DETAILED ACTION
Applicant’s reply, filed 24 June 2026 in response to the non-final Office action mailed 25 March 2026, has been fully considered. As per Applicant’s filed claim amendments claims 1-4, 6-11 and 13-17 are pending, wherein: claims 1, 4, 7, 11 and 14 have been amended, claims 2-3, 6, 8-10, 13 and 15-17 are as originally filed, and claims 5 and 12 have been cancelled.
Terminal Disclaimer
The terminal disclaimer filed on 24 June 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patents granted on Application Nos 19/237218, 18/937250, and 18/616357 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1-4, 6-11 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (WO 2021/246480 A1; using US PGPub 2023/0236210 for English language citations) in view of Burrell et al. (US PGPub 2006/0278536).
Regarding claim 1, Maeda teaches methyl salicylate detection, and optical or electrochemical based sensor devices thereof, comprising a rare earth compound, acting as a receptor, that selectively recognizes and forms complexes with methyl salicylate (abstract; [0008]-[0010])(instant reagent for detecting). Maeda teaches the receptor rare earth compound is preferably a terbium compound/complex ([0035]-[0036]; [0043])(instant terbium compound). Maeda further teaches that the receptor can be present as a solution ([0044]) in combination with a supporting electrolyte ([0050]).
Maeda teaches detection via either optical or electrochemical recognition methods and teaches both solution solvents and electrolytes but does not specifically teach an ionic liquid as claimed. However, Burrell similarly teaches electrochemical based sensors for detecting analytes, including methyl salicylate (abstract; [0002]; [0052]), and teaches the use of aprotic ionic liquids as a chemically stable, physically robust, non-volatile, adsorbing medium for the analyte ([0030]; [0034]; [0047]). Burrell further teaches the ionic liquid may optionally be combined with inorganic materials ([0026]). Burrell and Maeda are analogous art and are combinable because they are both concerned with the same field of endeavor, namely electrochemical sensors for analyte detection, including detection of methyl salicylate. At the time of filing a person having ordinary skill in the art would have found it obvious to include the ionic liquid absorbing mediums of Burrell in the receptor compositions of Maeda and would have been motivated to do so as Maeda invites both solution formers and supporting electrolytes and further as Burrell teaches the ionic liquids are chemically stable, physically robust, non-volatile, adsorbing mediums for analytes including methyl salicylate, and were the ionic liquids aid in selective detection of said analytes even in the presence of other compounds ([0021]-[0022]).
Maeda further teaches the concentration of rare earth compound in solution is 0.00004 mol/L to 1 mol/L ([0044]). Burrell further teaches a small amount of the ionic liquid sufficient to dissolve the analyte for detection ([0030];[0047]). Maeda does not specifically teach the amount of solvent former and/or supporting electrolyte. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of solvent former and/or supporting electrolyte and would have been motivated to do so to obtain the desired concentration of rare earth receptor and/or to obtain a desired level of electrolytic support. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 2, Maeda in view of Burrell render obvious the receptor compositions as set forth above. Burrell further teaches the ionic liquids have cations selected from quaternary ammoniums including tetraalkylammonium, pyridinium, pyridazinium, pyrimidinium, pyrazinium, imidazolium, pyrazolium, thiazolium, oxazolium, etc. ([0040]), where pyrrolidine and methylimidazolium cations are preferred ([0040]-[0041]).
Regarding claims 3 and 10, Maeda in view of Burrell render obvious the receptor compositions as set forth in claims 1-2 above. Burrell further teaches the ionic liquids have quaternary ammonium based cations, including 1-methyl-1-alkyl pyrrolidine and 1-alkyl-3-methylimidazolium cations, where the alkyl is 2-10 carbons ([0040]-[0041]). Burrell teaches the anions are fluorine-containing and preferably teaches trifluoromethylsulfonate, bis(trifluoromethylsulfonyl)imide, etc. ([0042]). Burrell further teaches as an example the ionic liquid 1-butyl-3-methylimidazolium bis(trifluormethanesulfonyl)imide (example 1, [0051])(differing from an instantly recited compound only in the alkyl-selection). In view of the teaching by Burrell that alkyls of 2-10 carbons are suitable for the 1-alkyl-3-methylimidazolium cations, it would have been obvious to one of ordinary skill in the art to select from the suitable 2-10 carbon alkyls and arrive at the instant invention with a reasonable expectation of success (rendering obvious at the least 1-ethyl-3-methylimidazolium bis(trifluoromethanesulfonyl)imide).
Regarding claims 4 and 11, Maeda in view of Burrell render obvious the receptor compositions as set forth in claims 1-2 above. Maeda further teaches terbium acetates, terbium chlorides, terbium nitrates, terbium oxalates, terbium propionates, terbium isobutyrates, terbium pivalates, etc. ([0035]-[0035]; [0043]).
