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 .
Response to Arguments
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive. Applicant has amended independent claim 8 to include concentrations of calcium carboxylic acid and buffer in solution, a volume ratio of anhydrous ethanol in solution, and utilizing polyethylene terephthalate as a base layer. Applicant has argued that the combination of references cited below do not meet the claim limitations, the Examiner respectfully disagrees.
Applicant’s arguments are centered on the notion that one of ordinary skill in the art would not be motivated to combine the secondary references with the teachings of Jordan (US 3,006,735) to arrive at the claimed invention. For example, Applicant has argued that one of ordinary skill would not have been motivated to combine the teachings of Jordan and Rudman et al., to include calcium carboxylic acid as an indicator for calcium. The Examiner notes that Rudman et al., teach Patton and Reeder’s complex (calcium carboxylic acid) is known for forming a complex with calcium ions and causing a color change from blue to pink/red (paragraph 0024). As such, one of ordinary skill in the art would have recognized from the teachings of Rudman et al., that calcium carboxylic acid can be utilized to detect calcium in an colorimetric assay. Rudman et al., do not teach the concentration range recited in the claim; however, the Examiner notes that the claimed concentration range of calcium carboxylic acid is sufficiently large such that one of ordinary skill would be motivated to determine the optimal concentration range through routine optimization.
Applicant has also argued that one of ordinary skill in the art would not be motivated to combine the teachings of Jordan and Rudman et al., with those of Johnston et al., (US 4,038,485). Reference to Johnston et al., is cited for teaching forming a test device wherein a reagent paper is immersed in two solutions with the first solution comprising sodium phosphate tribasic and sodium phosphate dibasic (Example III), and the second solution comprising anhydrous ethanol (Example III). Reference to Johnston et al., do not teach the concentration range for the buffer, nor do they teach a volume ratio of anhydrous ethanol; however, the Examiner again contends that one of ordinary skill in the art would have been motivated to determine the optimal concentration range and volume ratio by routine experimentation.
Applicant has also amended independent claim 8 to recite a base layer made of polyethylene terephthalate. As detailed in the previous Office Action, the Examiner has cited reference to Ismail et al., (US 5,116,729) who teach a test strip comprising a support made of polyethylene terephthalate (column 16 lines 35-37), and a standardized color chart on a test strip bottle (column 3 lines 47-54). As such, the Examiner contends that all the limitations of the instant claims are taught by the cited prior art, and that one of ordinary skill in the art would have been motivated to combine the references in the manner detailed below. Therefore, in light of the teachings of the prior art, and the arguments provided here, the Examiner contends that the limitations of the instant claims are taught by the references cited below, thus the claims are not in condition for allowance.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed steps, the process steps listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claim 1, the Examiner notes that the specification does not provide a definition for what constitutes pure water. Given that pure water is not defined in the specification, the Examiner will read any water in which solutes are dissolved as being pure water.
Claim Objections
Claim 16 objected to because of the following informalities: claim 16 depends from claim 83 which does not exist. The Examiner believes that Applicant intends for claim 16 to depend from claim 8. Appropriate correction is required.
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.
Claim(s) 8, 14, 22, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jordan (US 3,006,735) in view of Rudman et al., (US 2014/0322661) in view of Johnston et al., (US 4,038,485), and further in view of Ismail et al., (US 5,116,729).
Regarding claims 8, 22, and 23 Jordan teaches a method of preparing a water hardness test paper comprising providing Eriochrome black T as a color developer (column 4 lines 6-9), dissolving Eriochrome black T in a solution comprising sodium hydroxide (column 3 line 75 column 4 line 13), and applying the color developing substance to a carrier with a roller (column 3 lines 23-30). Jordan does not teach calcium carboxylic acid as a suitable color developing substance.
Rudman et al., teach that Patton and Reeder's indicator is known indicator for detecting calcium in spot tests or test strips (paragraph 0024). Rudman et al., teach that Patton and Reeder's indicator forms a complex with calcium ions causing a color change from blue to pink/red (paragraph 0024). The Examiner notes that Patton and Reeder's indicator and calcium carboxylic acid are identical, thus the properties of the prior art indicator would be identical to that of the instant claims. The Examiner is reading this limitation as a substitution of one known element for another to obtain predictable results which would have been obvious to one of ordinary skill in the art (MPEP 2141 III B). Reference to Rudman et al., teach that Patton and Reeder's indicator is known for detection of calcium wherein a color change occurs in the presence of calcium ions. As such, one of ordinary skill in the art would have found it obvious to substitute Eriochrome black T as taught by Jordan with Patton and Reeder's indicator as taught by Rudman et al., as substitution of one known element for another requires only routine skill in the art. Jordan in view of Rudman et al., do not teach forming two solutions wherein the first solution comprises one or more of citric acid, sodium citrate, disodium hydrogen phosphate, sodium dihydrogen phosphate, TBS, boric acid and borax, the second solution comprises anhydrous ethanol, and immersing the carrier into the solutions.
