DETAILED ACTION
Preliminary Amendment filed on 09/09/2024 is acknowledged. Claims 1-16 are pending in the application.
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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6, drawn to a method for measuring a percarboxylic acid concentration in a percarboxylic acid-containing aqueous solution.
Group II, claim(s) 7-10, drawn to an indicator solution to be used for measuring a percarboxylic acid concentration in a percarboxylic acid-containing aqueous solution.
Group III, claim(s) 11-16, drawn to a device capable of measuring a percarboxylic acid concentration in a percarboxylic acid-containing aqueous solution.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I-III lack unity of invention because even though the inventions of these groups require the technical feature of measuring a percarboxylic acid concentration in a percarboxylic acid-containing aqueous solution, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Kojima et al. (US 2010/0136705, IDS) (Kojima). Kojima teaches measuring a percarboxylic acid concentration in a percarboxylic acid-containing aqueous solution (abstract).
During a telephone conversation with John Kilyl on 07/20/2026 a provisional election was made without traverse to prosecute the invention of group I, claim 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claim 7-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (US 2010/0136705, IDS) (Kojima) in view of Urano et al. (EP 3321677) (Urano).
Regarding claim 1, Kojima teaches a method for measuring a percarboxylic acid concentration in a percarboxylic acid-containing aqueous solution (test sample) (abstract), the method comprising the steps of:
(1) mixing an aqueous solution (indicator solution) containing an iodide salt with a test sample to cause a reaction between a percarboxylic acid and the iodide salt (par [0014]);
(2) measuring an intensity (second light intensity) of transmitted light or reflected light at a wavelength (second wavelength) in a wavelength range of 440 to 600 nm for a solution (reaction liquid) after the reaction (par [0018]);
(3) calculating and determining a percarboxylic acid concentration per total amount of the test sample and the indicator solution from the second light intensity obtained in the step (2) using a correlation of a second light intensity measured for a reaction liquid of a percarboxylic acid-containing aqueous solution (standard sample) having a known percarboxylic acid concentration and the indicator solution with a percarboxylic acid concentration obtained by converting the known percarboxylic acid concentration of the standard sample into a percarboxylic acid concentration per total amount of the standard sample and the indicator solution, the known percarboxylic acid concentration set to various known percarboxylic acid concentrations (Fig. 1-2, par [0022][0067]).
Kojima does not expressly teach that the iodide-containing indicator solution further contains Brilliant Blue FCF or that Brilliant Blue FCF is used as an internal-standard/dilution-correction substance. However, Urano teaches using an internal standard to determine a dilution factor and calculate the original concentration of a target component. In particular, Urano describes a method including preparing a specimen from “an unknown volume of a biological specimen” and “a certain volume of an aqueous solution containing a certain amount of an indicator substance,” obtaining a dilution factor from the concentration of the indicator substance before and after dilution, and determining the target component in the original specimen from the dilution factor and measured concentration (par [0004]). Urano further teaches that “acid blue 9 (brilliant blue FCF) is used as an internal standard substance.” (par [0021]). Urano also recognizes that variation in sample volume can deteriorate dilution-factor accuracy and that accurately determining dilution factor is important for reliable quantitative analysis. (par [0013], [0021], [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Kojima’s potassium-iodide-containing measurement solution to further include Brilliant Blue FCF, as taught by Urano, and to measure the Brilliant Blue FCF signal before and after mixing with the test sample in order to determine or correct the dilution/mixing amount of the test sample. Kojima already teaches a quantitative optical method in which the percarboxylic acid concentration is calculated from a measured light signal and stored correlation data, and Kojima’s examples depend on preparing measurement samples having known volumes. Urano teaches the known benefit of using an internal standard, including Brilliant Blue FCF, to obtain a dilution factor and determine the original concentration of a target component. Therefore, incorporating Urano’s Brilliant Blue FCF internal-standard correction into Kojima’s optical potassium-iodide assay would have predictably improved Kojima by correcting for variation in the amount of test sample added to the indicator solution.
Brilliant Blue FCF was known to have an absorption maximum at about 630 nm. Accordingly, it would have been obvious to select 630 nm as the first wavelength for measuring the Brilliant Blue FCF internal-standard signal in the modified Kojima method. Thus, Kojima in view of Urano renders obvious the method wherein the second wavelength is 470 nm and the first wavelength is 630 nm.
Regarding claim 2, Kojima in view of Urano renders obvious the method further comprising, before the mixing step, measuring the light intensity of the indicator solution. As discussed above with respect to claim 1, Kojima teaches measuring transmitted light in the 440–600 nm range, including 470 nm, for a potassium-iodide-containing measurement solution. And Urano teaches using acid blue 9, also known as Brilliant Blue FCF, as an internal standard substance, and Brilliant Blue FCF was known to have an absorption maximum at about 630 nm. Accordingly, it would have been obvious to select 630 nm as the first wavelength for measuring the Brilliant Blue FCF internal-standard signal in the modified Kojima method. Thus, Kojima in view of Urano renders obvious the method wherein the second wavelength is 470 nm and the first wavelength is 630 nm.
Regarding claim 3, Kojima teaches that the second wavelength is 470 nm (par [0023]). Additionally, Urano teaches using acid blue 9, also known as Brilliant Blue FCF, as an internal standard substance, and Brilliant Blue FCF/FD&C Blue No. 1 was known to have an absorption maximum at about 630 nm. Accordingly, it would have been obvious to select 630 nm as the first wavelength for measuring the Brilliant Blue FCF internal-standard signal in the modified Kojima method. Thus, Kojima in view of Urano renders obvious the method wherein the second wavelength is 470 nm and the first wavelength is 630 nm.
Regarding claim 4, Kojima teaches that the percarboxylic acid is peracetic acid and the iodide salt is potassium iodide (par [0019]).
Regarding claim 5, Kojima teaches that the mixed measurement liquid has a pH within the claimed range of 1 to 6 (par [0016]).
Regarding claim 6, Kojima teaches that the mixed measurement liquid has a percarboxylic acid concentration within the claimed range of 0.01 to 200 ppm (par [0015]). Kojima teaches that “the concentration of the percarboxylic acid in the measurement sample is preferably from 0.01 to 50 ppm,” (par [0015]) which is within and overlaps the claimed range of 0.01 to 200 ppm.
the measurement test liquid being the indicator solution according claim 7 or a mixed liquid of the indicator solution and a test sample,
(B) the determination unit 2 including (bl) a storage unit 21 and (b2) an operation unit 22,
(b1) the storage unit 21 configured to store a correlation of a light intensity measured at the second wavelength for a reaction liquid of a percarboxylic acid-containing aqueous solution (standard sample) having a known concentration and the indicator solution with a percarboxylic acid concentration obtained by converting the known concentration of a percarboxylic acid in the standard sample into a percarboxylic acid concentration per total amount of the standard sample and the indicator solution,
(b2) the operation unit 22 configured to
(i) calculate a percarboxylic acid concentration, for a reaction liquid of the test sample and the indicator solution contained in the sample container 11, converted per total amount of the test sample and the indicator solution in the measurement unit 1 on the basis of the correlation from the light intensity (I2fin) measured at the second wavelength, and
(ii) determine a percarboxylic acid concentration in the test sample on the basis of a difference between a light intensity (I1ini) measured at the first wavelength for the indicator solution and a light intensity (I1fin) measured at the first wavelength for the reaction liquid of the indicator solution and the test sample, from the percarboxylic acid concentration calculated in (i).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOYUN R XU, Ph. D. whose telephone number is (571)270-5560. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at 571-272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOYUN R XU, Ph.D./ Primary Examiner, Art Unit 1797
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