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 .
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.
Claims 1, 3, 4, 6-9, 11, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Leech et al. (J. Mater. Chem. 1991, 1(4), 629-635) in view of Oh et al. (J. Electroanal. Chem, 269 (1989) 17-97).
Considering Claims 1, 3, 4, and 6-8: Leech et al. teaches a film/membrane comprising a 4-vinylpyridine/styrene copolymer coordinate covalently bonded to Ru(II)(2,2’-bipyridyl)(dichloride) complex (Fig. 1, pg. 629-630).
Leech et al. teaches ratio of styrene to vinyl pyridine as being 67:33 to 0:100 (Table 2-4, Fig. 3 and 4). Leech et al. teaches a trade off between film compaction with increasing styrene content and ion-motion restriction at higher vinylpyridine content (pg. 634). "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of styrene to vinylpyridine through routine experimentation, and the motivation to do so would have been, as Leech et al. suggests, to control the charge-transfer diffusion coefficient of the polymer complex (Fig. 4).
Leech et al. teaches the film as being on a glass substrate. However, Oh et al. teaches forming a free-standing film from polyvinyl pyridine polymers, by spin coating the film forming composition on a glass substrate, crosslinking, and then removing the film from the substrate (pg. 79-80). The film is free from pinholes and continuous (pg. 91). Leech et al. and Oh et al. are analogous art as they are concerned with the same field of endeavor, namely polyvinyl pyridine polymers. It would have been obvious to a person of ordinary skill in the art to have formed the film of Leech et al. as a free-standing film, and the motivation to do so would have been, as Oh et al. suggests, to provide a rigid film (pg. 80).
Considering Claim 9: Leech et al. teaches the molar ratio of the polymer unit to the metal complex as being 10:1 (pg. 630).
Considering Claims 11 and 21: Leech et al. teaches the same chemical composition as the instant claims, with the preferred polymer being used in the claimed ratio with a preferred metal-ligand complex. As such, it would inherently have the claimed ion exchange capacity. "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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Leech et al. (J. Mater. Chem. 1991, 1(4), 629-635) in view of Oh et al. (J. Electroanal. Chem, 269 (1989) 17-97) as applied to claim 1 above, and further in view of Agnew (Journal of Polymer Science, Polymer chemistry edition, Vol. 14, 2819-2830, 1976).
Considering Claim 2: Leech et al. teaches the membrane of claim 1 as taught above.
Leech et al. does not teach the metal complex as comprising nickel. However, Agnew teaches using a nickel complex with a vinyl pyridine polymer (Table III). Leech et al. and Agnew are analogous art as they are concerned with the same field of endeavor, namely vinyl pyridine/metal complexes. It would have been obvious to a person of ordinary skill in the art to have used a nickel complex as the metal complex of Leech et al., and the motivation to do so would have been, as Agnew suggests, it is a known metal for complexing with polyvinyl pyridine polymers.
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Leech et al. (J. Mater. Chem. 1991, 1(4), 629-635) in view of Oh et al. (J. Electroanal. Chem, 269 (1989) 17-97) as applied to claim 1 above, and further in view of Ouyang et al. (WO 2015/178912).
Considering Claim 5: Leech et al. teaches the membrane of claim 1 as taught above.
Leech et al. does not teach the claimed ligands. However, Ouyang et al. teaches using 1,10-pheantroline as the ligand for coordination bonding with polyvinyl pyridine (¶00111). Leech et al. and Ouyang et al. are analogous art as they are concerned with the same field of endeavor, namely coordination bonding with polyvinyl pyridine. It would have been obvious to a person of ordinary skill in the art to have used 1,10-phenanthroline as the ligand of Leech et al., in place of bipyridine, as in Ouyang et al., and the motivation to do so would have been, as Ouyang et al. suggests, they are functional equivalents (¶00111).
Considering Claim 10: Leech et al. teaches the membrane of claim 1 as taught above.
Leech et al. is silent on the thickness of the polymer film. However, Ouyang et al. teaches that the amount of polymer (and thus the thickness) would be a result effective variable, controls the ability to accomplish the assay (¶00117), and thus would be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the thickness of the film through routine experimentation, and the motivation to do so would have been, as Ouyang et al. suggests, to find the suitable amount of redox mediator to perform an assay.
Claims 13 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Leech et al. (J. Mater. Chem. 1991, 1(4), 629-635) in view of Oh et al. (J. Electroanal. Chem, 269 (1989) 17-97).
Considering Claims 13, 15, and 16: Leech et al. teaches a film/membrane comprising a 4-vinylpyridine/styrene copolymer coordinate covalently bonded to Ru(II)(2,2’-bipyridyl)(dichloride) complex (Fig. 1, pg. 629-630).
