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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-16 (corrected the previous listing of Group I set forth in the April 30, 2026 Restriction Requirement), in the reply filed on May 20, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 1, 14 and 15 are objected to because of the following informalities: the first recitation of the abbreviation “PMMA” should also contain its full-name (“polymethyl methacrylate”) . Appropriate correction is required.
Claims 8 and 15 are objected to because of the following informalities: “energy emitted form” should be - - energy emitted from - -. Appropriate correction is required.
Applicant is advised that should claim 8 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 9, 10, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hulme et al. (GB 2525953).
Regarding claim 1, Hulme et al. a method comprising preparing a reference material for fluorescence spectroscopy/capable of being used as a fluorescence spectroscopy reference material by impregnating or otherwise placing one or more fluorophores into a solid PMMA matrix (Abstract; page 2, 2nd full paragraph; page 3, last 2 paragraphs; pages 4-5). It is noted that this UK Patent is also referred to in the instant specification (see paragraph [0009] of the published application).
As to claims 9 and 10, Hulme et al. polymerize and utilize azo compounds as claimed (page 5, last paragraph).
As to claim 13, Hulme et al. teach the same claimed and disclosed method with the same claimed and disclosed materials. It follows that the same claimed effects and physical properties will be realized by the practice of the method of Hulme et al. Further, Hulme et al. teach an extended life (page 6, 3rd paragraph; pages 9-11).
Regarding claim 14, Hulme et al. teach fluorescence spectroscopy reference material comprising a solid PMMA matrix having one or more fluorophores distributed and sequestered therein (Abstract; page 2, 2nd full paragraph; page 3, last 2 paragraphs; pages 4-5).
Claims 1-3 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Send et al. (US 2018/0329024).
Regarding claim 1, Send et al. teach a method comprising preparing a reference material/waveguide for fluorescence spectroscopy/capable of being used as a fluorescence spectroscopy reference material to the extent required (“for fluorescence spectroscopy” is a recitation of intended use and no further structural or manipulative difference is understood to be required by the claim – see MPEP 2111.02) by impregnating or otherwise placing one or more fluorophores into a solid PMMA matrix (paragraphs [0083]-[0089], [0105], [0106], [0110], [0113], [0119], [0182], [0163]-[0166], [0497]; Tables 1 and 2).
As to claim 2, Send et al. teach melt mixing the materials in an extruder and injection molding into the final shape (paragraph [0497]; the disclosed fluorophore materials, such as the utilized naphthalocyanines and other materials, are provided as powders at room temperature).
As to claim 3, Send et al. teach forming the waveguide in a curved sheet that would be able to contain material (e.g. readable on a cuvette; paragraphs [0083]-[0086]).
As to claims 11 and 12, Send et al. teach the claimed fluorophores (paragraphs [0113], [0019], [0163]-[0166], [0182] – structure 3).
As to claim 13, Send et al. perform the same claimed and disclosed steps on the same claimed and disclosed materials. It follows from a technical and rational basis that the same claimed effects and physical properties would be realized by practicing the method of Send et al.
Regarding claim 14, Send et al. teach fluorescence spectroscopy reference material to the extent required by the claim (see MPEP 2111.02) comprising a solid PMMA matrix having one or more fluorophores distributed and sequestered therein (paragraphs [0083]-[0089], [0105], [0106], [0110], [0113], [0119], [0182], [0163]-[0166], [0497]; Tables 1 and 2).
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.
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 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Send et al. (US 2018/0329024), as applied to claims 1-3 and 11-14 above, and further in view of any one of Golchert et al. (US 2024/0327604), Facinelli et al. (US 2013/0344236), Wolters et al. (US 2008/0004384), or Boyd et al. (US 2003/0022971).
As to claims 4-7, Send et al. teach the method set forth above and suggest a variety/plurality of fluorophores may be utilized (paragraphs [0083]-[0089], [0105], [0106], [0110], [0113], [0119], [0182], [0163]-[0166], [0497]; Tables 1 and 2). Send et al. do not teach forming an intermediate product is formed containing a greater concentration of the fluorophore is first formed and then further mixing it with additional polymer/PMMA to form the final product (i.e. this is understood to be directed to forming a PMMA based masterbatch of the fluorophore and then mixing the masterbatch with additional PMMA).
