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 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 1-20 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.
On lines 4-5 of claim 1, the phrase “the fluorescence” lacks antecedent basis. For additional clarification, it is suggested to amend claim 1 to read as follows in order to positively recite two separate measurements of fluorescence both before and after the introduction of the indigo-based indicator: --A method for measuring ozone in a sample comprising: measuring a first intensity of fluorescence of a sample that contains an amount of ozone; introducing an indigo-based indicator and an ammonium salt at about 2.0 millimolar to the sample; measuring a second intensity of fluorescence of the sample containing ozone after the introduction of the indigo-based indicator and the ammonium salt; measuring a change in intensity of the fluorescence between the first and second fluorescence intensities; and measuring the amount of ozone in the sample based upon the measured change in intensity of the fluorescence. – It is also suggested to amend independent method claim 11 and the method steps performed by the processor in independent claim 20 in a similar manner.
On line 1 of claim 7, the phrase “wherein the fluorescence intensity is” should be changed to –wherein the change in fluorescence intensity is—so as to use the same terminology as recited in claim 1.
On line 2 of claim 9, the phrase “occurs in a cuvette of a material” should be changed to –occurs in a cuvette made of a material—for further clarification.
On lines 4-5 of claim 11, the phrase “the fluorescence” lacks antecedent basis.
On line 1 of claim 17, the phrase “wherein the fluorescence intensity is” should be changed to –wherein the change in fluorescence intensity is—so as to use the same terminology as recited in claim 11.
On lines 1-2 of claim 19, the phrase “wherein measuring occurs in a cuvette of a material” should be changed to –wherein measuring of the change in intensity of the fluorescence occurs in a cuvette made of a material—for further clarification.
On line 12 of claim 20, the phrase “the fluorescence” lacks antecedent basis.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi et al (article from Analytical Chemistry, vol. 61, no. 6, March 15, 1989, pages 619-623, submitted in the IDS filed on October 17, 2024) in view of Xiao et al (WO 2012/016350).
With regards to claims 1 and 11, Takeuchi et al teach of a method for measuring ozone in an aqueous sample comprising the steps of introducing an indigo-based indicator to a sample, wherein the sample contains an amount of ozone (see the second paragraph under the section “Sample Preparation” on page 619 of Takeuchi et al where it states “The O3 (aq) sample was prepared by passing the O3-containing gas through purified water”, the abstract of Takeuchi et al where it states “Indigo-5,5’-disulfonate (IDS) was found to be an efficient reagent for the determination of ozone…”, and the last paragraph in the left-hand column on page 620 of Takeuchi et al where it states “CL was observed when IDS was used as a reagent”), measuring a change in intensity of fluorescence of the sample as a result of introducing the indigo-based indicator to the sample, and correlating the measured change in intensity of fluorescence to an amount of ozone in the sample (see the section entitled “Spectral Measurements” on page 619 of Takeuchi et al where it states “Hitachi’s Model F-3000 spectrofluorometer was used for the measurement of fluorescence and CL spectra”, Figure 1 of Takeuchi et al which depicts a photomultiplier 14 and a recorder 17 for measuring fluorescence, Table III in Takeuchi et al which lists fluorescent excitation and emission wavelengths used to measure a change in fluorescence of the sample as a result of introducing an indigo-based indicator to the sample, and the last two paragraphs in the left-hand column and the first paragraph in the right-hand column on page 623 of Takeuchi et al where it states “In order to identify the CL species, the absorption and fluorescence spectra of the species related to this reaction were measured. Table III shows the maximum wavelength and… absorbance or relative intensity. The IDS solution itself does not fluoresce at all; however, as time went by after preparation, weak fluorescence appeared in the neighborhood of 400 nm and the intensity was observed to increase bit by bit. The findings suggested that IDS was oxidized by O3 or O2 in the air to form some fluorescent species. Next, when the O3 (aq) solution… was added to the IDS reagent solution before the measurement, a maximum in fluorescence appeared at the same position as the CL maximum (430 nm) in addition to 400 nm”). Takeuchi et al also teach that various different foreign substances interfere with the accurate determination of ozone in an aqueous sample using the indigo-based indicator and a measured change in fluorescence intensity of the indicator, including free chlorine species (i.e. Cl- and ClO- (as Cl2), as listed in Table II on page 621 of Takeuchi et al). These interfering species in an aqueous sample serve to weaken the fluorescence intensity observed when the indigo indicator reacts with ozone. See Table II and the right-hand column on page 621 of Takeuchi et al.
