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 .
Preliminary Amendment
An amendment to the specification and claims filed on 5 June 2025 is acknowledged. Applicant's remarks filed on 5 June 2025 make reference to a telephone restriction requirement on June 4, 2025 by the previous examiner. In view of the preliminary amendment to the claims filed on 5 June 2025, all of pending claims 1-20 are examined herein on the merits.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 9 recites the limitation "automatically determining a concentration of the free sulfite…"
While the specification provides antecedent basis for automatic mixing and automatic detection of free sulfite ([0240] of published application), the specification lacks antecedent basis for automatically determining a concentration of the free sulfite. Sufficient written description support for this limitation is found in the disclosure of the "calculation device" in the original specification ([0214], [0227] of published application).
Claim 12 recites the limitation "…measuring…at least two different concentrations of the compound."
The specification makes no mention of two different concentrations of the compound [or two different concentrations of 4-(1H-pyrrol-2-yl)pyridine]. Support for measuring two different concentrations of the compound (but not at least two different concentrations of the compound) is found in original claim 12, filed on 8 April 2024. The specification must not be amended to include the subject matter of claim 12 that is rejected under 35 USC 112(a) below for new matter.
Claim 16 recites the limitation "an aqueous analyte having less than 50% acetone."
Claim 17 recites the limitation "an aqueous solution…comprising less than 50% acetone."
The specification lacks antecedent basis for an aqueous solution characterized by the claimed range of less than 50% acetone. Sufficient written description support for this limitation is found in original claim 17, filed on 8 April 2024.
Claim Objections
Claim 19 is objected to because of the following informalities: The limitation "the solution" must be changed to "the aqueous solution." Appropriate correction is required.
Priority
Applicant states that this application is a continuation application of the prior-filed application. A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
Original claim 12, filed on 8 April 2024, recites the limitation "wherein said measuring comprises determining the optical absorption at two different concentrations of the compound in the aqueous analyte." The subject matter of "two different concentrations of the compound" is present in amended claim 12 [along with additional subject matter rejected under 35 USC 112(a)]. The original disclosures of the prior-filed applications PCT/US2018/054770 and 16/753,906 do not support measuring at two different concentrations of the compound [or two different concentrations of 4-(1H-pyrrol-2-yl)pyridine].
Original claim 17, filed on 8 April 2024, recites the limitation "an aqueous solution comprising less than 50% acetone." This subject matter is present in amended claim 17, and dependent claims 18-20 incorporate this limitation.
Claim 16 has been amended to recite the limitation "an aqueous analyte having less than 50% acetone." The limitation "aqueous analyte" is interpreted as "aqueous sample" [refer to rejections under 35 USC 112(b) below].
The original disclosures of the prior-filed applications PCT/US2018/054770 and 16/753,906 do not support a sample or solution having the range of "less than 50% acetone."
The only mention of acetone in the disclosures of PCT/US2018/054770 and 16/753,906 is found in Table 1 and the accompanying description, which describes that a solvent system of 50% water and 50% acetone provides no response. The specification teaches the following:
Sensing occurred in 50/50 mixtures of aqueous-organic solvent mixtures for all solvents tested except for acetone. This is believed to be caused by a competing interaction between acetone and water in which the little acid present is consumed by the solvent rather than 4-(lH- pyrrol-2-yl)pyridine. Acidic conditions are required for an interaction between the sensor molecule and sulfite to occur.
There is no support in the prior-filed applications for the claimed range of "less than 50% acetone," such as an aqueous sample having 51% water and 49% acetone.
Accordingly, claims 12 and 16-20 have an effective filing date of 8 April 2024, the filing date of this continuation-in-part application.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/569193, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application.
Claims 1, 3-9, and 11-15 recite "a compound having a 4-(1H-pyrrol-2-yl)pyridine ligand structure." Claim 16 recites "a 4-(1H-pyrrol-2-yl)pyridine ligand."
These limitations are broader than the specific compound "4-(1H-pyrrol-2-yl)pyridine" that is required by claims 2, 10, and 17-20.
The prior-filed application 62/569193 does not disclose the genus of "a compound having a 4-(1H-pyrrol-2-yl)pyridine ligand structure" or "a 4-(1H-pyrrol-2-yl)pyridine ligand." Instead, the prior-filed application 62/569193 only supports the species of 4-(1H-pyrrol-2-yl)pyridine.
