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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-12 and 14-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claims 1, 11 and 20 now recite “wherein the change in intensity of the absorbance is calculated from a first absorbance measured prior to the adding the iron chelating agent prior to color development and a second absorbance measured after the addition of the iron chelating agent”. This limitation represents new matter not described in the specification as originally filed since the specification does not describe how zinc in a water sample can be measured by only the steps of measuring a first absorbance of the water sample prior to adding an iron chelating agent where there is no color development, measuring a second absorbance of the water sample after the addition of the iron chelating agent to the water sample which results in color development, and using a change or difference between the first and second absorbances to measure an amount of zinc in the water sample since the specification does not teach or describe that the addition of the iron chelating agent to the sample causes a color to occur as a result of zinc in the sample reacting with the deferoxamine iron chelating agent. Paragraph 0024 in the specification states that “In an embodiment, an amount of zinc may be measured in response to the iron chelating agent”, but does not describe that the zinc in the sample actually reacts with the iron chelating agent to produce a color. Paragraph 0033 in the specification states that “the system and method may measure an amount of zinc in the solution by measuring a change in intensity of the absorbance caused by the zinc reacting with the chelating agent. In an embodiment, the presence of zinc in an aqueous solution may cause an increase in absorbance intensity”. However, it is not clear from this portion in paragraph 0033 of the specification whether it is the deferoxamine iron chelating agent that reacts with zinc in the aqueous sample to cause a color to develop in the sample from a colorless state, or whether some other chelating agent in addition to the deferoxamine iron chelating agent is also added to the sample which reacts with the zinc to produce a color from a colorless state. It is also not clear from this portion of paragraph 0033 that there is no color development in the sample prior to the addition of the iron chelating agent. Paragraph 0033 in the specification states that the measuring of absorbance “may be a measurement of absorbance at a wavelength for a colored complex”, but does not state that there is no colored complex or color in the water sample containing zinc prior to adding the deferoxamine iron chelating agent to the sample and that a colored complex forms in the sample after the addition of the deferoxamine chelating agent as a result of the deferoxamine reacting with the zinc in the sample. Therefore, the specification fails to teach that the water sample containing zinc has no color prior to the addition of the iron chelating agent, as now recited in independent claims 1, 11 and 20, and develops color after the addition of the iron chelating agent as a result of zinc reacting with the iron chelating agent to result in “the change in intensity of the absorbance is calculated from a first absorbance measured prior to the adding the iron chelating agent prior to color development and a second absorbance measured after the addition of the iron chelating agent” as now recited in claims 1, 11 and 20. For this reason, this limitation represents new matter.
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 1-2, 4-12 and 14-20 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.
Claim 1 is indefinite since it is not clear whether the “second absorbance measured after the addition of the iron chelating agent” to the sample produces a color development from a reaction between zinc in the water sample and the deferoxamine iron chelating agent, or whether the second absorbance is produced from a reaction between zinc in the water sample and some other type of chelating agent or other reagent that is also added to the sample in addition to the deferoxamine iron chelating agent to produce a color. Since it is not generally known and accepted in the prior art that zinc in a sample reacts with deferoxamine to cause a color to form in the sample, it is not clear whether some other color indicator is also added to the water sample in addition to deferoxamine prior to measuring the second absorbance. How does a color develop in the water sample after the deferoxamine is added to the sample to produce the second absorbance having an increased intensity as compared to the first absorbance? See this same problem in independent claims 11 and 20.
Claim 6 should be canceled since the limitations recited in claim 6 are now recited in independent claim 1.
Claim 16 should be canceled since the limitations recited in claim 16 are now recited in independent claim 11.
Claim 20 should be canceled since it is an exact duplicate of claim 1.
Response to Arguments
Applicant's arguments filed April 21, 2026 have been fully considered but they are not persuasive.
The previous rejections of the claims under 35 USC 112(b) made in the last Office action mailed on January 21, 2026 have been withdrawn in view of the amendments made to the claims. However, the amended claims are now rejected under both 35 USC 112(a) and 35 USC 112(b) for the reasons set forth above, and as necessitated by the amendments made to the claims. The previous rejection of the claims under 35 USC 102(a)(1) as being anticipated by Wang et al, and the previous rejections of the claims under 35 USC 103 as being obvious over Wang et al, Wang et al in view of Tunheim et al, Wang et al in view of Greenawalt, and Wang et al in view of Greenawalt and further in view of Tunheim et al have all been withdrawn in view of the amendments made to the claims which now recite “wherein the change in intensity of the absorbance is calculated from a first absorbance measured prior to the adding the iron chelating agent prior to color development and a second absorbance measured after the addition of the iron chelating agent”. The primary reference to Wang et al specifically adds a color reagent comprising 5-Br-PAPS to the water sample both before and after adding the deferoxamine iron chelating agent to the sample that reacts with zinc in the sample to form a color in the sample. See Figures 4A and 4B in Wang et al. Therefore, Wang et al teach that the first absorbance of the water sample measured prior to adding the iron chelating agent comprising deferoxamine has a color produced from the reaction between zinc in the sample and the 5-Br-PAPS reagent added to the sample prior to the first absorbance being measured. Therefore, Wang et al fail to teach that there is no color development in the sample when the first absorbance is measured prior to the addition of the deferoxamine iron chelating agent to the water sample. It is noted, however, that this limitation added to independent claims 1, 11 and 20 represents new matter for the reasons set forth above in the rejection of the claims made under 35 USC 112(a). If this limitation were to be deleted from the claims, the previous rejection of the claims under 35 USC 102(a)(1) as being anticipated by Wang et al, and the previous rejections of the claims under 35 USC 103 as being obvious over Wang et al, Wang et al in view of Tunheim et al, Wang et al in view of Greenawalt, and Wang et al in view of Greenawalt and further in view of Tunheim et al would still apply.
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 MAUREEN M WALLENHORST whose telephone number is (571)272-1266. The examiner can normally be reached on Monday-Thursday from 6:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander, can be reached at telephone number 571-272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAUREEN WALLENHORST/Primary Examiner, Art Unit 1797 May 26, 2026
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