However, Takeuchi et al fail to teach that the method comprises also adding an ammonium salt at about 2.0 millimolar to the aqueous sample in addition to the indigo-based indicator, and adjusting the pH of the sample analyzed for ozone in the method (claim 11).
Xiao et al teach that when free chlorine species in an aqueous sample react with an ammonium salt (i.e. ammonium chloride), the free chlorine species are consumed in the reaction so that the concentration of the free chlorine species decays over time. See Figure 2 in Xiao et al which depicts free chlorine concentration in an aqueous sample versus time as the sample reacts with ammonium chloride. Also, see paragraphs 0014 and 0046 in Xiao et al.
Based upon the combination of Takeuchi et al and Xiao et al, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an ammonium salt to the aqueous sample analyzed for an ozone concentration using the indigo-based indicator taught by Takeuchi et al because Takeuchi et al teach that free chlorine species in the aqueous sample (Cl- and ClO- (as Cl2)) serve to weaken the fluorescence intensity observed when the indigo indicator reacts with ozone, thus interfering with its detection, and Xiao et al teach that one way to reduce the concentration of free chlorine species in an aqueous sample over time is to add an ammonium salt to the aqueous sample which causes a reaction with the free chlorine species and a decay in its concentration over time. It also would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an ammonium salt to the aqueous sample analyzed for an ozone concentration using the indigo-based indicator taught by Takeuchi et al in an amount of about 2.0 millimolar because Xiao et al teach that free chlorine in a concentration range of between 0-1.6 ppm is reduced by reaction with an ammonium salt over time (see Figure 2 in Xiao et al), and paragraph 0028 in the instant specification indicates that an ammonium salt at about 2 mM serves to mitigate the interference of chlorine in the detection of ozone when chlorine is present in an amount between 0-4 ppm. Thus, one of ordinary skill in the art would also expect the ammonium salt taught by Xiao et al that reacts with free chlorine in a concentration range between 0-1.6 ppm to be about 2.0 mM since this concentration of an ammonium salt reacts with between 0-4 ppm of chlorine. With regards to claim 11, it also would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH of the sample being analyzed for ozone in the method taught by Takeuchi et al because Takeuchi et al teach that the CL (chemiluminescence)/fluorescence intensity of the sample becomes maximum in neutral solutions and it is advantageous to add a phosphate buffer to the sample at a pH of about 7.2 to provide a maximum CL intensity (see the last paragraph in the left-hand column and the first paragraph in the right-hand column on page 620 of Takeuchi et al).
With regards to claims 2 and 12, Takeuchi et al teach that the indigo-based indicator used in the method is Indigo-5,5’-disulfonate (IDS). See the abstract of Takeuchi et al where it states “Indigo-5,5’-disulfonate (IDS) was found to be an efficient reagent for the determination of ozone…”.
With regards to claims 3-4, 11 and 13-14, Takeuchi et al fail to teach of adjusting the pH of the sample analyzed for ozone in the method to a pH of about 7.0 or greater than 7.0. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH of the sample being analyzed for ozone in the method taught by Takeuchi et al to a pH of about 7.0 or greater than 7.0 because Takeuchi et al teach that the CL (chemiluminescence) intensity of the sample becomes maximum in neutral solutions and it is advantageous to add a phosphate buffer to the sample at a pH of about 7.2 to provide a maximum CL intensity (see the last paragraph in the left-hand column and the first paragraph in the right-hand column on page 620 of Takeuchi et al), and also teach that the fluorescence intensity of the ozone-containing sample is equivalent to the CL (chemiluminescence) maximum at 430 nm. Therefore, one of ordinary skill in the art would expect that adjusting the pH of the sample analyzed for ozone in the method taught by Takeuchi et al to a pH of about 7.0 or greater than 7.0 would also provide a maximum fluorescence intensity of the sample.