Claim 3 recites the limitation "wherein the compound having a 4-(1H-pyrrol-2-yl)pyridine ligand structure is immobilized on a solid support." The prior-filed application 62/569193 does not disclose immobilization or a solid support.
Claim 4 recites the limitation "wherein the compound having a 4-(1H-pyrrol-2-yl)pyridine ligand structure is bound to a polymer." The prior-filed application 62/569193 does not disclose binding to a polymer.
Accordingly, claims 1, 3-9, 11, and 13-15 have an effective filing date of 5 October 2018, the filing date of PCT/US2018/054770.
Claim Interpretation
Claims 1 and 16 are a method of "binding" free sulfite. Claim 16 further recites "the limitation "to cause a covalent binding of the free sulfite to the 4-(1H- pyrrol-2-yl)pyridine ligand." The specification provides the following teaching regarding the term "bound" ([0278] of published application; bolding added):
Sulfites (sulfite and bisulfite) are preservatives added to products to prevent browning and spoilage. They react with various ingredients within the products they preserve, including acetaldehyde, acetoin, α-ketoglutaric acid, pyruvic acid, methyglyoxal, hydrated acetaldehyde, hemiacetal, hydrated ketoglutaric acid, L-xylosone, 5-keto-D-fructose, galactouronic acid, hydrated pyruvic acid, and hydrated methylglyoxal. Once reacted, the sulfite is considered "bound." Meanwhile, an adequate concentration of unbound or "free" sulfite must remain in the product in order to preserve it.
Accordingly, "binding of free sulfite" is interpreted as reacting of free sulfite.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 12 and 17-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The examiner respectfully reminds the Applicant that according to MPEP §2163:
"2163.02. Standard for Determining Compliance with Written Description Requirement:
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed. The test for sufficiency of support in a parent application is whether the disclosure of the application relied upon “reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)). Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Regents of the University of California v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharmaceutical, 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one must define a compound by “whatever characteristics sufficiently distinguish it”).
(I)
Claim 12 has been amended to recite the indefinite limitation "calibrating the determined concentration by measuring the optical absorption at the optical wavelength of at least two different concentrations of the compound."
The original disclosure does not disclose "calibrating [a] determined concentration." This is new matter. The only disclosure of "calibration" pertains to Fig. 8, whereby a calibration curve having different concentrations of sulfite are used to (initially) determine concentration of sulfite.
The original disclosure does not disclose measuring at "at least two different concentrations of the compound." This is new matter. The closest written description support for this stand-alone limitation is found in original claim 12, filed on 8 April 2024, which recites the limitation "wherein said measuring comprises determining the optical absorption at two different concentrations of the compound in the aqueous analyte."
The original disclosure, including original claim 12, does not combine the concepts of calibration with the concept of measuring at two different concentrations of the compound or two different concentrations of 4-(1H-pyrrol-2-yl)pyridine. This is new matter.
(II)
Independent claim 17 has been amended to recite the indefinite limitation "quantitatively determining the reduced concentration of 4-(1H-pyrrol-2-yl)pyridine based on a difference in an optical absorption spectrum of the sulfite 4-(1H-pyrrol-2-vl)pyridine from an optical absorption spectrum of the 4-(1H-pyrrol-2-yl)pyridine."
The original disclosure does not disclose determining a concentration of 4-(1H-pyrrol-2-yl)pyridine. This is new matter.
The original disclosure does not disclose quantitatively determining a concentration of 4-(1H-pyrrol-2-yl)pyridine. This is new matter.
The original disclosure does not disclose determining a concentration of 4-(1H-pyrrol-2-yl)pyridine based on a difference between two spectra. This is new matter.
The original disclosure teaches that bleaching is measured to determine a concentration of free sulfite, not a concentration of 4-(1H-pyrrol-2-yl)pyridine.
In remarks filed on 5 June 2025, Applicant states that "Claim 17 introduces the concept of measuring a reduction in absorption (bleaching) to determine the concentration of the analyte." However, the disclosed analyte is free sulfite, not 4-(1H-pyrrol-2-yl)pyridine, and the amendment introduces the limitation of "quantitatively determining the reduced concentration of 4-(1H-pyrrol-2-yl)pyridine."
