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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/17/2024 and 4/28/2026 has been considered by the examiner.
Election/Restrictions
Applicant's election of Group I, Claims 34-44, without traverse in the reply filed on 03/18/2026 is acknowledged.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 34-43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiong et al. (Stripping analysis of Pb(II), Cd(II), Hg(II) and Cu(II) based on irradiated attapulgite/Ionic liquid composites, Chemical Engineering Journal, 2017, 316, 383-392).
Regarding claim 34, Xiong teaches an apparatus (an apparatus comprising a CHI 660D computer-controlled electrochemical workstation, IAP30/RTIL composite modified GCE as a WE for simultaneous detection of Pb(II), Cd(II), Cu(II) and Hg(II) in a soil sample [sections 2 and 3.10; Figs. 3, 5, and 7]) comprising:
a soil sensor comprising an electrode (IAP/RTIL composite modified GCE as a WE [section 2.2; IAP30/RTIL/GCE in Figs. 3, 5 and 7]), wherein the electrode comprises a room temperature ionic liquid (RTIL)-based film layer (RTIL in IAP30/RTIL/GCE in Figs. 3, 5 and 7; RTIL of [C4dmim][NTf2] [section 2.2]),
wherein the electrode is to be brought into direct contact with a soil sample (The limitation is an intended use limitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the IAP30/RTIL/GCE working electrode to determine Hg(II) in real soil sample, and the results shown in Table 4 indicate that the proposed electrode can be employed for analysis of soil samples (section 3.10 and Table 4). Thus, the disclosed electrode is configured to perform the intended use of being brought into direct contact with a soil sample), and
“the soil sensor is functionalized to detect one or more characteristics of the soil sample and generate a signal corresponding to the one or more characteristics” is a functional limitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the sensor comprising IAP30/RTIL/GCE working electrode to determine Hg(II) in real soil sample (section 3.10), and further teaches the sensor comprising IAP30/RTIL/GCE working electrode for the detection of Cd(II), Pb(II), Cu(II) and Hg(II) (section 3.6 and Fig.7). Fig.7 shows the signals corresponding to Cd(II), Pb(II), Cu(II) and Hg(II) in the sample. Thus, the disclosed soil sensor is configured to detect one or more characteristics (metal ions) of the soil sample and generate a signal corresponding to the one or more characteristics (see Fig.7 and Table 4).
Regarding claim 35, Xiong teaches the apparatus of claim 34, and “wherein the electrode is to measure electrochemical features of the soil sample, the one or more characteristics comprise soil health attributes of the soil sensor, and the one or more characteristics are derivable from the electrochemical features” are functional recitations. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the IAP30/RTIL/GCE working electrode to electrochemically determine Hg(II) in real soil sample (section 3.10), and further teaches the IAP30/RTIL/GCE working electrode for the electrochemical detection of Cd(II), Pb(II), Cu(II) and Hg(II) (section 3.6 and Fig.7). Thus, the disclosed IAP30/RTIL/GCE working electrode is configured to measure electrochemical features (SWAV responses of metal ions as shown in Fig.7a) of the soil sample, the one or more characteristics comprise soil health attributes of the soil sensor (metal ions in soil are critical components of soil health), and the one or more characteristics are derivable from the electrochemical features (presence and concentration of each metal ion are derivable from the electrochemical features as shown in Fig.7 and Table 4).
Regarding claim 36, Xiong teaches the apparatus of claim 35, and “wherein the soil sensor is to continuously generate signals corresponding to the electrochemical features measured for the soil sample by the soil sensor” is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the soil sensor to electrochemically determine Hg(II) in real soil sample (section 3.10), and further teaches the sensor for the electrochemical detection of Cd(II), Pb(II), Cu(II) and Hg(II) (section 3.6 and Fig.7). Furthermore, since the disclosed soil sensor comprising substantially the same elements or components as that of the applicant (see claim 34), it is contended that the disclosed soil sensor is capable of continuously generating signals corresponding to the electrochemical features measured for the soil sample by the soil sensor.
Regarding claim 37, Xiong teaches the apparatus of claim 34, wherein the RTIL-based film layer serves as an active element for the soil sensor (incorporation of excellent conductive RTIL accelerate the electron transfer of redox probe [section 3.2]. Thus, the RTIL-based film layer serves as an active element for the soil sensor).
Regarding claim 38, Xiong teaches the apparatus of claim 34, wherein the RTIL-based film layer serves a binding element for the soil sensor (IAP30/RTIL/GCE electrodes in Figs. 3, 5, and 7; RTIL is a binding element between IAP30 and GCE in IAP30/RTIL/GCE electrodes [section 2.2]), and the binding element stabilizes use of another substance (IAP30 in IAP30/RTIL/GCE electrodes) on the electrode used as an active element for the soil sensor (Fig.6 shows IAP30 modified electrode for the individual analysis of Cd(II), Pb(II) and Hg(II), thus IAP30 is also an active element for the soil sensor comprising IAP30/RTIL/GCE working electrode).
Regarding claim 39, Xiong teaches the apparatus of claim 34, and “wherein the RTIL-based film layer serves as a support electrolyte for the electrode” is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the RTIL-based film layer disposed on the GCE for the analysis of real soil sample (section 3.10), thus the disclosed RTIL-based film layer is capable of serving as a support electrolyte for the IAP30/RTIL/GCE electrode.
