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 .
Specification
The abstract of the disclosure is objected to because it is greater than one paragraph in length (combining the two paragraphs into one will overcome this objection). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 2 is objected to because of the following informalities: in line 6 “R is an” should instead be –R is selected from an--. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: “non-volatile” should instead be –a non-volatile--. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: “the medium” should instead be –wherein the medium --. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: in line 3 “a computer, and has program that causes a computer to” is awkward and should instead recite –a computer which executes a program to-- or similar (see specification for relevant support of terms). Appropriate correction is required.
Claim 14 is objected to because of the following informalities: “the ratio” should instead be –wherein the ratio--. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: in (i) “a terbium” should instead be –the terbium--; and an –and-- is missing between steps (ii) and (iii). Appropriate correction is required.
Claim 16 is objected to because of the following informalities: in (i) “a terbium” should instead be –the terbium--; and an –and-- is missing between steps (ii) and (iii). Appropriate correction is required.
Claim 17 is objected to because of the following informalities: the claim should instead recite –The method according to claim 15, wherein the excitation wavelength of the excitation light is within the range of 300 to 400 nm.--. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: “a terbium” should instead be –the terbium--. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: “a terbium” should instead be –the terbium--. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 2-4, 10-11 and 13-4 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.
Regarding claim 2, it is noted that the parenthesis present from lines 4-8 render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. This includes claims 3-4 as they depend from claim 1.
Regarding claim 10, there is a lack of antecedent basis in the instant claim, and the claim from which it depends, for the term “a medium”. Amending to recite –further comprising a medium-- would establish clarity and overcome this rejection. This includes claim 11 as it depends from claim 10.
Regarding claim 13, there is a lack of antecedent basis in the instant claim, and the claim(s) from which it depends, for the term “a medium” or for “a capture section of methyl salicylate having a medium” (noting that claim 9 recites ‘a capture section of methyl salicylate having the reagent’ and not ‘medium’). There is further lack of antecedent basis for “the ionic liquid”, noting that neither of claims 1 or 9 recites/establishes ‘ionic liquid’ (see instead claim 5), and for “solvent”. It is further noted that the claim is unclear given both solvent and ionic liquid, as recited, are readable over the term “medium”. This includes claim 14 as it depends from claim 13.
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.
Claims 1-4, 9-12 and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda et al. (WO 2021/246480 A1; using US PGPub 2023/0236210 for English language citations).
Regarding claims 1-2, Maeda teaches methyl salicylate detection, and optical or electrochemical based sensor devices thereof, comprising a rare earth compound, acting as a receptor, that selectively recognizes and forms complexes with methyl salicylate (abstract; [0008]-[0010])(instant reagent for detecting). Maeda teaches the receptor rare earth compound is preferably a terbium compound/complex ([0035]-[0036]; [0043])(instant terbium compound). Maeda further teaches that the receptor can be present as a solution ([0044]) in combination with a supporting electrolyte ([0050]).
Maeda teaches the terbium compound/complex can be selected from terbium salts of acetates, chlorides, nitrates, isobutyrates and pivalates ([0035]) and teaches further complexes of the noted ion and a further ion, such as a phosphine oxide ([0037]-[0039])(instant two or more types of counter anions (claim 1); instant general formula (1) as currently recited (claim 2)).
Regarding claim 3, Maeda teaches the receptor composition as set forth in claim 2 above and further teaches the above noted anions of pivalate ([0035]-[0036; [0106]-[0109])(instant X).
Regarding claim 4, Maeda teaches the receptor composition as set forth in claim 2 above and further teaches the above noted anions of acetate, etc. ([0035]-[0036]; [0106]-[0109])(instant Y).
Regarding claims 9-12, Maeda teaches the receptor composition as set forth in claim 1 above and further teaches the sensors as claimed, comprising (i) a recognition section for methyl salicylate that comprises the rare earth compound (instant capture section having the reagent), and (ii) a detection section that optically or electrochemically detects recognition of methyl salicylate by the recognition section ([0054]-[0057])(instant detection section). Maeda further teaches inclusion of a solid medium in combination with the rare earth compound including paper, glass, resin or water-soluble polymer ([0045]). Maeda also teaches the detection section may comprise a computer that executes a program to process detection and/or measurement of the concentration of methyl salicylate, wherein the computer executes a step of receiving a signal from the optical and/or electrochemical detection element, a step of analyzing the received signal to determine the absence/presence of methyl salicylate and/or the concentration thereof, and a step of outputting the analysis result ([0058])(instant claim 15 (i), (ii) and (iii)).
