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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “a drive device” in claim 1.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
a) claim 1 requires “a drive device that drives each of the plurality of sensors; . . . .” This phrase may be read as indicating a method step; however,
claim 1 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform these method steps in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this drive device function;
b) claim 1 requires “. . . ., wherein the controller sequentially switches between/among the plurality of sensors based on a prescribed condition.”
This clause may be read as indicating a method step; however,
claim 1 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform these method steps in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this controller function;
c) in claim 6, line 5, “causes” should be – cause --; and
d) in claim 6, line 6, “causes” should be – cause --.
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.
Claims 1-9 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:
a) Claim limitation “a drive device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
b) claim 3 requires “and the controller is configured to control the plurality of sensors to be used by rotation each for the second period, . . . . [italicizing by the Examiner]” The scope of the phrase “to be used by rotation” is not clear, especially in contrast to “the controller sequentially switches between/among the plurality of sensors based on a prescribed condition.”
c) claim 3 requires “. . . ., wherein the prescribed condition includes a second condition . . . .”; however, there is no prior first condition.
d) claim 3 requires “. . . ., . . . .for the second period, . . . . ”; however, there is no prior first period.
e) claim 5 requires “. . . . , the prescribed condition includes a third condition . . .”; however, there is no prior first or second condition
f) claim 5 requires “. . . ., . . . . exceeds a second threshold value . . . .”; however, there is no prior first threshold value.
g) claim 6 is confusing as it requires “. . . , and the controller is configured to deactivate the third sensor, . . . . [italicizing by the Examiner]” yet it also requires “the third sensor is constantly used”.
h) claim 6 is confusing as it requires “. . . ., causes the fourth sensor to constantly be used, . . . .” yet also requires “. . . ., and the fourth sensor is intermittently used.”
i) claim 6, line 3, requires “. . . ., . . . . a fourth condition, . . . .”; however, there is no prior first, second, and third condition.
j) claim 6, line 4, requires “. . . ., . . . . a third threshold value, . . . .”; however, there is no prior first and second value.
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, 5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shunsuke et al. JP 2021-124473 A1 based on an English language translation provided by Applicant2 (hereafter “Shunsuke”) in view of Kazuya Mizusawa US 5,79,063 (hereafter “Mizusawa”), Heinze DE 4305934 A1 based on EPO machine-generated English language translation (hereafter “Heinze”), and Sasaki et al. US 2005/0155405 A1 (hereafter “Sasaki”).
Addressing claim 1, Shunsuke discloses a sensor system (Figure 2 and paragraph [0038]) comprising:
an yttria-stabilized zirconia sensor (1 in Figures 1 and 2; see also paragraphs [0010] and [0025]);
a drive device that drives the sensor (the Examine is construing voltage source 5 as this drive device. See paragraphs [0038] and [0065].); and
a controller that controls the drive device (this controller is implied by the following, “By changing the magnitude of the voltage applied between the first and second electrodes 17 and 27, another limiting current value corresponding to another constituent gas (for example, water vapor (H2O) or oxygen gas (02)) contained in the measurement gas 4 can be obtained. [italicizing by the Examiner]” See paragraph [0066]. Such controllers are known in the relevant electrochemical sensor art. For example, see Mizusawa the title, Figure 2 (noting especially voltage changer 44 and ECU (electronic control unit) 40, and col. 4:29-56.).
Shunsuke, though, does not disclose a plurality of yttria-stabilized zirconia sensors in the sensor system; there is only one sensor. So, Shunsuke also does not disclose a drive device that drives each of the plurality of sensors; and a controller that controls the drive device, wherein the controller sequentially switches between/among the plurality of sensors based on a prescribed condition.
Heinze discloses an electrochemical sensor comprising “. . . ., several identical or different sensors with the same or different operating principles are arranged on a sensor chip alongside integrated signal processing.” See paragraphs [0001] and [0027]. These identical or different sensors are replacement sensors for a failed sensor whose failure is detected in real time. See paragraphs [0014] and [0029].
Sasaki discloses an electrochemical sensor system comprising a plurality of sensors; and a controller that sequentially switches between/among the plurality of sensors based on a prescribed condition. See Sasaki the title, Abstract, Figures 1, 22, and 23; and paragraphs [0080], [0081], and [0180]-[0184].
