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 .
Election/Restrictions
Upon further consideration of the claims, Examiner notes that Groups I and III are now combined to form the collective Group I (claims 1-2, 4, 6, 8, 10, 12-14, and 69-74) because they contain overlapping subject matter of the same embodiment where the plurality of microneedles are disposed on the substrate. Group V (claims 102-109 and 111) remains separated because it is drawn to a different embodiment where the plurality of microneedles are disposed on a second side of at least one sidewall opposite to the first side of the sidewall attached to the substrate.
Applicant's election with traverse of Group I in the reply filed on July 2, 2026 is acknowledged. The traversal is on the ground(s) that Groups I, III, and V share one or more special technical features, including “wherein the microneedles have a bending angle of less than 15° at a pressure of 600 kPa” that fully distinguish them from Olson and are sufficiently related such that an undue burden would not be presented to the Examiner. Applicant asserts that Olson nowhere discloses or contemplates any plant-related application. This is not found persuasive because unity of invention considers the shared technical feature among all of the groups. It is not the comparison of each pair of groups. Groups I-V only share the technical feature of a plurality of microneedles, which is not a special technical feature as it does not make a contribution over the prior art in view of Olson (US 2003/0009113 A1). Olson teaches multiple micro-needles 80 (Figs. 2A-2B, para. [0053]), which can be capable of being used for plant-related applications.
The requirement is still deemed proper and is therefore made FINAL.
Claims 42-43, 45-47, 50, 53-55, 57-58, 62-64, 67, 84-86, 102-109, and 111 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 2, 2026.
Status of the Claims
Claims 1-2, 4, 6, 8, 10, 12-14, 42-43, 45-47, 50, 53-55, 57-58, 62-64, 67, 69-74, 84-86, 102-109, and 111 are pending in the application. Claims 42-43, 45-47, 50, 53-55, 57-58, 62-64, 67, 84-86, 102-109, and 111 are withdrawn, and claims 1-2, 4, 6, 8, 10, 12-14, and 69-74 are being examined herein.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 3, “the substrate” should read “the biocompatible polymer substrate”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: in lines 1-2, “a bending angle” should read “the bending angle”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities:
In line 3, “the sensors” should read “the one or more sensors”.
In line 5, “c) or” should read “or c)”.
Appropriate correction is required.
Claim 8 is objected to because of the following informalities:
In line 2, “a height dimension” should read “the height dimension”.
In lines 3-4, “a base-width dimension” should read “the base-width dimension”.
In line 5, “c) or” should read “or c)”.
Appropriate correction is required.
Claim 10 is objected to because of the following informalities: in line 2, “a vertex angle” should read “the vertex angle”. Appropriate correction is required.
Claim 69 is objected to because of the following informalities: in line 3, “the substrate” should read “the biocompatible polymer substrate”. Appropriate correction is required.
Claim 71 is objected to because of the following informalities: in line 4, “3-” should read “(3-”. Appropriate correction is required.
Claim 73 is objected to because of the following informalities:
In line 1, “the WE” should read “the at least one WE”.
In line 2, “PANI” should read “polyaniline (PANI)”.
Appropriate correction is required.
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(s) is/are: “communication unit” in claim 74 (there is no corresponding structure in the instant specification).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are 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/these limitation(s) 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(s) to avoid it/them 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(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 74 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 74 recites the limitations “communication unit” which 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, this means-plus-function limitation lacks adequate written description. MPEP § 2181(IV).
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 4, 6, 12, 14, 70, and 72-74 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 4 recites the limitation “at least one sensor is configured to measure a physical parameter and/or at least one sensor is configured to measure a chemical parameter” in lines 1-3 of the claim. It is unclear whether these recitations of “at least one sensor” in claim 4 are the same as, different from, or part of the previously recited “one or more sensors” of claim 1. For the purpose of examination, Examiner interprets “at least one sensor” of claim 4 to be part of the previously recited “one or more sensors” of claim 1. If that is the correct interpretation, then Examiner suggests amending claim 4 to recite “at least one sensor of the one or more sensors is configured to measure a physical parameter and/or at least one sensor of the one or more sensors is configured to measure a chemical parameter”.
Claim 6 recites the limitation “at least one sensor” in line 1 of the claim. It is unclear whether “at least one sensor” in claim 6 is the same as, different from, or part of the previously recited “one or more sensors” of claim 1. For the purpose of examination, Examiner interprets “at least one sensor” of claim 6 to be part of the previously recited “one or more sensors” of claim 1. If that is the correct interpretation, then Examiner suggests amending claim 6 to recite “at least one sensor of the one or more sensors”.
