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 § 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 70, 75, 79, 82, 86-90, and 95 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.
Claims 70, 91, and 95 recite “A method for extending an in-service life of an adsorptive filtering unit and for increasing the resistance of the adsorptive filtering unit to biocontamination caused by germs and microorganisms,”.
“A method for extending an in-service life of an adsorptive filtering unit” is indefinite because “extending” is a relative term where there is no point of reference claimed from which one of ordinary skill in the art could determine what would is required of “extending”.
Further, this is indefinite because it is unclear how an “in-service life” of a filtering unit is measured or determined and without this information it would be impossible to know how to determine if it is extended.
“increasing the resistance of the adsorptive filtering unit…microorganisms” is indefinite because “increasing” is a relative term that requires a point of reference for one of ordinary skill in the art to consider.
Further, this is indefinite because it is unclear how “the resistance” of the filtering unit is determined. Without knowing how “resistance” is determined, it is impossible to determine any change.
The entire amendment “if compared…of the activated carbon” is indefinite as it is unclear what is being claimed and how this would be compared to the “an adsorptive filtering unit”. It is also unclear how “high hydrophilicity” is determined. “high” is a relative term that requires a point of reference for one of ordinary skill in the art to consider.
“if compared” does not recite any actual comparison. Further, “a comparative” is indefinite as it is unclear how one would determine a filtering unit to be “comparative” and how this would be selected.
Claim 70 recites that the water contains “germs and microorganisms capable of establishing colonization of the activated carbon”. The disclosure does not describe which types of germs and/or microorganisms are capable of said colonization or what attributes or properties of germs and/or microorganisms would make them “capable” of performing the claimed function. As such, for the purpose of a prior art search and claim interpretation, any microorganism and/or germ will be understood to meet this limitation.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 70, 75, 79, 82, 86-90, and 95 are rejected under 35 U.S.C. 103 as being unpatentable over Ikuno (US Pub. No. 2011/0297614) in view of Bohringer et al. (US Pub. No. 2012/0172216) and Schonfeld (US Pub. No. 2006/014685).
Claims 70 and 90: Ikuno discloses a method for filtering water with an adsorptive filtering unit 4 including the step of providing the adsorptive unit with spherical activated carbon (see the abstract, Figure 1, and paragraph 65), and bringing the activated carbon into contact with water to be treated (see FIG. 1 and paragraph 61). The water comprises organic-matter-containing water (i.e. wastewater, Claim 95) include microorganisms that can proliferate and grow [0004, 0005]. Ikuno teaches that organic matter is removed by the carbon tower (4) which means that there is at least some organic matter (which includes the microorganisms and germs) in the water that enters the activated carbon tower [0067]. It is also understood that the water flowing from the flocculant step (3) is not sterile and would reasonably comprise at least some microorganisms [0032, wherein water that passes to the GAC column has organic matter in it]. The water being treated is wastewater [0064, “raw water”; “organic-matter-containing water 004-0005].
Ikuno discusses that at certain chlorine concentrations, slime growth may occur after the activated carbon tower [0067] which means that there is at least some microorganism still in the water when it is introduced to the activated carbon. Ikuno discussed that less than 1 mgCl/L of slime-controlling agent results in microorganism growth downstream [0063] which means that in at least one scenario Ikuno introduced water comprising the microorganism to the column. Further, Comparative Example 2 does not use Ikuno’s slime-control agent and Ikuno discusses how slime forms on the downstream membrane [0096] which means that the water contacting the activated carbon comprised microorganisms.
Ikuno does not specifically teach that the organic matter comprising microorganisms are specifically aquatic single-cell and multi-cell germs and wherein the aquatic single-cell or multi-cell germs and microorganisms are algae, bacteria, fungi, yeasts, or protozoa. However, the organic matter and microorganisms disclosed by Ikuno are in water and microorganisms are either single-cell or multi-cell. Therefore, one of ordinary skill in the art would have concluded that Ikuno includes this limitation. Further, algae, fungi, bacteria, yeasts, and protozoa are all common types of microorganisms found in raw water. Given that Ikuno’s intent is to treat water having microorganisms, one of ordinary skill in the art at the time of the invention would have found it obvious to treat water with any one of these specific components. One of ordinary skill in the art at the time of the invention would have also concluded that the disclosure of “microorganisms” in Ikuno included these specific types of microorganisms commonly found in water.
Ikuno fails to specify the Gurvich total pore volume of the activated carbon recited in claim 70 or that the spherical carbon is specifically polymer based spherical carbon.
Bohringer et al disclose a polymer-based spherical activated carbon (PBSAC) as being used as activated carbon (see paragraphs 78-93) that is brought into contact with water to be treated (see paragraphs 2 and 98), the activated carbon having a Gurvich total pore volume in the range of from 0.15 cm3/g to 3.95 cm3/g (see paragraph 41), wherein not less than 60% of the Gurvich total pore volume of the activated carbon is formed by pores having pore diameters of not more than 50 nm (see paragraph 68). Bohringer et al disclose activated carbon obtained from a starting material based on organic polymers selected among sulfonated organic polymers based on divinylbenzene-crosslinked polystyrene (see paragraphs 78-93) starting divinylbenzene content is 1 wt% to 20 wt% [0085].
