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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6 and 12, drawn to an electrochemical sensor.
Group II, claim(s) 7-11, drawn to a method of manufacturing an electrochemical sensor.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical features of an electrochemical sensor comprising a first diamond electrode as a working electrode and a second diamond electrode as a reference electrode, these technical features are not special technical features as they do not make a contribution over the prior art in view of Einaga et al. (WO 2020/091033 A1) (provided in Applicant’s IDS filed on December 9, 2024 and references herein made with respect to the provided English machine translation). Einaga teaches an electrochemical sensor comprising a first diamond electrode as a working electrode and a second diamond electrode as a reference electrode (an electrochemical measuring device comprising a working electrode constructed from a conductive diamond electrode and a reference electrode constructed from a conductive diamond electrode, para. [0015]-[0017], [0023]).
During a telephone conversation with Benjamin Berkowitz on September 25, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-6 and 12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 2 is objected to because of the following informalities: in line 4, “linear sweet voltammetry measurement” should read “the linear sweet voltammetry measurement”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: in line 3, “linear sweet voltammetry measurement” should read “the linear sweet voltammetry measurement”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: in line 2, “concentratio" should read “concentration”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: in line 2, “the system” should read “the electrochemical sensor system”. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6 and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea and a law of nature without significantly more. Claim 1 recites wherein a current peak corresponding to an ozone concentration in a test solution is observed in a voltammogram.
The limitation of wherein a current peak corresponding to an ozone concentration in a test solution is observed in a voltammogram, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. Nothing in the claim precludes the step from practically being performed in the mind. The “observed” language in the context of the claim encompasses the user mentally observing the current peak in a voltammogram. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea. The claim also describes a correlation or relationship between the current peak of the voltammogram and the ozone concentration. These types of correlations are a consequence of natural processes, similar to the naturally occurring correlation found to be a law of nature by the Supreme Court in Mayo.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: an electrochemical sensor comprising a first diamond electrode as a working electrode and a second diamond electrode as a reference electrode, wherein the voltammogram is obtained by linear sweep voltammetry measurement in which the first diamond electrode and the second diamond electrode are brought into contact with the test solution, the test solution containing ozone at a predetermined concentration. These steps are recited at a high-level of generality such that they amount to no more than mere data gathering steps linked to the judicial exception. Accordingly, these additional elements do not integrate the abstract idea or law of nature into a practical application because they do not impose any meaningful limits on practicing the abstract idea or law of nature as they are insignificant extra-solution activity. MPEP § 2106.05(g).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea and law of nature into a practical application, the additional elements of an electrochemical sensor comprising a first diamond electrode as a working electrode and a second diamond electrode as a reference electrode, wherein the voltammogram is obtained by linear sweep voltammetry measurement in which the first diamond electrode and the second diamond electrode are brought into contact with the test solution, the test solution containing ozone at a predetermined concentration, amount to no more than mere data gathering steps required to use the judicial exception. Mere data gathering steps and insignificant extra-solution activity linked to the judicial exception cannot provide an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). See MPEP § 2106.05(g). For example: Einaga et al. (WO 2020/091033 A1) (provided in Applicant’s IDS filed on December 9, 2024 and references herein made with respect to the provided English machine translation) teaches an electrochemical sensor (an electrochemical measuring device, para. [0015]-[0017], [0023]), comprising a first diamond electrode as a working electrode (a working electrode constructed from a conductive diamond electrode, para. [0016]-[0017], [0023]); a second diamond electrode as a reference electrode (a reference electrode constructed from a conductive diamond electrode, para. [0016]-[0017], [0023]); and linear sweep voltammetry measurement in which the first diamond electrode and the second diamond electrode are brought into contact with the test solution, the test solution containing ozone at a predetermined concentration (results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode to measure ozone water concentration when in contact with the ozone water sample solution, Figs. 5 & 13, para. [0019], [0024]). The claims do not invoke any of the considerations that courts have identified as provided significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, claim 1 as a whole does not amount to significantly more than the exception itself. The claims are not patent eligible.
