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 .
Specification
The abstract of the disclosure is objected to because it is greater than one paragraph in length (removal of the carriage return and consolidation into a single paragraph will overcome this objection). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 4 and 11 are objected to because of the following informalities: “is terbium carboxylate” should instead be –is a terbium carboxylate--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 7 and 14 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.
Regarding claim 7, there is a lack of antecedent basis in the instant claim, and the claim(s) from which it depends, for the recitation of ‘a medium’. Amending to recite –further comprises a medium-- would establish clarity and overcome this rejection.
Regarding claim 14, there is a lack of antecedent basis in the instant claim, and the claim(s) from which it depends, for the recitation of ‘a medium’. Amending to recite –further comprises a medium-- would establish clarity and overcome this rejection.
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 1-17 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]).
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 5 and 12, Maeda in view of Burrell render obvious the receptor compositions as set forth in claims 1-2 above. 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 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)).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
A) Claims 1-7, 9-14 and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/237218 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant and copending application are directed to substantially similar reagent compositions for detecting methyl salicylate comprising the combination of a terbium compound and an ionic liquid, and are further directed to substantially similar compounds thereof and amounts thereof, as well as to substantially similar sensors and methods of detecting methyl salicylate with the reagent and/or the sensor comprising the reagent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claims 1-4, 6-11, 13-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/937250 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant and copending application are directed to substantially similar reagent compositions for detecting methyl salicylate comprising the combination of a terbium compound and an ionic liquid, and are further directed to substantially similar compounds thereof, as well as to substantially similar sensors and methods of detecting methyl salicylate with the reagent and/or the sensor comprising the reagent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
C) Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/616357 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant and copending application are directed to substantially similar reagent compositions for detecting methyl salicylate comprising the combination of a terbium compound and an ionic liquid, and are further directed to substantially similar compounds thereof and amounts thereof, as well as to substantially similar sensors and methods of detecting methyl salicylate with the reagent and/or the sensor comprising the reagent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANE L STANLEY/ Primary Examiner, Art Unit 1767