Leech et al. teaches ratio of styrene to vinyl pyridine as being 67:33 to 0:100 (Table 2-4, Fig. 3 and 4). Leech et al. teaches a trade off between film compaction with increasing styrene content and ion-motion restriction at higher vinylpyridine content (pg. 634). "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of styrene to vinylpyridine through routine experimentation, and the motivation to do so would have been, as Leech et al. suggests, to control the charge-transfer diffusion coefficient of the polymer complex (Fig. 4).
Leech et al. teaches the film as being on a glass substrate. However, Oh et al. teaches forming a free-standing film from polyvinyl pyridine polymers, by spin coating the film forming composition on a glass substrate, crosslinking, and then removing the film from the substrate (pg. 79-80). The film is free from pinholes and continuous (pg. 91). Leech et al. and Oh et al. are analogous art as they are concerned with the same field of endeavor, namely polyvinyl pyridine polymers. It would have been obvious to a person of ordinary skill in the art to have formed the film of Leech et al. as a free-standing film, and the motivation to do so would have been, as Oh et al. suggests, to provide a rigid film (pg. 80).
Considering Claim 17: Leech et al. teaches the molar ratio of the polymer unit to the metal complex as being 10:1 (pg. 630).
Considering Claims 18: Leech et al. teaches the same chemical composition as the instant claims, with the preferred polymer being used in the claimed ratio with a preferred metal-ligand complex. As such, it would inherently have the claimed ion exchange capacity. "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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Leech et al. (J. Mater. Chem. 1991, 1(4), 629-635) in view of Oh et al. (J. Electroanal. Chem, 269 (1989) 17-97) as applied to claim 13 above, and further in view of Agnew (Journal of Polymer Science, Polymer chemistry edition, Vol. 14, 2819-2830, 1976).
Considering Claim 14: Leech et al. teaches the membrane of claim 13 as taught above.
Leech et al. does not teach the metal complex as comprising nickel. However, Agnew teaches using a nickel complex with a vinyl pyridine polymer (Table III). Leech et al. and Agnew are analogous art as they are concerned with the same field of endeavor, namely vinyl pyridine/metal complexes. It would have been obvious to a person of ordinary skill in the art to have used a nickel complex as the metal complex of Leech et al., and the motivation to do so would have been, as Agnew suggests, it is a known metal for complexing with polyvinyl pyridine polymers.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Leech et al. (J. Mater. Chem. 1991, 1(4), 629-635) in view of Agnew (Journal of Polymer Science, Polymer chemistry edition, Vol. 14, 2819-2830, 1976) and Oh et al. (J. Electroanal. Chem, 269 (1989) 17-97).
Considering Claims 19 and 20: Leech et al. teaches a film/membrane comprising a 4-vinylpyridine/styrene copolymer coordinate covalently bonded to Ru(II)(2,2’-bipyridyl)(dichloride) complex (Fig. 1, pg. 629-630).
Leech et al. teaches ratio of styrene to vinyl pyridine as being 67:33 to 0:100 (Table 2-4, Fig. 3 and 4). Leech et al. teaches a trade off between film compaction with increasing styrene content and ion-motion restriction at higher vinylpyridine content (pg. 634). "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of styrene to vinylpyridine through routine experimentation, and the motivation to do so would have been, as Leech et al. suggests, to control the charge-transfer diffusion coefficient of the polymer complex (Fig. 4).
Leech et al. does not teach the metal complex as comprising nickel. However, Agnew teaches using a nickel complex with a vinyl pyridine polymer (Table III). Leech et al. and Agnew are analogous art as they are concerned with the same field of endeavor, namely vinyl pyridine/metal complexes. It would have been obvious to a person of ordinary skill in the art to have used a nickel complex as the metal complex of Leech et al., and the motivation to do so would have been, as Agnew suggests, it is a known metal for complexing with polyvinyl pyridine polymers.
Leech et al. teaches the film as being on a glass substrate. However, Oh et al. teaches forming a free-standing film from polyvinyl pyridine polymers, by spin coating the film forming composition on a glass substrate, crosslinking, and then removing the film from the substrate (pg. 79-80). The film is free from pinholes and continuous (pg. 91). Leech et al. and Oh et al. are analogous art as they are concerned with the same field of endeavor, namely polyvinyl pyridine polymers. It would have been obvious to a person of ordinary skill in the art to have formed the film of Leech et al. as a free-standing film, and the motivation to do so would have been, as Oh et al. suggests, to provide a rigid film (pg. 80).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 and 13-21 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.
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 LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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