With regards to claims 5 and 15, Takeuchi et al teach of adding a phosphate buffer to the sample in the method. See the last paragraph in the left-hand column on page 620 of Takeuchi et al where it states “The pH was varied by adding a number of buffers so as to give 2 mM. The CL intensity became maximum in neutral solutions. Phosphate was the most appropriate buffer because of the larger CL intensity than that observed with other buffers”, and the second paragraph in the right-hand column on page 620 of Takeuchi et al where it states “The addition of phosphate, even in small quantity, was effective in enhancing the CL intensity”.
With regards to claims 6 and 16, Takeuchi et al teach that an amount of ozone detected in the sample in the method is in a range of 0.025-410 ng/mL (see the abstract of Takeuchi et al), which is equivalent to 0.000025-0.41 mg/L, and this range is encompassed by the range of 0-2.1 mg/L recited in claims 6 and 16.
With regards to claims 7 and 17, Takeuchi et al teach that the fluorescence intensity of the sample is correlated to an amount of ozone in the sample. See the abstract in Takeuchi et al where it states “The CL intensity was proportional to the O3 (aq) concentration…”, and the last two paragraphs in the left-hand column and the first paragraph in the right-hand column on page 623 of Takeuchi et al where it states “In order to identify the CL species, the absorption and fluorescence spectra of the species related to this reaction were measured. Table III shows the maximum wavelength and… absorbance or relative intensity. The IDS solution itself does not fluoresce at all; however, as time went by after preparation, weak fluorescence appeared in the neighborhood of 400 nm and the intensity was observed to increase bit by bit. The findings suggested that IDS was oxidized by O3 or O2 in the air to form some fluorescent species. Next, when the O3 (aq) solution… was added to the IDS reagent solution before the measurement, a maximum in fluorescence appeared at the same position as the CL maximum (430 nm) in addition to 400 nm”. Therefore, Takeuchi et al teach that the fluorescence intensity of the ozone-containing sample is equivalent to the CL (chemiluminescence) maximum at 430 nm, and this CL maximum intensity is proportional to the ozone concentration of the sample; thus, the fluorescence intensity of the sample at 430 nm is also proportional to the ozone concentration of the sample.
With regards to claims 8 and 18, Takeuchi et al teach that the measuring of the fluorescence intensity uses an excitation wavelength of between 320-370 nm and an emission wavelength of between 420-470 nm. See Table III in Takeuchi et al which lists different fluorescence excitation and emission wavelengths used in the method, and the first paragraph in the right-hand column on page 623 of Takeuchi et al where it states “Next, when the O3 (aq) solution… was added to the IDS reagent solution before the measurement, a maximum in fluorescence appeared at the same position as the CL maximum (430 nm) in addition to 400 nm”.
With regards to claims 9 and 19, Takeuchi et al teach that the measuring of the change in intensity of fluorescence in the method occurs in a cuvette made of glass. See the section entitled “Apparatus” in the right-hand column on page 619 of Takeuchi et al where it states “Each of the reagent and sample solutions was introduced into the Pyrex glass disk type reaction cell…”, and see Figure 1 in Takeuchi et al.
With regards to claim 10, Takeuchi et al fail to teach that the sample analyzed for ozone in the method comprises water from a beverage system. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method taught by Takeuchi et al on a sample comprising water from a beverage system because Takeuchi et al teach that drinking water usually contains amounts of ozone since ozone is used to treat drinking water to remove hazardous chlorinated organic compounds therein. See the first paragraph of the Introduction section on page 619 of Takeuchi et al.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeuchi et al in view of Xiao et al as applied to claims 1-19 above, and further in view of Das et al (US 2020/0386682). For a teaching of Takeuchi et al and Xiao et al, see previous paragraphs in this Office action.
With regards to claim 20, Takeuchi et al teach of a measurement device for measuring ozone in a sample comprising an indigo-based indicator (see the abstract of Takeuchi et al where it states “Indigo-5,5’-disulfonate (IDS) was found to be an efficient reagent for the determination of ozone…”), and a measurement chamber 12 for combining a sample with the indigo-based indicator (see the reaction cell 12 in the apparatus depicted in Figure 1 of Takeuchi et al). Takeuchi et al fail to teach that the measurement device also comprises a processor and a memory storing instructions executable by the processor to introduce the indigo-based indicator into a sample in the reaction cell 12, to introduce an ammonium salt into the sample, and to measure an amount of ozone in the sample by measuring a change in fluorescence of the sample.
