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 .
Response to Amendment
Applicant’s amendments filed 25 November 2025 are acknowledged. Applicant amended claims 1-9. As such, claims 1-9 are currently pending in this application.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kurabu (JPH-067658-A) in view of Looney (US-20200131061-A1).
Regarding Claim 1, Kurabu discloses a system comprising: a permeation device (permeator; see [0013]) comprising: a sealed container (a sealed tube; see [0013]), the sealed container including a wall that is permeable (to permeate the walls of the permeator; see [0022]) to dimethylmercury in the vapor phase (poly(tetrafluoroethylene) plastic (TFE) tubing is particularly preferred; see [0022]); a liquid retained within the container (“liquid-state organic compounds are most commonly used as solute-source materials”; see [0026] and “solute-source material 10 is placed in a tube 9”; see [0013]), the liquid comprising formic acid (carboxylic acids… are also candidates for use; see [0028]); a headspace over the liquid and within the container (see Fig. 2).
Kurabu does not explicitly teach the liquid comprising methylmercury. However, Looney discloses the liquid further comprising methylmercury (Disclosed methods and devices can be utilized to provide improved information of HG presence… devices that selectively retain methyl HG in a module; see [0052]).
Kurabu and Looney are both considered to be analogous to the claimed invention because they are in the same field of pollutant specification/measurement through filtration/permeation. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Kurabu by incorporating the teachings of Looney and providing methylmercury as part of the liquid. Doing so would enable improved information of HG presence and activity in sample sources.
Regarding Claim 2, the liquid comprising formic acid and methylmercury in about a 1:1 molar ratio is result-effective variable (The physical dimensions of the permeator can be any combination of length, inner diameter and wall thickness compatible with the desired permeation rate and solute concentration in the liquid stream; see Kurabu [0024]). The Courts have held that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The instant specification further specifies the non-criticality of the molar ratio, as it states, “The particular concentration of the reactants is not particularly limited” (see [0025] of instant specification). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to find the optimum or workable ranges of molar ratio through routine experimentation.
Regarding Claim 3, Kurabu and Looney together disclose the system of claim 1, wherein the container is in the shape of a tube (construction for the permeator 3, in this case a sealed tube; see [0013]).
Regarding Claim 4, Kurabu and Looney together disclose the system of claim 1, wherein the wall comprises a polytetrafluoroethylene (poly(tetrafluoroethylene) plastic (TFE) tubing; see [0022]), a polyethylene (polyethylene; see [0022]), a polyamide (nylon; see [0022]), a fluorinated ethene (fluorinated ethylene-propylene polymer; see [0022]) or any combination thereof.
Regarding Claim 5, Kurabu and Looney together disclose the system of claim 1, wherein the permeation device further comprises one or more seals (suitable sealing means; see [0013]), the one or more seals independently comprising glass (glass rod; see [0023]).
Regarding Claim 6, Kurabu discloses deliberate control of the liquid stream composition to achieve predictable and reproducible chemical behavior (see [0018], describing aqueous liquid streams with controlled minor components and adjustable solution parameters). Further, Looney discloses chemical conditions of the liquid affecting mercury speciation and capture (see Looney, [0016]-[0018]). As such, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH of the aqueous solution used in the device of Kurabu when applied to the mercury-processing context of Looney because pH is a known result-effective variable influencing chemical interactions in aqueous systems. Selecting a pH range of 5.5 to about 6.5 represents routine optimization of a result-effective variable and does not confer patentability (see MPEP §2144.05).
Regarding Claim 7, Kurabu and Looney together disclose the system of claim 6, the liquid further comprising a base (caffeine… suitable as solute-source materials; see [0026]).
Regarding Claim 8, Kurabu and Looney together disclose the system of claim 1. Looney further discloses a permeation device (filters for capture of particulates; see Abstract) comprising an elemental mercury amalgamation agent (amalgamation agents to capture the elemental mercury; see Abstract). This would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention because doing so would allow for the capture of elemental mercury (see Looney Abstract).
Regarding Claim 9, Kurabu and Looney together disclose the system of claim 8. Looney further discloses the elemental mercury amalgamation agent comprising gold, silver, copper, zinc, tin, or any combination thereof (see [0035]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use one or more of these elements as an amalgamation agent so as to selectively retain elemental Hg (see [0035]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA LEE KUYKENDALL whose telephone number is (571)270-3806. The examiner can normally be reached Monday- Friday 9:00am-5:00pm.
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/A.L.K./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774