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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amendment filed on March 16, 2026 added the limitation “wherein the presence of the amount of ozone with the thiocarbamate-based indicator forms 7-hydroxy-coumarin”. The originally filed specification discloses that “the thiocarbamate derivative may be a derivative of 7-hydroxy coumarin” and that “the thiocarbamate-based indicator may be a thiocarbamate derivative of hydroxy-coumarin”. The originally filed disclosure describes thiocarbamate derivatives of hydroxycoumarin compounds, but does not disclose 7-hydroxycoumarin itself as the indicator. The examiner finds no disclosure in the originally filed specification, claims, or drawings identifies 7-hydroxycoumarin as the indicator.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-5, 7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over anticipated by Chen et al. (“Chen”)(A highly sensitive fluorescent probe for ozone based on coumarin-benzothiazole derivative) in view of Zhu et al. (“Zhu”)(A fast-response, highly specific fluorescent probe for the detection of picomolar hypochlorous acid and its bioimaging applications).
With respect to claim 1, Chen teaches a method for measuring ozone in a sample (abstract) comprising preparing an thiocarbamate-based indicator (scheme 1, page 3), introducing the indicator to a sample comprising an amount of ozone and the introducing causes a change in fluorescence of the solution (sample preparation section, pages 2-3), wherein the presence of the amount of ozone with the indicator forms a 7-hydroxy-coumarin (fig. 7, page 7); and measuring the amount of ozone in the sample by measuring the change in intensity of fluorescence (page 4).
Chen does not teach that the thiocarbamate-based forms 7-hydroxy-coumarin.
Zhu teaches a thiocarbamate-based fluorescent indicator, thiocarbamate-caged 7-hydroxy coumarin/TCHC (abstract).
Zhu also teaches that a strong oxidating agent (such as HOCl) oxidizes the sulfur-containing moiety of TCHC. This oxidation destabilizes the sulfur containing protecting group, leading to fragmentation and formation of intermediates that are subsequently hydrolyzed, releasing the parent fluorophore (page 105, sensing mechanism of probe TCHC for detecting HOCl). The fluorescent enhancement was attributed to the inhibition of PET. The adoption of multiple fluorescence sensing mechanisms (such as PET, ICT, and chlorination) was proven to be an ideal strategy for constructing ultrasensitive probes for detecting various targets (page 107, conclusions).
Examiner further finds that the prior art contained a method/product (i.e., thiocarbamate-based indicator) which differed from the claimed method by the substitution of component(s) (i.e., 3-(but-3-en-1-yl)-2-(7-(but-3-en-1-yloxy)-2-oxo-2H-chromen-3-yl)benzo[d]thiazol-3-ium/BCT) with other component(s) (i.e., a simple thiocarbamate-caged 7-hydroxycoumarin/TCHC), and the substituted components and their functions were known in the art as above set forth. An ordinarily skilled artisan at the time of invention could have substituted one known element with another (i.e., BCT taught by Chen), and the results of the substitution (i.e., simple thiocarbamate-caged 7-hydroxycoumarin/TCHC taught by Zhu) would have been predictable.
Therefore, pursuant to MPEP §2143 (I), Examiner concludes that it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the BCT of reference Chen with a simple thiocarbamate-caged 7-hydroxycoumarin of reference Zhu, since the result would have been predictable.
With respect to claim 2, Chen in view of Zhu teaches the thiocarbamate-based indicator comprises a thiocarbamate derivative of hydroxyl coumarin (abstract).
With respect to claim 3, Chen in view of Zhu teaches the thiocarbamate-based derivative is a derivative of 7-hydroxy-coumarin (abstract).
With respect to claim 4, Chen teaches titrating the sample to a pH in the range of about 6-8 (pages 2-3).
With respect to claim 5, Chen teaches adding a phosphate buffer (page 2). The PBS buffer is phosphate buffered saline (page 8, abbreviations section).
With respect to claim 7, Chen teaches that the fluorescence intensity is correlated to a concentration of ozone in the sample (page 3).
With respect to claim 9, Chen teaches the addition of a co-solvent (page 3; scheme 1).
