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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/24/2026 has been considered by the examiner.
Status of the Claims
Claims 1-2, 8-9, 11, and 15 have been amended. Claim 10 has been canceled. Claims 3-5 and 12-14 have been previously canceled. Claims 16-18 have been added. Claims 1-2, 6-9, 11, and 15-18 are currently examined herein.
Status of the Rejection
All Claim objection and 35 U.S.C. 103 rejections from the previous office action are withdrawn in view of Applicant’s arguments and amendments.
New grounds of claim objection, 35 U.S.C 112(b), and 35 U.S.C. 103 are necessitated by Applicant’s arguments and amendments.
Claim Objections
Claims 1-2, 8-9, and 16-18 are objected to because of the following informalities:
Claim 1, please amend “associate with TFA and thereby increase the sensitivity of detection of the iron” to “associate with the TFA and thereby increase the sensitivity of detection of the extracellular iron”; “amount extracellular iron” to “amount of the extracellular iron”.
Claim 2, please amend “The method serum according to claim 1” to “The method extracellular iron”.
Claim 8, please amend “comprising the metal element” to “comprising the extracellular iron”.
Claim 9, please amend “comprising the metal element” to “comprising the extracellular iron”.
Claim 16, please amend “wherein TFA and Nafion are present” to “wherein the TFA and the Nafion are present”.
Claim 17, please amend “with TFA” to “with the TFA”.
Claim 18, please amend “relative to the TFA” to “relative to the TFA.” (add a period to end the claim).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 6-9, 11, and 15-18 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 1, the limitation “Nafion” is a registered trademark and should be amended to recite the actual compound name instead of the trademark. Claims 2, 6-9, 11, and 15-18 are further rejected by virtue of their dependence upon and because they fail to cure the deficiencies of indefinite claim 1.
Regarding Claims 16-18, the limitation “Nafion” is a registered trademark and should be amended to recite the actual compound name instead of the trademark. Examiner notes that Claim 16 further recites Nafion in the limitation “a TFA-Nafion complex”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 6-8, 11, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kremplova et al. (Automated Electrochemical Detection of Metal Iron Ions in Erthrocytes from MeLiM Minipigs Suffering from Melanoma, Int. J. Electrochem. Sci., 2012, 7(7), 5893-5909), provided in IDS submitted on 06/09/2025, in view of Cinti et al. (Carbon Black-Modified Electrodes Screen-Printed onto Paper Towel, Waxed Paper, and Parafilm M®, Sensors, 2017, 17, 1-12), Steen (US 2013/0236977 A1), and Ugo (Trace Iron Determination by Cyclic and Multiple Square-Wave Voltammetry at Nafion Coated Electrodes. Applications to Pore-Water Analysis Electroanalysis 2001; 13(8-9), 661-668).
Regarding Claim 1, Kremplova teaches a method for detecting and quantifying extracellular iron (detection and quantification of compounds of interest, such as iron, in biological samples [abstract]); comprising the steps of
contacting the sample with trifluoroacetic acid (TFA) (supernatant of biological blood plasma sample was combined with trifluoroacetic acid [TFA] solution [Section 2.5 Preparation of Samples, page 5900]);
applying the sample and the TFA to an electroanalytical sensor (diluted sample with TFA was centrifuged, and then supernatant was used for electrochemical determination [Section 2.5 Preparation of Samples, page 5900]; electrodes of the electroanalytical sample are positioned into the sample [second para. page 5894]); and
detecting a current signal which is proportional to an amount of extracellular iron by means of the electroanalytical sensor (as illustrated in Figure 5(B), iron concentration is dependent on current signal [page 5905]).
Kremplova is silent on the sample is “serum”, wherein the electroanalytical sensor comprises a support made of cellulose, polyester or a derivative thereof, on which a hydrophobic area delimits a hydrophilic working area, said hydrophilic working area comprising at least one working electrode, one reference electrode and one counter electrode by screen-printing, wherein the working electrode comprises a Nafion layer configured to associate with TFA and thereby increase the sensitivity of detection of the iron.
