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 Objections
Claims 1, 6, 14, and 18 are objected to because of the following informalities:
a) in claim 1, line 10, “a” should be – an --;
b) in claim 6, line 2, “asolution” should be – a solution --;
c) in claim 14, line 10, -- of – should be inserted between “one” and “an”; and
d) in claim 18, line 2, “a” should be – an --.
Appropriate correction is required.
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.
Claim 17 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. Claim 17 recites “an encapsulated deposited”. This phrase is indefinite because “encapsulated” is not an adverb, but an adjective, and the noun that “encapsulated” is supposed to modify is missing.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being by anticipated by Zamarayeva et al., “Optimization of printed sensors to monitor sodium, ammonium, and lactate in sweat,” APL Mater. 8, 100905 (2020) (hereafter “Zamarayeva”).
Addressing claim 1, Zamarayeva discloses an apparatus (Figure 1), comprising:
a reference electrode (note “screen printed Ag/AgCl electrodes” in the Figure 1 caption), comprising:
a reference electrode substrate ( “PEN substrate” – see A. Sensor fabrication, which is on page 100905-3);
a reference electrode conductor (Ag/AgCl) formed via a printable
composition on the reference electrode substrate (see RE in Figure 3(a) and A. Sensor fabrication (“The reference electrodes for the potentiometric and amperometric sensors consisted of commercial Ag/AgCl ink, screen-printed onto the same substrate [Figs. 1(c) and 1(d)].” ) );
a carbon nanotube layer formed on the conductor (see Figure 3(a) noting the CNT layer in RE. Also, “CNT layer can act as a surface for Cl adsorption and, thus, facilitate the retention of the ions at the electrode surface. We tested two approaches: in the first case, CNTs were dispersed in the membrane of the reference electrode; in the second case, a CNT layer was created between the membrane and Ag/AgCl.” See the last paragraph on page 100905-3, bridging to page 100905-4); and
a reference membrane formed on the carbon nanotube layer (note PVB/NaCl in RE in Figure 3(a). Also, “. . . ., in the second case, a CNT layer was created between the membrane and Ag/AgCl.” See the top of the left column on page 100905-4.); and
an ion selective electrode (ISE) (note Na+ or NH3+ in Figure 1(a)), comprising:
an ISE substrate ( “PEN substrate” – see A. Sensor fabrication, which is on page 100905-3);
a ISE conductor printed on the substrate via a printable
composition on the ISE substrate (“Working transducer electrodes for both potentiometric and amperometric sensors, as well as the counter electrode for the amperometric sensor, were fabricated by inkjet printing commercially available gold nanoparticle ink onto 25 μm thick PEN substrates [Fig. 1(b)].” See A. Sensor fabrication.); and
an ion-selective membrane printed on the conductor via a
printable membrane solution (note “ionophore/CNT” in WE in Figure 3(a). Also, “ The sensing membranes for the sodium and ammonium working electrodes were prepared by drop-casting the respective ionophore solutions or ionophore/CNT suspensions onto the gold working electrodes.” See A. Sensor fabrication.).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 7, 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg et al., “In-field determination of soil ion content using a handheld device and screen-printed solid-state ion-selective electrodes,” PLOS ONE September 25, 2018 (hereafter “Rosenberg”) in view of Rius-Ruiz et al., “Disposable Planar Reference Electrode Based on Carbon Nanotubes and Polyacrylate Membrane,” Anal. Chem. 2011, 83, 5783–5788 with Supporting Information (hereafter “Rius-Ruiz”).
Addressing claim 1, as a first matter the Examiner notes that the limitations a ISE conductor printed on the substrate via a printable composition on the ISE substrate; and
an ion-selective membrane printed on the conductor via a printable membrane solution.[italicizing by the Examiner]” are product-by-process limitations. As such, the claim is not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. In any event, Rosenberg does meet these features, as discussed below.
Rosenberg discloses an apparatus, comprising:
a reference electrode (RE in Figure 1(b)), comprising:
a reference electrode substrate (the polycarbonate substrate in Figure 3,
step 1, and in Figure 4);
a carbon nanotube layer formed on the reference electrode substrate (Figure 3, step 3; and Figure 4. Also see the last sentence on page 9/20.); and
a reference membrane (PVB-NaCl in Figure 4. Also see the second sentence (“The mixture for the reference . . . .”) in the first paragraph of Membrane fabrication, which is on page 8/20. ) formed on the carbon nanotube layer (Figure 4 and Figure 3, step 10); and
an ion selective electrode (ISE)(WE in Figure 1(b) and the first sentence of Materials and methods – Sensor Architecture, which is on page 6/20, noting the ISE stands for ion-selective electrode (See the Abstract)), comprising:
an ISE substrate (the polycarbonate substrate in Figure 3,
step 1, and in Figure 4);
a ISE conductor printed on the substrate via a printable composition on the ISE substrate (CNT ink; Figure 3, step 3; Figure 4. Also see the last sentence on page 9/20.); and
an ion-selective membrane (BA-ISM; Figure 4) printed on the conductor via a printable membrane solution (see the second full paragraph on
page 10/20 (“The drop-casted butyl-acrylate (BA) ISMs . . . .“) ).
Rosenberg, though, does not disclose “a reference electrode conductor formed via a printable composition on the reference electrode substrate;
a carbon nanotube layer formed on the conductor; . . . “ There is no reference electrode conductor, the carbon nanotube layer functions as the conductor.
Rius-Ruiz discloses a disposable planar reference electrode based on carbon nanotubes and polyacrylate membrane. See the title. This reference electrode comprises
a reference electrode substrate (“PET substrate” in Figure 1);
a reference electrode conductor formed via a printable composition on the reference electrode substrate (“Conductive ink” in Figure 1. See also the first two sentences of Disposable Planar Electrode Development., which is on page 5784.);
a carbon nanotube layer formed on the conductor (“SWCNTs-ODA” in Figure 1. See also the last three sentences of Disposable Planar Electrode Development.); and
a reference membrane formed on the carbon nanotube layer (“Reference membrane” in Figure 1. See also the last sentence of Disposable Planar Electrode Development.).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode in the apparatus of Rosenberg configured as taught by Rius-Ruiz because it is prima facie obvious as simple substitution of one known element (reference electrode) for another with predictable results1 (see MPEP 2143(I)(B)), especially as the reference electrode of Rosenberg is very similar in structure already (only missing a reference electrode conductor), if not also composition, to that of Rosenberg, and would not require a substantial change in the manufacturing steps nor in the manufacturing techniques used. Alternatively, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to adopt just the reference electrode conductor of Rius-Ruiz into the apparatus of Rosenberg and limit the carbon nanotube layer to just the measurement/ sample contact zone (Ag/AgCl are in Rosenberg Figure 1(b)) because while carbon nanotubes offer very good properties related to sensing (see, for example, the last paragraph on page 4/20 of Rosenberg, bridging to page 5/20), there may be manufacturing difficulties in evenly dispensing them in a layer (see in Rius-Ruiz page 5784, left column, first full paragraph (“On the other hand, . . . .”).