With respect to claim 10, Chen teaches an ethanol co-solvent (page 3; scheme 1).
Claims 11-15, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over
anticipated by Chen et al. (“Chen”) (A highly sensitive fluorescent probe for ozone based on coumarin-benzothiazole derivative. Journal of Analytical Science and Technology 12, 18) in view of Zhu et al. (“Zhu”)(A fast-response, highly specific fluorescent probe for the detection of picomolar hypochlorous acid and its bioimaging applications) in further view of A N Al-Baarri et al. ("A N Al-Baarri") (Production of Ozone and the Simple Detection using Potassium Iodide Titration Method).
With respect to claim 11, Chen teaches a method for measuring ozone in a sample
(abstract) comprising preparing a thiocarbamate-based indicator (scheme 1), introducing the
indicator to a sample wherein the sample contains an amount of ozone and the introducing
causes a change in fluorescence of the solution (sample preparation section, pages 2-3) and
measuring the amount of ozone in the sample by measuring the change in intensity of the
fluorescence (page 4).
Chen does not teach that the thiocarbamate-based forms 7-hydroxy-coumarin.
Zhu teaches a thiocarbamate-based fluorescent indicator, thiocarbamate-caged 7-hydroxy coumarin/TCHC (abstract).
Zhu also teaches that a strong oxidating agent (such as HOCl) oxidizes the sulfur-containing moiety of TCHC. This oxidation destabilizes the sulfur containing protecting group, leading to fragmentation and formation of intermediates that are subsequently hydrolyzed, releasing the parent fluorophore (page 105, sensing mechanism of probe TCHC for detecting HOCl). The fluorescent enhancement was attributed to the inhibition of PET. The adoption of multiple fluorescence sensing mechanisms (such as PET, ICT, and chlorination) was proven to be an ideal strategy for constructing ultrasensitive probes for detecting various targets (page 107, conclusions).
Examiner further finds that the prior art contained a method/product (i.e., thiocarbamate-based indicator) which differed from the claimed method by the substitution of component(s) (i.e., 3-(but-3-en-1-yl)-2-(7-(but-3-en-1-yloxy)-2-oxo-2H-chromen-3-yl)benzo[d]thiazol-3-ium/BCT) with other component(s) (i.e., a simple thiocarbamate-caged 7-hydroxycoumarin/TCHC), and the substituted components and their functions were known in the art as above set forth. An ordinarily skilled artisan at the time of invention could have substituted one known element with another (i.e., BCT taught by Chen), and the results of the substitution (i.e., simple thiocarbamate-caged 7-hydroxycoumarin/TCHC taught by Zhu) would have been predictable.
Therefore, pursuant to MPEP §2143 (I), Examiner concludes that it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the BCT of reference Chen with a simple thiocarbamate-caged 7-hydroxycoumarin of reference Zhu, since the result would have been predictable.
Chen does not teach the addition of potassium iodide wherein the potassium iodide
accelerates the reaction between the indicator and ozone.
A N Al-Baarri teaches a method for measuring ozone in a sample introducing an
indicator to a sample wherein the sample contains an amount of ozone. Adding potassium
iodide to the sample wherein the potassium iodide accelerates the reaction rate between the
indicator and ozone (page 1, introduction). A N Al-Baarri also teaches that the visible color
appearance can be detected with ease and may provide the linear graph as the volume of
applied solution and is used in combination with a sulfur compound detection agent (page 1,
introduction).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to add potassium iodide to the sample of Chen so that visible
color appearance can be detected with ease and can provide a linear graph as the volume of
applied solution when used in combination with a sulfur compound detection agent.
With respect to claim 12, Chen teaches that the thiocarbamate-based indicator
comprises a thiocarbamate derivative of hydroxylcoumarin (page 3; scheme 1).
With respect to claim 13, Chen teaches that the thiocarbamate-based indicator
comprises a thiocarbamate derivative of 7-hydroxy-coumarin (page 3; scheme 1).
With respect to claim 14, Chen teaches titrating the sample to a pH in the range of
about 6 – 8 (pages 2 – 3).
With respect to claim 15, Chen teaches adding a phosphate buffer (page 2). The PBS buffer is phosphate buffered saline (page 8, abbreviations section).