Claim 12 recites the limitation “a pH sensor” in line 2 of the claim. It is unclear whether “a pH sensor” in claim 12 is part of the previously recited “one or more sensors” of claim 1. For the purpose of examination, Examiner interprets “a pH sensor” of claim 12 to be one of the previously recited “one or more sensors” of claim 1.
Claim 14 recites the limitation “one or more of the processor, the communication unit, the power supply unit, and the data acquisition system” in lines 3-4 of the claim. It is unclear whether this limitation requires: a) one or more processors, one or more communication units, one or more power supply units, and one or more data acquisition systems, or b) at least one of the processor, the communication unit, the power supply unit, or the data acquisition system. For the purpose of examination, Examiner interprets this limitation to mean the latter.
Claim 70 recites the limitation “a reference electrode (RE), at least one working electrode (WE), and optionally a counter electrode (CE)” in lines 1-2 of the claim. It is unclear whether these electrodes in claim 70 are the same as, different from, or part of the previously recited “two or more electrodes” of claim 69. For the purpose of examination, Examiner interprets “a reference electrode (RE), at least one working electrode (WE), and optionally a counter electrode (CE)” of claim 70 to be part of the previously recited “two or more electrodes” of claim 69. Claims 72-73 are rejected as dependent thereon.
Claim limitation “communication unit” in claim 74 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.
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 (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 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 1-2, 4, 6, 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie et al. (CN 112858430 A) (references herein made with respect to English Machine Translation).
Regarding claim 1, Xie teaches a plant sensor (a plant sensor 10, Figs. 1-5 & 7, para. [0060]), comprising:
a biocompatible polymer substrate (a transparent flexible substrate 12 made of polydimethylsiloxane which can better stick to the leaves and stems of plants and thus is biocompatible, Figs. 1-5, para. [0058], [0062], [0138], [0141]); and
one or more sensors disposed on the substrate, wherein each of the one or more sensors comprises a plurality of microneedles (microneedle array electrodes 11 are disposed on the transparent flexible substrate 12 and constitute an electrochemical three-electrode sensing system, wherein each of the microneedle array electrodes 11 includes a plurality of microneedles, Figs. 1-5, para. [0061]-[0062], [0066]-[0067]), and
wherein:
a) the microneedles have a height dimension of 100 µm to 5,000 µm and a base-width dimension of 100 µm to 5,000 µm (the microneedles each have a length of 650 µm and a bottom diameter of 200 µm, Figs. 1-5, para. [0067]).
The limitation “wherein the microneedles have a bending angle of less than 15° at a pressure of 600 kPa” 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 microneedles disclosed by Xie teach all of the structural limitations of the claim and thus are configured for and capable of the intended use and/or functional language. Furthermore, Xie teaches that the microneedles have high rigidity which can ensure the efficiency of piercing the epidermis of plant stems and leaves (para. [0090]), so the microneedles of Xie are capable of having “a bending angle of less than 15° at a pressure of 600 kPa.”
Regarding claim 2, Xie teaches the microneedles (the microneedle array electrodes 11 includes the plurality of microneedles, Figs. 1-5, para. [0061], [0066]-[0067]).
The limitation “wherein the microneedles have a bending angle of 10° or less at a pressure of 200 kPa” 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 microneedles disclosed by Xie teach all of the structural limitations of the claim and thus are configured for and capable of the intended use and/or functional language. Furthermore, Xie teaches that the microneedles have high rigidity which can ensure the efficiency of piercing the epidermis of plant stems and leaves (para. [0090]), so the microneedles of Xie are capable of having “a bending angle of 10° or less at a pressure of 200 kPa.”
Regarding claim 4, Xie teaches wherein a) at least one sensor is configured to measure a physical parameter and/or at least one sensor is configured to measure a chemical parameter, or b) the sensors are each independently configured to detect humidity, temperature, stem and/or leaf growth, pH, one or more phytohormones, or one or more volatile organic compounds, c) or both a) and b) (the three-electrode electrochemical sensor detects plant active small molecule concentration such as plant hormones, Figs. 1-5, para. [0058]).