Claims 2-6 and 12 are rejected under 35 U.S.C. 101 as dependent thereon and also do not include additional elements that are sufficient to amount to significantly more or integrate the exception into a practical application. Appropriate correction is requested.
Claims 2 and 6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 2 recites the sensitivity being an absolute value of a value obtained by dividing a current peak value by a planar area of the first diamond electrode and the ozone concentration.
The limitation of the sensitivity being an absolute value of a value obtained by dividing a current peak value by a planar area of the first diamond electrode and the ozone concentration, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind or performing the calculations with pen and paper. Nothing in the claim precludes the step from practically being performed in the mind or with pen and paper. The courts consider a mental process that can be performed by a human using a pen and paper to be an abstract idea. See MPEP § 2106.04(a)(2)(III). The “obtained” and “dividing” language in the context of the claim encompasses the user mentally obtaining and dividing the calculations. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea. The limitation of the sensitivity being an absolute value of a value obtained by dividing a current peak value by a planar area of the first diamond electrode and the ozone concentration, as drafted, is a process that, under its broadest reasonable interpretation, covers mathematical concepts such as mathematical calculations. The “dividing” language in the context of the claim encompasses mathematical calculations that can be performed by a user. If a claim limitation, under its broadest reasonable interpretation, covers mathematical calculations, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: performing linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec in a state in which the first diamond electrode and the second diamond electrode are in contact with the test solution. These steps are recited at a high-level of generality such that they amount to no more than mere data gathering steps linked to the judicial exception. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea as they are insignificant extra-solution activity. MPEP § 2106.05(g).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of performing linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec in a state in which the first diamond electrode and the second diamond electrode are in contact with the test solution amount to no more than mere data gathering steps required to use the judicial exception. Mere data gathering steps and insignificant extra-solution activity linked to the judicial exception cannot provide an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). See MPEP § 2106.05(g). For example: Einaga et al. (WO 2020/091033 A1) (provided in Applicant’s IDS filed on December 9, 2024 and references herein made with respect to the provided English machine translation) teaches results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode in contact with the ozone water sample solution and applying a potential sweep to the working electrode relative to the reference electrode at a scan rate of 0.1 V/s (Figs. 5 & 13, para. [0019], [0024], [0029], [0033], [0041]-[0042]). The claims do not invoke any of the considerations that courts have identified as provided significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, claim 2 as a whole does not amount to significantly more than the exception itself. The claims are not patent eligible.
Claim 6 is rejected under 35 U.S.C. 101 as dependent thereon and also do not include additional elements that are sufficient to amount to significantly more or integrate the exception into a practical application. Appropriate correction is requested.
Claim 3 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 3 recites wherein the current peak corresponding to the ozone concentration in the test solution is observed within a potential range of -0.3 V to -0.9 V (vs. the second diamond electrode).
The limitation of wherein the current peak corresponding to the ozone concentration in the test solution is observed within a potential range of -0.3 V to -0.9 V (vs. the second diamond electrode), as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. Nothing in the claim precludes the step from practically being performed in the mind. The “observed” language in the context of the claim encompasses the user mentally observing the current peak. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec. These steps are recited at a high-level of generality such that they amount to no more than mere data gathering steps linked to the judicial exception. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea as they are insignificant extra-solution activity. MPEP § 2106.05(g).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec amount to no more than mere data gathering steps required to use the judicial exception. Mere data gathering steps and insignificant extra-solution activity linked to the judicial exception cannot provide an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). See MPEP § 2106.05(g). For example: Einaga et al. (WO 2020/091033 A1) (provided in Applicant’s IDS filed on December 9, 2024 and references herein made with respect to the provided English machine translation) teaches results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode in contact with the ozone water sample solution and applying a potential sweep to the working electrode relative to the reference electrode at a scan rate of 0.1 V/s (Figs. 5 & 13, para. [0019], [0024], [0029], [0033], [0041]-[0042]). The claims do not invoke any of the considerations that courts have identified as provided significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, claim 3 as a whole does not amount to significantly more than the exception itself. The claims are not patent eligible.