With respect to claim 17, Chen teaches that the fluorescence intensity if correlated to
a concentration of ozone in the sample (page 3).
With respect to claim 19, Chen teaches the addition of a co-solvent (page 3; scheme
1).
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over anticipated by Chen et al. (“Chen”) (A highly sensitive fluorescent probe for ozone based on coumarin-
benzothiazole derivative. Journal of Analytical Science and Technology 12, 18) in view of Zhu et al. (“Zhu”)(A fast-response, highly specific fluorescent probe for the detection of picomolar hypochlorous acid and its bioimaging applications) in further view of Huang et al. (“Huang”) (CN 102590117 A).
With respect to claim 6, Chen in view of Zhu does not teach the amount of ozone in the claimed range.
Huang teaches that the amount of ozone is 0.03 - 1.00 mg/L (paragraph 0006).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention, to use the method of Chen with the amount of ozone taught by
Huang in order to use quantitative detection of trace amounts of ozone in water for the
determination and optimization of ozone dosage and the control of ozone tail gas (Huang,
paragraph 0002).
With respect to claim 8, Chen in view of Zhu teaches the limitations of claim 1. Chen further teaches that the sample comprises water (Chen, page 2) and that ozone is widely used in the field of water purification (Chen, page 1).
Chen in view of Zhu does not explicitly teach the water purification is from a beverage material system.
Huang (paragraph 2) teaches that ozone is widely used in the field of drinking water
oxidation and disinfection. Huang teaches that the water sample can be drinking water.
(paragraph 0014).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention, to choose the water in Chen to be drinking water, in order to
have a specific water purification system where ozone detection is needed as taught by Huang.
Claim 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over
anticipated by Chen et al. (“Chen”) (A highly sensitive fluorescent probe for ozone based on
coumarin-benzothiazole derivative. Journal of Analytical Science and Technology 12, 18) in view of Zhu et al. (“Zhu”)(A fast-response, highly specific fluorescent probe for the detection of picomolar hypochlorous acid and its bioimaging applications) and A N Al-Baarri et al. ("A N Al-Baarri") (Production of Ozone and the Simple Detection using Potassium Iodide Titration Method) in further view of Huang et al. (“Huang”) (CN 102590117 A).
With respect to claim 16, Chen in view of Zhu teaches the limitations of claim 11.
Chen in view of Zhu does not teach the amount of ozone in the claimed range.
Huang teaches that the amount of ozone is 0.03 - 1.00 mg/L (paragraph 0006).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention, to use the method of Chen with the amount of ozone taught by
Huang, in order to use quantitative detection of trace amounts of ozone in water for the
determination and optimization of ozone dosage and the control of ozone tail gas (Huang,
paragraph 0002).
With respect to claim 18, Chen in view of Zhu teaches the limitations of claim 11. Chen further teaches that the sample comprises water (page 2) and that ozone is widely used in the field of water purification (page 1).
Chen in view of Zhu does not explicitly teach the water purification is from a beverage material system.
Huang (paragraph 2) teaches that ozone is widely used in the field of drinking water
oxidation and disinfection. Huang teaches that the water sample can be drinking water.
(paragraph 0014).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention, to choose the water in Chen to be drinking water, in order to
have a specific water purification system where ozone detection is needed as taught by Huang.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over anticipated by
Watanabe et al. ("Watanabe") (JP 2020024095 A) in view of Chen et al. (“Chen”) (A highly
sensitive fluorescent probe for ozone based on coumarin-benzothiazole derivative. Journal of
Analytical Science and Technology 12, 18) in further view of Zhu et al. (“Zhu”)(A fast-response, highly specific fluorescent probe for the detection of picomolar hypochlorous acid and its bioimaging applications).
With respect to claim 20, Watanabe teaches a measurement device which measures
ozone in a sample comprising an indicator, at least one measurement chamber (paragraphs
0004 – 0005), a processor and a memory storing instructions executable by the processor to
introduce the indicator to a sample wherein the sample contains an amount of ozone
(paragraphs 0027 – 0029). Adding potassium iodide to the sample wherein the potassium
iodide accelerates the reaction rate between the indicator and ozone (paragraph 0005).
