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 filed March 25, 2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, a concise explanation of the relevance of DE 1133923 A1 and NPL Cite Nos. 1-6, 8, and 10 have not been provided.
The information disclosure statement filed March 25, 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, the copies of NPL Cite Nos. 6-8 are not legible.
Claim Objections
Claim 1 is objected to because of the following informalities: in lines 3-4, “a rod-shaped sensor” should read “the rod-shaped sensor”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: in line 6, “lattice structure, a secondary fastening unit” should read “lattice structure, and a secondary fastening unit”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation “a rod-shaped sensor” in line 7 of the claim. It is unclear whether “a rod-shaped sensor” in line 7 is the same as or different from the previously recited “a sensor” in line 2 of claim 7. For the purpose of examination, Examiner interprets them to be the same. Claims 8-11 are rejected as dependent thereon.
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 1-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Dicks et al. (US 6,197,172 B1) in view of Lee et al. (US 2016/0109402 A1).
Regarding claim 1, Dicks teaches a protective membrane system for a rod-shaped sensor (a modified membrane 44 and adhesive-backed washer 142 for a rod-shaped electrochemical sensor 110, Dicks, Figs. 2, 4, & 6, col. 6, lns. 23 & 34-36), comprising:
a membrane unit which is resilient (the modified membrane 44 comprises a membrane layer 145 made from polyester and having an average pore size of 0.1 microns to 1.0 microns, Dicks, Figs. 2, 4, & 6, col. 6, lns. 46-49 & 57-58; the modified membrane 44 prolongs the uselife of the sensor, Dicks, col. 3, lns. 10-13).
Dicks teaches that the membrane layer 145 is made from polyester and has an average pore size of 0.1 microns to 1.0 microns (Dicks, Figs. 2, 4, & 6, col. 6, lns. 46-49 & 57-58). Dicks teaches that the membrane system allows passage of the chemical species to be measured by the ion selective electrode (Dicks, col. 3, lns. 1-4). Dicks fails to teach wherein the membrane layer has a lattice structure.
Lee teaches an ion selective electrode sensor including open mesh fabric sieves traversing an opening in a housing of the ion selective electrode sensor (Lee, abstract). Lee teaches that the sieve disk 13 allows ion exchange to occur between a test solution outside of the housing 1 and the internal solution 14 of the ion selective electrode sensor 10 (Lee, Fig. 1, para. [0009], [0020]). Lee teaches that the sieve disk 13 is a woven open mesh fabric constructed from polyester with a mesh size in the range of about 80 to 120 µm (Lee, Fig. 1, para. [0023]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the porous membrane layer 145 of Dicks to have a mesh sieve shape as taught by Lee in order to yield the predictable result of allowing passage of the chemical species to be measured by the ion selective electrode. Additionally, generally, differences in shape will not support the patentability of subject matter encompassed by the prior art absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(IV)(B). Therefore, it would have been a matter of choice to use a mesh sieve shape which a person of ordinary skill in the art would have found obvious.
Modified Dicks teaches a secondary fastening unit which is suitable for fastening the membrane unit to a rod-shaped sensor (the adhesive-backed washer 142 secures in place the modified membrane 44 over sensor body face 116 of the rod-shaped electrochemical sensor 110, Dicks, Figs. 2, 4, & 6, col. 6, lns. 23 & 34-36).
The limitations “for a rod-shaped sensor,” “resilient,” and “suitable for fastening the membrane unit to a rod-shaped sensor” are interpreted as intended use and/or functional language. Examiner further notes that “a rod-shaped sensor” is not a positively recited element of the claim, and therefore, is not an element of the claimed protective membrane system. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114. The modified membrane 44 and adhesive-backed washer 142 disclosed by Modified Dicks teach all of the structural limitations of the claim and thus are configured for and capable of the interpreted as intended use and/or functional language as recited in the rejection supra.
Regarding claim 2, Modified Dicks teaches wherein the lattice structure has meshes of a size less than 1 mm (the mesh sieve membrane layer 145 has a mesh size of 0.1 microns to 1.0 microns, Dicks, Figs. 2, 4, & 6, col. 6, lns. 46-49, Lee, para. [0023], see modification supra).
Regarding claim 3, Modified Dicks teaches wherein the membrane unit comprises textile (the membrane layer 145 comprises polyester, Dicks, Figs. 2, 4, & 6, col. 6, lns. 46-49).
Regarding claim 4, Modified Dicks teaches wherein the secondary fastening unit comprises an O-ring or a hook element (the adhesive-backed washer 142 has a hook shape, Dicks, Figs. 2 & 6, col. 6, lns. 34-36).