Dependent claims 18-20 are rejected for inheriting the deficiencies of independent claim 17.
Therefore, the Applicants did not show possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention, by description of an actual reduction to practice, or by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claims 1 and 16 recite the limitation "in an aqueous analyte." Dependent claim 5 recites that the aqueous analyte is selected from the group that includes wine. Dependent claims 5 and 14 recite that the aqueous analyte is characterized by a pH. The specification provides a special definition of the term "analyte" ([0019] of published application):
"Analyte" is a compound being investigated and measured.
This special definition is consistent with the ordinary meaning of analyte. The disclosed compound being investigated and measured is free sulfite (SO32−). Free sulfite is not characterized by a pH. The disclosed and claimed method does not detect the presence of a sample such as wine but instead detects free sulfite in wine. The term "analyte" is apparently used by the claims to mean "sample," while the special definition of analyte is a compound being investigated and measured. The term "analyte" as used by the claims is indefinite because it is used contrary to both the specification's special definition as well as its ordinary meaning. This rejection can be overcome by replacing the term "analyte" with the term "sample" in the claims.
Dependent claims 2-15 are rejected for inheriting the deficiencies of independent claim 1.
Claim 9 recites the limitation "the compound having the 4-(1H-pyrrol-2-yl)pyridine." There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "measuring the optical absorption at the optical wavelength of at least two different concentrations of the compound." Grammatically, the clause "of at least two different concentrations" must modify "the optical wavelength." However, the resulting phrase "the optical wavelength of at least two different concentrations" lacks antecedent basis and does not make sense.
Claim 13 recites the limitation "to bleach the 4-(1H-pyrrol-2-yl)pyridine ligand structure by at least 10% at 463 nm." Claim 14 recites the limitation "…causes a bleaching of the 4-(1H-pyrrol-2-yl)pyridine ligand." Claim 16 recites the limitation "…to cause a bleaching of the 4-(1H-pyrrol-2-yl)pyridine ligand" and "the bleaching of the 4-(1H-pyrrol-2-yl)pyridine ligand."
The specification provides a special definition of the term "bleach" ([0030] of published application):
"Bleach" is defined as the reduction in a peak in an absorption spectrum.
This special definition is consistent with the ordinary meaning of "to bleach," which is not ordinarily used to describe a compound or a moiety of a compound. Instead, bleaching is ordinarily used to describe an overall substance, such as a sample or solution that can be analyzed by absorbance spectroscopy. As disclosed, the compound 4-(1H-pyrrol-2-yl)pyridine itself is not characterized by an absorption spectrum. Instead, a solution comprising the compound 4-(1H-pyrrol-2-yl)pyridine is characterized by an absorption spectrum. Accordingly, the claimed use of the term "bleaching" to describe a compound or a moiety of a compound rather than a sample or solution is inconsistent with both the specification's special definition as well as the ordinary meaning of the term "to bleach." This contradiction is indefinite. Moreover, the highlighted limitations are indefinite because they suggest that the reaction product of bleaching is also 4-(1H-pyrrol-2-yl)pyridine. However, the disclosed reaction product does not comprise a 1H-pyrrol-2-yl moiety.
Claim 15 recites the limitation "the calculation." There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "reacting a mixture having a buffered pH between pH 2 and pH 10 of the 4-(1H- pyrrol-2-yl)pyridine ligand and the free sulfite in the aqueous analyte…" This limitation is grammatically incorrect and confusing. What is a pH of a ligand? What are the component(s) of the mixture? What is the relationship of the mixture to the "aqueous analyte"?
Independent claim 17 recites the limitation "and sufficient acid to catalyze a spontaneous reaction between the 4-(1H-pyrrol-2-yl)pyridine and the free sulfite…" The intended meaning of "spontaneous," a word that does not appear in the original disclosure of PCT/US2018/054770, is unclear. The customary meaning of "spontaneous" is occurring without an external stimulus. How can a reaction between the 4-(1H-pyrrol-2-yl)pyridine and the free sulfite be "spontaneous" if sufficient acid is necessary to catalyze the reaction?
