DETAILED ACTION
This Office Action is in response to Applicant’s Amendment and Remarks filed on 29 March 2026 in which claims 5, 8, 10-16 were canceled, claims 1-3, 7, 9, 17, 18 and 20 were amended to change the scope and breadth of the claims, and claims 21-25 were newly added.
Claims 1-4, 6, 7, 9 and 17-25 are pending in the current application. Claims 23-25 are withdrawn as being drawn to a non-elected invention, see below. Claims 1-4, 6, 7, 9 and 17-22 are examined on the merits herein.
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
Newly submitted claims 23-25 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions I (claims 1-4, 6, 7, 9, 17-22) and II (claims 23-25) are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j).
In the present case, the inventions as claimed have a materially different mode of operation, function and effect. The process of Group I is the synthetic preparation of a chitin derivative, while the process of Group II is directed towards the use of a chitin derivative to detect the presence of munitions compounds in water. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 23-25 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Withdrawn Rejections
Applicant’s amendment, filed 29 March 2026, with respect to the rejection of claims 1-20 under 35 U.S.C. § 112(b), second paragraph, for indefiniteness, has been fully considered and is persuasive.
Claim 1 has been amended to recite “adding said a quantity of the extracted tosyl chitin to a DMSO solution comprising dimethyl sulfoxide, triethylamine, and ethylenediamine to create an amine group-exposed solution”. Thus, it is clear the amine-group is in reference to the triethylamine and ethylenediamine. Claim 5 has been canceled.
The rejection is hereby withdrawn.
Applicant’s amendment, filed 29 March 2026, with respect to the rejection of claims 1, 4-7, 10-12, 14, 16, 17, 19 and 20 under 35 U.S.C. § 102(a)(1) as being anticipated by Shimizu et al., has been fully considered and is persuasive because the claim has been amended to require “a DMSO solution comprising dimethyl sulfoxide, triethylamine, and ethylenediamine”.
The rejection is hereby withdrawn
Applicant’s amendment, filed 29 March 2026, with respect to the following rejections has been fully considered and is persuasive:
the rejection of claims 1-7, 10-12, 14 and 16-20 under 35 U.S.C. § 103 as being unpatentable over Shimizu et al.;
the rejection of claims 10, 13, and 15 under 35 U.S.C. § 103 as being unpatentable over Shimizu et al., and further in view of Olivera et al.,
the rejection of claims 17 and 18 under 35 U.S.C. § 103 as being unpatentable over Shimizu in view of Pourjavadi et al.,
the rejection of claims 8, 9, 17 and 18 under 35 U.S.C. §103 as being unpatentable over Shimizu et al., Pourjavadi et al. and Keshipour et al.,
The claim has been amended to require “a DMSO solution comprising dimethyl sulfoxide, triethylamine, and ethylenediamine”.
Applicant’s arguments presented at pages 7-8 of the Remarks filed 29 March 2026 are found persuasive.
Applicant contends Shimizu et al. combine tosyl chitin with one source of amine groups, and does not disclose TEA; Applicant argues Keshipour et al. teach reacting cellulose tosylate with ethylenediamine, wherein the TEA was used during the tosylation step of cellulose.
The above arguments are found persuasive. It is further noted Pourjavadi et al. only teach using one amine at a time, wherein the amines are either a primary or secondary amine. Pourjavadi et al. do not teach using TEA, a tertiary amine. And Keshipour et al. use a different solvent from the presently claimed DMSO. And does not teach a mixture of DMSO, TEA and diethylenetriamine.
There is no teaching, suggestion or motivation in the prior art to combine DMSO, TEA and ethylenediamine together to react with an already tosylated chitin.
The rejections are hereby withdrawn.
Modified & New Objections/Rejections
The following are new ground(s) or modified rejections necessitated by Applicant's amendment, filed on 29 March 2026, where the limitations in pending claims 1-3, 7, 9, 17, 18 and 20 as amended now have been changed and claims 21 and 22 have been newly added. Therefore, rejections from the previous Office Action, dated 06 March 2025, have been modified and are listed below.