The limitations “measure a physical parameter,” “measure a chemical parameter,” and “detect humidity, temperature, stem and/or leaf growth, pH, one or more phytohormones, or one or more volatile organic compounds” 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 three-electrode electrochemical sensor disclosed by Xie teach all of the structural limitations of the claim and thus are configured for and capable of the intended use and/or functional language as recited in the rejection supra.
Regarding claim 6, Xie teaches wherein at least one sensor is configured to detect Salicylic acid (SA), jasmonic acid (JA), abscisic acid (ABA), or indole-3- acetic acid (IAA) (the three-electrode electrochemical sensor detects salicylic acid, Figs. 1-5, para. [0058]).
The limitation “detect Salicylic acid (SA), jasmonic acid (JA), abscisic acid (ABA), or indole-3- acetic acid (IAA)” 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 three-electrode electrochemical sensor disclosed by Xie teach all of the structural limitations of the claim and thus are configured for and capable of the intended use and/or functional language as recited in the rejection supra.
Regarding claim 8, Xie teaches wherein a) the microneedles have a height dimension of 200 µm to 4,000 µm, or 300 µm to 3,000 µm, or 400 µm to 2,000 µm, or 500 µm to 1,000 µm, or 600 µm to 800 µm, or b) the microneedles have a base-width dimension of 200 µm to 4,000 µm, or 300 µm to 3,000 µm, or 400 µm to 2,000 µm, or 500 µm to 1,000 µm, or 600 µm to 800 µm, c) or both a) and b) (the microneedles each have a length of 650 µm and a bottom diameter of 200 µm, Figs. 1-5, para. [0067]).
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Xie as applied to claim 1 above, and further in view of Windmiller et al. (US 2022/0031244 A1).
Regarding claim 10, Xie teaches that the microneedle array can efficiently penetrate the plant epidermis in a minimally invasive manner to detect plant active small molecules inside the plant and can fix the sensor to the plant to carry out in-situ and continuous biosensing (Xie, Figs. 1-5 & 7, para. [0058], [0138]). Xie teaches that the microneedles have a quadrangular pyramid shape or a conical shape (Xie, Figs. 1-5, para. [0067]), so the vertex angle at the top of the microneedles is an acute angle. Xie fails to explicitly teach wherein the microneedles have a vertex angle of 20° to 50°, or 30° to 40°.
Windmiller teaches an analyte monitoring device including an implantable microneedle array for use in measuring one or more analytes (Windmiller, abstract). Windmiller teaches that the microneedle 900 has a tapered distal portion 914 terminating in a distal apex 916 having a sharp tip angle such as between about 25 degrees and about 45 degrees, which provides a sharper microneedle profile that may penetrate skin with greater ease, lower velocity, less energy, and/or less trauma (Windmiller, Fig. 9, para. [0100]-[0101]).
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 vertex angle at the tip of the microneedles of Xie to be between about 25 degrees and about 45 degrees as taught by Windmiller because it would provide a sharper microneedle profile that may penetrate the plant with greater ease, lower velocity, less energy, and/or less trauma, yielding the predictable result of piercing in a minimally invasive manner as desired by both Xie and Windmiller. MPEP § 2143(I)(C), 2143(I)(D), 2143(I)(G).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Xie as applied to claim 1 above, and further in view of Voelcker et al. (WO 2021/232109 A1).
Regarding claim 12, Xie teaches that the plant sensor 10 is connected to an electrochemical workstation 21 through a signal transmission cable to realize in-situ continuous monitoring of the plant active small molecule signal for processing of salicylic acid concentration (Xie, Figs. 1-5 & 7, para. [0058], [0060], [0148]-[0149]). Xie fails to teach wherein the plant sensor comprises a pH sensor integrated therein and is configured to perform pH correction of measured salicylic acid (SA) levels.
Voelcker teaches an electrochemical sensor system comprising an electrochemical cell comprising microneedles (Voelcker, abstract). Voelcker teaches that the electrochemical sensor system is for pH sensing or sensing a bioanalyte in a media of interest and comprises working, counter, and reference electrodes each supporting an array of microneedles (Voelcker, pg. 12, lns. 22-37). Voelcker teaches that the microneedles of the working electrode are coated with a sensing chemistry such as polyaniline for pH sensing (Voelcker, pg. 19, lns. 10-13).