Last, it is not clear whether the reference electrode substrate and the ISE substrate in claim 1 are separate (for example, may be individually handled). If so, then to have them be so in the apparatus of Rosenberg as modified by Rius-Ruiz is prima facie obvious as making separable what is integrated (see MPEP 2144.04(V)(C)), especially as it may be simply achieved by cutting the apparatus in half length-wise (see Rosenberg Figure 4). Note that in Rius-Ruiz there is no working electrode on the reference electrode substrate (see Figure 1).
Addressing claim 7, for the additional limitation of this claim recall the following from the rejection of underlying claim 1, referring to Rosenberg, “a reference membrane (PVB-NaCl in Figure 4. Also see the second sentence (“The mixture for the reference . . . .”) in the first paragraph of Membrane fabrication, which is on page 8/20. ) . . . . [underlining added]”2 Also, note the following in Rius-Ruiz, “In this study, we report a new disposable planar RE based on a SWCNT-ODA transducer layer and a polyacrylate membrane containing Ag, AgCl, and KCl salts as the reference membrane. [underlining added]” See Rius-Ruiz page 5784, left column, second full paragraph.
Addressing claim 9, for the additional limitation of this claim may be inferred from Rosenberg Potentiometric response of screen-printed ISEs on pages 10/20 -13/20, noting especially discussion of sensitivity and detection limit of sensor to K+ ions in the top paragraph on page 11/20, and the table of selectivity coefficients (see Table 1).
Addressing claim 13, as for the claim limitation “. . . ., wherein the reference electrode conductor . . . . comprises a carbon allotrope…”, recall from the rejection of underlying claim 1 that the reference electrode conductor of Rius-Ruiz has been adopted into the apparatus of Rosenberg. The reference electrode conductor of Rius-Ruiz is “Ink 7102 conductor paste based on carbon and graphite . . . . [italicizing by the Examiner]” See Disposable Planar Electrode Development. on page 5784 of Rius-Ruiz. Rosenberg evidences that the carbon in the is also at least in the form of carbon nanotubes (CNT). See Electrode fabrication on Rosenberg page 7/20.
As for the claim limitation “. . . ., wherein . . . . the ISE conductor comprises a carbon allotrope…”, recall the following from the rejection of underlying claim 1, ”a ISE conductor printed on the substrate via a printable composition on the ISE substrate (CNT ink; Figure 3, step 3; Figure 4. Also see the last sentence on page 9/20.); . . . . [italicizing by the Examiner]”3
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Rius-Ruiz as applied to claims 1, 7, and 9 above, and further in view of Bauer-Reich et al. US 2017/0045487 A1 (hereafter “Bauer-Reich”) or Chumbimuni-Torres et al. US 2018/0136160 A1 (hereafter “Chumbimuni-Torres”) or Syrovy et al. US 2023/0296548 A1 (hereafter “Syrovy”) or Sui et al. US 2024/0077446 A1 (hereafter “Sui”).
Addressing claim 2, Rosenberg as modified by Rius-Ruiz does not explicitly disclose “. . . ., wherein the reference electrode substrate, the reference conductor, the ISE substrate, the ISE conductor, and the ion-selective membrane comprise biodegradable materials.”
However, as a first matter, in the apparatus of Rosenberg as modified by Rius-Ruiz the reference conductor inherently comprises biodegradable materials as Applicant’s specification discloses4 that the reference conductor (304) comprises conductive particles (310), which “. . . .may include carbon allotropes or metals. Examples of the carbon allotropes may include carbon nanotubes, carbon black, graphite, graphene, and the like. Examples of the metals may include magnesium, manganese, tungsten, zinc, iron, and the like.[italicizing by the Examiner]” See Applicant’s pre-grant publication (US 20240377349 A1) (hereafter “Applicant’s PG-PUB”) paragraphs [0031], [0032], and [0099]5. The reference conductor in the apparatus of Rosenberg as modified by Rius-Ruiz comprises “Ink 7102 conductor paste based on carbon and graphite was provided by DuPont Limited (Hopewell, USA), . . . .”. See the first two sentences of Disposable Planar Electrode Development. on Rius-Ruiz page 5784.
Similarly, in the apparatus of Rosenberg as modified by Rius-Ruiz the ISE conductor inherently comprises biodegradable materials as Applicant’s specification discloses6 that the ISE conductor (204) comprises conductive particles (208), which “. . . . may include carbon allotropes or metals. Examples of the carbon allotropes may include carbon nanotubes, carbon black, graphite, graphene, and the like. Examples of the metals may include magnesium, manganese, tungsten, zinc, iron, and the like.[italicizing by the Examiner]” See Applicant’s pre-grant publication (US 20240377349 A1) (hereafter “Applicant’s PG-PUB”) paragraphs [0031], [0032], and [0099]7. The ISE conductor in the apparatus of Rosenberg as modified by Rius-Ruiz comprises carbon nanotubes (CNT). See Rosenberg Figure 3, step 3; and WE in Figure 4.
Bauer-Reich discloses a biodegradable sensor system and method. “The biodegradable sensor may include one or more electrically conductive bioinert traces and a biodegradable substrate having a printed circuit of the one or more electrically conductive bioinert traces. [italicizing by the Examiner]” See the title, Abstract, and claim 1.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Bauer-Reich because it is prima facie obvious as simple substitution of one known element (sensor electrode polymer substrate such as disclosed in Bauer-Reich paragraph [0037] or [0038]) for another ( polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, it would allow a number of the apparatuses of Rosenberg as modified by Rius-Ruiz to be economically deployed in the soil of a field so allowing real-time mapping of field conditions without worry of contaminating the soil or of having to expend time and effort to recover the apparatuses once their useful life has expired. See Bauer-Reich paragraphs [0008]-[0010].
