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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 24 April 2026 has been entered.
Response to Amendment
Applicant’s amendment filed 24 April 2026 has been considered. It is acknowledged that Applicant added claim 19. Accordingly, claims 1-9 and 19 are under full consideration.
Response to Arguments
Applicant's arguments filed 24 April 2026 have been fully considered but they are not persuasive. The respective arguments are addressed below.
Applicant argues that it would not have been obvious for a person of ordinary skill in the art to have chosen to use formic acid because there are thousands to millions of carboxylic acids, and thus Karuba is a broad disclosure of a genus comprising at least hundreds of species that do not render any particular species within the genus obvious. Examiner respectfully disagrees. Karabu is not talking about all theoretically possible carboxylic acids, but is instead talking about volatile organic compounds suitable for this permeation device. The relevant genus is not “all carboxylic acids”, but is actually “volatile carboxylic acids suitable for permeation sources”. Even though Examiner does not find Applicant’s argument persuasive, additional prior art is now used to show that using formic acid would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Applicant argues that the cited references fail to provide any motivation to use the specifically claimed pH of “about 5.5 to about 6.5”, and that the prior art does not disclose a controlled pH environment for generation a particular mercury species. Applicant further argues that “the narrow pH of about 5.5 to about 6.5 was found to be beneficial for the reaction in the permeation tube”. Examiner does not find this argument to be persuasive. As explained, Looney expressly teaches that the chemistry of mercury in the aqueous solution depends upon solution conditions, which is known to include pH. And, specifically, Looney discloses, “To provide for speciation of Hg in a protocol, one or more modules of a device can incorporate aspects of reactive chemistry so as to selectively separate Hg species as they sequentially contact modules of the device. Separation can be carried out by selective reaction and capture of targeted Hg species” (see [0029]). A person of ordinary skill in the art understands that mercury speciation and selectively reaction chemistry undeniably are affected by pH. Thus, pH was recognized in the art as affecting the desired chemical interactions. Where the prior art recognizes a variable as affecting a desired result, discovering an optimum or workable value through routine experimentation is ordinarily obvious. See In re Aller, 220 F.2d 454 (CCPA 1955); In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003). Even assuming, arguendo, that Looney does not disclose a pH controlled environment, Applicant’s assertion that a pH of about 5.5-6.5 was found to be beneficial does not establish nonobviousness absent evidence that the claimed range is critical or produces unexpected results relative to the prior art. Applicant has not provided any evidence of criticality regarded the specific pH range such that a person of ordinary skill in the art would not arrive at the claimed range through routine optimization.
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), Veres et al. (Development and validation of a portable gas phase standard generation and calibration system for volatile organic compounds), hereinafter “Veres”, and VICI (Generating a Part Number for a Dynacal Permeation Device).
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 carboxylic 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.
Kurabu does not explicitly teach that the carboxylic acid is formic acid. However, Veres discloses wherein a liquid used in a permeation device comprises formic acid (formic acid using a permeation standard…; see Pg. 688, Part 3.5 MOCCS field calibration).
Karabu and Veres are both considered to be analogous to the claimed invention because they are in the same field of permeation devices. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to select formic acid as the carboxylic acid liquid in the permeation device of Kurabu in order to generate a known and controllable formic acid vapor concentration for calibration or analytical measurement, with a reasonable expectation of success because Veres expressly demonstrates formic acid calibration using a permeation source system.
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, Looney and Veres 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, Looney and Veres 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, Looney and Veres 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, Looney and Veres 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, Looney and Veres 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, Looney and Veres 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]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kurabu (JPH-067658-A) in view of Looney (US-20200131061-A1), Veres et al. (Development and validation of a portable gas phase standard generation and calibration system for volatile organic compounds), hereinafter “Veres”, and VICI (Generating a Part Number for a Dynacal Permeation Device), and LeMay (US-3939858-A).
Regarding Claim 19, Kurabu, Looney and Veres together disclose the system of claim 1.
Kurabu does not explicitly disclose wherein the system comprises a carrier gas flow that mixes with diffused dimethylmercury from the permeator device to form a dimethylmercury flow. However, LeMay discloses a carrier gas flow (supplies carrier gas, e.g. purified air… the stream of air passes over a permeation source; see Col. 2 Lines 35-39). The limitation claiming, “that mixes with diffused dimethylmercury from the permeator device to form a dimethylmercury flow” is functional language that does not further limit the structure of the apparatus, but merely sets forth an operational consequence of introducing a carrier gas flow. The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). The manner of operating an apparatus 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). Functional limitations that do not limit the structure need not be given further due consideration in determining patentability of an apparatus.
Kurabu and LeMay are both considered to be analogous to the claimed invention because they are in the same field of permeation devices. Modifying Kurabu to include a carrier gas flow, as disclosed by LeMay, would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention because LeMay offers the motivation of impregnating the carrier gas with gaseous permeand escaping from the permeation tube to form a blend of permeand and carrier gas of desired proportionality (see Col. 2 Lines 40-43).
Conclusion
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
/JELITZA M PEREZ/Primary Examiner, Art Unit 1774
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