Claim 4 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 4 recites wherein the current peak is observed in the voltammogram.
The limitation of wherein the current peak is observed in the voltammogram, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. Nothing in the claim precludes the step from practically being performed in the mind. The “observed” language in the context of the claim encompasses the user mentally observing the current peak in the voltammogram. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: a condition in which the ozone concentration in the test solution is at least 1.0 ppm or more, the voltammogram obtained by the linear sweep voltammetry measurement. These steps are recited at a high-level of generality such that they amount to no more than mere data gathering steps linked to the judicial exception. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea as they are insignificant extra-solution activity. MPEP § 2106.05(g).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a condition in which the ozone concentration in the test solution is at least 1.0 ppm or more, and the voltammogram obtained by the linear sweep voltammetry measurement amount to no more than mere data gathering steps required to use the judicial exception. Mere data gathering steps and insignificant extra-solution activity linked to the judicial exception cannot provide an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). See MPEP § 2106.05(g). For example: Einaga et al. (WO 2020/091033 A1) (provided in Applicant’s IDS filed on December 9, 2024 and references herein made with respect to the provided English machine translation) teaches results of linear sweep voltammetry performed on ozone water including ozone concentrations of more than 1 ppm and below 10 ppm (Figs. 5 & 13, para. [0019], [0024], [0029], [0033], [0077]). The claims do not invoke any of the considerations that courts have identified as provided significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, claim 4 as a whole does not amount to significantly more than the exception itself. The claims are not patent eligible.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 6 recites wherein a variation in the sensitivity, calculated using the peak values of the current obtained in each linear sweep voltammetry measurement, is 30 % or less.
The limitation of wherein a variation in the sensitivity, calculated using the peak values of the current obtained in each linear sweep voltammetry measurement, is 30 % or less, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind or performing the calculations with pen and paper. Nothing in the claim precludes the step from practically being performed in the mind or with pen and paper. The courts consider a mental process that can be performed by a human using a pen and paper to be an abstract idea. See MPEP § 2106.04(a)(2)(III). The “calculated” language in the context of the claim encompasses the user mentally calculating the variation in the sensitivity. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea. The limitation of wherein a variation in the sensitivity, calculated using the peak values of the current obtained in each linear sweep voltammetry measurement, is 30 % or less, as drafted, is a process that, under its broadest reasonable interpretation, covers mathematical concepts such as mathematical calculations. The “calculated” language in the context of the claim encompasses mathematical calculations that can be performed by a user. If a claim limitation, under its broadest reasonable interpretation, covers mathematical calculations, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: the linear sweep voltammetry measurements are performed over a plurality of times under the same ozone concentration condition in the test solution. These steps are recited at a high-level of generality such that they amount to no more than mere data gathering steps linked to the judicial exception. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea as they are insignificant extra-solution activity. MPEP § 2106.05(g).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of performing the linear sweep voltammetry measurements over a plurality of times under the same ozone concentration condition in the test solution amount to no more than mere data gathering steps required to use the judicial exception. Mere data gathering steps and insignificant extra-solution activity linked to the judicial exception cannot provide an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). See MPEP § 2106.05(g). For example: Einaga et al. (WO 2020/091033 A1) (provided in Applicant’s IDS filed on December 9, 2024 and references herein made with respect to the provided English machine translation) teaches results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode in contact with the ozone water sample solution and applying a potential sweep to the working electrode relative to the reference electrode (Figs. 5 & 13, para. [0019], [0024], [0029], [0033]), and that the device may be used for continuous or repeated measurements (para. [0064]). The claims do not invoke any of the considerations that courts have identified as provided significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, claim 6 as a whole does not amount to significantly more than the exception itself. The claims are not patent eligible.
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.
(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.
Claims 1-6 and 12 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Einaga et al. (WO 2020/091033 A1) (provided in Applicant’s IDS filed on December 9, 2024 and references herein made with respect to the provided English machine translation).