Regarding claim 40, Xiong teaches the apparatus of claim 34, and “wherein the one or more characteristics comprise a soil hydration level of the soil sample” is a functional recitation of the soil sensor. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the results indicate that the proposed electrode can be employed for analysis of soil samples (section 3.10). Furthermore, since the disclosed soil sensor comprising substantially the same elements or components as that of the applicant (see claim 34), it is contended that the disclosed soil sensor is capable of detecting the one or more characteristics comprising a soil hydration level of the soil sample.
Regarding claim 41, Xiong teaches the apparatus of claim 34, and “wherein the one or more characteristics comprise presence of chemical components within the soil sample” is a functional recitation of the soil sensor. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the soil sensor to detect the presence of chemical components of Hg(II) ions within the soil sample (section 3.10 and Table 4). Thus, the disclosed soil sensor is capable of detecting the one or more characteristics comprising presence of chemical components within the soil sample.
Regarding claim 42, Xiong teaches the apparatus of claim 41, “wherein the chemical components comprise one of a level of organic compounds within the soil sample or a level of carbon-based minerals within the soil sample” is a functional recitation of the soil sensor. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Xiong teaches the soil sensor is configured to detect the presence of chemical components in the soil sample, as outlined in the rejection of claim 41 above. Since the disclosed soil sensor comprising substantially the same elements or components as that of the applicant (see claim 34), it is contended that the disclosed soil sensor is capable of detecting the chemical components comprising one of a level of organic compounds within the soil sample or a level of carbon-based minerals within the soil sample.
Furthermore, the claimed limitation further limits the sample but fails to further limit the apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." See MPEP 2115. Since the claim further limits the chemical components of the soil sample (material worked upon) but fails to limit the soil sensor (by a structure being claimed), the limitations of the claim have no patentable weight.
Regarding claim 43, Xiong teaches the apparatus of claim 34, and “wherein the one or more characteristics comprise volumetric density of the soil sample” is a functional recitation of the soil sensor. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, since the disclosed soil sensor comprising substantially the same elements or components as that of the applicant (see claim 34), it is contended that the disclosed soil sensor is capable of detecting the one or more characteristics comprising volumetric density of the soil sample.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Xiong, as applied to claim 34 above, and in view of Banga et al. (Characterization of room-temperature ionic liquids to study the electrochemical activity of nitro compounds, Sensors, 2020, 20, 1124).
Regarding claim 44, Xiong teaches the apparatus of claim 34, wherein the RTIL film layer comprises [C4dmim][NTf2] RTIL (section 2.2).
Xiong is silent to wherein the RTIL is a 1-butyl-3-methyl imidazolium tetra fluoroborate [BMIM] [BF4].
Banga teaches selection of RTIL for RTIL modified electrode (section 3.1). Among many RTILs, cations like BMIM+, EMIM+ and anions like BF4- and TF2N- are highly popular for their high conductivity, electrochemical stability and moderate viscosity (section 3.1). Fig.2 shows CV of [BMIM][BF4]-modified GCE as WE.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the RTIL of Xiong with [BMIM][BF4] RTIL, as taught by Banga, since [BMIM][BF4] RTIL is highly popular for its high conductivity, electrochemical stability and moderate viscosity (section 3.1 in Banga). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 34 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of co-pending Application No. 18/880,492 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 34 is anticipated by claim 2 of ‘492 since application ‘492 describes: an apparatus comprising: a sensor to detect levels of total soil carbon in a sample of soil, the sensor comprising: a working electrode coated in a composite sensing coating, wherein the composite sensing coating comprises: an active sensing component comprising an organic carbon sensing element functionalized to detect organic carbon moieties, wherein the organic carbon sensing element comprises a room temperature ionic liquid (RTIL). Thus, claim 2 of ‘492 discloses an apparatus comprising: a soil sensor comprising an electrode (a sensor comprising a working electrode in claim 1 of ‘492 and the sensor is a soil sensor since it is to detect levels of total soil carbon in a sample of soil), wherein the electrode comprises a room temperature ionic liquid (RTIL)-based film layer (the working electrode is coated with a composite sensing coating comprising RTIL [claims 1 and 2 of ‘492]), wherein the electrode is to be brought into direct contact with a soil sample (the sensor is to detect levels of total soil carbon in a sample of soil, thus the working electrode of the sensor in ‘492 is configured to perform the intended use), and the soil sensor is functionalized to detect one or more characteristics of the soil sample and generate a signal corresponding to the one or more characteristics (detect levels of total soil carbon in a sample of soil [claim 1 in ‘492]).
Conclusion
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure: Morgan et al. (US20170370064A1) teaches a soil penetrometer housing an array of sensors allowing the interpretation and quantification of soil constituents and contaminants at high vertical resolution. Burrell et al. (US20060278536A1) teaches sensor comprising supported aprotic ionic liquid for sensing analyte present in a test atmosphere. Miller et al. (US20230304959A1) teaches solid state soil sensor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V. 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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHIZHI QIAN/Examiner, Art Unit 1795
Prosecution Insights