Cinti teaches alternative materials for screen-printed electrode manufacturing (abstract), and teaches an electroanalytical sensor (three-electrode screen-printed electrode system [second para. page 3; illustrated in Figure 1, page 3]) comprises a support made of cellulose (support is a cellulose substate such as waxed paper [second para. page 3]), on which a hydrophobic area delimits a hydrophilic working area (as illustrated in photograph Figure 1B, the hydrophobic wax paper area delimits the hydrophilic electrode area composed of conductive ink [second para. page 3]), said hydrophilic working area comprising at least one working electrode, one reference electrode and one counter electrode by screen-printing (three electrode system was manually screen-printed composed of conductive ink [second para. page 3]).
Kremplova and Cinti are considered analogous art to the claimed inventions because they are in the same field of methods to measure metal ions using electroanalytic sensors. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electroanalytical sensor of Kremplova to comprise a support made of cellulose, on which a hydrophobic area delimits a hydrophilic working area, said hydrophilic working area comprising at least one working electrode, one reference electrode and one counter electrode by screen-printing, as taught by Cinti, as using a cellulose support serves as a cost-effective alternative sensor manufacturing method (Cinti, [abstract]).
Modified Kremplova is silent on the sample is “serum”, wherein the working electrode comprises a Nafion layer configured to associate with TFA and thereby increase the sensitivity of detection of the iron.
Steen teaches method for preparing blood samples for analysis, such as peptide analysis [abstract], and teaches the biological liquid is selected from the group consisting of blood, plasma, and serum (sample can be a blood sample, and in some embodiments a plasma sample [para. 0014], and in other embodiments, a serum [para. 0016]; samples are centrifuged and processed with a volatile organic compound, such as TFA [para. 0016]).
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the sample of modified Kremplova to be serum, as taught by Steen, as adding a volatile organic compound, such as TFA, can reduce the noise and background caused by blood constituents (Steen, [para. 0037]).
Modified Kremplova is silent on wherein the working electrode comprises a Nafion layer configured to associate with TFA and thereby increase the sensitivity of detection of the iron.
Ugo teaches Nafion glassy carbon electrodes for preconcentrating and detecting iron (abstract), and teaches wherein the working electrode comprises a Nafion layer (working electrode is a PTFE glassy carbon electrode coated with Nafion [fifth para. col. 2, page 662]).
Modified Kremplova and Ugo are considered analogous art to the claimed inventions because they are in the same field of methods to measure metal ions using electroanalytic sensors. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the working electrode of the method of modified Kremplova to comprise a Nafion layer, as taught by Ugo, as Nafion allows for higher voltammetric signals compared to unmodified electrodes (Ugo, [third para. col. 1, page 662]); the limitation “configured to associate with TFA and thereby increase the sensitivity of detection of the iron” is an intended result of a positively recited step. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). MPEP 2111.04(I).
Regarding Claim 2, modified Kremplova teaches the method according to claim 1.
Kremplova teaches separating a protein-containing fraction of the serum from a fraction of the serum comprising the extracellular iron and the TFA (diluted plasma sample with TFA was centrifuged, and then supernatant was used as the sample for electrochemical determination [Section 2.5 Preparation of Samples, page 5900]);
Regarding Claim 6, modified Kremplova teaches the method according to claim 1, and teaches wherein a fluorinated polymer is used in addition to the TFA (as outlined in the claim 1 rejection above, Ugo teaches adding a Nafion layer to the working electrode [fifth para. col. 2, page 662]).
Regarding Claim 7, modified Kremplova teaches the method according to claim 1, and teaches wherein the at least one working electrode is treated with a fluorinated polymer (as outlined in the claim 1 rejection above, Ugo teaches adding a Nafion layer to the working electrode [fifth para. col. 2, page 662]).
Regarding Claim 8, modified Kremplova teaches the method according to claim 2.
Kremplova teaches wherein the step of separating the protein-containing fraction of the serum from the fraction of the serum comprising the extracellular iron and the at least one fluorinated acid substance is carried out by centrifugation (diluted sample combined with TFA was centrifuged [Section 2.5 Preparation of Samples, page 5900]).
Regarding Claim 11, modified Kremplova teaches the method according to claim 1.