Regarding claim 1, Einaga teaches an electrochemical sensor (an electrochemical measuring device, para. [0015]-[0017], [0023]), comprising:
a first diamond electrode as a working electrode (a working electrode constructed from a conductive diamond electrode, para. [0016]-[0017], [0023]); and
a second diamond electrode as a reference electrode (a reference electrode constructed from a conductive diamond electrode, para. [0016]-[0017], [0023]), wherein
a current peak corresponding to an ozone concentration in a test solution is observed in a voltammogram obtained by linear sweep voltammetry measurement in which the first diamond electrode and the second diamond electrode are brought into contact with the test solution, the test solution containing ozone at a predetermined concentration (results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode to measure ozone water concentration when in contact with the ozone water sample solution, Figs. 5 & 13, para. [0019], [0024]; the measured current value is proportional to the concentration of ozone and the ozone concentration of the ozone water sample solution can be calculated from the limiting current value, para. [0029], [0033]).
The limitation “a current peak corresponding to an ozone concentration in a test solution is observed in a voltammogram obtained by linear sweep voltammetry measurement in which the first diamond electrode and the second diamond electrode are brought into contact with the test solution” 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 measuring device disclosed by Einaga teaches all of the structural limitations of the claim and thus is configured for and capable of the intended use and/or functional language as recited in the rejection supra.
The limitation “the test solution containing ozone at a predetermined concentration” is with respect to an article worked upon (test solution) and not a positively recited element of the electrochemical sensor. Inclusion of the material or article worked upon (test solution) by a structure (electrochemical sensor) being claimed does not impart patentability to the claims. MPEP § 2115.
Regarding claim 2, Einaga teaches the current peak value being obtained by performing linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec in a state in which the first diamond electrode and the second diamond electrode are in contact with the test solution (results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode in contact with the ozone water sample solution and applying a potential sweep to the working electrode relative to the reference electrode, Figs. 5 & 13, para. [0019], [0024], [0029], [0033]; the scan rate was 0.1 V/s, para. [0041]-[0042]; the current density [µA/cm2] is determined based on the LSV results, and plotted with the ozone concentration [ppm], Figs. 5-6 & 13-14, para. [0019]). Einaga teaches that the electrodes make it possible to measure the concentration of ozone water with high sensitivity (para. [0063]).
The limitation “a sensitivity is 2 µA/(cm2·ppm) or more, the sensitivity being an absolute value of a value obtained by dividing a current peak value by a planar area of the first diamond electrode and the ozone concentration, the current peak value being obtained by performing linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec in a state in which the first diamond electrode and the second diamond electrode are in contact with the test solution” 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 measuring device disclosed by Einaga teaches all of the structural limitations of the claim and thus is configured for and capable of the intended use and/or functional language as recited in the rejection supra.
Furthermore, the limitation “a sensitivity is 2 µA/(cm2·ppm) or more, the sensitivity being an absolute value of a value obtained by dividing a current peak value by a planar area of the first diamond electrode and the ozone concentration, the current peak value being obtained by performing linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec in a state in which the first diamond electrode and the second diamond electrode are in contact with the test solution” is an intended result and does not further limit the apparatus. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). MPEP 2111.04(I). In this case, Einaga teaches the claimed structure and materials of claims 1-2 (see rejections supra), so Einaga is expected to predictably yield the same sensitivity result as claimed.
Regarding claim 3, Einaga teaches wherein the current peak corresponding to the ozone concentration in the test solution is observed within a potential range of -0.3 V to -0.9 V (vs. the second diamond electrode) in linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec (results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode in contact with the ozone water sample solution and applying a potential sweep to the working electrode relative to the reference electrode, Figs. 5 & 13, para. [0019], [0024], [0029], [0033]; the scan rate was 0.1 V/s, para. [0041]-[0042]; the limiting current value is at -0.7 V and the ozone concentration of the ozone water is calculated from the limiting current value, Figs. 5-6 & 13-14, para. [0019], [0033]).