Das et al teach of a measurement device for measuring substances such as free chlorine in a water sample in order to assess the water quality. The measurement device comprises an indicator reagent for measuring a substance in a water sample, a measurement chamber, a processor, and a memory storing instructions executable by the processor to introduce the indicator reagent into a water sample and to measure an amount of a substance in the water sample by measuring a change in the sample as a result of reaction between the substance and the indicator reagent. See paragraph 0004 and claim 11 in Das et al.
Based upon the combination of Takeuchi et al, Xiao et al and Das et al, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a processor and a memory storing instructions executable by the processor in the measurement device taught by Takeuchi et al because such a processor and memory storing instructions to introduce the indigo-based indicator into a sample in the reaction cell 12 and to measure an amount of ozone in the sample by measuring a change in fluorescence of the sample would allow the method taught by Takeuchi et al to be performed automatically, thus facilitating a quicker and more efficient analysis of ozone in a sample, and Das et al teach that a method for measuring a substance in an aqueous sample can be easily and automatically performed in a measurement device comprising an indicator reagent, a measurement chamber, a processor, and a memory storing instructions executable by the processor . See In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) which states that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. It also would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a processor in the measurement device taught by Takeuchi et al that directs the device to also introduce an ammonium salt into the aqueous sample in addition to the indigo indicator because Takeuchi et al teach that free chlorine species in the aqueous sample (Cl- and ClO- (as Cl2)) serve to weaken the fluorescence intensity observed when the indigo indicator reacts with ozone, thus interfering with its detection, and Xiao et al teach that one way to reduce the concentration of free chlorine species in an aqueous sample over time is to add an ammonium salt to the aqueous sample which causes a reaction with the free chlorine species and a decay in its concentration over time.
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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/060,181 in view of Xiao et al (WO 2012/016350). For a teaching of Xiao et al, see previous paragraphs in this Office action.
Claims 1-20 in application serial no. 18/060,181 recite a method and a measurement device for measuring ozone in a sample comprising the steps of introducing an indigo-based indicator to a sample in a measurement chamber of the measurement device, wherein the sample contains an amount of ozone and the introducing causes a change in fluorescence intensity of the sample, measuring the change in intensity of the fluorescence of the sample, and correlating the measured change in intensity of fluorescence to an amount of ozone in the sample. Claims 1-20 in application serial no. 18/060,181 also recite that the indigo-based indicator is indigo-5,5’-disulfonate sodium salt or indigo carmine, that the method further comprises adjusting the sample to a pH of about 7.0 or greater than 7.0, that the method further comprises adding a phosphate buffer to the sample, that the amount of ozone in the sample is in a range of 0-1.7 mg/L, that the change in intensity of fluorescence of the sample is measured using an excitation wavelength of between 320-370 nm and an emission wavelength of between 420 and 470 nm, that the change in intensity of fluorescence of the sample is measured in a cuvette made of glass or methacrylate, and that the sample comprises water from a beverage material system.
Claims 1-20 in application serial no. 18/060,181 fail to recite that an ammonium salt in an amount of about 2.0 mM is also added to the sample containing ozone. However, based upon the combination of claims 1-20 in application serial no. 18/060,181 and Xiao et al, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an ammonium salt to the aqueous sample analyzed for an ozone concentration recited in claims 1-20 of application serial no. 18/060,181 because any free chlorine species in the sample may interfere with the accurate detection of ozone, and Xiao et al teach that one way to reduce a concentration of free chlorine species in an aqueous sample over time is to add an ammonium salt to the aqueous sample which causes a reaction with the free chlorine species and a decay in its concentration over time. It also would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an ammonium salt to the aqueous sample analyzed for an ozone concentration using the indigo-based indicator recited in the claims in application 18/060,181 in an amount of about 2.0 millimolar because Xiao et al teach that free chlorine in a concentration range of between 0-1.6 ppm is reduced by reaction with an ammonium salt over time (see Figure 2 in Xiao et al), and paragraph 0028 in the instant specification indicates that an ammonium salt at about 2 mM serves to mitigate the interference of chlorine in the detection of ozone when chlorine is present in an amount between 0-4 ppm. Thus, one of ordinary skill in the art would also expect the ammonium salt taught by Xiao et al that reacts with free chlorine in a concentration range between 0-1.6 ppm to be about 2.0 mM since this concentration of an ammonium salt reacts with between 0-4 ppm of chlorine.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed February 17, 2026 have been fully considered but they are not persuasive.
