DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement filed September 26, 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Objections
Claims 2-10 are objected to because of the following informalities: in line 1 of each claim, “An oxygen detecting element” should read “The oxygen detecting element”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities:
In line 1, “the cross-sectional shape” should read “a cross-sectional shape”.
In line 2, “the conductive core” should read “the electrically conductive core”.
Appropriate correction is required.
Claim 4 is objected to because of the following informalities: in line 2, “the cross-sectional area” should read “a cross-sectional area”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities:
In line 1, “the maximum” should read “a maximum”.
In line 2, the comma at the end of the claim should be replaced with a period.
Appropriate correction is required.
Claim 11 is objected to because of the following informalities: in line 1, “an oxygen detecting element” should read “the oxygen detecting element”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities:
In line 1, “the oxygen content” should read “an oxygen content”.
In lines 1-2, “an oxygen detecting element” should read “the oxygen detecting element”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-7 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 6 recites the limitation “a three-layered main coating structure” in lines 1-2 of the claim. It is unclear whether this limitation is the same as or different from the previously recited “at least a two-layered coating section” in line 3 of claim 1. For the purpose of examination, Examiner interprets them to refer to the same layers. Claim 7 is rejected as dependent thereon.
Claim 7 recites the limitation “a third coating structure” in lines 1-2 of the claim. It is unclear whether this limitation is the same as or different from the previously recited limitations “at least a two-layered coating section” in line 3 of claim 1 and/or “a three-layered main coating structure” in lines 1-2 of claim 6. For the purpose of examination, Examiner interprets them to refer to the same layers.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 19/095,847 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant application claims 1, 6, and 9 are each anticipated by copending application claim 7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Verstreken et al. (US 5,332,449 A) (listed in Applicant’s IDS filed on March 31, 2025) in view of Kolb (DE 3541806 C1) (references herein made with respect to English Machine Translation).
Regarding claim 1, Verstreken teaches an oxygen detecting element (an immersion sensor for measuring oxygen content in molten metals, Verstreken, Fig. 3, col. 2, lns. 57-58, col. 4, lns. 41-42), comprising a coated pin (a coated support pin 1, Verstreken, Fig. 3, col. 3, lns. 40-64, col. 4, lns. 36-37),
the coated pin comprising an electrically conductive core and a coating (the coated support pin 1 comprises an electrically conducting pin 1 and coatings 3, 4, and 6, Verstreken, Fig. 3, col. 1, lns. 5-8, col. 3, lns. 40-64, claim 1), wherein the coating comprises at least a two-layered coating section (the coatings 3, 4, and 6, Verstreken, Fig. 3, col. 3, lns. 40-64) comprising
(i) an inner coating which covers and is in direct contact with at least a part of the electrically conductive core and comprises a reference material (an inner reference material coating 3 which covers and is in direct contact with at least a part of the electrically conducting pin 1, Verstreken, Fig. 3, col. 3, lns. 40-45 & 63-68), and
(ii) an outer coating which covers and is in direct contact with at least a part of the inner coating and comprises an electrolyte material (an outer solid electrolyte material coating 6 which covers and is in direct contact with at least a part of the inner reference material coating 3, Verstreken, Fig. 3, col. 3, lns. 57-62, col. 4, lns. 4-8).
Verstreken teaches that the electrically conducting pin 1 appears to be arranged centrally in the coatings 3, 4, and 6 (Verstreken, Fig. 3, col. 3, lns. 40-64), and therefore fails to teach that the electrically conductive core is arranged eccentrically in the coating. For the purpose of examination, Examiner interprets “eccentrically” to mean not centered.
Kolb teaches an appliance for determining oxygen in steel melts (Kolb, abstract). Kolb teaches an electrochemical cell 11 comprising a zirconium oxide tube 17 in which an electrically non-conductive material 18 is inserted (Kolb, Figs. 5-6, para. [0032]). Kolb teaches that the electrically non-conductive material 18 is provided with a channel 21 open to its surface, and the channel 21 is equipped with a reference material 22 which has a metallic conductor 23 embedded therein (Kolb, Figs. 5-6, para. [0032]). Kolb teaches that the metallic conductor 23 is not arranged in the center of the coatings 22, 18, 17 (Kolb, Figs. 5-6).
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 electrically conducting pin of Verstreken to be arranged eccentrically in the coatings as taught by Kolb in order to yield the predictable result of the electrically conducting pin with surrounding coatings of a reference material and solid electrolyte for determining oxygen in molten metals. Additionally, generally, differences in a rearrangement of parts will not support the patentability of subject matter encompassed by the prior art absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(VI)(C). Therefore, it would have been a matter of choice to arrange the electrically conducting pin eccentrically in the coatings, which a person of ordinary skill in the art would have found obvious.
Regarding claim 2, Modified Verstreken teaches wherein the cross-sectional shape of the coating perpendicular to a longitudinal axis of the conductive core has a round, oval or elliptical shape (the cross-sectional shape of the support pin 1 and the coatings thereon perpendicular to a longitudinal axis of the electrically conducting pin 1 is round or oval, Verstreken, Fig. 3, col. 2, lns. 65-68, col. 3, lns. 1-3, col. 4, ln. 34).
