DETAILED CORRESPONDENCE
Summary
This Office Correspondence is based on the Response filed with the Office on 28 May 2026, regarding the Berduque, et al. application.
Claims 1, 3-19, 21 and 22 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
The claim limitations deemed to invoke interpretation under 35 USC 112(f) are:
Claim 19: “means for providing a reference potential” (a pseudo-reference electrode)
“means for generating a dependent potential” (a dependency electrode)
“means for compensating” (a processing circuit)
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.
Claims 1, 4, 6-10, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a US Patent Application Publication to Zevenbergen (US 2016/0178572 A1; hereinafter, “Zevenbergen”).
Regarding claim 1, Zevenbergen discloses a measurement system (Abstract: “An ion sensor for sensing an ion concentration in a bulk solution”) comprising:
a pseudo-reference electrode configured to provide a reference potential ([0010]: “The ion sensor may comprise a reference electrode embedded in a reference electrolyte solution having reference ions, and the electrolyte solution may induce a voltage on the reference electrode which is dependent on the concentration of reference ions in the reference electrolyte solution.”); and
a dependence electrode configured to generate a dependence potential when exposed to a sample ([0010]: “ … a second electrode which is ion-selective to the reference ions or to an ion different from the ion to be measured.”),
wherein both the reference potential and the dependence potential vary based on a property of the sample ([0010]: dependence of both the reference and second electrode to reference ions), and
wherein an electrochemical sensor comprises the pseudo-reference electrode and the dependence electrode ([0010]: “The ion sensor may comprise a reference electrode … [t]he ion sensor may further comprise … a second electrode…”).
Additionally, Zevenbergen teaches the ion sensor may further comprise a controller for determining a first potential difference between the first electrode and the reference electrode as a measure for the ion concentration in the bulk solution, and for correcting the first potential difference between the first electrode and the reference electrode with a second potential difference between the second electrode and the reference electrode to compensate for the drift of the reference electrode ([0010]).
Regarding claim 4, Zevenbergen teaches multiple electrodes 310-330. The additional electrodes would read on the counter electrode and the working electrode as required in claim 4.
Regarding claim 6, Zevenbergen teaches the potential of the Ag/AgCI electrode depends on the chloride concentration in the reference electrolyte solution ([0005]), and further teaches a second electrode which is ion-selective to the reference ions ([0010]).
Regarding claim 7, Zevenbergen teaches the potential of the Ag/AgCI electrode depends on the chloride concentration in the reference electrolyte solution ([0005]).
Regarding claim 8, Zevenbergen teaches a reference electrode comprising an Ag/AgCI wire ([0005]).
Regarding claims 9 and 10, Zevenbergen teaches increasing the stability of miniaturized reference electrodes is preferably done without increasing the volume of the reference electrolyte solution. Many studies on miniaturized reference electrodes have focused on the composition of the reference electrolyte solution ( e.g., a hydro gel), and covering it with membranes to slow down the out-diffusion of chloride ions ([0008]).
Regarding claim 11, Zevenbergen teaches the second electrode 330 is an ion-selective electrode that is sensitive for the reference ions (e.g., the type of ions leaching out of the reference electrode and causing drift; [0068]); and the reference electrolyte is 3M KCl and chloride ions leached out of the reference electrolyte solution ([0080]). Zevenbergen teaches the 2nd electrode 330 is bare AgCl electrode. Thus, one can use an ISE with a membrane to detect the chloride ions leached out from the reference solution.
Regarding claim 14, Fig.3 in the Zevenbergen shows two dependence electrodes 330, the 2nd 330 is deemed as the 2nd dependence electrode.
Regarding claims 15-17, Zevenbergen teaches the ion sensor may further comprise a controller for determining a first potential difference between the first electrode and the reference electrode as a measure for the ion concentration in the bulk solution, and for correcting the first potential difference between the first electrode and the reference electrode with a second potential difference between the second electrode and the reference electrode to compensate for the drift of the reference electrode ([0010]).