Regarding claims 6-8 and 13-15, Maeda in view of Burrell render obvious the receptor compositions as set forth in claims 1-2 above. Maeda further teaches the sensors as claimed, comprising (i) a recognition section for methyl salicylate that comprises the rare earth compound (instant capture section having the reagent), and (ii) a detection section that optically or electrochemically detects recognition of methyl salicylate by the recognition section ([0054]-[0057])(instant detection section). Maeda further teaches inclusion of a solid medium in combination with the rare earth compound including paper, glass, resin or water-soluble polymer ([0045]).
Regarding claims 9 and 16-17, Maeda in view of Burrell render obvious the receptor compositions as set forth in claims 1-2 above and the sensor as set forth in claim 6 above. Maeda further teaches methods of sensing methyl salicylate using the rare earth compound noted above and using the sensor noted above ([0008]-[0010]). Maeda further teaches the steps of the rare earth compound reacting with methyl salicylate to form a complex (instant (i)) in the recognition section, teaches the detection section is configured to be able to optically and/or electrochemically detect recognition by the recognition section, wherein the case of optical detection an excitation light source and detection element to detect fluorescence emissions and thereby measure methyl salicylate concentration are present ([0054]-[0056])(instant (ii) and (iii)).
Response to Arguments/Amendments
The objection to the specification is withdrawn as a result of Applicant’s filed amendments to the abstract.
The objections to claims 4 and 11 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 112(b) rejections of claims 7 and 14 are withdrawn as a result of Applicant’s filed claim amendments.
The provisional double patenting rejections of the cited claims to those of copending Applications 19/237218, 18/937250 and 18/616357 are withdrawn as a result of Applicant’s properly filed and accepted terminal disclaimer (see above).
The 35 U.S.C. 103 rejection of claims 1-17 as unpatentable over Maeda (WO 2021/246480 A1; using US PGPub 2023/0236210 for English citations) in view of Burrell (US PGPub 2006/0278536) is maintained. Applicant’s arguments (Remarks, pages 8-9) have been fully considered but were not found persuasive.
Applicant argues that the secondary reference of Burrell is directed to electrochemical analysis while the instant application is directed to optical analysis and argue that one of ordinary skill would not look to Burrell to enhance an optical system. This argument is not found persuasive. Firstly, Burrell is reasonably pertinent, and sufficiently analogous, to the instant specification due to being concerned with detecting analytes, including methyl salicylate. Secondly, Burrell and the primary reference of Maeda are analogous art and are combinable because both Burrell and Maeda are concerned with the same field of endeavor, namely sensors for analyte detection, including detection of methyl salicylate. Furthermore Maeda makes clear that electrochemical sensors and optical sensors are equally valid and analogous methods for detecting methyl salicylate analytes.
Applicant is reminded that the rejection under 35 U.S.C. 103 is based upon a combination of references and that the reason or motivation to modify the prior art reference(s) may often suggest what the inventor has done, but for a different purpose or to solve a different problem. Furthermore, it is noted that it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. The motivation question arises in the context of the general problem confronting the inventor, rather than the specific problem solved by the invention (see In re Kahn, 441 F.3d 977, 987, 78 USPQ 2d 1329, 1336 (Fed. Cir. 2006); see also Cross Med. Prods., Inc. v. Medtronic Sofamore Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) one of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings; see also In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990); MPEP 2144 and 2141.01).
Applicant’s arguments to “Sugizaki” (presumably a reference cited on a PTO-892 by the Examiner but not relied upon in any rejection) are not germane to the outstanding rejection.
Applicant argues unexpected results by comparing Example 5 to Comparative Example 2. Applicant argues that such is demonstrative of unexpectedness of the claimed ionic liquid/terbium compound ratio of 2 to 40, because the fluorescence of Example 5 which contains an ionic liquid is better than the fluorescence of Comparative Example 2 which contained no ionic liquid. At best Applicant’s comparison suggests that fluorescence with ionic liquid in the solution is better than fluorescence without ionic liquid in solution. Given that the secondary reference of Burrell teaches that using ionic liquids as absorbing mediums will aid in selective detection of said analytes, Applicant merely proves true the teachings of the prior art. Such is not unexpected.
Applicant’s argument and results in no way demonstrated unexpectedness with respect to the range of 2 to 40 (IL:Tb-compound). Notably, Applicant’s Example 5 demonstrates a ratio of about 5.4 (see also: Ex1 about 4.8; Ex2 about 4.5; Ex3 about 5.6; Ex4 about 9.5; CE1 and CE2 no IL). The ratio values exemplified by the instant specification are not commensurate in scope and fail to demonstrate such allegedly unexpected results occur over the entire claimed range. The Office points out that enhancing and improving upon existing properties is not necessarily equated to the generation of unexpected results. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP §716.02. Further, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
Conclusion
THIS ACTION IS MADE FINAL. 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 JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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