Regarding claim 5, Modified Dicks teaches wherein the protective membrane system further comprises an intermediate layer which is suitable for being arranged between the membrane unit and the rod-shaped sensor (the modified membrane 44 further comprises an exchanger layer 147 arranged between the membrane layer 145 and the rod-shaped electrochemical sensor 110, Dicks, Figs. 2, 4, & 6, col. 6, lns. 23 & 57-59).
The limitation “suitable for being arranged between the membrane unit and the rod-shaped sensor” is interpreted as intended use and/or functional language. Examiner further notes that “the rod-shaped sensor” is not a positively recited element of the claim, and therefore, is not an element of the claimed protective membrane system. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114. The modified membrane 44 disclosed by Modified Dicks teaches all of the structural limitations of the claim and thus is configured for and capable of the interpreted as intended use and/or functional language as recited in the rejection supra.
Regarding claim 6, Modified Dicks teaches wherein the membrane unit is suitable to reduce ion transport through the membrane unit (the modified membrane 44 including the membrane layer 145 allows passage of the chemical species to be measured while inhibiting the passage of other species, Dicks, col. 3, lns. 1-9, col. 4, lns. 20-34, col. 6, lns. 42-53).
The limitation “suitable to reduce ion transport through the membrane unit” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114. The modified membrane 44 comprising the membrane layer 145 disclosed by Modified Dicks teaches all of the structural limitations of the claim and thus is configured for and capable of the interpreted as intended use and/or functional language as recited in the rejection supra.
Regarding claim 7, Dicks teaches a sensor unit (an electrochemical sensor 110, Dicks, Figs. 2 & 6, col. 6, lns. 23) comprising:
a sensor having a sensor body which extends along an axis and has a first end (the electrochemical sensor 110 has a sensor body 112 which extends along an axis and has a first end with a sensor body face 116, Dicks, Figs. 2 & 6, col. 6, lns. 23-28), wherein a sensitive unit is arranged at the first end (an active sensor membrane 117 is formed on the sensor body face 116 at the first end, Dicks, Figs. 2 & 6, col. 6, lns. 28-29), and the first end is suitable for being immersed in a process medium (the active sensor membrane 117 at the first end is for sensing a specific chemical species in a test medium, Dicks, Figs. 2 & 6, col. 3, lns. 56-65, col. 5, lns. 40-42, col. 6, lns. 28-29), and
a protective membrane system including a membrane unit which is resilient (a modified membrane 44 comprises a membrane layer 145 made from polyester and having an average pore size of 0.1 microns to 1.0 microns, Dicks, Figs. 2, 4, & 6, col. 6, lns. 46-49 & 57-58; the modified membrane 44 prolongs the uselife of the sensor, Dicks, col. 3, lns. 10-13), a secondary fastening unit which is suitable for fastening the membrane unit to a rod-shaped sensor (the modified membrane 44 is secured in place to the rod-shaped electrochemical sensor 110 using the hook-shaped edges of the modified membrane 44, Dicks, Figs. 2, 4, & 6, col. 4, lns. 35-45, col. 6, lns. 23 & 34-36).
Dicks teaches that the membrane layer 145 is made from polyester and has an average pore size of 0.1 microns to 1.0 microns (Dicks, Figs. 2, 4, & 6, col. 6, lns. 46-49 & 57-58). Dicks teaches that the membrane system allows passage of the chemical species to be measured by the ion selective electrode (Dicks, col. 3, lns. 1-4). Dicks fails to teach wherein the membrane layer has a lattice structure.
Lee teaches an ion selective electrode sensor including open mesh fabric sieves traversing an opening in a housing of the ion selective electrode sensor (Lee, abstract). Lee teaches that the sieve disk 13 allows ion exchange to occur between a test solution outside of the housing 1 and the internal solution 14 of the ion selective electrode sensor 10 (Lee, Fig. 1, para. [0009], [0020]). Lee teaches that the sieve disk 13 is a woven open mesh fabric constructed from polyester with a mesh size in the range of about 80 to 120 µm (Lee, Fig. 1, para. [0023]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the porous membrane layer 145 of Dicks to have a mesh sieve shape as taught by Lee in order to yield the predictable result of allowing passage of the chemical species to be measured by the ion selective electrode. Additionally, generally, differences in shape will not support the patentability of subject matter encompassed by the prior art absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(IV)(B). Therefore, it would have been a matter of choice to use a mesh sieve shape which a person of ordinary skill in the art would have found obvious.