Alternatively, Chumbimuni-Torres discloses an ion-selective electrode system comprising a substrate layer, a carbon nanotube layer disposed on the substrate layer; a conductive metal layer on a portion of the carbon nanotube layer; a conductive polymer disposed on the portion; and an ion-selective membrane disposed on the conductive polymer. There is also a reference electrode on the substrate. See the title, Abstract, and Figures 1A and 1B. The substrate may be made of paper, such as filter paper8. See Chumbimuni-Torres paragraph [0059] and claim 24.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Chumbimuni-Torres (paper, such as filter paper) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as paper, filter paper) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B).
Alternatively, Syrovy discloses a soil sensor comprising at least one body, such as an electrode substrate, made of a biodegradable cellulose-based material, such as wood or paper. See the title, Abstract, Figures 1-6, and paragraphs [0008] and [0022]-[0027].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Syrovy (such as wood or paper) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood or paper) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Syrovy discloses “. . . ., the use of common natural biodegradable material is encouraged as the basic body of the detection device, which can be left in nature even after the measurement without environmental pollution.” See Syrovy paragraph [0004].
Alternatively, Sui discloses a soil electrode sensor comprising a biodegradable substate, which may be made of wood , for example. See the title, Abstract, Figures 1 and 2, and paragraph [0022].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Sui (such as wood) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Sui discloses, “These capacitive soil moisture sensors are designed to function during the growing season, and then harmlessly degrade afterwards, enabling high-density deployment, eliminating the need for sensor retrieval, and enabling the use of simple devices structures and low-cost materials and fabrication techniques. [italicizing by the Examiner]” See Sui paragraph [0017].
Addressing claim 12, Rosenberg as modified by Rius-Ruiz does not disclose “. . . ., wherein the reference electrode substrate and the ISE substrate comprises at least one of: wood, a biodegradable polymer, or paper.” In Rosenberg the reference electrode substrate and the ISE substrate comprise polycarbonate (Rosenberg
Figure 4). In Rius-Ruiz the reference electrode substrate comprises polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. ).
Bauer-Reich discloses a biodegradable sensor system and method. “The biodegradable sensor may include one or more electrically conductive bioinert traces and a biodegradable substrate having a printed circuit of the one or more electrically conductive bioinert traces. [italicizing by the Examiner]” See the title, Abstract, and claim 1. Example biodegradable substrates include various natural and synthetic biodegradable polymers. See Bauer-Reich paragraphs [0037][ and [0038].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Bauer-Reich because it is prima facie obvious as simple substitution of one known element (sensor electrode polymer substrate such as disclosed in Bauer-Reich paragraph [0037] or [0038], particularly a biodegradable polymers) for another ( polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, it would allow a number of the apparatuses of Rosenberg as modified by Rius-Ruiz to be economically deployed in the soil of a field so allowing real-time mapping of field conditions without worry of contaminating the soil or of having to expend time and effort to recover the apparatuses once their useful life has expired. See Bauer-Reich paragraphs [0008]-[0010].
Alternatively, Chumbimuni-Torres discloses an ion-selective electrode system comprising a substrate layer, a carbon nanotube layer disposed on the substrate layer; a conductive metal layer on a portion of the carbon nanotube layer; a conductive polymer disposed on the portion; and an ion-selective membrane disposed on the conductive polymer. There is also a reference electrode on the substrate. See the title, Abstract, and Figures 1A and 1B. The substrate may be made of paper, such as filter paper9. See Chumbimuni-Torres paragraph [0059] and claim 24.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Chumbimuni-Torres (paper, such as filter paper) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as paper, filter paper) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B).
Alternatively, Syrovy discloses a soil sensor comprising at least one body, such as an electrode substrate, made of a biodegradable cellulose-based material, such as wood or paper. See the title, Abstract, Figures 1-6, and paragraphs [0008] and [0022]-[0027].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Syrovy (such as wood or paper) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood or paper) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Syrovy discloses “. . . ., the use of common natural biodegradable material is encouraged as the basic body of the detection device, which can be left in nature even after the measurement without environmental pollution.” See Syrovy paragraph [0004].
Alternatively, Sui discloses a soil electrode sensor comprising a biodegradable substate, which may be made of wood , for example. See the title, Abstract, Figures 1 and 2, and paragraph [0022].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Sui (such as wood) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Sui discloses, “These capacitive soil moisture sensors are designed to function during the growing season, and then harmlessly degrade afterwards, enabling high-density deployment, eliminating the need for sensor retrieval, and enabling the use of simple devices structures and low-cost materials and fabrication techniques. [italicizing by the Examiner]” See Sui paragraph [0017].
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Rius-Ruiz as applied to claims 1, 7, and 9 above, and further in view of Sui.
Addressing claim 3, Rosenberg as modified by Rius-Ruiz does not disclose “. . . . : an encapsulant deposited over the reference electrode substrate and the reference electrode conductor.”
Sui discloses a soil electrode sensor comprising a substrate upon which electrodes have been formed. The sensor comprising a biodegradable substate, which may be made of wood , for example, and an encapsulant, such as wax. See the title, Abstract, Figures 1 and 2, and paragraphs[0006]-[0008] and [0022].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Sui (such as wood) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Sui discloses, “These capacitive soil moisture sensors are designed to function during the growing season, and then harmlessly degrade afterwards, enabling high-density deployment, eliminating the need for sensor retrieval, and enabling the use of simple devices structures and low-cost materials and fabrication techniques. [italicizing by the Examiner]” See Sui paragraph [0017].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to further similarly provide an encapsulant as taught by Sui for the apparatus of Rosenberg as modified by Rius-Ruiz and Sui (biodegradable substate) as just discussed, which will be deposited over the reference electrode substrate and the reference electrode conductor, analogously as it is deposited over the circuitry of the senso of Sui, because Sui discloses, “The rapidly degrading substrate and electrode may be encapsulated in a hydrophobic, biodegradable encapsulating material that protects the device, reduces drift, and controls degradation time. For example, the hydrophobic, biodegradable encapsulating material may comprise a slowly degrading wax blend. [italicizing by the Examiner]” See Sui paragraph [0019]. Also,
PNG
media_image2.png
278
434
media_image2.png
Greyscale
That is, the apparatus of Rosenberg as modified by Rius-Ruiz may by then be located in many different soil locations, particularly those not readily accessible, without concern as to having to recover them when their useful life has expired or having to go to the various locations to inspect them for remaining useful life, as it may be determined remotely.
