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 .
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-6, and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jamkratoke et al. (“A Selective Spectrofluorometric Determination of Micromolar Level of Cyanide in Water Using Naphthoquinone Imidazole Boronic-Based Sensors and a Surfactant Cationic CTAB Micellar System” J Fluoresc, 2011, 21, 1179-1187).
Regarding Claims 1, 6, and 8: Jamkratoke et al. teaches a method of quantitative determination of cyanide (analyte component) in an aqueous sample comprising mixing of a sensor (indicator) and cationic surfactants such as cetyltrimethylammonium bromide and dodecyltrimethylammonium bromide in ethanol (alcohol) to assemble micelles (forming an indicator solution), followed by introducing cyanide (analyte) and recording fluorescence spectra, wherein fluorescence occurs by cyanide interacting with the sensor (indicator) (abstract; Pg. 1180, Cols. 1-2 and Scheme 1; Pg. 1181, Fig. 2).
Regarding Claims 4-5 and 9: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process and the claimed process steps. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount and the claimed process steps. Therefore, the claimed effects and physical properties, i.e. the amount of alcohol and surfactant enhances the change in fluorescence of the indicator, the micelles exclude the amount of water and alcohol from a hydrophobic region containing the indicator, and the alcohol extends the shelf life of the indicator would naturally arise and be achieved by a composition and method with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant' s position that this would not be the case: (1) evidence would need to be provided to support the applicant' s position; and (2) it would be the Office' s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients. Furthermore, it is noted that the micelles formed by Jamkratoke et al. form an inner hydrophobic region (Fig. 2).
Regarding Claim 10: The surfactant and alcohol in the method of Jamkratoke et al. necessarily exceeds a critical micelle concentration as micelles are formed (Fig. 2).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jamkratoke et al. (“A Selective Spectrofluorometric Determination of Micromolar Level of Cyanide in Water Using Naphthoquinone Imidazole Boronic-Based Sensors and a Surfactant Cationic CTAB Micellar System” J Fluoresc, 2011, 21, 1179-1187) in view of Chavali et al. (“Rapid detection of fluoride in potable water using a novel fluorogenic compound 7-O-tert-butyldiphenylsilyl-4-methylcoumarin” Analytical Chemistry Research, 2015, 6, 26-31).
Jamkratoke et al. teaches the method of claim 1 as set forth above.
Jamkratoke et al. does not teach the method wherein the analyte comprises fluoride and the indicator comprises a silane-fluorophore complex. However, Chavali et al. teaches a method of detecting fluoride by fluorescence with a 7-O-tert-butyldiphenylsilyl-4-methylcoumarin (TBDPSC, Ph2tBu-Mumb) indicator (abstract, Fig. 2). Jamkratoke et al. and Chavali et al. are analogous art because they are concerned with the same field of endeavor, namely detection of anions by fluorescence. At the time of the invention a person of ordinary skill in the art would have found it obvious to combine the analyte and sensor of Chavali et al. with the method of Jamkratoke et al. and would have been motivated to do so allow for an additional analyte for detection if desired and also because Jamkratoke et al. teaches that the micelles can increase the solubility of sensors in water and enhance the complexation ability of sensors (Pg. 1180, Col. 1 of Jamkratoke et al.).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jamkratoke et al. (“A Selective Spectrofluorometric Determination of Micromolar Level of Cyanide in Water Using Naphthoquinone Imidazole Boronic-Based Sensors and a Surfactant Cationic CTAB Micellar System” J Fluoresc, 2011, 21, 1179-1187) in view of Karlsson et al. (US Pub. No. 2004/0241724).
Jamkratoke et al. teaches the method of claim 1 as set forth above. Jamkratoke et al. teaches cationic surfactants such as cetyltrimethylammonium bromide and dodecyltrimethylammonium bromide are utilized for formation of micelles as set forth above.
Jamkratoke et al. does not teach the method wherein benzyldimethylhexadecylammonium chloride is the cationic surfactant. However, Karlsson et al. teaches benzyldimethylhexadecylammonium chloride as a cationic surfactant for forming micelles (abstract and [0051]). Jamkratoke et al. and Karlsson et al. are analogous art because they are concerned with the same field of endeavor, namely, formation of micelles for immobilizing a target analyte. At the time of the invention a person of ordinary skill in the art would have found it obvious to utilize the benzyldimethylhexadecylammonium chloride of Karlsson et al. as the cationic surfactant in the method of Jamkratoke et al. and would have been motivated to do so because Karlsson et al. teachers that they are equivalent alternative cationic surfactants for forming micelles for analyzing analytes (MPEP 2144.06).
Response to Arguments
Applicant's arguments filed January 9, 2026 have been fully considered but they are not persuasive.
Jamkratoke et al. teaches forming an indicator solution as claimed as set forth above, it is noted that the micelles are necessarily formed from the cationic surfactant present in Jamkratoke et al., and that the mixture of the compounds of Jamkratoke et al. constitutes forming an indicator solution as set forth above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 March 25, 2026
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