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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1,6,8-13 and 17 are rejected under 35 USC § 102(a)(1) as being anticipated by Sajid et al. “Development of Membrane-Based Inverted Liquid–Liquid Extraction for the Simultaneous Extraction of Eight Metals in Seawater before ICP-OES Analysis.”, herein known as Sajid.
Regarding Claim 1, Sajid is directed to development of membrane-based Inverted liquid–liquid extraction, the method was developed for the extraction of eight metals from seawater samples in order to demonstrate the proof of concept (Title, Abstract).
Sajid discloses a membrane-based inverted liquid-liquid extraction method for extracting an analyte from an unsupported aqueous liquid sample, the method comprising: sealing the unsupported aqueous liquid sample in a porous membrane bag ((Section 2.3, Line 5-6); Figure 1).
Sajid discloses folding and heat-sealing a polypropylene porous membrane sheet to form a membrane bag ((Section 2.1, Line 1-2); ((Section 2.3, Line 2-6); Fig. 1). Immersing the porous membrane bag in an organic solvent (chloroform or n-hexane) ((Section 2.3, Line 6-9); (Section 3.1.3); Fig. 1).
Sajid discloses extracting the analyte from the unsupported aqueous liquid sample to produce an extract within the organic solvent (Section 2.3, Line 7-13); Fig. 1), wherein the unsupported aqueous liquid sample is immiscible with the organic solvent (e.g. n-hexane is insoluble in water) ((Section 2.3, Line 5-7), Section 3.1.3).
Sajid discloses the liquid sample inside the membrane bag, and the porous membrane bag does not contain solid sorbent (Abstract; Introduction, Lines 9-11; Section 2.3).
Regarding Claim 6, Sajid teaches all the limitations in the claims as set forth above.
claim 6 recites the porous membrane bag comprises a porous membrane having an average pore size of 0.05 to 1 μm and an average wall thickness of 10 to 500 μm.
Sajid teaches a polypropylene membrane having pore size 0.1 μm and thickness 157 μm (Section 2.1, Line 1-2). These values fall within the claimed ranges.
Regarding Claims 8 and 9. Sajid teaches all the limitations in the claims as set forth above.
Claim 8 recites the porous membrane bag comprises at least one polymer selected from the group consisting of polypropylene, polyethylene, nylon, polyvinylidene fluoride, and polyethersulfone.
Claim 9 recites the porous membrane bag consists of polypropylene.
Sajid discloses a polypropylene membrane sheet ((Section 2.1, Line 1-2); ((Section 2.3, Line 2-6)).
Regarding Claims 10-11, Sajid teaches all the limitations in the claims as set forth above.
claim 10 recites the organic solvent is at least one selected from the group consisting of acetone, benzene, cyclohexane, n-hexane, toluene, iso-octane, heptane, dichloromethane, and decane. Claim 11 recites the method of claim 10, wherein the organic solvent is n-hexane.
Sajid discloses n-hexane as an extraction solvent evaluated and used (Sections 2.1, line 7-8; 3.1.3).
Regarding Claim 12, Sajid teaches all the limitations in the claims as set forth above.
claim 12 recites the unsupported aqueous liquid sample sealed in the porous membrane bag further comprises one or more acids and/or bases selected from the group consisting of nitric acid, sulfuric acid, phosphoric acid, hydrochloric acid, lithium hydroxide, potassium hydroxide, sodium hydroxide, and tetramethyl ammonium hydroxide.
Sajid discloses adjusting aqueous standard solution pH using NaOH and nitric acid (Section 2.1, line 10-11; section 2.3, line 1-5; section 3.1.4).
Regarding Claim 13, Sajid teaches all the limitations in the claims as set forth above.
Claim 13 recites the unsupported aqueous liquid sample has a pH of 2-10.
Sajid discloses the pH of the aqueous standard solution was adjusted to the desired value
(pH = 4.5), which lies within the claim range (Section 2.3).
Regarding Claim 17, Sajid teaches all the limitations in the claims as set forth above.
Claim 17 recites the extracting is performed for 5 to 180 minutes.
Sajid discloses extraction by shaking for 10 minutes (Section 2.3, line 7-9), which lies within the claimed range.
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.
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 2-5, 18-20 are rejected under 35 USC § 103 as being unpatentable over Sajid et al. “Development of Membrane-Based Inverted Liquid–Liquid Extraction for the Simultaneous Extraction of Eight Metals in Seawater before ICP-OES Analysis.” herein known as Sajid, as applied to the claims above, in view of Basheer et al. “Determination of Organic Micropollutants in Rainwater Using Hollow Fiber Membrane/Liquid-Phase Microextraction Combined with Gas Chromatography–Mass Spectrometry.”, herein known as Basheer.
Regarding Claims 2-5, Sajid teaches all the limitations in the claims as set forth above.
While Sajid is directed to the extraction of metals from seawater samples, the author discloses that this specific experiment is to demonstrate proof of concept of the extraction technique (Abstract), which does not limit the extraction technique to only metals.