Regarding claims 15-18, Maeda teaches the receptor compositions as set forth in claim 1 above, as well as the sensor as set forth in claim 9 above. Maeda further teaches methods of sensing methyl salicylate using the rare earth compound noted above and using the sensor noted above ([0008]-[0010]). Maeda further teaches the steps of the rare earth compound reacting with methyl salicylate to form a complex (instant (i)) in the recognition section, teaches the detection section is configured to be able to optically and/or electrochemically detect recognition by the recognition section, wherein in the case of optical detection the detection section comprises an excitation light source and detection element to detect fluorescence emissions and thereby measure methyl salicylate concentration are present ([0054]-[0056])(instant (ii) and (iii)). Maeda teaches exposing to excitation light with wavelengths from 200 to 400 nm ([0046]; [0047])(claim 17). Additionally, Maeda teaches a step of comparing the intensity of the detected fluorescence with a predetermined reference(s) value to determine the concentration of the methyl salicylate ([0047])(claim 18).
Regarding claims 19 and 20, Maeda teaches the receptor compositions as set forth in claim 1 above, as well as the sensor as set forth in claim 9 above. Maeda further teaches detecting methyl salicylate in crops by installing the sensor near where a crop is planted and detecting via the noted sensors, including the optical detection methods noted above ([0060]-[0065])(instant plant; instant vicinity; instant confirmation)
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 2-4 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (WO 2021/246480 A1; using US PGPub 2023/0236210 for English language citations).
Maeda teaches the receptor compositions as set forth in claim 1 above and, as noted, teaches the terbium compound/complex can be selected from terbium salts of acetates, chlorides, nitrates, isobutyrates and pivalates ([0035]) and teaches further complexes of the noted ion and a further ion, i.e. a phosphine oxide ([0037]-[0039]). While Maeda does not specifically teach the combination of counter ions where each counter ion is selected from acetates, chlorides, nitrates, pivalates, etc., Maeda does teach terbium complexes wherein the noted counter ions are present in combination with other counter ions and teaches that acetates, chlorides, nitrates and pivalates are the preferred counter ions. As such, it would have been obvious to one of ordinary skill in the art to select multiple counter ions of the preferred counter ions of Maeda and arrive at the instant invention with a reasonable expectation of success. Motivation stemming from Maeda’s recognition that the acetates, chlorides, nitrates and pivalates are preferred and suitable counter ions and from Maeda’s recognition that the combination of two different counter ions is advantageous and suitable.
Claims 5-8 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (WO 2021/246480 A1; using US PGPub 2023/0236210 for English language citations) in view of Burrell et al. (US PGPub 2006/0278536).
Regarding claim 5, Maeda teaches the receptor compositions as set forth in claim 1 above. As noted, Maeda further teaches that the receptor can be present as a solution ([0044]) in combination with a supporting electrolyte ([0050]).
Maeda teaches detection via either optical or electrochemical recognition methods and teaches both solution solvents and electrolytes but does not specifically teach an ionic liquid as claimed. However, Burrell similarly teaches electrochemical based sensors for detecting analytes, including methyl salicylate (abstract; [0002]; [0052]), and teaches the use of aprotic ionic liquids as a chemically stable, physically robust, non-volatile, adsorbing medium for the analyte ([0030]; [0034]; [0047]). Burrell further teaches the ionic liquid may optionally be combined with inorganic materials ([0026]). Burrell and Maeda are analogous art and are combinable because they are both concerned with the same field of endeavor, namely electrochemical sensors for analyte detection, including detection of methyl salicylate. At the time of filing a person having ordinary skill in the art would have found it obvious to include the ionic liquid absorbing mediums of Burrell in the receptor compositions of Maeda and would have been motivated to do so as Maeda invites both solution formers and supporting electrolytes and further as Burrell teaches the ionic liquids are chemically stable, physically robust, non-volatile, adsorbing mediums for analytes including methyl salicylate, and were the ionic liquids aid in selective detection of said analytes even in the presence of other compounds ([0021]-[0022]).
Regarding claim 6, Maeda in view of Burrell render obvious the receptor compositions as set forth in claim 5 above. Burrell further teaches the ionic liquids have cations selected from quaternary ammoniums including tetraalkylammonium, pyridinium, pyridazinium, pyrimidinium, pyrazinium, imidazolium, pyrazolium, thiazolium, oxazolium, etc. ([0040]), where pyrrolidine and methylimidazolium cations are preferred ([0040]-[0041]).
