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 .
Election/Restrictions
Applicant’s election without traverse of Group A (claims 1-5,7-8,and 10-14) in the reply filed on 4/2/2026 is acknowledged.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 7, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deng et al., Synthesis of water-soluble and cross-linkable ferrocenyl redox polymers for uses as mediators in biosensors, Sensors and Actuators B: Chemical 168, 238-242, 2012 (in IDS).
Regarding claim 1, Deng teaches a copolymer comprising an organometallic monomer comprising a redox active transition metal (ferrocene) and an organic monomer (acrylic acid) (pages 239-242 and Figs. 2-3).
Regarding claim 2, Deng teaches that the transition metal is iron.
Regarding claims 3-4, Deng teaches that the redox active transition metal is ferrocene.
Regarding claim 7, Deng teaches that the organic monomer is acrylic acid (pages 239-240).
Regarding claim 10, Deng teaches that a copolymer is also used (page 240).
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.
Claim(s) 5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng et al., Synthesis of water-soluble and cross-linkable ferrocenyl redox polymers for uses as mediators in biosensors, Sensors and Actuators B: Chemical 168, 238-242, 2012 (in IDS) in view of Helmut et al. (DE 102009020544 in IDS with translation).
Regarding claim 5, Deng teaches that the organometallic monomer is a ferrocenyl material but fails to specifically teach the organometallic material is ferrocenylalkyl acrylamide. Helmut teaches that in making similar copolymers of an organometallic monomer and an organic monomer, organometallic monomers can be selected from ferrocene and various ferrocenyl materials, such as ferrocenylalkyl acrylamide ([0059] and claim 7). As such, one skilled in the art would have found it obvious to use various known equivalent organometallic/ferrocenyl materials known in the art to be combined with an organic monomer to make copolymers as it is merely choosing known equivalents used in the art for the same/similar purpose with a reasonable expectation of success in doing so.
Regarding claim 8, Deng fails to teach the specific organometallic monomer to organic monomer ratio being within the range claimed. However, Helmut teaches that such ratios are known in the art ([0043]). Thus, one skilled in the art would have found it obvious to use other known ratios of the monomers as it is merely using ratios that are known and used to make similar copolymers.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng et al., Synthesis of water-soluble and cross-linkable ferrocenyl redox polymers for uses as mediators in biosensors, Sensors and Actuators B: Chemical 168, 238-242, 2012).
Regarding claim 11, while Deng is does not specifically teach the concentration of crosslinker claimed, it is Examiner’s position that one skilled in the art would have found such concentrations obvious as it is merely selecting workable concentrations when all other aspects are known (Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng et al., Synthesis of water-soluble and cross-linkable ferrocenyl redox polymers for uses as mediators in biosensors, Sensors and Actuators B: Chemical 168, 238-242, 2012) in view of Buschmann (US 2012/0255898 in IDS).
Regarding claim 12, Deng does not teach the specific crosslinker comprising a 1,3- benzenedisulfonyl moiety. However, one skilled in the art would have found it obvious to use other crosslinkers known in the art to crosslink polymers in a manner allowing for formation of membranes, such as 1,3- benzenedisulfonyl moiety (see Buschmann [0025]-[0044]), with a reasonable expectation of success as it is merely choosing a known equivalent crosslinker.
Allowable Subject Matter
Claims 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777
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