Sajid is silent to the analyte is an organochlorine pesticide (OCP) or the analyte is at least one organochlorine pesticide selected from the group consisting of hexachlorocyclopentadiene (HCCPD), chloroneb, hexachlorobenzene, alpha-benzenehexachloride (alpha-BHC), beta-benzenehexachloride (beta- BHC), gamma-benzenehexachloride (Lindane), delta-benzenehexachloride (delta-BHC), heptachlor, aldrin, chlorothalonil, acetochlor, heptachlorepoxide, dimethyl tetrachloroterephthalate (DCPA), trans-chlordane, trans-nonachlor, cis-chlordane, dichlorodiphenyldichloroethylene (4,4'-DDE), Endosulfan-I, Dieldrin, Endrin, dichlorodiphenyldichloroethane (4,4'-DDD), chlorobenzilate, Endosulfan-II,dichlorodiphenyltrichloroethane (4,4'-DDT), methoxychlor, Endosulfan sulfate, cis-permethrin, and trans-permethrin.
Sajid is silent to the analyte is detected and/or quantified in a range of 0.25 to 80 nanograms (ng) per milliliter (mL) unsupported aqueous liquid sample, wherein the analyte is present in the unsupported aqueous liquid sample at a concentration of 0.25 to 40 ng/mL.
Basheer teaches OCP quantification over aqueous concentrations of 0.5-100 ng/mL (Table 1), which overlaps the claimed ranges of 0.25-80 ng/mL and 0.25 to 40 ng/mL.
Basheer teaches extraction of organochlorine pesticides from aqueous samples using porous polymer membrane microextraction, and gas chromatography–mass spectrometry (GC–MS) analysis of OCPs including lindane, heptachlor, aldrin, endrin, DDT, methoxychlor, and endosulfan (Abstract; section 2.1.; Table 2;).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Sajid’s membrane-bag inverted liquid-liquid method to extract OCPs which are detected and/or quantified in a range of 0.25 to 80 nanograms (ng) per milliliter (mL) unsupported aqueous liquid sample, wherein the analyte is present in the unsupported aqueous liquid sample at a concentration of 0.25 to 40 ng/mL because Basheer teaches that OCPs at the claimed ranges are effectively extracted from aqueous samples using porous membrane -based liquid-phase microextraction for GC-MS analysis as taught by Basheer (Abstract).”
Regarding Claims 18, Sajid teaches all the limitations in the claims as set forth above.
Sajid is silent to having a limit of detection (LOD) in a range of 0.03 to 0.08 ng of the analyte per mL unsupported aqueous liquid sample.
Basheer teaches limits of detection of 0.013-0.059 ng/mL for OCPs (Abstract), which overlap the claimed 0.03-0.08 ng/mL.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Sajid’s membrane-bag inverted liquid-liquid method to have a limit of detection (LOD) in a range of 0.03 to 0.08 ng of the analyte per mL unsupported aqueous liquid sample, as taught by Basheer, in order to detect OCPs at extremely low ng/ mL levels in aqueous samples.
Regarding Claims 19, Sajid teaches all the limitations in the claims as set forth above.
Sajid is silent to have an analyte recovery of at least 90%.
Basheer reports analytes recoveries of at least 90 % for multiple OCPs (Table 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the invention to modify Sajid’s membrane-bag inverted liquid-liquid method to have an analyte recovery of at least 90%, as taught by Basheer in order to improve extraction efficiency and analytical sensitivity.
Regarding Claims 20, Sajid teaches all the limitations in the claims as set forth above.
Sajid removing the porous membrane bag from the organic solvent, and drying the organic solvent containing the extract to produce a concentrated extract solution (Section 2.3, line 6-13).
Sajid is silent to directly injecting the concentrated extract solution into a mass spectrometer or a chromatography column, wherein no filtering step and/or centrifuging step is used on the organic solvent, extract, or concentrated extract solution (Abstract; Section 2.6).
Basheer teaches direct gas chromatography–mass spectrometry injection of the organic extract without filtration or centrifugation (Abstract; Section 2.3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Sajid’s membrane-bag inverted liquid-liquid method to directly inject the concentrated extract solution into a mass spectrometer or a chromatography column, wherein no filtering step and/or centrifuging step is used on the organic solvent, extract, or concentrated extract solution as taught by Basheer, to reduce analyte loss, improve analytical sensitivity, and simplify sample preparation, which are well-recognized objectives in analytical extraction techniques.
Claim 7 is rejected under 35 USC § 103 as being unpatentable over Sajid et al. “Development of Membrane-Based Inverted Liquid–Liquid Extraction for the Simultaneous Extraction of Eight Metals in Seawater before ICP-OES Analysis.”, herein known as Sajid, as applied to the claims above, in view of Sajid et al., US 20200156010 A1.
Regarding claim 7, Sajid teaches all the limitations in the claims as set forth above.
claim 7 depends from claim 6 and recites the porous membrane of the porous membrane bag has an average pore size of about 0.2 µm and an average wall thickness of about 157 µm.
Sajid teaches a polypropylene membrane sheet having a thickness of 157 µm (Section 2.1, Line) 1-2).