Addressing claim 4, Rosenberg as modified by Rius-Ruiz does not disclose “. . . . : an encapsulant deposited over the ISE electrode substrate and the ISE conductor.”
Sui discloses a soil electrode sensor comprising a substrate upon which electrodes have been formed. The sensor comprising a biodegradable substate, which may be made of wood , for example, and an encapsulant, such as wax. See the title, Abstract, Figures 1 and 2, and paragraphs[0006]-[0008] and [0022].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Sui (such as wood) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Sui discloses, “These capacitive soil moisture sensors are designed to function during the growing season, and then harmlessly degrade afterwards, enabling high-density deployment, eliminating the need for sensor retrieval, and enabling the use of simple devices structures and low-cost materials and fabrication techniques. [italicizing by the Examiner]” See Sui paragraph [0017].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to further similarly provide an encapsulant as taught by Sui for the apparatus of Rosenberg as modified by Rius-Ruiz and Sui (biodegradable substate) as just discussed, which will be deposited over the ISE substrate and the ISE, analogously as it is deposited over the circuitry of the senso of Sui, because Sui discloses, “The rapidly degrading substrate and electrode may be encapsulated in a hydrophobic, biodegradable encapsulating material that protects the device, reduces drift, and controls degradation time. For example, the hydrophobic, biodegradable encapsulating material may comprise a slowly degrading wax blend. [italicizing by the Examiner]” See Sui paragraph [0019]. Also,
PNG
media_image2.png
278
434
media_image2.png
Greyscale
That is, the apparatus of Rosenberg as modified by Rius-Ruiz may by then be located in many different soil locations, particularly those not readily accessible, without concern as to having to recover them when their useful life has expired or having to go to the various locations to inspect them for remaining useful life, as it may be determined remotely.
Addressing claim 5, for the additional limitation of this claim note that Sui discloses having the encapsulant comprise wax. See Sui paragraphs [0019], [0022], [0023], [0025], and [0029].
8. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Rius-Ruiz as applied to claims 1, 7, and 9 above, and further in view of Andrade et al. US 2021/0302351 A1 (hereafter “Andrade”), Bakker et al. US 2015/0177183 A1 (hereafter “Bakker’), and Wei Zhang US 2022/0291164 A1 (hereafter ‘Zhang”) .
Addressing claim 8, for the additional limitation of this claim note the following in Rosenberg
PNG
media_image3.png
102
638
media_image3.png
Greyscale
See Rosenberg Membrane fabrication, second paragraph, which is on page 8/20.
One of ordinary skill in the art would recognize butyl acrylate as forming a structural polymer10 and valinomycin as a potassium ionophore (see, for example, Andrade paragraph [0007]).
As for the ion-selective membrane comprising a plasticizer, Rosenberg does not appear to include plasticizer in this membrane; nevertheless, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to include a plasticizer in the ion-selective membrane of Rosenberg because Bakker discloses, “The plasticizer facilitates mixture homogeneity and also helps control the flux of the ion from the sample solution to the surface of the membrane and into the bulk of the membrane.” See Bakker paragraph [0067]. Numerous plasticizers are known in the art. See again Bakker paragraph [0067] and Zhang the title and paragraph [0051].
As for the ion-selective membrane comprising a charge carrier, as a first matter, note that Rosenberg refers to valinomycin as a charge carrier. See the last sentence in the first paragraph of Potentiometric response of screen-printed ISEs, which is on page 10/20. Also, the Examiner notes that Applicant does not appear to disclose an example charge carrier. So, the Examiner is broadly construing ETH500 as a charge carrier as it is a salt, so it is an ionic compound, and as shown by Zhang it is a lipophilic electrolyte known in the art to improve the response kinetics of various ion-selective electrodes. See Zhang paragraphs [0010] and [0074].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Rius-Ruiz as applied to claims 1, 7, and 9 above, and further in view of MatWeb Material Property Data for DuPont™ 7102 Carbon Conductor (hereafter ‘MatWeb”).
Addressing claim 10, for the additional limitation of this claim note the following in Rosenberg, “To fabricate the electrodes, the bottom layer was first screen-printed using 7102 CNT conductor paste from DuPont (Wilmington, DE, USA). . . . 1 g of the 7102 CNT paste was spread on top of the mask and manually spread across with the help of an 80-durometer polyurethane squeegee from Speedball (Statesville, NC, USA). The ink was cured in the oven at 70 'C for 10 min and the CNT mask was then peeled off and disposed.[underling by the Examiner]”11 See Rosenberg Electrode fabrication, which is on page 7/20.12 As evidenced by MatWeb Dupont 7102 comprises a binder (see Descriptive Properties (“Binder System Proprietary’).
Although not needed to meet this claim note in MatWeb, “Material Notes: This product is a high resistivity carbon conductor that can be blended with other carbon (7082), silver (5028), or dielectric (3571) compositions to meet specific resistance requirements.”
Claims 14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Rius-Ruiz and Mansergh et al. US 2020/0096474 A1 (hereafter “Mansergh”).
Addressing claim 14, Rosenberg discloses an apparatus, comprising:
a reference electrode (RE in Figure 1(b)), comprising:
a reference electrode substrate (the polycarbonate substrate in Figure 3,
step 1, and in Figure 4);
a carbon nanotube layer formed on the reference electrode substrate (Figure 3, step 3; and Figure 4. Also see the last sentence on page 9/20.); and
a reference membrane (PVB-NaCl in Figure 4. Also see the second sentence (“The mixture for the reference . . . .”) in the first paragraph of Membrane fabrication, which is on page 8/20. ) formed on the carbon nanotube layer (Figure 4 and Figure 3, step 10); and
at least one ion selective electrode (ISE)(WE in Figure 1(b) and the first sentence of Materials and methods – Sensor Architecture, which is on page 6/20, noting the ISE stands for ion-selective electrode (See the Abstract)), comprising:
an ISE substrate (the polycarbonate substrate in Figure 3,
step 1, and in Figure 4);
a ISE conductor formed on the substrate via a printable composition on the ISE substrate (CNT ink; Figure 3, step 3; Figure 4. Also see the last sentence on page 9/20.); and
an ion-selective membrane (BA-ISM; Figure 4) formed on the conductor via a printable membrane solution (see the second full paragraph on
page 10/20 (“The drop-casted butyl-acrylate (BA) ISMs . . . .“) ).