Regarding claim 18, similar to the rejection to claim 15 above, Figure 3 of Zevenbergen teaches a 2nd dependence electrode 330. The step for utilizing said 2nd dependence electrode would be the same as the method step taught in the rejection to claim 15 above.
Regarding claim 19, Zevenbergen the shared limitations of instant claim 1, as outlined above. Additionally, Zevenbergen teaches a controller, as outlined in the rejection to claim 1 above.
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.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zevenbergen.
Regarding claims 12 and 13, the primary reference teaches the reference electrode 310 in the reference electrolyte solution 340 is conditioned in 3M KCl.
It would be obvious to store the pseudo-reference electrode in 3M KCl to prevent contamination and ensure that it remains in good working condition.
Further addressing claim 13, since the primary reference also teaches the 2nd reference electrode 330 is also an AgCl electrode, and the reference electrode is also AgCl [0075, 0084], it would be obvious to store the dependence electrode in the same way as the pseudo-reference electrode in 3M KCl solution.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Zevenbergen as applied to claim 1 above, and further in view of a published Japanese Patent Application, JP 2001108652 A1 (hereinafter, “JP ‘652”).
Regarding claim 3, Zevenbergen teaches the limitations of instant claim 1, as outlined above.
Zevenbergen does not teach the processing circuit is further configured to control a bias potential between a working electrode and the pseudo-reference electrode.
However, JP ‘652 teaches a device for measuring the pH and residual chlorine concentration of the test solution. The voltage difference between the working electrode 12 and the reference electrode 14 is controlled by controlling the applied voltage between the working electrode 12 and the counter electrode 13 (Abstract).
The motivation to modify measurement system of Zevenbergen with the teachings of JP ‘652 would be that the modified measurement system can be used to measure the residual chlorine concentration of a test solution.
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Zevenbergen as applied to claims 1 and 4 above, and further in view of a published US Patent Application Publication, US 20040188252 A1 (hereinafter, “US ‘252”).
Regarding claim 3, Zevenbergen teaches the limitations of instant claim 1, as outlined above.
Zevenbergen does not teach the at least one working electrode comprises a plurality of working electrodes, and wherein the plurality of working electrodes, the counter electrode, the pseudo-reference electrode and the dependence electrodes are arranged in-line.
However, US ‘252 shows working electrodes (6) and the reference electrode are arranged in line (Figures 1 & 2).
At the time of the filing of the present application, it would have been obvious to adapt the in line configuration of electrodes shown in US ‘252 into the measurement system detailed by Zevenbergen because it would allow for the narrowest of flow channel to allow analysis of small volumes.
Allowable Subject Matter
Claims 21 and 22 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: The cited Zevenbergen reference is considered the closest prior art to the instant claims. However, Zevenbergen does not anticipate or render obvious a processing circuit configured to compensate for a junction potential, as required by each of claims 21 and 22.
Response to Arguments
Applicant's arguments filed 28 May 2026, have been fully considered but they are not persuasive. Applicant argues, “… Zevenbergen at best relates to compensating for the drift of the reference electrode … the drift of the reference electrode in Zevenbergen is not the same as a dependency that results in a variation of the reference potential in response to a variation in the property of the sample.” (Remarks, p. 8). This argument ignores that the drift of the reference electrode of Zevenbergen teaches, “[i]f the reference electrode is immersed in a solution with a different chloride concentration, chloride ions will leach out which leads to a change in chloride concentration in the reservoir and therefore drift of the reference electrode.” ([0005]). This demonstrates that the reference electrode drift mentioned in the Zevenbergen reference are derived from changes in chloride concentration, and thus dependent on “a variation in the property of the sample”. Therefore, the Applicant’s argument is not persuasive as to the allowability of the pending claims.
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached on M - F, 9 am - 5:30 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 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.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
Prosecution Insights