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 in the sensor system of Shunsuke a plurality of yttria-stabilized zirconia sensors, rather than just one yttria-stabilized zirconia sensor, similarly as Heinze and Sasaski provide a plurality of redundant sensors, and to also, similarly as done by Heinze and Sasaski, configure the controller to sequentially switch between/among the plurality of sensors based on a prescribed condition (unacceptable sensor degradation as taught by Heinze and Sasaski) because this allow sensing to continue almost uninterrupted even if the performance of the current yttria-stabilized zirconia sensor of the plurality of yttria-stabilized zirconia sensors becomes unacceptable degraded as one of the other (redundant) plurality of yttria-stabilized zirconia sensors can be automatically activated to in its place without handle to handle or otherwise physically manipulate the sensor. See Heinze paragraph [0014] and Sasaski paragraph [00182], last sentence, and paragraph [0183].
Last, since the plurality of yttria-stabilized zirconia sensors of sensor system of Shunsuke as modified by Heinze and Sasaski are identical to each other and intended to be replacement sensors for each other 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 drive device drive each of the plurality of sensors.
Addressing claim 5, as for the claim limitation “. . . ., wherein the plurality of sensors include a first pair of sensors and a second pair of sensors, . . . .”, broadly interpreted it only requires that the sensor system comprise four (two pairs) of sensors. See Heinze Figure 1 and paragraph [0027] and Sasaski Figures 22 and 23. In any event, 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 a second set of sensors equal in number to the plurality of yttria-stabilized zirconia sensors and respectively paired with a sensor of the plurality of yttria-stabilized zirconia sensors because Shunsuke each sensor of the sensor pair may be specifically configured to be selective for a different analyte. For example, Shunsuke discloses that a sensor may be used to sense nitrogen oxides or oxygen or water vapor. As with the first set of sensor (first sensors of each sensor pair), the second set of sensors (second sensor of the sensor pairs) include replacement sensor. See Shunsuke paragraph [0009]. 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 have the prescribed condition include a third condition that a difference in detection value between sensors included in a pair of sensors being used exceeds a second threshold value, and the controller is configured to make switching from the first pair of sensors to the second pair of sensors when the third condition is satisfied while the first pair of sensor is being used because this is will have the controller be configured to also be able to determine whether the second sensor of a sensor pair being currently used has substantially degraded performance, which is just extending the concept of determining sensor degradation extent as discussed in the rejection of claim 1 to another set of redundant sensors.
Addressing claim 7, as a first matter the Examine interprets the additional limitation of this claim, “. . . ., wherein each of the plurality of sensors should be set to a high-temperature state for measurement of a concentration of at least one of oxygen and water vapor, and deterioration of each of the plurality of sensors proceeds due to the high-temperature state… [italicizing by the Examiner]”, to be a contingent limitation. “The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The system claim interpretation differs from a method claim interpretation because the claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed.” See MPEP 2111.04(II). As such, the sensor system of Shunsuke as modified by Heinze and Sasaski can be said to meet this additional limitation as Shunsuke discloses, “The solid electrolyte 20 is heated at a temperature of, for example, 400 ° C. or more and 750 ° C. or less using the heater 12. [italicizing by the Examiner]”
Addressing claim 8, although Shunsuke does not appear to disclose what is the size of the maximum dimension of each of the plurality of yttria-stabilized zirconia sensors, to have it be as claimed, if not already so, is prima facie obvious as a change in size or proportion of each of the sensors as Shunsuke does disclose otherwise suggestive dimensions. For example, “[0024] The thickness of the first electrode 17 is, for example, not less than 0.1 μ m and not more than 10 μ m. The first electrode 17 may extend to the gas inlet 35. The length of the first electrode 17 in the direction along the upper surface of the substrate 10 (the left-right direction in FIG. 1) is, for example, ten times or more the thickness of the first electrode 17.” See Shunsuke paragraph [0024].
Addressing claim 9, similarly as argued in the rejection of underlying claim 8, although Shunsuke does not appear to disclose what is the size of the maximum dimension of each of the plurality of yttria-stabilized zirconia sensors, to have it be as claimed, if not already so, is prima facie obvious as a change in size or proportion of each of the sensors as Shunsuke does disclose otherwise suggestive dimensions. For example, “[0024] The thickness of the first electrode 17 is, for example, not less than 0.1 μ m and not more than 10 μ m. The first electrode 17 may extend to the gas inlet 35. The length of the first electrode 17 in the direction along the upper surface of the substrate 10 (the left-right direction in FIG. 1) is, for example, ten times or more the thickness of the first electrode 17.” See Shunsuke paragraph [0024].