Rosenberg, though, does not disclose “a reference electrode conductor formed via a printable composition on the reference electrode substrate;
a carbon nanotube layer formed on the conductor; . . . “ There is no reference electrode conductor, the carbon nanotube layer functions as the conductor.
Rius-Ruiz discloses a disposable planar reference electrode based on carbon nanotubes and polyacrylate membrane. See the title. This reference electrode comprises
a reference electrode substrate (“PET substrate” in Figure 1);
a reference electrode conductor formed via a printable composition on the reference electrode substrate (“Conductive ink” in Figure 1. See also the first two sentences of Disposable Planar Electrode Development., which is on page 5784.);
a carbon nanotube layer formed on the conductor (“SWCNTs-ODA” in Figure 1. See also the last three sentences of Disposable Planar Electrode Development.); and
a reference membrane formed on the carbon nanotube layer (“Reference membrane” in Figure 1. See also the last sentence of Disposable Planar Electrode Development.).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode in the apparatus of Rosenberg configured as taught by Rius-Ruiz because it is prima facie obvious as simple substitution of one known element (reference electrode) for another with predictable results13 (see MPEP 2143(I)(B)), especially as the reference electrode of Rosenberg is very similar in structure already (only missing a reference electrode conductor), if not also composition, to that of Rosenberg, and would not require a substantial change in the manufacturing steps nor in the manufacturing techniques used. Alternatively, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to adopt just the reference electrode conductor of Rius-Ruiz into the apparatus of Rosenberg and limit the carbon nanotube layer to just the measurement/ sample contact zone (Ag/AgCl are in Rosenberg Figure 1(b)) because while carbon nanotubes offer very good properties related to sensing (see, for example, the last paragraph on page 4/20 of Rosenberg, bridging to page 5/20), there may be manufacturing difficulties in evenly dispensing them in a layer (see in Rius-Ruiz page 5784, left column, first full paragraph (“On the other hand, . . . .”).
Last, it is not clear whether the reference electrode substrate and the ISE substrate in claim 1 are separate (for example, may be individually handled). If so, then to have them be so in the apparatus of Rosenberg as modified by Rius-Ruiz is prima facie obvious as making separable what is integrated (see MPEP 2144.04(V)(C)), especially as it may be simply achieved by cutting the apparatus in half length-wise (see Rosenberg Figure 4). Note that in Rius-Ruiz there is no working electrode on the reference electrode substrate (see Figure 1).
Rosenberg as modified by Rius-Ruiz also does not disclose having the apparatus comprise “a stake; an antenna on the stake; . . . .”
Mansergh discloses an extensible, multimodal sensor platform for remote, proximal terrain sensing. This sensor platform comprises a stake, an antenna on the stake, ion sensing electrodes, and a reference electrode. See in Masergh the title, Abstract, Figures 2A , 2B, 3, 5, 6D, 7A, and 7B14, and paragraphs [0040] (‘In some embodiments, the form factor of a sensor assembly (or “platform”) is that of an elongate “stake” (e.g., suitable for insertion into the ground), with multiple sensors positioned therein’), [0042], and [0089].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to provide to the apparatus of Rosenberg as modified by Rius-Ruiz a stake and an antenna on the stake as taught by Mansergh because this will increase the usefulness of the apparatus by allowing it to be conveniently located in a remote soil area at a desired soil depth so that soil parameters there may be monitored conveniently in real-time through wireless transmission of signals to and from the apparatus. See Mansergh paragraph [0036], [0037], [0040], [0042], and claim 2.
As for the claim 14 limitation “a controller communicatively coupled to the antenna, the reference electrode, and the at least one ISE to determine an ion concentration based on measurements received from the at least one ISE and transmit the ion concentration to a server via the antenna…”, it would have been obvious (and indeed necessary) to one of ordinary skill in the art at the time of the effective filing date of the application to provide to the apparatus of Rosenberg as modified by Rius-Ruiz such a controller when the stake and antenna of Mansergh are adopted to it, as just discussed, because the apparatus will then rely upon wireless operation, control, and monitoring of the sensor. See Mansergh paragraph [0058] and [0084].
Addressing claim 16, for the additional limitation of this claim see Mansergh Figure 2A and paragraphs [0055]-[0063], which disclose including in the Mansergh sensing apparatus an array of ISEs to measure different ions, such as ammonium, calcium, carbonate, chloride, nitrate, and potassium ions, among others. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to similarly provide in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh, as discussed in the rejection of underlying claim 14, an array of ISEs to measure different ions because this will greatly increase the usefulness and convenience of the apparatus by enabling it to provide real-time data on a number of soil parameters that may be pertinent to plant growth or soil health monitoring.
Addressing claim 17, Rosenberg as modified by Rius-Ruiz and Mansbergh does not disclose “. . . . : an encapsulated deposited over the reference electrode substrate and the reference electrode conductor in the reference electrode and over the ISE substrate and the ISE conductor in the ISE.”
Sui discloses a soil electrode sensor comprising a substrate upon which electrodes have been formed. The sensor comprising a biodegradable substate, which may be made of wood , for example, and an encapsulant, such as wax. See the title, Abstract, Figures 1 and 2, and paragraphs[0006]-[0008] and [0022].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the stake, reference electrode substrate, and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh comprise a biodegradable material as taught by Sui (such as wood) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Sui discloses, “These capacitive soil moisture sensors are designed to function during the growing season, and then harmlessly degrade afterwards, enabling high-density deployment, eliminating the need for sensor retrieval, and enabling the use of simple devices structures and low-cost materials and fabrication techniques. [italicizing by the Examiner]” See Sui paragraph [0017].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to further similarly provide an encapsulant as taught by Sui for the apparatus of Rosenberg as modified by Rius-Ruiz, Mansberg, and Sui (biodegradable substate) as just discussed, which will be deposited over the reference electrode substrate, the reference electrode conductor in the refence electrode, the ISE substrate, and the ISE conductor in the ISE analogously as it is deposited over the circuitry of the senso of Sui, because Sui discloses, “The rapidly degrading substrate and electrode may be encapsulated in a hydrophobic, biodegradable encapsulating material that protects the device, reduces drift, and controls degradation time. For example, the hydrophobic, biodegradable encapsulating material may comprise a slowly degrading wax blend. [italicizing by the Examiner]” See Sui paragraph [0019]. Also,
PNG
media_image2.png
278
434
media_image2.png
Greyscale
That is, the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh may by then be located in many different soil locations, particularly those not readily accessible, without concern as to having to recover them when their useful life has expired or having to go to the various locations to inspect them for remaining useful life, as it may be determined remotely.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Rius-Ruiz and Mansergh as applied to claim 14 above, and further in view of Bauer-Reich or Chumbimuni-Torres or Syrovy or Sui.