Johnston et al., teach a test device wherein a reagent paper (carrier) is immersed in two solutions wherein the first solution comprises sodium phosphate tribasic and sodium phosphate dibasic (column 9 Example III) the second solution comprises anhydrous ethanol (column 9 Example III). The Examiner is reading this combination as combining prior art elements according to known methods to yield predictable results which would have been obvious to one of ordinary skill in the art. Johnston et al., teach that forming two solutions, immersing a test paper into the solutions, and drying the test paper is known in the art, thus one of ordinary skill would have found it obvious to immerse a test paper into two solutions wherein the first solution comprises sodium phosphate tribasic and sodium phosphate dibasic, and the second solution comprises anhydrous ethanol. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Jordan in view of Rudman et al., to utilize two solutions as taught by Johnston et al., as combining prior art elements according to known methods to yield predictable results requires only routine skill in the art. Jordan in view of Rudman et al., in view of Johnston et al., do not teach a base layer made of polyethylene terephthalate.
Ismail et al., teach a test strip comprising a support strip or handle made of polyethylene terephthalate (column 16 lines 35-37). Ismail et al., also teach a standardized color chart provided on the test strip bottle (column 3 lines 47-54). Ismail et al., do not explicitly teach the concentrations color coded on the color block; however, the Examiner is reading these limitations as optimization which would have required only routine skill in the art. The MPEP states that where the general conditions of a claim are taught by the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. The MPEP also states that differences in concentration will not support patentability of subject matter encompassed by the prior art absent evidence indicating the concentration is critical. The Examiner contends that one of ordinary skill in the art would have been motivated to form a color block having a range of concentrations so as to indicate low and high levels of a specific analyte. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Jordan in view of Rudman et al., in view of Johnston et al., with the polyethylene terephthalate and color block of Ismail et al., as optimization requires only routine skill in the art.
Regarding claim 14, Jordan in view of Rudman et al., further in view of Johnston et al., in view of Ismail et al., do not explicitly teach the buffer and color developing substance in 500 ml pure water, and adding 500 ml anhydrous ethanol. The Examiner is reading this limitation as optimization which would have been obvious to one of ordinary skill in the art (MPEP 2144.05 II A). The MPEP states that differences in concentration will not support patentability of subject matter encompassed by the prior art absent evidence indicating the concentration is critical. Applicant has not provided any evidence to show that the claimed volumes are critical, thus the Examiner contends that one of ordinary skill in the art would have found it obvious to form the solutions in any volume based on the amount of solution required to for the test paper. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Jordan in view of Rudman et al., and further in view or Johnston et al., wherein the buffer and color developing substance are formed in 500 ml of pure water, and adding 500 ml anhydrous ethanol as optimization requires only routine skill in the art.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jordan (US 3,006,735) in view of Rudman et al., (US 2014/0322661) in view of Johnston et al., (US 4,038,485), in view of Ismail et al., (US 5,116,729) as applied to claim 8 above, and further in view of Joseph et al., (US 3,212,855).
Regarding claim 16, Jordan in view of Rudman et al., in view of Johnston et al., in view of Ismail et al., do not teach drying the carrier at 100°C.
Joseph et al., teach a diagnostic device wherein absorbent paper is immersed into an impregnating solution and dried at 100°C (column 4 lines 20-21). The Examiner is reading this limitation as combining prior art elements according to known methods to yield predictable results which would have been obvious to one of ordinary skill in the art. Reference to Joseph et al., clearly teach drying an absorbent paper at 100°C, thus one of ordinary skill in the art would have been motivated to utilize the taught temperature for the purpose of drying an impregnating absorbent paper. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Jordan in view of Rudman et al., in view of Johnston et al., in view of Ismail et al., wherein carriers are dried at 100°C as taught by Joseph et al., as combining prior art elements according to known methods to yield predictable results requires only routine skill in the art.
Allowable Subject Matter
Claim 24 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach or suggest a preparing method of a water hardness test paper wherein a first solution comprises 0.862g calcium carboxylic acid, 1.42g citric acid, and 0.526g sodium citrate mixed in 500 ml pure water, and adding 500 ml anhydrous ethanol to the first solution to form the second solution as recited in claim 24.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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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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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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