Claim Objections
Claims 1-4, 6, 7, 9 and 17-22 are objected to because of the following informalities: the claims are replete with grammatical errors, obvious typographical errors, redundant phrases, and non-sensical phrasing (which are further rejected under 35 U.S.C. §112b and 112d). An attempt has been made to point out each objection to be corrected. But Applicant should please take care to identify any other obvious errors.
Claim 1 is objected to because of the following informalities:
The recitation “comprised of the steps of” should be amended to recite “comprising the steps of”, so that the verb is in the same active tense as the claimed method steps (e.g. forming);
The recitation “wherein said tosyl chitin is comprised of comprising chitin molecules” uses the transitional term “comprised” and “comprising” two times. It is redundant. Appropriate correction is required.
The recitation “to form tosyl chitin, a tosyl chitin binding solution that contains tosyl chitin” in claim 1 also appears redundant. The recitation “a tosyl chitin binding solution that contains tosyl chitin” is confusing, as it is not clear what a “tosyl chitin binding solution” is, or how it differs from just forming tosyl chitin. It is suggested that Applicant delete “a tosyl chitin binding solution that contains tosyl chitin” from this and all other claims, and simply refer to it as tosyl chitin or tosylated chitin.
The recitation “to extract a quantity of tosyl chitin”…followed by “adding said a quantity of the extracted tosyl chitin” in claim 1 should be corrected to say “adding said [[a]] quantity of the extracted tosyl chitin”.
The term “dimethyl sulfoxide” should appear at the first instance of its abbreviation “DMSO”.
Claim 2 is objected to because of the following informalities:
The recitation “wherein said aqueous chitin sodium hydroxide solution is comprised of” in claim 2 should have the “comprised of” replaced with “comprises”.
Claim 3 similarly recites “is comprised of”, and should recite “comprises”.
Claim 4 is objected to because of the following informalities:
The recitation “in a cooling environment” should be amended to recite “in a cool environment”, otherwise, it denotes an active step of cooling. However, the claim appears to simply require a single temperature of approximately 0 °C”.
Claim 9 is objected to because of the following informalities:
“wherein said DMSO solution is comprised of comprises” uses the transitional term “comprises” redundantly. The term “is comprised of” should be deleted.
Claim 17 is objected to because of the following informalities:
- The recitation “heating…includes placing said DMSO solution in an environment with a temperature of approximately 70°C to 100°C” would read better if it said “wherein the DMSO amine-group exposed solution is heated to approximately 70 °C to 100 °C”.
Claim 18 is objected to for similar reasons as claim 17.
Claim Rejections - 35 USC § 112(b)
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 2, 3, 7 and 20 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.
The recitation “wherein said aqueous chitin sodium hydroxide solution is comprised of a volume of water and 500 comprises about 50-120 mg of chitin” in claim 2 renders the claim herein indefinite. It’s not clear how a number “500” comprises an amount of chitin. It appears Applicant probably meant to cancel the number 500.
The recitation “is comprised of a volume of chloroform and 8.7 comprises about 0.435-0.625 grams” in claim 3 is similarly indefinite for the reasons as claim 2.
The recitation “further includes rinsing comprises washing” in claim 7 renders the claim herein indefinite. The phrase ‘includes rinsing comprises washing’ makes no sense.
The recitation “pouring adding said amine…into to…isolate precipitate” in claim 20 renders the claim herein indefinite. Applicant should pick either “pouring” or “adding”; “into” or “to”; “isolate” or “precipitate”.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The definition of chitin is a repeating chain of N-acetylglucosamine units. Thus, claim 19 fails to further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAHAR A CRAIGO whose telephone number is (571)270-1326. The examiner can normally be reached M-F: Noon-8pm ET.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699
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