The previous rejection of the claims under 35 USC 112(b) made in the last Office action mailed on November 17, 2025 have been withdrawn in view of Applicant’s amendments to the claims. However, the amended claims are newly rejected under 35 USC 112(b) for the reasons set forth above, as necessitated by the amendments made to the claims.
Applicant argues that the provisional rejection of the claims on the ground of non-statutory double patenting over claims in U.S. Application serial no. 18/060,181 is now moot in view of the amendments made to the claims. This argument is not persuasive as the amended claims in this application are still patentably indistinct from the claims in application serial no. 18/342,216 for the reasons set forth above.
Applicant argues the rejections of the claims under 35 USC 103 as being obvious over Takeuchi et al in view of Xiao et al, and also further in view of Das et al, by stating that while Takeuchi et al teach that “the CL intensity was proportional to the O3 concentration in the range of 0.025-410 ng/mL” such a statement could indicate a proportional relationship between the CL and O3 in that range, but does not indicate measurement of O3 in that stated range. This argument is not persuasive since Takeuchi et al teach that O3 is actually measured in the method using fluorescence measurements of an aqueous sample after being combined with an indigo-based indicator in the range of 0.025-410 ng/mL. See the fourth paragraph in the left-hand column on page 621 of Takeuchi et al where it states “The CL intensity linearly increased with the O3(aq) concentration over the tested range of concentration (0.025<[O3(aq)]<410 ng/mL…the lowest concentration examined was 0.025 ng mL-1”. This teaching indicates that actual measurements of O3 in the concentration range of 0.025-410 ng/mL were performed in the method taught by Takeuchi et al.
Applicant also argues that Takeuchi et al teach of measuring ozone in an aqueous sample using both a NBKI method and an Ebara Model EL-2001 aqueous-phase UV O3 meter, and when O3 concentrations are below 20 ng mL-1, aqueous O3 concentrations are calculated from gas-phase O3 concentration using the Henry’s constant. Applicant argues that such a system is readily distinguishable from the instant disclosed method comprising “introducing an indigo-based indicator to a sample, wherein the sample contains an amount of ozone and the introducing causes a change in fluorescence of the solution; and measuring the amount of ozone in the sample by measuring the change in intensity of the fluorescence.” This argument is not persuasive since the steps of measuring aqueous ozone in samples using both a NBKI method and an Ebara Model EL-2001 aqueous-phase UV O3 meter, and when O3 concentrations are below 20 ng mL-1, using a calculation from gas-phase O3 concentration using the Henry’s constant, are described by Takeuchi et al as reference methods for measuring ozone in the prepared aqueous samples in order to establish reference concentrations of the ozone in the aqueous samples with which to compare the ozone concentrations measured in the main experimental spectral fluorescence measurement method taught by Takeuchi et al to. The main experimental method taught by Takeuchi et al comprises the steps of introducing an indigo-based indicator to a sample, wherein the sample contains an amount of ozone (see the second paragraph under the section “Sample Preparation” on page 619 of Takeuchi et al where it states “The O3 (aq) sample was prepared by passing the O3-containing gas through purified water”, the abstract of Takeuchi et al where it states “Indigo-5,5’-disulfonate (IDS) was found to be an efficient reagent for the determination of ozone…”, and the last paragraph in the left-hand column on page 620 of Takeuchi et al where it states “CL was observed when IDS was used as a reagent”), measuring a change in intensity of fluorescence of the sample as a result of introducing the indigo-based indicator to the sample, and correlating the measured change in intensity of fluorescence to an amount of ozone in the sample (see the section entitled “Spectral Measurements” on page 619 of Takeuchi et al where it states “Hitachi’s Model F-3000 spectrofluorometer was used for the measurement of fluorescence and CL spectra”, Figure 1 of Takeuchi et al which depicts a photomultiplier 14 and a recorder 17 for measuring fluorescence, Table III in Takeuchi et al which lists fluorescent excitation and emission wavelengths used to measure a change in fluorescence of the sample as a result of introducing an indigo-based indicator to the sample, and the last two paragraphs in the left-hand column and the first paragraph in the right-hand column on page 623 of Takeuchi et al where it states “In order to identify the CL species, the absorption and fluorescence spectra of the species related to this reaction were measured. Table III shows the maximum wavelength and… absorbance or relative intensity. The IDS solution itself does not fluoresce at all; however, as time went by after preparation, weak fluorescence appeared in the neighborhood of 400 nm and the intensity was observed to increase bit by bit. The findings suggested that IDS was oxidized by O3 or O2 in the air to form some fluorescent species. Next, when the O3 (aq) solution… was added to the IDS reagent solution before the measurement, a maximum in fluorescence appeared at the same position as the CL maximum (430 nm) in addition to 400 nm”). The other methods disclosed by Takeuchi et al for measuring ozone concentration in the aqueous prepared samples (i.e. a NBKI method, an Ebara Model EL-2001 aqueous-phase UV O3 meter, and calculations from gas-phase O3 concentration using the Henry’s constant) are reference methods used for comparison purposes to evaluate the precision and accuracy of the results provided by the fluorescence method taught by Takeuchi et al, and to evaluate how closely the fluorescence measurement results mimic the results provided by the reference methods. See Table I and page 621 of Takeuchi et al where the results produced from each of the reference methods (i.e. SP/UV O3 monitor and SP/NBKI) and the experimental method (i.e. CL/IDS and SP/IDS) are presented and compared.