Addressing claim 15, Rosenberg as modified by Rius-Ruiz and Mansergh does not explicitly disclose “. . . ., wherein the reference electrode substrate, the reference conductor, the ISE substrate, the ISE conductor, and the ion-selective membrane comprise biodegradable materials.”
However, as a first matter, in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh the reference conductor inherently comprises biodegradable materials as Applicant’s specification discloses15 that the reference conductor (304) comprises conductive particles (310), which “. . . .may include carbon allotropes or metals. Examples of the carbon allotropes may include carbon nanotubes, carbon black, graphite, graphene, and the like. Examples of the metals may include magnesium, manganese, tungsten, zinc, iron, and the like.[italicizing by the Examiner]” See Applicant’s pre-grant publication (US 20240377349 A1) (hereafter “Applicant’s PG-PUB”) paragraphs [0031], [0032], and [0099]16. The reference conductor in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh comprises “Ink 7102 conductor paste based on carbon and graphite was provided by DuPont Limited (Hopewell, USA), . . . .”. See the first two sentences of Disposable Planar Electrode Development. on Rius-Ruiz page 5784.
Similarly, in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh the ISE conductor inherently comprises biodegradable materials as Applicant’s specification discloses17 that the ISE conductor (204) comprises conductive particles (208), which “. . . . may include carbon allotropes or metals. Examples of the carbon allotropes may include carbon nanotubes, carbon black, graphite, graphene, and the like. Examples of the metals may include magnesium, manganese, tungsten, zinc, iron, and the like.[italicizing by the Examiner]” See Applicant’s pre-grant publication (US 20240377349 A1) (hereafter “Applicant’s PG-PUB”) paragraphs [0031], [0032], and [0099]18. The ISE conductor in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh comprises carbon nanotubes (CNT). See Rosenberg Figure 3, step 3; and WE in Figure 4.
Bauer-Reich discloses a biodegradable sensor system and method. “The biodegradable sensor may include one or more electrically conductive bioinert traces and a biodegradable substrate having a printed circuit of the one or more electrically conductive bioinert traces. [italicizing by the Examiner]” See the title, Abstract, and claim 1.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh comprise a biodegradable material as taught by Bauer-Reich because it is prima facie obvious as simple substitution of one known element (sensor electrode polymer substrate such as disclosed in Bauer-Reich paragraph [0037] or [0038]) for another ( polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, it would allow a number of the apparatuses of Rosenberg as modified by Rius-Ruiz to be economically deployed in the soil of a field so allowing real-time mapping of field conditions without worry of contaminating the soil or of having to expend time and effort to recover the apparatuses once their useful life has expired. See Bauer-Reich paragraphs [0008]-[0010].
Alternatively, Chumbimuni-Torres discloses an ion-selective electrode system comprising a substrate layer, a carbon nanotube layer disposed on the substrate layer; a conductive metal layer on a portion of the carbon nanotube layer; a conductive polymer disposed on the portion; and an ion-selective membrane disposed on the conductive polymer. There is also a reference electrode on the substrate. See the title, Abstract, and Figures 1A and 1B. The substrate may be made of paper, such as filter paper19. See Chumbimuni-Torres paragraph [0059] and claim 24.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh comprise a biodegradable material as taught by Chumbimuni-Torres (paper, such as filter paper) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as paper, filter paper) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B).
Alternatively, Syrovy discloses a soil sensor comprising at least one body, such as an electrode substrate, made of a biodegradable cellulose-based material, such as wood or paper. See the title, Abstract, Figures 1-6, and paragraphs [0008] and [0022]-[0027].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh comprise a biodegradable material as taught by Syrovy (such as wood or paper) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood or paper) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Syrovy discloses “. . . ., the use of common natural biodegradable material is encouraged as the basic body of the detection device, which can be left in nature even after the measurement without environmental pollution.” See Syrovy paragraph [0004].
Alternatively, Sui discloses a soil electrode sensor comprising a biodegradable substate, which may be made of wood , for example. See the title, Abstract, Figures 1 and 2, and paragraph [0022].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh comprise a biodegradable material as taught by Sui (such as wood) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Sui discloses, “These capacitive soil moisture sensors are designed to function during the growing season, and then harmlessly degrade afterwards, enabling high-density deployment, eliminating the need for sensor retrieval, and enabling the use of simple devices structures and low-cost materials and fabrication techniques. [italicizing by the Examiner]” See Sui paragraph [0017].
As for also having the stake comprise a biodegradable material, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to do so in order to be consistent with having other components of the apparatus be biodegradable as discussed above and with the goal of not having to recover the apparatus, especially if several are located at points over a large area or not readily accessible, when its useful life has expired. In this regard one of ordinary skill in the art would recognize that biodegradable materials such as wood or a biodegradable polymer disclosed by Bauer-Reich or Chumbimuni-Torres or Syrovy or Sui could be used to make the stake biodegradable.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Sui.
Addressing claim 19, Rosenberg discloses method of fabricating a sensor (see the title, Figure 3, and Electrode fabrication, which is on page 7/20), comprising:
providing an ion selective electrode (ISE) substrate (polycarbonate substrate in Figure 3, step 1. Also see the first two sentences of Electrode fabrication.);
printing a conductive trace on the ISE substrate (Figure 3, step 3. Also see the first sentence of Electrode fabrication. );
depositing an ISE membrane via a drop cast process onto the conductive trace to form an ISE (Figure 3, steps 10-12. Also see Membrane fabrication, which is on page 8/20.).