Regarding claim 7, Maeda in view of Burrell render obvious the receptor compositions as set forth in claim 5 above. Burrell further teaches the ionic liquids have quaternary ammonium based cations, including 1-methyl-1-alkyl pyrrolidine and 1-alkyl-3-methylimidazolium cations, where the alkyl is 2-10 carbons ([0040]-[0041]). Burrell teaches the anions are fluorine-containing and preferably teaches trifluoromethylsulfonate, bis(trifluoromethylsulfonyl)imide, etc. ([0042]). Burrell further teaches as an example the ionic liquid 1-butyl-3-methylimidazolium bis(trifluormethanesulfonyl)imide (example 1, [0051])(differing from an instantly recited compound only in the alkyl-selection). In view of the teaching by Burrell that alkyls of 2-10 carbons are suitable for the 1-alkyl-3-methylimidazolium cations, it would have been obvious to one of ordinary skill in the art to select from the suitable 2-10 carbon alkyls and arrive at the instant invention with a reasonable expectation of success (rendering obvious at the least 1-ethyl-3-methylimidazolium bis(trifluoromethanesulfonyl)imide).
Regarding claim 8, Maeda in view of Burrell render obvious the receptor compositions as set forth in claim 5 above. Maeda further teaches the concentration of rare earth compound in solution is 0.00004 mol/L to 1 mol/L ([0044]). Burrell further teaches a small amount of the ionic liquid sufficient to dissolve the analyte for detection ([0030];[0047]). Maeda does not specifically teach the amount of supporting electrolyte. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of solvent former and/or supporting electrolyte and would have been motivated to do so to obtain the desired concentration of rare earth receptor and/or to obtain a desired level of electrolytic support. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
Regarding claim 13, Maeda teaches the receptor compositions as set forth in claim 1 above and the sensors as set forth in claim 9 above. Maeda further exemplifies dissolving the terbium complex/salt in a solvent, dropping onto filter paper (solid medium) and drying (instant solvent removed by drying) (see examples).
As noted above, Maeda teaches detection via either optical or electrochemical recognition methods and teaches both solution solvents and electrolytes but does not specifically teach an ionic liquid as claimed. However, Burrell similarly teaches electrochemical based sensors for detecting analytes, including methyl salicylate (abstract; [0002]; [0052]), and teaches the use of aprotic ionic liquids as a chemically stable, physically robust, non-volatile, adsorbing medium for the analyte ([0030]; [0034]; [0047]). Burrell further teaches the ionic liquid may optionally be combined with inorganic materials ([0026]). Burrell and Maeda are analogous art and are combinable because they are both concerned with the same field of endeavor, namely electrochemical sensors for analyte detection, including detection of methyl salicylate. At the time of filing a person having ordinary skill in the art would have found it obvious to include the ionic liquid absorbing mediums of Burrell in the receptor compositions of Maeda and would have been motivated to do so as Maeda invites both solution formers and supporting electrolytes and further as Burrell teaches the ionic liquids are chemically stable, physically robust, non-volatile, adsorbing mediums for analytes including methyl salicylate, and were the ionic liquids aid in selective detection of said analytes even in the presence of other compounds ([0021]-[0022]).
Regarding claim 14, Maeda in view of Burrell render obvious the receptor compositions preparation method as set forth in claim 13 above. Maeda further teaches the concentration of rare earth compound in solution is 0.00004 mol/L to 1 mol/L ([0044]) and teaches dissolving the compound/complex in a solvent prior to deposition onto the solid medium (examples). Burrell further teaches a small amount of the ionic liquid sufficient to dissolve the analyte for detection ([0030];[0047]). Maeda does not specifically teach the amount of solvent and/or supporting electrolyte. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicant’s claims patentable in the absence of unexpected results (see: In re Aller, 105 USPQ 233; and MPEP 2144.05). At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of solvent former and/or supporting electrolyte and would have been motivated to do so to obtain the desired concentration of rare earth receptor and/or to obtain a desired level of electrolytic support. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good (see In re Boesch and Slaney, 205 USPQ 215).
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.
A) Claims 1-10 and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/237218 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant and copending application are directed to substantially similar reagent compositions for detecting methyl salicylate comprising the combination of a terbium compound and an ionic liquid, and are further directed to substantially similar compounds thereof and amounts thereof, as well as to substantially similar sensors and methods of detecting methyl salicylate with the reagent and/or the sensor comprising the reagent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
B) Claims 1-2, 5-7, 9-11, 15-16 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/937250 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant and copending application are directed to substantially similar reagent compositions for detecting methyl salicylate comprising the combination of a terbium compound and an ionic liquid, and are further directed to substantially similar compounds thereof, as well as to substantially similar sensors and methods of detecting methyl salicylate with the reagent and/or the sensor comprising the reagent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
C) Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/216288 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant and copending application are directed to substantially similar reagent compositions for detecting methyl salicylate comprising the combination of a terbium compound and an ionic liquid, and are further directed to substantially similar compounds thereof and amounts thereof, as well as to substantially similar sensors and methods of detecting methyl salicylate with the reagent and/or the sensor comprising the reagent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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