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 plant sensor of Xie to further include a pH sensor as taught by Voelcker in order to yield the predictable result of electrochemical pH sensing. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
The limitation “perform pH correction of measured salicylic acid (SA) levels” 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 electrochemical workstation 21 and the plant sensor 10 disclosed by Modified Xie teach all of the structural limitations of the claim and thus are configured for and capable of the intended use and/or functional language.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Xie as applied to claim 1 above, and further in view of Hussain et al. (US 2020/0072810 A1).
Regarding claim 13, Xie teaches a data acquisition system, wherein the data acquisition system comprises a communication unit, and wherein the data acquisition system is in communication with the one or more sensors (an electrochemical workstation 21 is connected to the plant sensor 10 through a signal transmission cable, Xie, Fig. 7, para. [0148]). Xie teaches that the electrochemical workstation 21 realizes in-situ continuous monitoring of the plant active small molecule signal for processing of salicylic acid concentration (Xie, Figs. 1-5 & 7, para. [0058], [0148]-[0149]). Xie fails to teach wherein the data acquisition system comprises a processor and a power supply unit.
Hussain teaches a sensor system including at least one sensor configured to detect at least one environmental parameter of a plant, and a processor coupled to the at least one sensor (Hussain, abstract, para. [0008]-[0009]). Hussain teaches that the sensor system 100A includes one or more sensors 102A-102X coupled to a processor 104, a power source 106, a transceiver 108, and a memory 110 (Hussain, Fig. 1A, para. [0027]). Hussain teaches that the memory 110 stores both program instructions for the processor 104 and the transceiver 108 and the parameters collected by the one or more sensors 102A-102X (Hussain, Fig. 1A, para. [0030]).
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 electrochemical workstation 21 of Xie to further include a processor, a power source, and a memory as taught by Hussain in order to yield the predictable result of storing program instructions and the parameters collected by the sensor for processing, and also powering the system. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Xie in view of Hussain as applied to claim 13 above, and further in view of Ramasamy et al. (US 2018/0142277 A1).
Regarding claim 14, Modified Xie teaches the electrochemical workstation 21 connected to the plant sensor 10 through the signal transmission cable, where the electrochemical workstation 21 includes the processor, the power source, and the memory (Xie, Fig. 7, para. [0148], Hussain, Fig. 1A, para. [0027], see modification supra). Xie fails to teach a potentiostat in communication with the one or more sensors, and wherein the potentiostat is in communication with one or more of the processor, the communication unit, the power supply unit, and the data acquisition system.
Ramasamy teaches a plant electrochemical sensor (Ramasamy, abstract). Ramasamy teaches a potentiostat which supplies an electric current to the electrochemical sensor and monitors changes in the electric current produced at the electrodes (Ramasamy, para. [0008], [0119]-[0120]). Ramasamy also teaches that the potentiostat, the electrochemical sensor, an electrochemical workstation, and a signal processing mechanism are all in communication with each other (Ramasamy, para. [0122]).
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 electrochemical workstation of Modified Xie to further include a potentiostat in communication with the sensor, the processor, and the electrochemical workstation as taught by Ramasamy in order to yield the predictable result of supplying an electric current to the electrochemical sensor and monitoring changes in the electric current produced at the electrodes for signal processing. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Claims 69-72 and 74 are rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (CN 112858430 A) (references herein made with respect to English Machine Translation) in view of Hussain et al. (US 2020/0072810 A1) and further in view of Abdolahad et al. (US 2021/0007638 A1) and further in view of Windmiller et al. (US 2022/0031244 A1).
Regarding claim 69, Xie teaches a plant sensor (a plant sensor 10, Xie, Figs. 1-5 & 7, para. [0060]), comprising:
a) a biocompatible polymeric substrate (a transparent flexible substrate 12 made of polydimethylsiloxane which can better stick to the leaves and stems of plants and thus is biocompatible, Figs. 1-5, para. [0058], [0062], [0138], [0141]);
b) two or more electrodes disposed on the substrate, wherein each electrode comprises a plurality of microneedles (microneedle array electrodes 11 are disposed on the transparent flexible substrate 12 and constitute an electrochemical sensing system, wherein each of the microneedle array electrodes 11 includes a plurality of microneedles, Xie, Figs. 1-5, para. [0061]-[0062], [0066]-[0067]).
Xie teaches an electrochemical workstation 21 connected to the plant sensor 10 through a signal transmission cable (Xie, Fig. 7, para. [0148]). Xie teaches that the electrochemical workstation 21 realizes in-situ continuous monitoring of the plant active small molecule signal for processing of salicylic acid concentration (Xie, Figs. 1-5 & 7, para. [0058], [0148]-[0149]). Xie fails to teach c) a power supply unit and d) an electrode control unit.