Sajid teaches a membrane pore size of 0.1 µm and therefore does not expressly teach the claimed average pore size of about 0.2 µm.
Sajid et al., US 20200156010 A1 teaches a porous membrane bag and teaching selecting a porous membrane bag having a pore size including 0.2 µm, and further teaches the pore size is preferably about 0.1 to 0.2 µm ([0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the invention to select a porous membrane having an average pore size of about 0.2 µm as taught by Sajid et al., US 20200156010 A1 because 0.1 µm and 0.2 µm porous membranes are known interchangeable design choices and selecting among known pore sizes is a predictable design selection based on desired transport rate and selectivity.
Claims 14-15 are rejected under 35 USC § 103 as being unpatentable over Sajid et al. “Development of Membrane-Based Inverted Liquid–Liquid Extraction for the Simultaneous Extraction of Eight Metals in Seawater before ICP-OES Analysis.”, herein known as Sajid, as applied to the claims above, in view of Bahrami et al. “Hollow Fiber Supported Liquid Membrane Extraction Combined with HPLC-UV for Simultaneous Preconcentration and Determination of Urinary Hippuric Acid and Mandelic Acid.”, herein known as Bahrami.
Regarding Claim 14, Sajid teaches all the limitations in the claims as set forth above.
Sajid teaches the Membrane-Based Inverted Liquid–Liquid Extraction method including packing a pH-adjusted aqueous sample inside a porous membrane bag, immersing the bag in an organic solvent.
Sajid does not expressly disclose adding the unsupported aqueous liquid sample sealed in the porous membrane bag further comprises one or more inorganic salts selected from the group consisting of sodium chloride, sodium sulfate, sodium citrate, potassium chloride, potassium sulfate, and potassium citrate.
Bahrami teaches salt addition (sodium chloride) in the aqueous sample and discuss its impact on extraction efficiency (“salt addition increases their transference into the organic phase”) (Section 3.3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Sajid’s porous membrane bag by incorporating an inorganic salt such as sodium chloride into Sajid’s aqueous sample, as taught by Bahrami, since salt addition increases analyte transference into the organic phase.
Regarding Claim 15, Sajid teaches all the limitations in the claims as set forth above.
Sajid is silent to one or more inorganic salts are present in the unsupported aqueous liquid sample sealed in the porous membrane bag at a concentration of 0.1 to 1.5 moles per liter (mol/L).
Bahrami explicitly teaches the claimed concentration range, stating “The effect of salt addition on the extraction efficiency were evaluated using solution containing 0–1.5 mol/L of sodium chloride (Section 3.3), which encompasses the claimed concentration range 0.1–1.5 mol/L. Commonly, salt addition can reduce the solubility of compounds in the aqueous sample and increase their transference into the organic phase.
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the invention to modify Sajid’s membrane-bag inverted liquid-liquid method wherein the one or more inorganic salts are present in the unsupported aqueous liquid sample sealed in the porous membrane bag at a concentration of 0.1 to 1.5 moles per liter (mol/L) as taught by Bahrami because commonly, salt addition can reduce the solubility of compounds in the aqueous sample and increase their transference into the organic phase.
Claims 16 is rejected under 35 USC § 103 as being unpatentable over Sajid et al. “Development of Membrane-Based Inverted Liquid–Liquid Extraction for the Simultaneous Extraction of Eight Metals in Seawater before ICP-OES Analysis.”, herein known as Sajid, as applied to the claims above, in view of Robles et al. “Organic Acids and Polyphenols Determination in Polish Wines by Ultrasound-Assisted Solvent Extraction of Porous Membrane-Packed Liquid Samples.”, herein known as Robles.
Regarding Claim 16, Sajid teaches all the limitations in the claims as set forth above.
Sajid teaches packing the aqueous sample into the porous membrane bag, specifically a 2.0 ml sample was packed inside the porous membrane bag.
Sajid is silent to 0.02 to 0.2 mL of the unsupported aqueous liquid sample is present per square centimeters (cm2) exterior surface area of the porous membrane bag.
Robles teaches the relationship between packed liquid sample volume and membrane device size by disclosing a defined liquid sample volume: Robles fills the extraction device with 25 μL of liquid sample and states the dimensions of the extraction device were 1cm x 1cm (Section 3.4.1) which is equal to 0.025 mL/cm2 which fall within 0.02-0.2 mL/cm2 claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the invention to modify Sajid’s membrane-bag inverted liquid-liquid method wherein 0.02 to 0.2 mL of the unsupported aqueous liquid sample is present per square centimeters (cm2) exterior surface area of the porous membrane bag as taught by Robles, since the Federal Circuit has held that where the only difference between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, then the claimed device was not patentably distinct from the prior art device. See MPEP § 2144.04(IV)(A), citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHMOUD MOTAZ ABDEL LATIF whose telephone number is (571)272-6535. The examiner can normally be reached Monday-Friday 8:30-5pm.
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/MAHMOUD MOTAZ ABDEL LATIF/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773