Regarding claim 3, Modified Verstreken teaches wherein the coating has a minimal thickness of at least 0.06 mm (the inner reference material coating 3 has a thickness of about 200 µm, the aluminum oxide refractory material coating 4 has a thickness of about 200 µm, and the outer solid electrolyte material coating 6 has a thickness of about 300 µm, Verstreken, Fig. 3, col. 3, lns. 44-62, so the total thickness of the coatings 3, 4, 6 is 700 µm = 0.7 mm).
Regarding claim 4, Modified Verstreken teaches wherein the coating comprises two thicknesses along a major axis of the cross-sectional area of the coating, a smaller thickness TS and a maximal thickness TMAX, wherein TMAX is at least 5 % larger than TS (the electrically conducting pin 1 is arranged eccentrically in the coatings 3, 4, 6 as modified supra, so the coatings comprise two thicknesses along a major axis of the cross-sectional area of the coatings, and TMAX is at least 5 % larger than TS as shown in Fig. 6 of Kolb, see Image 1 below, so Modified Verstreken has been modified similarly). While patent drawings are not to scale, relationships clearly shown in the drawings of a reference patent cannot be disregarded in determining the patentability of claims. See In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). It has been held that the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977). MPEP § 2125(II). Furthermore, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP § 2144.04(IV)(A).
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Image 1. Annotated version of Fig. 6 of Kolb.
Regarding claim 5, Modified Verstreken teaches wherein the maximum cross sectional-area of the coated pin is in the range between 0.5 and 7 mm2 (the maximum cross-sectional area of the support pin 1 is preferably about 0.8 mm2, Verstreken, Fig. 3, col. 2, lns. 65-68, col. 3, lns. 1-2, col. 4, lns. 31-33; the support pin 1 has a diameter of about 1 mm, the inner reference material coating 3 has a thickness of about 200 µm, the aluminum oxide refractory material coating 4 has a thickness of about 200 µm, and the outer solid electrolyte material coating 6 has a thickness of about 300 µm, Verstreken, Fig. 3, col. 3, lns. 44-62, col. 4, lns. 31-34, so the total diameter of the coated support pin is about 2.4 mm, which has a cross-sectional area of about 4.52 mm2).
Regarding claim 6, Modified Verstreken teaches wherein the coating comprises a three-layered main coating structure, which covers a main portion of the electrically conductive core (the coating includes the inner reference material coating 3, the aluminum oxide refractory material coating 4, and the outer solid electrolyte material coating 6 which cover a main portion of the electrically conducting pin 1, Verstreken, Fig. 3, col. 3, lns. 40-64).
Regarding claim 7, Modified Verstreken teaches wherein the coating comprises a third coating structure, which covers a third portion of the electrically conductive core (the coating includes a portion comprising the aluminum oxide refractory material coating 4 and the outer solid electrolyte material coating 6 which cover a lower portion of the electrically conducting pin 1, Verstreken, Fig. 3, col. 3, lns. 40-64, col. 4, lns. 9-14).
Regarding claim 8, Modified Verstreken teaches wherein the electrically conductive core comprises a mounting portion located at a mounting end which is not coated (the electrically conducting pin 1 comprises a mounting portion located at a lower end which is not coated, Verstreken, Fig. 3, col. 3, lns. 40-60).
Regarding claim 9, Modified Verstreken teaches wherein the electrically conductive core comprises a tapered section (the electrically conducting pin 1 comprises at least one circumferential cross-sectional narrowing 7, Verstreken, Fig. 3, col. 4, lns. 35-45).
Regarding claim 10, Modified Verstreken teaches wherein the electrically conducting pin 1 comprises at least one circumferential cross-sectional narrowing 7 (Verstreken, Fig. 3, col. 4, lns. 35-45). Modified Verstreken fails to teach wherein the tapered section extends over at least 10 % of the length of the electrically conductive core.
However, Verstreken teaches that the at least one circumferential cross-sectional narrowing is a result-effective variable. Specifically, Verstreken teaches that the at least one circumferential cross-sectional narrowing controls the reduction of heat loss through the support pin (Verstreken, Fig. 3, col. 3, lns. 7-10, col. 4, lns. 35-45). Since these particular parameters are recognized as result-effective variables, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F. 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980).
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 length or quantity of the at least one circumferential cross-sectional narrowing of Modified Verstreken to extend over at least 10 % of the length of the electrically conducting pin through routine experimentation because doing so would yield the predictable desired reduction of heat loss through the support pin. Furthermore, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP § 2144.04(IV)(A).
Regarding claim 11, Modified Verstreken teaches an immersion sensor comprising an oxygen detecting element according to Claim 1 (the immersion sensor comprising the coated support pin 1 for measuring oxygen content in molten metals, Verstreken, Fig. 3, col. 2, lns. 57-58, col. 3, lns. 40-64, col. 4, lns. 36-42, see rejection of claim 1 supra).
Regarding claim 12, Modified Verstreken teaches a method for measuring the oxygen content of a metal melt with an oxygen detecting element according to Claim 1 (measuring oxygen content in molten metals with the immersion sensor comprising the coated support pin 1, Verstreken, Fig. 3, col. 2, lns. 56-58, col. 3, lns. 40-64, col. 4, lns. 36-42, see rejection of claim 1 supra).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIVIAN A TRAN whose telephone number is (571)272-3232. The examiner can normally be reached Mon - Fri 9am-5pm.
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/V.T./Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