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Shunsuke in view of Heinze and Sasaski as applied to claims 1, 5, and 7-9 above, and further in view of Lee Tice US 2006/0042960 A1 (hereafter “Tice”) .
Addressing claim 2, while Shunsuke as modified by Heinze and Sasaski does disclose “. . . ., wherein the plurality of sensors include a first sensor and a second sensor, . . . .” (consider Heinze Figure 1 and paragraph [0027], and Sasaki Figures 22 and 23, and paragraph [0181]), Shunsuke as modified by Heinze and Sasaski does not disclose “ . . . , the prescribed condition includes a first condition that a total period of use of each of the plurality of sensors exceeds a first period, and the controller is configured to make switching from the first sensor to the second sensor when the first condition is satisfied during use of the first sensor.”
Tice discloses an electrochemical gas sensor system configured to estimate remaining life-time of the gas sensor and signal an alarm if the estimated life-time has been exceeded. See the title, Abstract, Figure 5, and paragraphs [0002]-[0004] and [0040], and claim 34.
In light of Tice, 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 prescribed condition include a first condition that a total period of use of each of the plurality of sensors exceeds a first period, and the controller is configured to make switching from the first sensor to the second sensor when the first condition is satisfied during use of the first sensor because this will be consistent with and further the controller functionality the sensor system of Shunsuke as modified by Heinze and Sasaski as described in the rejection of underlying claim 1 as clearly if the total period of use of each of the plurality of sensors exceeds a first period (its estimated life-time based on Tice) then sensor performance can be expected to be too substantially degraded for the sensor to be useful any more.
Addressing claim 3, as a first matter note (1) that there is no prior first condition in the claim, so the Examiner is construing the second condition as a first condition, (2) that there is no prior first period in the claim, so the Examiner is construing the second period as a first period, and (3) the Examiner is construing the phrase “to be used by rotation” to mean to “rotate use of” the plurality of sensors or use one after the other.
Tice discloses an electrochemical gas sensor system configured to estimate remaining life-time of the gas sensor and signal an alarm if the estimated life-time has been exceeded. See the title, Abstract, Figure 5, and paragraphs [0002]-[0004] and [0040], and claim 34.
In light of Tice, 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 prescribed condition include a second condition [first condition] that a period of continuous use of each of the plurality of sensors exceeds a second period [first period] (estimated life-time of the sensor), and the controller be configured to control the plurality of sensors to be used by rotation each for the second period, based on the second condition because if the period of use of each of the plurality of sensors exceeds a first period (its estimated life-time based on Tice) then sensor performance can be expected to be too substantially degraded for the sensor to be useful any more.
Addressing claim 4, 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 controller in the sensor system of Shunsuke as modified by Heinze and Sasaski be configured to prohibit use of a sensor being used when a difference between a detection value from the sensor being used and a detection value from at least one other sensor exceeds a first threshold value because Sasaski discloses determining whether a difference between a detection value from the sensor being used and a detection value from a reference sensor exceeds a first threshold value, if it does, indicates substantial degradation of the performance of the sensor being used and so use of the sensor being used should be ended. See Sasaki Figure 24 and paragraph [0196]. Such a further configuration of the controller is consistent with configuration described in underlying claim 3 and improves the controller because now the controller will be able to determine whether for some reason a sensor being used has unexpectedly undergone substantial degradation of its performance before its estimated useful lifetime has expired.
Other Relevant Prior Art
The International Search Report for international application no. PCT/JP2023/007060 cites no less than eight “Y” documents. These documents appear, so far, to be redundant, at best, with those applied in the rejection sunder 35 U.S.C 103 above.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejections under
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 combination of limitations in claim 6 has the following underlined features
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In contrast, while Shunsuke as modified by Heinze and Sasaski does disclose having “the plurality of sensors include a third sensor, a fourth sensor, and a fifth sensor, . . . .” (see the rejection of underlying claim 1 and especially see Heinze Figure 1 and paragraph [0027] and Sasaski Figures 22 and 23) in this sensor system of Shunsuke as modified by Heinze and Sasaski once a sensor has started to be used it is continually used until either the entire sensor system is turned off or until the sensor deemed to substantially degraded (such as its estimated lifetime has expired) when it will no longer be used and a replacement sensor of the same type is used instead.
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/ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
1 Note that this patent has two persons, Amamoto Yurina and Yuji Hiroyuki, who are listed as inventors who are not listed as inventors for the instant application, 18/815401.
2 See Applicant’s Information Disclosure Statement of August 26, 2024.