Rosenberg, though, does not disclose the step of “ applying an encapsulant with an opening over the conductive trace and the ISE substrate, wherein the opening exposes a portion of the conductive trace; . . . . .” and so does not disclose “ depositing an ISE membrane via a drop cast process onto the portion of the conductive trace exposed through the opening of the encapsulant to form an ISE.”
Sui discloses a soil electrode sensor comprising a substrate upon which electrodes have been formed. The sensor comprising a biodegradable substate, which may be made of wood, for example, and an encapsulant, such as wax. See the title, Abstract, Figures 1 and 2, and paragraphs [0006]-[0008] and [0022].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the reference electrode substrate and the ISE substrate in the apparatus of Rosenberg as modified by Rius-Ruiz comprise a biodegradable material as taught by Sui (such as wood) because it is prima facie obvious as simple substitution of one known element (sensor electrode substrate material such as wood) for another (polycarbonate (Rosenberg Figure 4) or polyethylene terephthalate (PET)( Rius-Ruiz first paragraph of Disposable Planar Electrode Development. )) to obtain predictable results. See MPEP 2143(I)(B). Moreover, Sui discloses, “These capacitive soil moisture sensors are designed to function during the growing season, and then harmlessly degrade afterwards, enabling high-density deployment, eliminating the need for sensor retrieval, and enabling the use of simple devices structures and low-cost materials and fabrication techniques. [italicizing by the Examiner]” See Sui paragraph [0017].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to further similarly provide an encapsulant as taught by Sui for the apparatus of Rosenberg as modified by Rius-Ruiz and Sui (biodegradable substate) as just discussed, which will be deposited over the ISE conductive trace and substrate, analogously as it is deposited over the circuitry of the sensor of Sui, because Sui discloses, “The rapidly degrading substrate and electrode may be encapsulated in a hydrophobic, biodegradable encapsulating material that protects the device, reduces drift, and controls degradation time. For example, the hydrophobic, biodegradable encapsulating material may comprise a slowly degrading wax blend. [italicizing by the Examiner]” See Sui paragraph [0019]. Also,
PNG
media_image2.png
278
434
media_image2.png
Greyscale
That is, the apparatus of modified Rosenberg may by then located in many different soil locations, particularly those not readily accessible, without concern as to having to recover them when their useful life has expired or having to go to the various locations to inspect them for remaining useful life, as it may be determined remotely.
With an encapsulant as taught by Sui provided to the apparatus of Rosenberg it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to modify the depositing step in the method of Rosenberg deposit an ISE membrane via a drop cast process onto the portion of the conductive trace exposed through the opening of the encapsulant to form an ISE, so as to protect the conductive trace and avoid undesired reaction between it and the soil.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Sui as applied to claim 19 above, and further in view of Mansberg.
Addressing claim 20, as for the claim limitation “printing a reference electrode…” see Rosenberg Figure 3 and Figure 4, noting therein RE (reference electrode). Also see Electrode fabrication on page 7/20, noting “ The same process was followed for printing the Ag/ AgCl layer using 5874 Ag/ AgCl paste from DuPont, with the exception of a reduced heating time of 5 min so that the acrylic adhesive of the mask would not stick to the CNT layer beneath. With the CNT and Ag/ AgCl layers complete, single row laser-cut strips of the UHMWPE was carefully aligned and applied by hand.”
Rosenberg as modified by Sui does not disclose “assembling the reference electrode, the ISE, a controller, and an antenna on a stake, wherein the controller is communicatively coupled to the antenna and the conductive trace of the ISE and a conductive layer of the reference electrode.”
Mansergh discloses an extensible, multimodal sensor platform for remote, proximal terrain sensing. This sensor platform, when assembled, comprises a stake, an antenna on the stake, ion sensing electrodes, and a reference electrode. See in Masergh the title, Abstract, Figures 2A , 2B, 3, 5, 6D, 7A, and 7B20, and paragraphs [0040] (‘In some embodiments, the form factor of a sensor assembly (or “platform”) is that of an elongate “stake” (e.g., suitable for insertion into the ground), with multiple sensors positioned therein’), [0042], and [0089].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to assemble in the apparatus of Rosenberg as modified by Rius-Ruiz a stake and an antenna on the stake as taught by Mansergh because this will increase the usefulness of the apparatus by allowing it to be conveniently located in a remote soil area at a desired soil depth so that soil parameters there may be monitored conveniently in real-time through wireless transmission of signals to and from the apparatus. See Mansergh paragraph [0036], [0037], [0040], [0042], and claim 2.
As for the claimed controller, it would have been obvious (and indeed necessary) to one of ordinary skill in the art at the time of the effective filing date of the application to provide it to the apparatus of Rosenberg as modified by Sui such a controller when the stake and antenna of Mansergh are adopted to it, as just discussed, because the apparatus will then rely upon wireless operation, control, and monitoring of the sensor. See Mansergh paragraph [0058] and [0084].
Allowable Subject Matter
Claims 6, 11, and 18 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.
The following is a statement of reasons for the indication of allowable subject matter:
a) the Written Opinion for international application no. PCT/US2022/076527 deems claims 2, 5, 6, 11-18, and 20 to have novelty, but claims 1, 3, 4, 7-10, and 19 to lack novelty; and deems claims 1-20 to lack an inventive step. The main reference applied is an article by Zamarayeva. This article has been used above to reject claim 1 of U.S. application 18/692747 under 35 U.S.C 102(a)(1).
b) the Supplementary European Search Report for application no. EP 22870967 cites an article by Zamarayeva as an “X” document against claims 1-4 of the application, US 2020/116664 A1 as an “X” document against claim 14, and an article by Sjöberg et al. as an “X” document against claim 14. The article by Zamarayeva article has been used above to reject claim 1 of U.S. application 18/692747 under 35 U.S.C 102(a)(1). US 2020/116664 A1 does not clearly disclose a carbon nanotube layer as required by independent claims 1 and 14 in U.S. application 18/692747. It only mentions carbon nanotubes in a Markush group of possible materials for a transducing layer. See paragraphs [0008] and [0046], and claim 9. The article by Sjöberg et al. does not appear to mention carbon nanotubes at all.