Claim 17 identifies the second illustrated structure as being "sulfite 4-(1H-pyrrol-2-yl)pyridine." This identification is indefinite because the illustrated structure, which comprises a partially saturated 5-membered ring, does not comprise a "1H-pyrrol-2-yl" moiety. Additionally, the illustrated structure, which comprises a sulfonate group, does not comprise "sulfite."
Claim 17 recites the limitation "the concentration of 4-(1H-pyrrol-2-yl)pyridine." There is insufficient antecedent basis for this limitation in the claim. The concentration of 4-(1H-pyrrol-2-yl)pyridine in what?
Claim 17 recites the limitations "an optical absorption spectrum of the sulfite 4-(1H-pyrrol-2-vl)pyridine" and "an optical absorption spectrum of the 4-(1H-pyrrol-2-yl)pyridine." These limitations literally imply an optical absorption spectrum of a neat compound, as opposed to an optical absorption spectrum of a solution comprising the compound. The literal limitations are indefinite in view of the specification, which does not teach that optical absorption spectra of neat compounds are acquired.
Claim 17 recites the limitation "a difference in an optical absorption spectrum of the sulfite 4-(1H-pyrrol-2-vl)pyridine from an optical absorption spectrum of the 4-(1H-pyrrol-2-yl)pyridine." In other words, "a difference in X from Y." This limitation is grammatically incorrect and its meaning is unclear.
Dependent claims 18-20 are rejected for inheriting the deficiencies of independent claim 17.
Claim 20 recites the limitation "the aqueous analyte." There is insufficient antecedent basis for this limitation in the claim.
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 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmitt 2020 (US 2020/0363382).
As set forth above in the priority section, claim 16 has an effective filing date of 8 April 2024, the filing date of this continuation-in-part application.
Schmitt 2020 discloses a method of binding free sulfite in an aqueous sample ([0202]-[0203]) with a 4-(1H-pyrrol-2-yl)pyridine ligand, comprising:
reacting a mixture having a buffered pH between pH 2 and pH 10 ([0275]) of the 4-(1H- pyrrol-2-yl)pyridine ligand and the free sulfite in the aqueous sample to cause a bleaching of the aqueous sample ([0275]) and to cause a covalent binding of the free sulfite to the 4-(1H- pyrrol-2-yl)pyridine ligand (Fig. 3); and
determining a change of an optical absorption of the mixture as a result of the bleaching of the 4-(1H-pyrrol-2-yl)pyridine ligand (Fig. 6, [0140]).
Schmitt does not explicitly disclose that the aqueous sample has acetone in the range of less than 50%. However, Schmitt discloses examples of aqueous samples that have no acetone ([0202]-[0203]) and therefore fall within the claimed range. A specific example in the prior art that is within a claimed range anticipates the range. See MPEP 2131.03, I.
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.
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 1-11, 13, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Schmitt Abstract ("Selective optical aqueous anion detection by 4-pyrrolylpyridine," Abstracts, 41st Northeast Regional Meeting of the American Chemical Society, October 5, 2016)1 in view of Sessler (US 2003/0162960) and Rossi ("Aromatic Substitution by the SRN1 Reaction," Organic Reactions, Vol. 54, 1999).
Claims 1, 3-9, 11, 13, and 14 have an effective filing date of 5 October 2018, the filing date of PCT/US2018/054770 (refer to Priority section above).
Claims 2 and 10 have an effective filing date of 6 October 2017, the filing date of 62/569193.
Claim 16 has an effective filing date of 8 April 2024, the filing date of this continuation-in-part application (refer to Priority section above).
Regarding claims 1 and 2, Schmitt Abstract discloses a method of binding free sulfite ("an irreversible nucleophilic addn. to the C4 position of the pyrrole") in an aqueous sample ("sodium sulfite in pure water"), comprising
reacting the free sulfite with a compound having a 4-(1H-pyrrolyl)pyridine ligand structure (4-pyrrolylpyridine).