The limitation “the current peak corresponding to the ozone concentration in the test solution is observed within a potential range of -0.3 V to -0.9 V (vs. the second diamond electrode) in linear sweep voltammetry measurement in which a potential of the first diamond electrode is swept against a potential of the second diamond electrode at a rate of 0.1 V/sec” 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 measuring device disclosed by Einaga teaches all of the structural limitations of the claim and thus is configured for and capable of the intended use and/or functional language as recited in the rejection supra.
Regarding claim 4, Einaga teaches wherein in a condition in which the ozone concentration in the test solution is at least 1.0 ppm or more, the current peak is observed in the voltammogram obtained by the linear sweep voltammetry measurement (results of linear sweep voltammetry performed on ozone water including ozone concentrations of more than 1 ppm and below 10 ppm, Figs. 5 & 13, para. [0019], [0024], [0029], [0033], [0077]; the limiting current value is measured and the ozone concentration of the ozone water is calculated from the limiting current value, Figs. 5-6 & 13-14, para. [0019], [0029], [0033]).
The limitation “in a condition in which the ozone concentration in the test solution is at least 1.0 ppm or more, the current peak is observed in the voltammogram obtained by the linear sweep voltammetry measurement” 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 measuring device disclosed by Einaga teaches all of the structural limitations of the claim and thus is configured for and capable of the intended use and/or functional language as recited in the rejection supra.
The limitation “the ozone concentration in the test solution is at least 1.0 ppm or more” is with respect to an article worked upon (test solution) and not a positively recited element of the electrochemical sensor. Inclusion of the material or article worked upon (test solution) by a structure (electrochemical sensor) being claimed does not impart patentability to the claims. MPEP § 2115.
Regarding claim 5, Einaga teaches wherein a planar area of the first diamond electrode is 1 mm2 or more and 100 mm2 or less (the BDD working electrode has a surface area of 1 mm2 or more, para. [0061]).
Regarding claim 6, Einaga teaches results of linear sweep voltammetry performed on ozone water using the boron-doped conductive diamond electrodes as the working electrode and the reference electrode in contact with the ozone water sample solution and applying a potential sweep to the working electrode relative to the reference electrode (Figs. 5 & 13, para. [0019], [0024], [0029], [0033]), and that the current density [µA/cm2] is determined based on the LSV results, and plotted with the ozone concentration [ppm] (Figs. 5-6 & 13-14, para. [0019]). Einaga teaches that the electrodes make it possible to measure the concentration of ozone water with high sensitivity (para. [0063]), and that the device may be used for continuous or repeated measurements (para. [0064]).
The limitation “a variation in the sensitivity, calculated using the peak values of the current obtained in each linear sweep voltammetry measurement, is 30 % or less, when the linear sweep voltammetry measurements are performed over a plurality of times under the same ozone concentration condition in the test solution” 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 measuring device disclosed by Einaga teaches all of the structural limitations of the claim and thus is configured for and capable of the intended use and/or functional language.
Furthermore, the limitation “a variation in the sensitivity, calculated using the peak values of the current obtained in each linear sweep voltammetry measurement, is 30 % or less, when the linear sweep voltammetry measurements are performed over a plurality of times under the same ozone concentration condition in the test solution” is an intended result and does not further limit the apparatus. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). MPEP 2111.04(I). In this case, Einaga teaches the claimed structure and materials of claims 1-2 and 6 (see rejections supra), so Einaga is expected to predictably yield the same variation in sensitivity result as claimed.
Regarding claim 12, Einaga teaches an electrochemical sensor system for measuring an ozone concentration in a test solution containing ozone at a predetermined concentration, the system comprising the electrochemical sensor according to claim 1 (a system for measuring ozone water concentration in the ozone water sample solution, the system comprising the electrochemical measuring device of claim 1, para. [0017], [0023]-[0024], [0073], [0078], see rejection of claim 1 supra).
Conclusion
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794
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