b) in claim 6 the combination of limitations requires (underlining by the Examiner)21
PNG
media_image4.png
74
638
media_image4.png
Greyscale
Applicant’s PG-PUB paragraph [0039] states, “In one embodiment, the ion-to-electron transduction layer 214 may be a filling solution or mediator solution for the transport of ions to the electrode surface. The filling solution may be responsible for arbitrating the build-up of electrical charge or potential from a concentration of ions that are being measured in the soil. [italicizing by the Examiner]”
In contrast, in the apparatus of Rosenberg as modified by Rius-Ruiz even if the CNT layer (carbon nanotube layer) in WE of Rosenberg Figure 4 may be construed as an ion-to-electron transduction layer formed on the ISE conductor
between the ISE conductor and the ion-selective membrane, it is not a solution layer, but a solid layer. See Rosenberg Figure 3, steps 3-5; and the first paragraph of Electrode fabrication, which is on Rosenberg page 7/20.
c) in claim 11 the combination of limitations requires (underlining by the Examiner)
PNG
media_image5.png
64
610
media_image5.png
Greyscale
The printable composition in the apparatus of modified Rosenberg (as discussed in the rejection of underlying claim 10) is “7102 CNT conductor paste from DuPont (Wilmington, DE, USA)”. Although this printable composition is known to contain a binder system, the composition of the binder system cannot be determined, particularly whether or not it comprises a wax, because it is proprietary (see Descriptive Properties (“Binder System Proprietary”). Since there is nothing otherwise to indicate that the 7102 binder system comprises a wax and Rius-Ruiz also uses 7102 conductor paste, the Examiner has to reasonably assume that the 7102 conductor paste does not comprise a wax.
d) in claim 18 the combination of limitations requires (underlining by the Examiner)22
PNG
media_image4.png
74
638
media_image4.png
Greyscale
Applicant’s PG-PUB paragraph [0039] states, “In one embodiment, the ion-to-electron transduction layer 214 may be a filling solution or mediator solution for the transport of ions to the electrode surface. The filling solution may be responsible for arbitrating the build-up of electrical charge or potential from a concentration of ions that are being measured in the soil. [italicizing by the Examiner]”
In contrast, in the apparatus of Rosenberg as modified by Rius-Ruiz and Mansbergh even if the CNT layer (carbon nanotube layer) in WE of Rosenberg Figure 4 may be construed as an ion-to-electron transduction layer formed on the ISE conductor between the ISE conductor and the ion-selective membrane, it is not a solution layer, but a solid layer. See Rosenberg Figure 3, steps 3-5; and the first paragraph of Electrode fabrication, which is on Rosenberg page 7/20.
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 December 30, 2025
1 Rius-Ruiz has well characterized the reference electrode. See, for example, Electrochemical Impedance Spectroscopy (EIS) Characterization., which is on pages 5785-5786, and Potentiometric Performance Characteristics., which is on pages 5786-5787.
2 PVB stands for polyvinyl butyral. See in Rosenberg the first paragraph of Membrane fabrication, which is on page 8/20.
3 Referring to Rosenberg.
4 The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01. Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because only "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
See MPEP 804 II.B.2(a).
5 Strictly speaking, Applicant’s PG-PUB paragraph [0099] discloses possible conductive particles for a conductive membrane. However, the Examiner assumes that the listed substances and materials may also be used in the reference conductor as there does not appear to be a single specific example conductive particle indicated by Applicant as being in the reference conductor. One of ordinary skill in the art would thus believe that the list of possible conductive particles in Applicant’s paragraph [0099] applies broadly.
6 The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01. Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because only "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
See MPEP 804 II.B.2(a).
7 Strictly speaking, Applicant’s PG-PUB paragraph [0099] discloses possible conductive particles for a conductive membrane. However, the Examiner assumes that the listed substances and materials may also be used in the reference conductor as there does not appear to be a single specific example conductive particle indicated by Applicant as being in the reference conductor. One of ordinary skill in the art would thus believe that the list of possible conductive particles in Applicant’s paragraph [0099] applies broadly.
8 Applicant’s PG-PUB paragraph [0098] evidences that filter paper is biodegradable, “Examples of papers may include Bristol paper, copy paper, watercolor paper, filter paper, and the like.[italicizing by the Examiner]” Applicant’s specification is turned to here only to show an inherent property of a material.
9 Applicant’s PG-PUB paragraph [0098] evidences that filter paper is biodegradable, “Examples of papers may include Bristol paper, copy paper, watercolor paper, filter paper, and the like.[italicizing by the Examiner]” Applicant’s specification is turned to here only to show an inherent property of a material.
10 With DMPP being a photo-initiator and HDDA being a cross-linking agent
11 CNT stands for carbon nanotubes. See the last paragraph on Rosenberg page 4/20.
12 It should be noted that Rius-Ruiz a also use 7102 conductor paste. See Disposable Planar Electrode Development. on page 5784.
13 Rius-Ruiz has well characterized the reference electrode. See, for example, Electrochemical Impedance Spectroscopy (EIS) Characterization., which is on pages 5785-5786, and Potentiometric Performance Characteristics., which is on pages 5786-5787.
14 The Examiner is construing the housing shown in Figures 3 and 5
15 The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01. Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because only "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
See MPEP 804 II.B.2(a).
16 Strictly speaking, Applicant’s PG-PUB paragraph [0099] discloses possible conductive particles for a conductive membrane. However, the Examiner assumes that the listed substances and materials may also be used in the reference conductor as there does not appear to be a single specific example conductive particle indicated by Applicant as being in the reference conductor. One of ordinary skill in the art would thus believe that the list of possible conductive particles in Applicant’s paragraph [0099] applies broadly.
17 The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01. Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because only "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
See MPEP 804 II.B.2(a).
18 Strictly speaking, Applicant’s PG-PUB paragraph [0099] discloses possible conductive particles for a conductive membrane. However, the Examiner assumes that the listed substances and materials may also be used in the reference conductor as there does not appear to be a single specific example conductive particle indicated by Applicant as being in the reference conductor. One of ordinary skill in the art would thus believe that the list of possible conductive particles in Applicant’s paragraph [0099] applies broadly.
19 Applicant’s PG-PUB paragraph [0098] evidences that filter paper is biodegradable, “Examples of papers may include Bristol paper, copy paper, watercolor paper, filter paper, and the like.[italicizing by the Examiner]” Applicant’s specification is turned to here only to show an inherent property of a material.
20 The Examiner is construing the housing shown in Figures 3 and 5
21 See claim 6 the objection above under Claim Objections – “asolution” should be – a solution --.
22 See claim 6 the objection above under Claim Objections – “asolution” should be – a solution --.