The 4-pyrrolylpyridine sensor disclosed by Schmitt Abstract implicitly has a 1H-pyrrolyl moiety. Schmitt Abstract is silent as to whether the 1H-pyrrolyl moiety is attached to pyridine at the pyrrole ring position 2 (as required by the claim), as opposed to the pyrrole ring position 3. It is noted that the disclosure of Schmitt Abstract, by mentioning "the C4 position of the pyrrole," excludes the possibility that 1H-pyrrolyl moiety is attached to pyridine at the pyrrole ring position 1 (i.e., at the nitrogen). Given the symmetry of the molecule 4-(1H-pyrrol-1-yl)pyridine, the pyrrole moiety does not have a C4 position. Accordingly, the disclosure of "4-pyrrolylpyridine" by Schmitt Abstract is generic to both 4-(1H-pyrrol-2-yl)pyridine and 4-(1H-pyrrol-3-yl)pyridine.
Anion sensors having a 1H-pyrrolyl moiety is attached to a ring at the pyrrole ring position 2 is taught by Sessler (see Formula I, [0014], the first option of which is copied below):
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227
252
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Sessler teaches that the aryl group can contain heteroatoms ([0015]) and can be pyridine ([0043]). Sessler further discloses that the anion is sulfite (claim 39).
The prior art of Rossi discloses the synthesis of both 4-(1H-pyrrol-2-yl)pyridine and 4-(1H-pyrrol-3-yl)pyridine, with the 2-substituted product being the major product with only small yields of the 3-subsituted isomer (Eq. 55, page 28, copied below):
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217
942
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In view of the easier synthesis of 4-(1H-pyrrol-2-yl)pyridine, as taught by Rossi, as well as the compatibility of anion sensing with a 1H-pyrrolyl moiety being attached to a ring at the pyrrole ring position 2, as taught by Sessler, it would have been obvious to one of ordinary skill in the art before the time of filing that the 4-pyrrolylpyridine disclosed by Schmitt Abstract is 4-(1H-pyrrol-2-yl)pyridine.
Regarding claims 3 and 4, Schmitt Abstract does not disclose that the compound having a 4-(1H-pyrrol-2-yl)pyridine ligand structure is immobilized on a solid support or is bound to a polymer. Sessler teaches attaching the pyrrole-aryl to solid phases such as polymer phases, and that surface immobilization is useful in the separation sciences ([0032]). For the benefit of easier separations, it would have been obvious to one of ordinary skill in the art before the time of filing that the compound having a 4-(1H-pyrrol-2-yl)pyridine ligand structure is immobilized on a solid support or is bound to a polymer.
Regarding claim 5, the solution of sodium sulfite in pure water disclosed by Schmitt Abstract is a chemical solution.
Regarding claim 6, while Schmitt Abstract does not explicitly disclose the pH of the solution of sodium sulfite in pure water, it is inherent that the pH of this solution falls within the claimed range.
Regarding claim 7, Schmitt Abstract does not disclose pH-buffering the aqueous sample to a pH between 2 and 10. However, Schmitt Abstract does teach that phosphate anions, which are a common component of buffers, do not cause bleaching, which suggests the compatibility of phosphate buffers with the sensor. Sessler teaches adjustment of pH ([0080]) and phosphate buffer ([0079]). Given that pH buffering is a well-known step and the claimed pH range of between 2 and 10 encompasses physiological and environmental pH values, it would have been obvious to one of ordinary skill in the art before the time of filing to modify the disclosure of Schmitt Abstract with a step of pH-buffering the aqueous sample to a pH between 2 and 10. "[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." See In re Aller, 220 F.2d 454,456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 8, Schmitt Abstract is silent regarding whether said reacting comprises mixing the aqueous sample with a 0.022 M aqueous solution of the compound. Sessler teaches adjustment of concentration of various components ([0080]). "[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." See In re Aller, 220 F.2d 454,456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). For the benefit of selecting from known approaches to combine analyte and reagent, it would have been obvious to one of ordinary skill in the art before the time of filing to modify the disclosure of Schmitt Abstract with a step of mixing the aqueous sample with a 0.022 M aqueous solution of the compound.
Regarding claim 9, Schmitt Abstract discloses that said reacting comprises combining the compound with the aqueous sample; the method further comprising:
measuring a change in optical absorption at an optical wavelength resulting from the combining of the compound with the aqueous sample ("The sensor was detd. to have a ten percent decrease in the lowest absorption band upon the addn. of 10-7M sodium sulfite"); and
determining a presence of the free sulfite in the aqueous analyte based on the measured change (abstract, where sodium sulfite is free sulfite).