Hussain teaches a sensor system including at least one sensor configured to detect at least one environmental parameter of a plant, and a processor coupled to the at least one sensor (Hussain, abstract, para. [0008]-[0009]). Hussain teaches that the sensor system 100A includes one or more sensors 102A-102X coupled to a processor 104, a power source 106, a transceiver 108, and a memory 110 (Hussain, Fig. 1A, para. [0027]). Hussain teaches that the memory 110 stores both program instructions for the processor 104 and the transceiver 108 and the parameters collected by the one or more sensors 102A-102X (Hussain, Fig. 1A, para. [0030]).
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 electrochemical workstation 21 of Xie to further include a power source, a processor, and a memory as taught by Hussain in order to yield the predictable result of storing program instructions and the parameters collected by the sensor for processing, and also powering the system. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Modified Xie teaches that the microneedle array electrodes 11 constitute the electrochemical sensing system connected to the electrochemical workstation 21 (Xie, Figs. 1-5 & 7, para. [0061], [0066]-[0067], [0148]). Modified Xie fails to teach e) a voltage booster connected to the two or more electrodes.
Abdolahad teaches an apparatus including an electrochemical probe and an electrochemical stimulator-analyzer, wherein the electrochemical probe includes a working electrode, a counter electrode, and a reference electrode (Abdolahad, abstract). Abdolahad teaches that the electrochemical stimulator-analyzer 104 includes a potentiostat circuit configured to measure electrochemical responses from the working electrode (Abdolahad, Fig. 1A, para. [0124]). Abdolahad teaches that an electric voltage at the working electrode 108 may be amplified by a series of low noise amplifiers to measure a respective electrochemical response (Abdolahad, Fig. 1A, para. [0124]).
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 electrochemical workstation of Modified Xie to further include voltage amplifiers as taught by Abdolahad in order to yield the predictable result of measuring respective electrochemical responses from the microneedle array electrodes. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP § 2143(I)(A).
Modified Xie teaches f) wherein the microneedles have a height dimension of 100 µm to 5,000 µm and a base-width dimension of 100 µm to 5,000 µm (the microneedles each have a length of 650 µm and a bottom diameter of 200 µm, Xie, Figs. 1-5, para. [0067]).
Modified Xie teaches that the microneedle array can efficiently penetrate the plant epidermis in a minimally invasive manner to detect plant active small molecules inside the plant and can fix the sensor to the plant to carry out in-situ and continuous biosensing (Xie, Figs. 1-5 & 7, para. [0058], [0138]). Modified Xie teaches that the microneedles have a quadrangular pyramid shape or a conical shape (Xie, Figs. 1-5, para. [0067]), so the vertex angle at the top of the microneedles is an acute angle. Modified Xie fails to explicitly teach wherein the microneedles have a vertex angle of 3° to 90°.
Windmiller teaches an analyte monitoring device including an implantable microneedle array for use in measuring one or more analytes (Windmiller, abstract). Windmiller teaches that the microneedle 900 has a tapered distal portion 914 terminating in a distal apex 916 having a sharp tip angle such as between about 25 degrees and about 45 degrees, which provides a sharper microneedle profile that may penetrate skin with greater ease, lower velocity, less energy, and/or less trauma (Windmiller, Fig. 9, para. [0100]-[0101]).
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 vertex angle at the tip of the microneedles of Modified Xie to be between about 25 degrees and about 45 degrees as taught by Windmiller because it would provide a sharper microneedle profile that may penetrate the plant with greater ease, lower velocity, less energy, and/or less trauma, yielding the predictable result of piercing in a minimally invasive manner as desired by both Xie and Windmiller. MPEP § 2143(I)(C), 2143(I)(D), 2143(I)(G).
Modified Xie teaches g) wherein the power supply unit and the electrode control unit are in communication with the two or more electrodes (the electrochemical workstation 21 includes a power source, a processor, and a memory which together are connected to the plant sensor 10 comprising the microneedle array electrodes 11 through a signal transmission cable, Xie, Fig. 7, para. [0060]-[0061], [0148], Hussain, Fig. 1A, para. [0027], see modification supra).