However, each of Golchert et al. (paragraphs [0226] and [0229]), Facinelli et al. (paragraphs [0006]-[0009]; Figures 3-5), Wolters et al. (paragraph [0018]), or Boyd et al. (paragraph [0045]) disclose analogous polymer processing methods wherein the additive is formed as a masterbatch with a carrier resin as claimed and then taking the formed masterbatch and further mixing it as claimed with additional resin.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention and to have formed a masterbatch as claimed (i.e. utilized the claimed steps to form the intermediate product as claimed) and then further formed the final product/reference standard as claimed by further melt mixing the intermediate product/masterbatch with additional resin/PMMA in the method of Send et al., as suggested by any one of the secondary references, for the purpose, as suggested by the references of facilitating the addition of low and/or controlled concentration of the additive/fluorophore in the final product in an art recognized suitable manner. Utilizing masterbatches is common in the polymer processing art and is understood to be a routine expedient as set forth above and using the process to add multiple fluorophores/additives, as may be required, is suggested to provide desired properties to the final product of Send et al.
Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hulme et al. (GB 2525953), as applied to claims 1, 9, 10, 13 and 14, and further in view of any one of Resch-Genger et al. (US 2010/0243876), Resch-Genger et al. (US 2007/0159624) or Resch-Genger et al. (US 2006/0214112).
As to claims 8 and 15, Hulme et al. teach the method set forth above including impregnating or otherwise placing one or more fluorophores into a solid PMMA matrix to from a reference material. Hulme et al. do not explicitly teach calibration the instrument as claimed by exciting the reference material and detecting emission at a wavelength between 600-900 nm as claimed.
However, each of Resch-Genger et al. ‘876 (paragraphs [0001]-[0005], [0025], [0029] and [0032]), Resch-Genger et al. ‘624 (paragraphs [0007], [0019], [0022], [0024] and [0028]), and Resch-Genger et al. ‘112 (Figures 1, 4 and 6; paragraphs [0001]-[0008] and [0026]; also disclosing “fluorophore-containing polymethyl-methacrylate (PMMA) blocks in the form of cuvettes are also known as emission and excitation standards” in paragraph [0008]) disclose analogous calibration methods wherein the instrument is calibrated with a reference material by exciting it and detecting emission at a wavelength within or which overlaps the claimed range.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Hulme et al. and any one of the secondary references and to have calibrated the instrument of Hulme et al. by exciting the reference material and detecting emission at a wavelength between 600-900 nm as claimed, as suggested by any one of the secondary references, for the purpose, as suggested by the references, of preparing the instrument for accurate product analysis. Each of the Resch-Genger et al. references disclose determining the particulars regarding an appropriate calibration is a routine expedient that would have been readily selected based upon the chosen materials and the instrument application.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hulme et al. (GB 2525953) in view of any one of Resch-Genger et al. (US 2010/0243876), Resch-Genger et al. (US 2007/0159624) or Resch-Genger et al. (US 2006/0214112), as applied to claims 8 and 15 above, and further in view of Send et al. (US 2018/0329024).
As to claim 16, the combination teaches the method set forth above. Hulme et al. do not melt mixing the materials and injection molding as claimed. However, Send et al. teach an analogous method of producing a fluorophore impregnated PMMA matrix wherein the materials are melt mixed and injection molded as claimed.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Hulme et al. and Send et al. and to have melt mixed and injection molded the materials of Hulme et al. as claimed, as suggested by Send et al., for the purpose, as suggested by the references of producing a fluorophore impregnated PMMA material in an art recognized suitable and equivalent manner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Each of:
Petisce et al. (US 2025/0102423; paragraphs [0070] and [0071]),
Lin et al. (US 2017/0284942; paragraphs [0012]-[0016], [0020]-[0023], [0059], [0066], [0076] and [0077]),
Hsiao et al. (US 2016/0320540; paragraph [0024]),
Santos et al. (US 2013/0194776; paragraphs [0041] and [0043]),
Shyu et al. (US 2011/0235339; paragraphs [0005], [008] and [0021]),
Cormier et al. (US 2011/0101848; paragraph [0004] – disclosing the commercial availability of “reference materials…having a different fluorophore component in a PMMA…matrix”),
Light et al. (US 2008/0057586; paragraphs [0019] and [0025]), and
Macht et al. (US 2,383,067; Example 8) disclose analogous and applicable methods and products that should be thoroughly considered by Applicant prior to responding to this Office Action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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