Schmitt Abstract does not disclose automatically determining the concentration of the free sulfite.
Sessler discloses both quantitative and qualitative analysis ([0030], [0040]).
For the benefit of quantitative analysis, it would have been obvious to one of ordinary skill in the art before the time of filing to modify the disclosure of Schmitt Abstract with a step of determining the concentration of the free sulfite. For the benefit of time savings, it would have been obvious to one of ordinary skill in the art before the time of filing to automate this step.
To provide a mechanical or automatic means to replace manual activity, which accomplishes the same result, is within the ambit of a person of ordinary skill in the art. See In re Venner, 120 USPQ 192 (CCPA 1958) (see MPEP § 2144.04).
Regarding claim 10, the cited prior art teaches that the compound is 4-(1H-pyrrol-2-yl)pyridine, as set forth above regarding claims 1 and 2. Schmitt Abstract is silent whether the change of the optical absorption is measured at 463 nm. However, 4-(1H-pyrrol-2-yl)pyridine is inherently characterized by an absorbance peak at 463 nm, and Schmitt Abstract discloses monitoring a decrease in an absorption band. "[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." See In re Aller, 220 F.2d 454,456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, Schmitt Abstract discloses that said measuring comprises determining an absorption spectrum within an optical wavelength range ("UV-vis").
Regarding claim 13, Schmitt Abstract discloses bleaching of an aqueous solution by 10% ("The sensor was detd. to have a ten percent decrease in the lowest absorption band upon the addn. of 10-7M sodium sulfite"). Schmitt Abstract is silent regarding whether the compound is provided as an aqueous solution, and the aqueous solution is added to the aqueous sample. "[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." See In re Aller, 220 F.2d 454,456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). For the benefit of selecting from known approaches to combine analyte and reagent, it would have been obvious to one of ordinary skill in the art before the time of filing to modify the disclosure of Schmitt Abstract such that the compound is provided as an aqueous solution, and the aqueous solution is added to the aqueous sample. Schmitt Abstract is silent whether the change of the optical absorption is measured at 463 nm. However, 4-(1H-pyrrol-2-yl)pyridine is inherently characterized by an absorbance peak at 463 nm, and Schmitt Abstract discloses monitoring a decrease in an absorption band. "[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." See In re Aller, 220 F.2d 454,456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 14, Schmitt Abstract discloses that the reacting of the free sulfite with the compound causes bleaching. While Schmitt Abstract does not explicitly disclose the pH of the solution of sodium sulfite in pure water, it is inherent that the pH of this solution falls within the claimed range.
Regarding claims 16, the cited prior art discloses the limitations of claims 1, 7, 9, and 14 as set forth above. Schmitt Abstract further discloses causing covalent binding of the free sulfite to the ligand ("an irreversible nucleophilic addn. to the C4 position of the pyrrole"). The sodium sulfite in pure water disclosed by does not comprise acetone.
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 1-11 and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 19, and 20 of U.S. Patent No. 11,953,479. Although the claims at issue are not identical, they are not patentably distinct from each other.
The patented claims are narrower than the instant claims in requiring two bleaching steps and two measuring steps.
Regarding instant claim 16, the limitation "to cause a covalent binding of the free sulfite to the 4-(1H- pyrrol-2-yl)pyridine ligand" is interpreted to be an inherent result of the reacting/bleaching recited in the patented claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Vega ("NH vs. CH hydrogen bond formation in metal–organic anion receptors containing pyrrolylpyridine ligands," Chem. Commun., 2005) discloses the following anion receptor 3 without disclosing that the anion is sulfite (Tables 1 and 2):
PNG
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113
235
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Greyscale
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/MICHELLE ADAMS/ Examiner, Art Unit 1797
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797
1 The preponderance of evidence is that the Schmitt Abstract was available to the public no later than the first day of the 41st Northeast Regional Meeting of the American Chemical Society, which is October 5, 2016. In remarks filed on 27 June 2023 in parent application 16/753906, Applicant states "The actual date of disclosure of Applicant's work was October 8, 2016, and the October 5, 2016 date was the first day of the conference, and not the presentation of the work. […] it is applicant's position that the presentation was first made on October 8, 2016 […]" In response, the cited prior art is the conference abstract, not the full conference presentation.