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 .
Remarks
This Office Action fully acknowledges Applicant’s remarks filed on 04/21/2026 Claims 1, 3, 4 and 6-21 are pending. Claims 8-20 are withdrawn, Claim 2 is canceled
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
2. Claims 1, 6, 7 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over International Patent No. WO2013/079755 to Osorio et al. (cited by applicant) in view of International Patent No. WO2007/053515 to Brunk (cited by applicant) and U.S. Patent No. 4,775,634 to Sienkiewicz.
Osorio et al. teaches measuring TOC and conductivity of a sample (see claim 1).
Osorio et al. teaches using a processor to process measured values (page 5, line 18-20 of English translation). Providing the processor with instructions to operate would have been obvious.
Osorio et al. does not teach measuring the TOC and conductivity of a sample having a known TOC and conductivity which sample includes an organic acid.
Brunk teaches “calibrating and/or validating a TOC analysis system,” (Abstract) and “To assure the reliability of the analyzer unit, it is common practice to periodically calibrate the analyzer against one or more known standards. Calibration standards for testing TOC analyzer accuracy may be packaged in either glass or plastic containers or vials, and those standards may either be acidified or not acidified. There is the potential, however, for the standards themselves to become contaminated from contact with the insides of the containers in which they are stored prior to use.” (page 2, lines 16-20).
It would have been obvious to one of ordinary skill in the art to modify Osorio et al. to calibrate the analysis system by measuring the TOC and conductivity of a sample having a known TOC and conductivity which sample includes an organic acid, in view of Brunk teaching calibrating and/or validating TOC analysis systems.
Using a sample with a known conductivity and measuring the conductivity is an obvious method of calibrating the conductivity measurement and/or determining the accuracy of the conductivity measurement.
Claim 1 has further been amended to recite that the TOC and the conductivity are measured at approximately the same time.
As noted by applicant Brunk teaches determining the conductivity and selecting an algorithm to determine the carbon concentration.
It would have been obvious to, while determining the carbon concentration, using an algorithm to measure carbon concentration “at the same time” (as interpreted above), since the algorithm would be executed rapidly by the computerized system taught by Brunk once analysis of a sample begins. (paragraph bridging pages 11-12)
Alternatively, since Brunk teaches determining both conductivity and carbon concentration, it would have been obvious to perform these measurements at the same time for purposes of expediting the analysis.
Claim 1 has been amended to recite verifying the TOC and conductivity measuring capability of the TOC analyzer using the measured TOC, measured conductivity, known TOC, and known conductivity of the sample, wherein the TOC and the conductivity are measured using the same sample and the TOC and conductivity measuring capability of the TOC analyzer are verified using the same sample.
Sienkiewicz teaches measuring total organic carbon and conductivity using a single sample. (column 4, lines 3-22). Sienkiewicz teaches that applicant has found that two minutes is sufficient to allow conductivity changes due to organic sources to be measured and accounted for and an initial reference point is obtain – which indicates that TOC and conductivity are measured at “approximately” the same time.
Sienkiewicz teaches that the process water to be measured is used as both the reference water and sample. (Abstract) Using the process water as a reference renders it obvious to pre-test or otherwise know the TOC and conductivity of the process water for purposes of referencing TOC and conductivity of process water measured during use of the apparatus and method of Sienkiewicz.
I.) Regarding applicant’s claim 1, as noted above, Osorio et al. in view of Brunk and Sienkiewicz renders all the elements of claim 1 obvious.
Therefore, Osorio et al. in view of Brunk and Sienkiewicz renders claim 1 obvious.
II.) Regarding applicant’s claim 6, as noted above Osorio et al. in view of Brunk and Sienkiewicz renders claim 1 obvious from which claim 6 depends.
Claim 6 recites that the TOC and the conductivity are measured using the same sample.
As noted above, Sienkiewicz teaches measuring TOC and conductivity using the same sample.
Therefore, Osorio et al. in view of Brunk and Sienkiewicz renders claim 6 obvious.
IV.) Regarding applicant’s claim 7, as noted above Osorio et al. in view of Brunk and Sienkiewicz renders claim 1 obvious from which claim 7 depends.
