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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/21/2024, 07/10/2024, and 09/09/2025 have been considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 1, line 14, “a potential difference generation unit…to generate a potential difference between the measurement object electrode and the measurement film electrode”, is being interpreted under 35 U.S.C. 112(f). Prong 1: potential difference generation unit (uses the generic placeholder), prong 2: to generate a potential … (functional language), prong 3: sufficient structure for performing the function not recited. Therefore, claim 1 invokes 112(f). However, the corresponding structure for performing the functions is described in the specification ([para. 0010] the potential difference generation unit may be a capacitor).
Claim 1, line 18, “a power supply control unit that controls a magnitude of the voltage output from the measurement object power supply, and that controls a magnitude of the voltage output from the measurement film supply”, is being interpreted under 35 U.S.C. 112(f). Prong 1: power supply control unit (uses the generic placeholder), prong 2: that controls … (functional language), prong 3: sufficient structure for performing the function not recited. Therefore, claim 1 invokes 112(f). The corresponding structure for performing the functions is not described in the specification.
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Regarding Claim 1, the limitation “a power supply control unit” invoke 112(f), as outlined previously in the claim interpretation. The corresponding structure for performing the functions is not described in the specification (instant specification only refers to a power supply control unit in numerous places as the power supply control unit 19, for example [paras. 0051, 0082], with no structure). Therefore, the scope of the claim 1 is indefinite. Claims 2-13 are further rejected by virtue of their dependency upon and because they fail to cure the deficiencies of indefinite claim 1. For examination purpose, the power supply control unit is interpreted to include any power supply control unit that is capable of the claimed functions.
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 (i.e., changing from AIA to pre-AIA ) 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 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Futagawa (US 2021/0199618 A1, which corresponds to WO 2019239817A1, provided in IDS submitted 05/21/2024) in view of Kusano (US 2019/0360962 A1, provided in IDS submitted 09/09/2025) and Yamagata (JP 2019 158650 A, provided in IDS submitted 05/21/2024, English translation provided).
Regarding Claim 1, Futagawa teaches an ion concentration measurement device (an ion concentration measuring device [para. 0042]; illustrated in Fig. 1) installed in a measurement object (measurement object 101, such as a soil [para. 0042]) including measurement ions (measurement ions 102 [para. 0042]) and non-measurement ions (non-measurement ions 103 [para. 0042]) to obtain a concentration of the measurement ions (concentration of hydrogen ions or pH [para. 0042]), the device comprising:
a measurement object electrode (measurement target electrode 14 [para. 0049]) disposed in the measurement object (measurement target electrode 14 is disposed in the soil [para. 0051]) to control a potential of the measurement object (potential is controlled in part via measurement target electrode 14 [para. 0051]);
a measurement object power supply (measurement target power supply 16 [para. 0051]) that is connectable to the measurement object electrode (measurement target power supply 16 is connected to the measurement object electrode 14 [para. 0051]), and that applies a voltage to the measurement object electrode (measurement target voltage is output from the measurement target power supply 16 to the measurement target electrode 14 [para. 0051]);
a measurement sensor unit (ISFET 2 [para. 0044]) including a measurement ion sensitive film (measurement ion sensitive membrane 7 [para. 0049]) that generates a voltage corresponding to the concentration of the measurement ions (voltage generated corresponds to the number of trapped measurement ions [para. 0007]);
a measurement film electrode (measurement membrane electrode 17 [para. 0049]) disposed in the measurement ion sensitive film (as illustrated in Fig. 1, measurement membrane electrode 17 is disposed in the measurement ion sensitive membrane 7) to control a potential of the measurement ion sensitive film (measurement membrane electrode 17 controls the voltage of measurement ion sensitive membrane 7 [para. 0053]);
a measurement film power supply (measurement membrane power supply 18 [para. 0052]) that is connectable to the measurement film electrode (measurement membrane power supply 18 is connected to the measurement film electrode 17 [para. 0052]), and that applies a voltage to the measurement film electrode (voltage is applied from measurement membrane power supply 18 to measurement film electrode 17 [para. 0053]); and
a power supply control unit (power supply control unit 19 [para. 0049]) that controls a magnitude of the voltage output from the measurement object power supply (power supply control unit provides a signal to control the measurement target voltage from measurement target power supply 16 [para. 0051]), and that controls a magnitude of the voltage output from the measurement film power supply (power supply control unit 19 controls the measurement membrane power supply 18 such that the membrane control voltage is smaller than the measurement target voltage [para. 0070]; thus, the magnitude is controlled).
Futagawa is silent on the measurement object power supply is connectable to the measurement object electrode “via a first switch”;
a measurement film power supply is connectable to the measurement film electrode “via a second switch”;
a potential difference generation unit connected to the measurement object electrode and the measurement film electrode without passing through the first switch and the second switch, to generate a potential difference between the measurement object electrode and the measurement film electrode.
Kusano teaches an ion-selective measurement device (abstract), and teaches the measurement object power supply is connectable to the measurement object electrode via a first switch (switch 50A is provided to the ISFET 30 in connection with a power supply [para. 0041]; illustrated in Fig. 3); a measurement film power supply is connectable to the measurement object electrode via a second switch (switch 50B is provided to connect the ISFET [para. 0045]; illustrated in Fig. 3).
Futagawa and Kusano are considered analogous art to the claimed invention because they are in the same field of ion selective membrane sensors. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the ion concentration measurement device of Futagawa to measurement object power supply is connectable to the measurement object electrode “via a first switch”; a measurement film power supply is connectable to the measurement object electrode “via a second switch”, as taught by Kusano, as using switches allows the surface potential of the ion sensitive film 31 to be refreshed to initial conditions (Kusano, [para. 0045]).
Modified Futagawa is silent on a potential difference generation unit connected to the measurement object electrode and the measurement film electrode without passing through the first switch and the second switch, to generate a potential difference between the measurement object electrode and the measurement film electrode.
Yamagata teaches a transistor enzyme sensor (abstract), and teaches a potential difference generation unit (external capacitor 12 [twelfth para. page 4]) connected to the measurement object electrode and the measurement film electrode (external capacitor 12 is provided in parallel with external resistor 5 and connected between reference electrode 4 and working electrode 2 [twelfth para. page 4]) without passing through the first switch and the second switch (no switches are used in the sensor of Yamagata), to generate a potential difference between the measurement object electrode and the measurement film electrode (capacitor provides a DC current, thus generates a potential [twelfth para., page 2]).
Modified Futagawa and Yamagata are considered analogous art to the claimed invention because they are in the same field of biosensors. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the ion concentration measurement device of Futagawa to add a potential difference generation unit connected to the measurement object electrode and the measurement film electrode without passing through the first switch and the second switch, to generate a potential difference between the measurement object electrode and the measurement film electrode, as taught by Yamagata, as using a capacitor allows for less noise in sensor measurement, improving accuracy (Yamagata, [twelfth para., page 2]).
Regarding Claim 2, modified Futagawa teaches the ion concentration measurement device according to claim 1, and teaches wherein the potential difference generation unit is a capacitor (as outlined in the claim 1 rejection above, Yamagata teaches the potential generation unit is a capacitor [twelfth para. page 4])).
Conclusion
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/R.L.G./Examiner, Art Unit 1795
/SHIZHI QIAN/Examiner, Art Unit 1795