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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a mental process without significantly more. The independent claim(s) recite(s) a mental process consisting of the following step: selecting a mass chromatogram from a plurality of mass chromatograms.
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
In the instant case, the step of the independent claim can be performed by the human mind or by a human using pen and paper. As shown in Figures 5-9, a mass chromatogram is a graph obtained by liquid chromatography mass spectrometry. Selecting a graph which indicates the presence of a hypochlorite ion-derived iron complex from a plurality of mass chromatograms is a matter of reading a plurality of graphs and identifying the graph with the peak of interest.
Furthermore, the dependent claims do not add any features that would change the abstract idea into something more. Dependent claims 2-4 add further details to the mass chromatogram that is being selected, but such details do not alter the fact that the underlying abstract idea may be performed as a mental process. Dependent claim 5 describes the step of further selecting mass chromatograms which indicate the presence of a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion, but this step can also be performed mentally. For example, selecting the mass chromatogram which indicates the presence of the ions of interest is a matter of reading a plurality of graphs and identifying which graphs contain the peak information of interest. Claim 5 then recites “these ions are simultaneously analyzed.” The specifications of the present disclosure explain “[a]s a result, since the respective ion peaks are clearly separated and detected, it is found that these components can be simultaneously analyzed (para. [0074]).” The simultaneous analysis of the ions only further limits the mass chromatogram being selected.
The claims recite various features, but none of them, taken alone or in an ordered combination, is significantly more than just the above noted mental process. Simply put, the claims do not require that anything other than selecting mass chromatograms to occur.
Finally, this judicial exception is not integrated into a practical application because the claims are not directed to anything external to the abstract idea.
Claim Rejections - 35 USC § 112
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 5 is 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.
Claim 5 recites “the measurement method according to claim 1, wherein each mass chromatogram indicating the presence of a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion is further selected, and these ions are simultaneously analysed.” It is unclear if the “each mass chromatogram” selected refers to a mass chromatogram which indicates the presence of all four of a chloride, chlorite ion, a chlorate ion, and a perchlorate ion, or if it refers to any mass chromatogram which indicates one of a chloride chlorite ion, a chlorate ion, and a perchlorate ion. Further, it is unclear if “each mass chromatogram” selected in claim 5 is one of the “plurality of mass chromatograms” referenced in claim 1 or if “each mass chromatogram” refers to a separate set of mass chromatograms. It is also unclear if the simultaneous analysis referred to in claim 5 refers to a further step of analyzing mass chromatographs indicating the presence of one or more of the chloride, chlorite ion, a chlorate ion, and a perchlorate ion, or if the presence of more than one of a chloride chlorite ion, a chlorate ion, and a perchlorate ion on a mass chromatograph indicates the ions have been simultaneously analyzed. The specifications of the present disclosure explain “[i]n the measurement method in the first aspect, a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion can be simultaneously analyzed in addition to a hypochlorite ion. That is, the measurement is performed when the measurement sample further contains at least one of a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion and it is desired to quantify these ions. In this case, mass chromatograms indicating the presence of a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion as well as the mass chromatogram indicating the presence of a hypochlorite ion-derived iron complex are selected from a plurality of mass chromatograms obtained in the mass spectrometry step (para. [0043])).” For the purposes of examination, “each mass chromatogram selected in figure 5 will refer to a mass chromatogram which indicates the presence of a hypochlorite ion and one of a chloride, a chlorite ion, a chlorate ion, and a perchlorate ion. The ions being simultaneously analyzed will be interpreted as a description of the mass chromatogram, indicating the presence of both a hypochlorite ion and one of a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion.
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.
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Zarzana, Christopher A., et al. "Iron fluoroanions and their clusters by electrospray ionization of a fluorinating ionic liquid." Journal of The American Society for Mass Spectrometry 26.9 (2015): 1559-1569, hereinafter referred to as Zarzana, in view of Khodajoo, M., S. Sayyahi, and S. J. Saghanezhad. "Straightforward and solvent-free synthesis of 2-amino-4 H-chromenes in the presence of a choline-based magnetic ionic liquid as catalyst." Russian Journal of General Chemistry 86.5 (2016): 1177-1181, hereinafter referred to as Khodajoo.
Regarding claim 1, Zarzana teaches a hypochlorite ion measurement method for measuring a measurement sample containing a hypochlorite ion by liquid chromatography mass spectrometry, the measurement method comprising selecting a mass chromatogram indicating the presence of a hypochlorite ion-derived iron complex (Fig. 5 below) from a plurality of mass chromatograms (Fig. 1 and Fig. 2) to determine an abundance of the hypochlorite ion.
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Zarzana fails to teach the mass chromatograms are obtained by liquid chromatography mass spectrometry.