The limitation “h) wherein the microneedles have a bending angle of less than 15° at a pressure of 600 kPa” 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 microneedles disclosed by Modified Xie teach all of the structural limitations of the claim and thus are configured for and capable of the intended use and/or functional language. Furthermore, Modified Xie teaches that the microneedles have high rigidity which can ensure the efficiency of piercing the epidermis of plant stems and leaves (para. [0090]), so the microneedles of Modified Xie are capable of having “a bending angle of less than 15° at a pressure of 600 kPa.”
Regarding claim 70, Modified Xie teaches a reference electrode (RE), at least one working electrode (WE), and optionally a counter electrode (CE) (the microneedle array electrodes 11 include a working electrode, a counter electrode, and a reference electrode constituting the electrochemical three-electrode sensing system, Xie, Figs. 1-5, para. [0067]).
Regarding claim 71, Modified Xie teaches wherein the plurality of microneedles are coated with a coating selected from a graphene ink, an Ag/AgC1 paste, a metal organic framework (MOF), a graphene hydrogel nanocomposite, a poly(3,4-ethylenedioxythiophene) polystyrene sulfonate (PEDOT:PSS) cross-linked with 3-glycidyloxypropyl)trimethoxysilane (GOPS), a polyaniline (PANI) based nanofiber, or a combination thereof (the working electrode of the microneedle array electrodes 11 is coated with a coating comprising graphene, Xie, Figs. 1-5, para. [0030]-[0034], [0102]-[0106]; the reference electrode of the microneedle array electrodes 11 is coated with a coating comprising Ag/AgCl slurry, Xie, Figs. 1-5, para. [0038], [0109]).
Regarding claim 72, Modified Xie teaches wherein the RE is coated with Ag/AgCl paste (the reference electrode of the microneedle array electrodes 11 is coated with a coating comprising Ag/AgCl slurry, Xie, Figs. 1-5, para. [0038], [0109]).
Regarding claim 74, Modified Xie teaches wherein the electrode control unit comprises a non-transitory computer-readable medium communicatively coupled to a processor, the non-transitory computer-readable medium having stored thereon computer software comprising a set of instructions that, when executed by the processor, causes the electrode control unit to: a) receive electrode data from each of the two or more electrodes; and b) send, via a communication unit, the sensor electrode data to an external device (the electrochemical workstation 21 comprises the memory coupled to the processor, wherein the memory stores program instructions for the processor and the sensing signals collected by the plant sensor 10 comprising the microneedle array electrodes 11, and the collected sensing signals may be transmitted to a remote data terminal for processing, Xie, Figs. 1-5 & 7, para. [0148]-[0149], Hussain, Figs. 1A-1B, para. [0027], [0030], see modification supra).
The limitations “receive electrode data from each of the two or more electrodes” and “send, via a communication unit, the sensor electrode data to an external device” are interpreted as intended use and/or functional language. Examiner notes that “an external device” is not a positively recited element of the claim, and therefore, is not an element of the claimed plant sensor. 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 plant sensor and electrochemical workstation disclosed by Modified Xie teach all of the structural limitations of the claim and thus are configured for and capable of “receive electrode data from each of the two or more electrodes” and “send, via a communication unit, the sensor electrode data to an external device” as recited in the rejection supra.
Claim 73 is rejected under 35 U.S.C. 103 as being unpatentable over Xie in view of Hussain, Abdolahad, and Windmiller as applied to claim 70 above, and further in view of Voelcker et al. (WO 2021/232109 A1).
Regarding claim 73, Modified Xie teaches that the working electrode of the microneedle array electrodes 11 is coated with a coating comprising graphene (Xie, Figs. 1-5, para. [0030]-[0034], [0102]-[0106]), and therefore fails to teach wherein the WE is coated with a PANI.
Voelcker teaches an electrochemical sensor system comprising an electrochemical cell comprising microneedles (Voelcker, abstract). Voelcker teaches that the electrochemical sensor system is for pH sensing or sensing a bioanalyte in a media of interest and comprises working, counter, and reference electrodes each supporting an array of microneedles (Voelcker, pg. 12, lns. 22-37). Voelcker teaches that the microneedles of the working electrode are coated with a sensing chemistry such as polyaniline for pH sensing (Voelcker, pg. 19, lns. 10-13).
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 coating on the working electrode of Modified Xie with a polyaniline coating as taught by Voelcker in order to yield the predictable result of electrochemical pH sensing. 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
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794
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