Applicant further argues that the Xiao et al reference measures a different analyte than ozone in a sample using a different dye than the indigo-based indicator recited in the instant claims, and that the combination of references does not support the conclusion that “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions”. This argument is not persuasive since the primary reference to Takeuchi et al teaches of a method for measuring ozone in an aqueous sample by measuring an initial intensity of fluorescence from the sample, introducing an indigo-based indicator to the sample, measuring an intensity of fluorescence from the sample after the addition of the indigo-based indicator, measuring a change in fluorescence intensity between the two measured fluorescence intensities, and measuring an amount of ozone in the aqueous sample based on the measured change in fluorescence intensity. See the description of Takeuchi et al provided above in the rejection of the claims under 35 USC 103. Therefore, the primary reference to Takeuchi et al teaches of measuring the same analyte (i.e. ozone) in a sample as recited in the instant claims using the same type of indicator or dye (i.e. an indigo-based indicator). The secondary reference to Xiao et al provides a suggestion and motivation to also add an ammonium salt to the sample analyzed for ozone in the method taught by Takeuchi et along with the indigo-based indicator because Takeuchi et al teach that free chlorine species in the aqueous sample (Cl- and ClO- (as Cl2)) serve to weaken the fluorescence intensity observed when the indigo indicator reacts with ozone, thus interfering with its detection, and Xiao et al teach that one way to reduce the concentration of free chlorine species in an aqueous sample over time is to add an ammonium salt to the aqueous sample which causes a reaction with the free chlorine species and a decay in its concentration over time. Therefore, the combination of Takeuchi et al and Xiao et al teaches that “all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions”.
Applicant also argues that the claims have been amended to recite that the ammonium salt is added to the sample analyzed for ozone in the method in an amount of about 2.0 mM, and the combination of Takeuchi et al and Xiao et al fails to teach of this claim limitation. This argument is not persuasive because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an ammonium salt to the aqueous sample analyzed for an ozone concentration using the indigo-based indicator taught by Takeuchi et al in an amount of about 2.0 millimolar because Xiao et al teach that free chlorine in a concentration range of between 0-1.6 ppm is reduced by reaction with an ammonium salt over time (see Figure 2 in Xiao et al), and paragraph 0028 in the instant specification indicates that an ammonium salt at about 2 mM serves to mitigate the interference of chlorine in the detection of ozone when chlorine is present in an amount between 0-4 ppm. Thus, one of ordinary skill in the art would also expect the ammonium salt taught by Xiao et al that reacts with free chlorine in a concentration range between 0-1.6 ppm (included in the range of 0-4 ppm disclosed in paragraph 0028 of the instant specification) to be about 2.0 mM since this concentration of an ammonium salt reacts with between 0-4 ppm of chlorine.
For all of the above reasons, Applicant’s arguments are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAUREEN M WALLENHORST whose telephone number is (571)272-1266. The examiner can normally be reached on Monday-Thursday from 6:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander, can be reached at telephone number 571-272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAUREEN WALLENHORST/Primary Examiner, Art Unit 1797 March 18, 2026