Modified Dicks teaches wherein the protective membrane system is arranged at the first end and fastened to the sensor body such that the sensitive unit is covered by the protective membrane system towards the process medium (the modified membrane 44 is arranged over the sensor body face 116 at the first end and secured to the sensor body 112 such that the active sensor membrane 117 is covered by the modified membrane 44 towards the test medium, Dicks, Figs. 2 & 6, col. 3, lns. 56-65, col. 6, lns. 23-36).
The limitations “suitable for being immersed in a process medium,” “resilient,” and “suitable for fastening the membrane unit to a rod-shaped sensor” are interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). 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. See MPEP § 2114. The electrochemical sensor 110 disclosed by Modified Dicks teach all of the structural limitations of the claim and thus are configured for and capable of the interpreted as intended use and/or functional language as recited in the rejection supra.
Regarding claim 8, Modified Dicks teaches wherein the sensor body has a primary fastening unit which is complementary to the secondary fastening unit of the protective membrane system (the electrochemical sensor 110 has an adhesive-backed washer 142 which is complementary to the hook-shaped edges of the modified membrane 44 for sandwiching the modified membrane 44, Dicks, Figs. 2, 4, & 6, col. 4, lns. 35-45, col. 6, lns. 23 & 34-36).
Regarding claim 10, Modified Dicks teaches wherein the primary fastening unit comprises a hook element (the adhesive-backed washer 142 has a hook shape, Dicks, Figs. 2 & 6, col. 6, lns. 34-36), and the secondary fastening unit is formed integrally with the membrane unit (the hook-shaped edges of the modified membrane 44 are formed integrally with the modified membrane 44, Dicks, Figs. 2 & 6, col. 4, lns. 35-45, col. 6, lns. 34-36).
Regarding claim 11, Modified Dicks teaches wherein the sensor comprises an ion-selective electrode (the electrochemical sensor 110 is an ion-selective electrode, Dicks, Figs. 2 & 6, col. 5, lns. 12-15, col. 6, ln. 23), and has an electrolyte in the sensor body (an electrolyte 122 in the sensor body 112, Dicks, Figs. 2 & 6, col. 6, lns. 30-33), and has a discharge line arranged in the electrolyte (an active electrode 138 arranged in the electrolyte 122, Dicks, Fig. 2, col. 6, lns. 26 & 32-33), wherein the sensitive unit is an ion-selective membrane which is in direct contact with the electrolyte (the active sensor membrane 117 is an ion-selective membrane which is in direct contact with the electrolyte 122, Dicks, Figs. 2 & 6, col. 5, lns. 40-41, col. 6, lns. 27-33 & 64).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Dicks in view of Lee as applied to claim 8 above, and further in view of Havas et al. (US 4,375,399 A).
Regarding claim 9, Modified Dicks teaches that the electrochemical sensor 110 has an adhesive-backed washer 142 which is complementary to the hook-shaped edges of the modified membrane 44 for sandwiching the modified membrane 44 in place to the electrochemical sensor 110 (Dicks, Figs. 2, 4, & 6, col. 4, lns. 35-45, col. 6, lns. 23 & 34-36). This embodiment of Modified Dicks fails to teach wherein the primary fastening unit is a groove in the sensor body running around the axis, and the secondary fastening unit is designed as an O-ring.
However, Dicks teaches that the modified membrane 44 may alternatively be held in place by an O-ring instead of the adhesive-backed washer 142 (Dicks, col. 4, lns. 37-40). Dicks also teaches that the sensor body 112 has a groove running around the axis near the modified membrane 44 (Dicks, Figs. 2 & 6).
Furthermore, Havas teaches an ion-selective electroanalytical sensor (Havas, col. 1, lns. 8-10). Havas teaches that the membrane 7 is fixed to the covering body 1 by a rubber ring 8, and the covering body 1 has a groove running around its axis where the rubber ring 8 is placed (Havas, Figs. 1-2, col. 4, lns. 32-33, col. 7, lns. 1-2).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the adhesive-backed washer 142 of Modified Dicks with an O-ring as taught by Havas and the alternative embodiment of Dicks in order to yield the predictable result of fixing an elongated modified membrane 44 to the sensor using the O-ring along the groove. Simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 U.S.P.Q.2d 1385 (2007); MPEP § 2143(I)(B). 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIVIAN A TRAN whose telephone number is (571)272-3232. The examiner can normally be reached Mon - Fri 9am-5pm.
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794