electrode and the negative electrode to be secured to the housing (Fig. 3: sealing materials 8, 11); the electrode securing portion is formed so as to be cylindrical (Fig. 3; ¶33: the seal material 8 is an O-ring); the negative electrode is arranged at an interior of electrode securing portion (as described in claim 4, the modified Kitazawa and Hayashi would necessarily result in the claimed subject, e.g., Hayashi, Fig. 3: Anode 3 is inside the O-ring 8); an outside circumferential portion of the negative electrode is secured to an inside circumferential portion of the electrode securing portion (Fig. 3; since the O-ring 8 seals the housing of the cell, it would necessarily securing the outside circumferential portion of Anode 3 by its inside circumferential portion); the electrode securing portion is arranged at an interior of the housing (Fig. 3); and an outside circumferential portion of electrode securing portion is secured to an inside circumferential portion of the housing (Fig. 3: the O-ring 8 is secured inside the housing portion 6).
Conclusion
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/C. SUN/Primary Examiner, Art Unit 1795