However, Kodajoo teaches the mass chromatograms are obtained by liquid chromatography mass spectrometry (“The above results were also confirmed by data on the electrospray ionization mass spectrometry: peaks at m/e = 104.10 and 197.80 in the ESI-MS spectra are due to (CH3)3N+CH2CH2OH and FeCl4–, respectively (Fig. 4) (pg. 1178, para [0006])”. “The electrospray ionization-mass (ESI-MS) spectrometry was done on an Agilent 6410 Triple Quadrupole LC/MS mass spectrometer (pg. 1180 para [0001]).”)
Zarzana teaches selecting a mass chromatogram indicating the presence of hypochlorite ion-derived iron complex obtained by ESI-MS. Kodajoo also teaches a mass chromatogram indicating the presence of hypochlorite ion-derived iron complex (Kodajoo; Fig. 4) obtained from LC/MS. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Zarzana to include the teachings of Kodajoo by using LC along with the MS to obtain the mass chromatograph. Doing so improves sensitivity to allow the detection of low-abundance analytes and obtain better signal clarity.
Regarding claim 4, Zarzana teaches the measurement method according to claim 1, wherein the hypochlorite ion-derived iron complex is FeCl4 – (Fig. 5 above).
Regarding claim 5, Zarzana teaches the measurement method according to claim 1, wherein each mass chromatogram indicating the presence of a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion is further selected, and these ions are simultaneously analyzed (Fig. 5 above).
Fig. 5 of Zarzana is a mass chromatogram indicating the presence of a hypochlorite and a chloride ion. Therefore, Figure 5 is evidence of selecting a mass chromatogram indicating the presence of a chloride ion, a chlorite ion, a chlorate ion, and a perchlorate ion. The presence of both a hypochlorite and a chloride ion on the same chromatograph is evidence of simultaneous analysis (see interpretation under 112(b) above).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Zarzana and Kodajoo as applied to claim 1, and in further view of Nitsopoulos, A., T. Glaumer, and A. Friedle. "Chlorate-a contaminant in foodstuff and drinking water." Agilent Technologies, Labor Friedle GmbH (2014), hereinafter referred to as Nitsopoulos.
Regarding claim 2, Zarzana teaches the measurement method according to claim 1, wherein an eluent used in the liquid chromatography mass spectrometry is a solvent containing an organic solvent (Figure 5. (a) Negative mode electrospray mass spectrum of 10 mM FeCl2 in water diluted 1:9 with acetonitrile. (b) Negative mode electrospray mass spectrum of 10 mM FeCl3 in water diluted 1:9 with acetonitrile. (c) Negative mode electrospray mass spectrum of 10 mM FeCl3 in water mixed with H2O2 and diluted 1:9 with acetonitrile (Fig. 5 caption)).
Zarzana fails to teach wherein an eluent used in the liquid chromatography mass spectrometry is a mixed solvent of an aqueous solution containing a salt and an organic solvent.
However, Nitsopoulos teaches wherein an eluent used in the liquid chromatography mass spectrometry is a mixed solvent of an aqueous solution containing a salt and an organic solvent (Separation was achieved using a mixed mode HILIC separation column and acidified ammonium formate buffer and acetonitrile as mobile phase (conclusion, para. [0001])).
Nitsopoulos teaches the use of a “1290 Infinity UHPLC system was coupled to the highly sensitive Agilent 6490 triple quadrupole mass spectrometer equipped with an Agilent Jet Stream electrospray ionization source (Nitsopoulos; conclusion)” for the determination of chlorate, bromate, and perchlorate in water. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device described in Zarzana to inlclude the teachings of Nitsopoulos by incorporating ammonium formate in the solvent such that the solvent is a mixed solvent of an aqueous solution containing a salt and an organic solvent. The use of ammonium formate and acetonitrile in an aqueous solution is common in the art for optimizing sensitivity and peak shape.
Regarding claim 3, Zarzana teaches the measurement method according to claim 2, wherein the organic solvent contains acetonitrile (Figure 5. (a) Negative mode electrospray mass spectrum of 10 mM FeCl2 in water diluted 1:9 with acetonitrile. (b) Negative mode electrospray mass spectrum of 10 mM FeCl3 in water diluted 1:9 with acetonitrile. (c) Negative mode electrospray mass spectrum of 10 mM FeCl3 in water mixed with H2O2 and diluted 1:9 with acetonitrile (Fig. 5 caption)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
"Detection of chlorite, chlorate and perchlorate in ozonated saline." Experimental and Therapeutic Medicine 20.3 (2020): 2569-2576. – Fig. 1 is pertinent to claim 5 for the use of IC-MS to detect chlorite, chlorate, and perchlorate.
Urbansky, Edward T., et al. "Quantitation of perchlorate ion by electrospray ionization mass spectrometry (ESI-MS) using stable association complexes with organic cations and bases to enhance selectivity." Journal of Analytical Atomic Spectrometry 14.12 (1999): 1861-1866 – Fig. 5 is relevant to claim 5 for teaching a mass chromatogram of a chloride ion, a chlorate ion, and a perchlorate ion.
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/MICA JILLIAN EINHORN/Examiner, Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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