Claim 7 recites that the sample comprises a single vial containing the organic acid.
Brunk teaches acidifying samples used in measuring TOC and conductivity. (paragraph bridging pages 5 and 6)
Osorio et al. in view of Brunk and Sienkiewicz does not teach that the sample comprises a single vial containing the organic acid.
It would have been obvious in Osorio et al. in view of Brunk and Sienkiewicz to use single vial containing the sample with the organic acid for purpose of avoiding any variations in measurement of TOC and conductivity potentially caused by using multiple vials.
Therefore, Osorio et al. in view of Brunk and Sienkiewicz renders claim 7 obvious.
V.) Regarding applicant’s claim 21, as noted above Osorio et al. in view of Brunk and Sienkiewicz renders claim 1 obvious from which claim 21 depends.
Claim 21 recites that the instructions that cause the one or more processors to verify the TOC and conductivity measuring capability further comprise instructions to adjust one or more offsets based on a comparison of the measured TOC to the known TOC and a comparison of the measured conductivity to the known conductivity.
Osorio et al. in view of Brunk and Sienkiewicz do not teach that the instructions that cause the one or more processors to verify the TOC and conductivity measuring capability further comprise instructions to adjust one or more offsets based on a comparison of the measured TOC to the known TOC and a comparison of the measured conductivity to the known conductivity.
In Osorio et al. in view of Brunk and Sienkiewicz it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to use the reference sample results of the TOC and conductivity as offset baseline references for measuring TOC and conductivity of a sample.
Therefore, Osorio et al. in view of Brunk and Sienkiewicz renders claim 21 obvious.
2. Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Osorio et al. in view of Brunk and Sienkiewicz as applied to claim 1 above, and further in view of Japanese Published Patent Application No. JP 2000356631 to Yamanaka et al.
I.) Regarding applicant’s claim 3, as noted above Osorio et al. in view of Brunk and Sienkiewicz renders claim 1 obvious from which claim 3 depends.
Claim 3 recites that the organic acid comprises citric acid.
Osorio et al. in view of Brunk does not teach that the organic acid comprises citric acid.
Yamanaka et al. teaches measuring TOC and conductivity using citric acid. (page 7, line 32)
It would have been obvious to one of ordinary skill in the art to modify Osorio et al. in view of Brunk to use citric acid for the acid taught by Osorio et al. in view of Yamanaka et al. teaching that the use of citric acid is compatible with measuring TOC and conductivity.
Therefore, Osorio et al. in view of Brunk, Sienkiewicz and Yamanaka et al, renders claim 3 obvious.
II.) Regarding applicant’s claim 4, as noted above Osorio et al. in view of Brunk and Sienkiewicz renders claim 1 obvious from which claim 4 depends.
Claim 4 recites that the organic acid comprises lactic acid.
Osorio et al. in view of Brunk and Sienkiewicz does not teach that the organic acid comprises lactic acid.
Yamanaka et al. teaches measuring TOC and conductivity using lactic acid. (page 7, line 31)
It would have been obvious to one of ordinary skill in the art to modify Osorio et al. in view of Brunk and Sienkiewicz to use Lactic acid for the acid taught by Osorio et al. in view of Yamanaka et al. teaching that the use of lactic acid is compatible with measuring TOC and conductivity.
Therefore, Osorio et al. in view of Brunk, Sienkiewicz and Yamanaka et al. renders claim 4 obvious.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 4, 6, 7 and 21 have been considered but are moot because the new ground of rejection that relies upon Sienkiewicz as teaching measuring total organic carbon and conductivity using a single sample, and teaching that applicant has found that two minutes is sufficient to allow conductivity changes due to organic sources to be measured and accounted for and an initial reference point is obtain – which indicates that TOC and conductivity are measured at “approximately” the same time. Further, Sienkiewicz teaches that the process water to be measured is used as both the reference water and sample. (Abstract) Using the process water as a reference renders it obvious to pre-test or otherwise know the TOC and conductivity of the process water for purposes of referencing TOC and conductivity of process water measured during use of the apparatus and method of Sienkiewicz.
Conclusion
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.
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/M.S.G./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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