Watanabe does not teach that the indicator is a thiocarbamate-based indicator nor that
a change in fluorescence of the sample can be used to measure the amount of ozone in the
sample.
Chen teaches a method for measuring ozone in a sample comprising preparing a
thiocarbamate-based indicator, introducing the indicator to a sample wherein the sample
contains an amount of ozone and the introducing causes a change in fluorescence of the
solution (introduction) and measuring the amount of ozone in the sample by measuring the
change in intensity of the fluorescence (page 4).
Chen does not teach that the thiocarbamate-based forms 7-hydroxy-coumarin.
Zhu teaches a thiocarbamate-based fluorescent indicator, thiocarbamate-caged 7-hydroxy coumarin/TCHC (abstract).
Zhu also teaches that a strong oxidating agent (such as HOCl) oxidizes the sulfur-containing moiety of TCHC. This oxidation destabilizes the sulfur containing protecting group, leading to fragmentation and formation of intermediates that are subsequently hydrolyzed, releasing the parent fluorophore (page 105, sensing mechanism of probe TCHC for detecting HOCl). The fluorescent enhancement was attributed to the inhibition of PET. The adoption of multiple fluorescence sensing mechanisms (such as PET, ICT, and chlorination) was proven to be an ideal strategy for constructing ultrasensitive probes for detecting various targets (page 107, conclusions).
Examiner further finds that the prior art contained a method/product (i.e., thiocarbamate-based indicator) which differed from the claimed method by the substitution of component(s) (i.e., 3-(but-3-en-1-yl)-2-(7-(but-3-en-1-yloxy)-2-oxo-2H-chromen-3-yl)benzo[d]thiazol-3-ium/BCT) with other component(s) (i.e., a simple thiocarbamate-caged 7-hydroxycoumarin/TCHC), and the substituted components and their functions were known in the art as above set forth. An ordinarily skilled artisan at the time of invention could have substituted one known element with another (i.e., BCT taught by Chen), and the results of the substitution (i.e., simple thiocarbamate-caged 7-hydroxycoumarin/TCHC taught by Zhu) would have been predictable.
Therefore, pursuant to MPEP §2143 (I), Examiner concludes that it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the BCT of reference Chen with a simple thiocarbamate-caged 7-hydroxycoumarin of reference Zhu, since the result would have been predictable.
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention that the use of the thiocarbamate-based indicator would be
applying a known technique to a known device (method, or product) ready for improvement to
yield predictable results. Chen teaches that when using this type of indicator, the interaction of
the ozone probe can be completed within 20 minutes, the fluorescence intensity is significantly
enhanced and it has the advantages of high sensitivity (abstract).
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive.
Applicant argues that the rejection should be withdrawn because Chen’s teachings are readily distinguishable from the instant disclosed method and that Chen fails to teach the limitations of the previously presented or as currently amended. Remarks 8-9.
Applicant made amendments to independent claims 1, 11 and 20. Amendments to these claims added the limitation of “wherein the presence of the amount of ozone with the thiocarbamate-based indicator forms 7-hydroxy-coumarin”.
The argument is not persuasive because the previously presented rejection no longer supports the claims due to this amendment, however, the added limitation is anticipated by Chen in view of Zhu as Zhu teaches a simple thiocarbamate-caged 7-hydroxycoumarin. See supra (U.S.C. § 103 rejections).
Applicant also argues that A N Al-Baarri does not overcome the deficiencies of Chen in claims 11-20 because the measurement technique of A N Al-Baarri differs from the instant application and that there would be issues with quenching. Remarks 10.
In response to applicant's argument that potassium iodide/KI is added for a different reason, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See MPEP § 2145 (II). When the additive taught by A N Al-Baarri is incorporated into the method of Chen as proposed by the rejection, the additive would possess the same chemical and physical properties it possessed in the method taught by A N Al-Baarri and therefore would perform the recited function. Applicant has not provided evidence demonstrating that the additive, potassium iodide/KI, would be incapable of performing the claimed function in the combined method.
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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/B.K.S./Examiner, Art Unit 1796
/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796
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