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.
Note that “signal reading and actuation means” (claims 1 and 8) and “fixing means” (claims 1 and 8) are being interpreted under 35 USC 112(f).
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 and 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.
Regarding claims 7 and 9, the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barbosa et al. (“Biocompatible Wearable Electrodes on Leaves toward the On-Site Monitoring of Water Loss form Plants”).
Regarding claim 1, Barbosa et al. disclose a leaf-wearable sensor for analyzing cellular water by electrochemical impedance spectroscopy, characterized by comprising: signal reading and actuation means for carrying out electrochemical impedance spectroscopy tests (page 22990, col. 2, last paragraph, benchtop potentiostat); at least two Ni electrodes made of stand-alone nickel metallic films (page 22990, col. 2, third paragraph; Fig. 1A), with a thickness of 30 to 50 µm (page 22991, col. 2, first paragraph, concentric semicircles portion which are the electrodes are 39 ± 3 µm); at least two electrical contacts (see Id. and Fig. 1A, pads), electrically connected to respective Ni electrodes and to the signal reading and actuation means (Fig. 1A and page 22991, col. 2, second paragraph); and fixing means to fix Ni electrodes on plant leaves in vivo, made of flexible, porous and transparent material (see Fig. 1; see page 22991 col. 2, second paragraph, transparent adhesive tape as fixing means; see page 22992 col. 2 first full paragraph).
Regarding claim 2, Barbosa et al. disclose that the signal reading and actuation means is a portable commercial potentiostat (see Fig. 5C3-4).
Regarding claim 3, Barbosa et al. disclose that the Ni electrodes are arranged in the form of concentric semicircles (see Fig. 1A).
Regarding claim 5, Barbosa et al. disclose that the fixing means (2) is an adhesive tape formed by a transparent polymeric film (page 22992 col. 2 first full paragraph).
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.
Claim(s) 4, 8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barbosa et al. (“Biocompatible Wearable Electrodes on Leaves toward the On-Site Monitoring of Water Loss form Plants”).
Regarding claim 4, Barbosa et al. disclose that the Ni electrodes are electrically connected to the electrical contacts by tracks in the form of sinusoidal curves, and in which the Ni electrodes Ni, the electrical contacts and the tracks are formed by a solid stand-alone Ni structure (see Fig. 1A and page 22990 col. 2 third paragraph), with a thickness of 30 to 50 µm for the tracks and the electrodes (page 22991 col. 2 first paragraph). Barbosa et al. do not disclose the electrical contacts having a thickness of 30 to 50 µm; however, it would have been obvious to one of ordinary skill in the art before the effective filing date to have formed the electrical contacts (called pads) in Barbosa et al. to have a thickness of 30 to 50 µm, slightly thicker than the 21 µm disclosed in Barbosa et al., because it would have made then contacts portions to be slight more robust.
Regarding claim 8, Barbosa et al. disclose a Production process for the sensor of claim 1, characterized in that it comprises: (i) patterning of a photoresist mold by photolithography, (ii) electrodeposition of a Ni film onto this mold, and (iii) removal of the photoresist to obtain a one-piece stand-alone Ni structure, comprising the Ni electrodes and the electrical contacts (see Fig. 1A and page 22991 col. 2 first paragraph); (iv) fixing the Ni electrodes in fixing means made of flexible, porous and transparent material (see Id. and adhesive Fig. 1A2; see also page 22992 col. 2 first full paragraph); (v) electrical connection of signal reading and actuation means (potentiostat, page 22990 last paragraph starting at end of col. 2 and going to page 22991) with the electrical contacts (page 22991 col. 2 second paragraph).
Barbosa et al. do not disclose the details of the mold being deposited on a glass substrate coated with a layer of metallic thin films. However, one of ordinary skill in the art would have known that it is a conventional practice to use a glass substrate and metallic thin films in photolithography and electroplating. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used a glass substrate and metallic thin films, in the electrodeposition steps of Barbosa et al. because it would have allowed the molds to be easily supported and patterned.
Regarding claim 10, Barbosa et al. do disclose using a photolithography process (page 22990 col. 2 third paragraph), which by definition uses photoresist coating. Barbosa et al. do not explicitly state that the photoresist is deposited using spincoating. However, one of ordinary skill in the art would have known that spincoating is the most common way of applying photoresist; therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used spincoating to deposit the photoresist in Barbosa et al. because it provides an even coating whose thickness can be easily controlled.
Regarding claim 11, Barbosa et al. do disclose that the Ni film is deposited on the photoresist by electrochemical electroplating bath (see page 22991 col. 2 first paragraph). Barbosa et al. do not explicitly disclose using the thin metallic film present in the mold as cathode, commercial nickel as anode, and a direct current potential source applied between the cathode and the anode. However, these details are simply the conventional and known techniques for forming nickel structures by electroplating. It would have been obvious to one of ordinary skill in the art before the effective filing date to have applied these known techniques when forming the nickel electrode structures by electroplating in Barbosa et al., because they are the known and commonly used steps in electroplating nickel and allow the electrodes to be evenly and uniformly formed.
Regarding claim 12, Barbosa et al. does not disclose explicitly that the removal of the photoresist and layers of metallic thin films is carried out by immersing the mold in acetone and then in solutions of etching suitable for the respective metallic thin films. However, using acetone and for removing photoresist and using suitable etching solutions for removing metallic seeding layers in electroplating and photolithography processes are conventional known techniques. It would have been obvious to one of ordinary skill in the art before the effective filing date to have used these details in the photolithography and electroplating processes of Barbosa et al. because they would have allowed the electrodes to be easily removed and applied to the adhesive tape fixing means.
Allowable Subject Matter
Claims 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 7 and 9 would be allowable if rewritten to overcome the rejection(s) 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:
With regard to claim 6, Barbosa et al. fail to teach or suggest that thethe Ni electrodes are coated on both sides with protective metallic layers.
With regard to claim 9, Barbosa et al. fail to teach or suggest that the substrate is coated with thin films of Cr and Au, with a 25 nm thick Cr film followed by a 200 nm thick Au film thickness, both deposited using a sputtering.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Note that Volberg (US 3,688,309) discloses measuring impedance with electrodes fixed to a leaf.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M WEST whose telephone number is (571)272-2139. The examiner can normally be reached M-F 9 am - 5:30 pm (CT).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina DeHerrera can be reached at 303-297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAUL M. WEST/Primary Examiner, Art Unit 2855
Prosecution Insights