Kremplova teaches wherein the extracellular iron is Fe2+ and Fe3+ (mammalian blood sample [second para. page 5897], which can be in the divalent or trivalent form Fe2+ and/or Fe3+ [first para. page 5895]).
Regarding Claim 15, modified Kremplova teaches the method according to claim 1.
Kremplova teaches wherein an amount of the serum applied to the electroanalytical sensor is 20 µL (volume of injected sample is 20 µL [first para. page 5899]).
Regarding Claim 16, modified Kremplova teaches the method of claim 1;
the limitation “wherein TFA and Nafion are present at the working electrode under conditions that permit formation of a TFA-Nafion complex” is an intended result of a positively recited step. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
Regarding Claim 17, modified Kremplova teaches the method of claim 1.
Kremplova does not explicitly teach wherein Nafion is added directly to the serum together with TFA prior to application of the serum to the electroanalytical sensor.
However, as modified Kremplova teaches adding Nafion to the working electrode surface (Ugo teaches working electrode is coated with Nafion [fifth para. col. 2, page 662]), it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the method of modified Kremplova by adding Nafion directly to the serum together with TFA prior to application of the serum to the electroanalytical sensor, as adding Nafion to the serum prior to the electrode is a change in sequence of adding ingredients and would be ambit to one of ordinary skill in the art. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). See MPEP 2144.04.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kremplova Cinti, Steen, and Ugo, as applied to claim 2, and in view of Hou et al. (Microfluidic Devices for Blood Fractination, Micromachines, 2011, 2, 319-343).
Regarding Claim 9, modified Kremplova teaches the method according to claim 2.
Kremplova is silent on wherein the step of separating the protein-containing fraction of the serum from the fraction of the serum comprising the extracellular iron and the at least one fluorinated acid substance is carried out by a microfluidic system.
Hou teaches various methods of separating biological fluids using microfluidic devices for blood fractionation (abstract), and teaches separating the protein-containing fraction is carried out by a microfluidic system (for example, blood plasma fractions are separated from diluted blood samples using dielectrophoresis in Figure 2b [page 324]).
Modified Kremplova and Hou are considered analogous art to the claimed inventions because they are in the same field of methods to separate biological liquids. It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the separation step of the protein-containing fraction of modified Kremplova by using a microfluidic device using, for example, dielectrophoretic separation, as taught by Hou, as microfluidic devices offer an alternative method to separating biological fluids, such as whole blood or blood components (Hou, [abstract]). In addition, as Kremplova teaches that TFA is added to the processed plasma sample, centrifuged, with the resulting supernatant used for electrochemical determination, it would be obvious to one of ordinary skill in the art prior to the effective filing date to separate the protein-containing fraction of the biological liquid from the fraction of the biological liquid comprising the extracellular iron and the at least one fluorinated acid substance is carried out by a microfluidic system, as taught by combined Kremplova and Hou, as the microfluidic systems outlined in Hou can be designed to remove the liquid supernatant from the cell debris (example microfluidic system illustrated in Figure 2B of Hou, page 324). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143(I)(A)).
Response to Arguments
Applicant's arguments, see Remarks pgs. 5-12, filed 08/06/2026, with respect to the 35 U.S.C 103 rejections and amended claims have been fully considered.
Applicant’s Argument #1:
Applicant has traversed the 103 rejection by amending claim 1 to recite “a Nafion layer configured to associate with trifluoroacetic acid (TFA) and thereby increase the sensitivity of the iron”. Applicant has also amended claim 1 to recite “extracellular iron in serum” and notes that Kremplova teaches analyzing and measuring iron from erythrocytes, thus teaching away from the claimed invention. Other relied upon references Steen, Cinti, Wang, and Huo fail to cure these deficiencies.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection above.
Applicant’s Argument #2:
Applicant has added dependent claims 16-18, with Claim 16 being directed formation of a TFA-Nafion complex, and Claims 17-18 directed to directly adding Nafion to the serum together with the TFA. Applicant argues that none of the cited prior art references do not teach newly added dependent claims 16-18.
Examiner’s Response #2:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection under 35 U.S.C 103 and/or 35 U.S.C 112(b) 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.
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/R.L.G./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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