Bohringer et al. teach that their PBSAC is a high-performance form of activated carbon suitable for high mechanical loads [0032] wherein “There are a number of applications requiring a particularly high meso- and macroporosity of the activated carbon, i.e., a high meso- and macropore volume fraction, coupled with an altogether high total pore volume, for example in relation to the applications mentioned at the beginning, for example for use in the food industry, in the manufacture of certain adsorptive filtering materials (for example for NBC protective apparel), for the adsorption of toxins, oxidants and odors, particularly from gas or air streams, for purifying or cleaning gases, such as in particular air…”[0011]. They teach that the PBSAC has high abrasion resistance and mechanical compressive strength despite high porosity [Bohringer et al., 0092].
One of ordinary skill in the art at the time of the invention would have found it obvious to substitute Bohringer et al.’s PBSAC into Ikuno’s filtering unit for the benefit of increasing the mechanical stability of the filter [0088].
Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). This obviousness is supported by KSR (B) wherein the simple substitution of one known element for another to obtain predictable results and KSR (E) “Obvious to try” choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious.
Further, the pore volume, pore diameters, ash content, and particle diameter of activated carbon particles are all well-known result effective variables that are routinely controlled and optimized to produce an effective adsorption and separation product comprising the activated carbon. “[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) (see MPEP § 2144.05, II.).
Schonfeld teaches a fractal dimension of open porosity of at least 2.30. Schonfeld further teaches that the closer the fractal dimension comes to 3, the finer and thus microrougher the structure of the surface is (see paragraph 11). Shonfeld further teaches that the fractal dimension can be adjusted to provide improved adsorption capacity (id. paragraph 12).
Schonfeld clearly teaches that the fractal dimension is a result effective variable that is routinely optimized to control the micro structure of the surface of the activated carbon to control adsorption capacity.
In view of these findings, it is respectfully submitted that it would have been obvious to have substituted the spherical activated carbon of Bohringer et al for that employed by Ikuno in order provide the predictable result of purifying water as taught by Bohringer et al.
In addition, previously it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. MPEP § 2144.05(1) (citations omitted). Notably the claimed range of fractal dimension of open porosity lies inside Schonfeld’s disclosed range. Thus in accordance with MPEP § 2144.05(1), it is respectfully submitted that at the time Applicant’s invention was effectively filed, it would have been prima facie obvious to one skilled in the art to use a fractal dimension of open porosity in the claimed range. Furthermore, previously it has been held that “where 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.” /n re Aller, 220 F.2d 454, 456 (CCPA 1955). It has also been held that “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” in re Petersen, 315 F.3d 1325, 1330 (Fed. Cir. 2003). With these holdings in mind, it is respectfully submitted that at the time Applicant’s invention was effectively filed, it would have been obvious to one skilled in the art to optimize, via routine experimentation, the fractal dimension of open porosity of the activated carbon of the instant combination: in order to enhance adsorption capacity. Alfer, 220 F.2d at 456; Petersen, 315 F.3d at 1330.
As it applies to the limitations directed to hydrophilicity, water wettability, absolute hardness, and extending in-service life, the activated carbon of the instant combination has the same structural features as the activated carbon described in claim 1: Gurvich total pore volume and fractal dimension of open porosity. As such, both activated carbons are presumed to have the same properties—including the claimed hydrophilicity, absolute hardness, and extension of in-service life—until such time as Applicant provides evidence demonstrated otherwise. See MPEP § 2112. In addition, Bohringer discloses that the abrasion hardness can be about 100% (paragraph 64).
Claims 79 and 82: for the reasons provided in the rejection of claim 70, the instant combination is presumed to have the same properties as Applicant’s claimed activated carbon.
Claim 75: Ikuno discloses the activated carbon as being in the form of a loose bed 15 (see FIG. 3 and paragraph 66).
Claim 86: Bohringer et al disclose 60% to 90% of the Gurvich total pore volume of the activated carbon as being formed by pores having pore diameters of not more than 50 nm (see paragraph 68).
Pore size and pore volume are known result effective variable routinely optimized to control adsorption and separation properties of a material. “[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) (see MPEP § 2144.05, II.).
Claim 87: Bohringer et al disclose 5% to 80% of the Gurvich total pore volume of the activated carbon is formed by pores having pore diameters in the range from 2 nm to 50 nm (see paragraph 68).
Pore volume is a known result effective variable routinely optimized to control adsorption and separation properties of a material. “[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) (see MPEP § 2144.05, II.).
Claim 88: Bohringer et al disclose activated carbon having an average pore diameter in the range from 0.5 nm to 55 nm (see paragraph 47).
Pore diameter is a known result effective variable routinely optimized to control adsorption and separation properties of a material. “[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) (see MPEP § 2144.05, II.).
Claim 89: Bohringer et al disclose activated carbon having a particle diameter in the range from .01-2.0 mm which overlaps with the claimed range of 0.01 mm to 2.5 mm (see paragraph 74).
Particle diameter (tied to surface area) is a known result effective variable routinely optimized to control adsorption and separation properties of a material. “[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) (see MPEP § 2144.05, II.).
Claim 95: Ikuno discloses a method for filtering water with an adsorptive filtering unit 4 including the step of providing the adsorptive unit with spherical activated carbon (see the abstract, Figure 1, and paragraph 65), and bringing the activated carbon into contact with water to be treated (see FIG. 1 and paragraph 61). The water to be treated is “organic-matter-containing water” which would be understood to contain microorganisms.
Ikuno fails to specify the Gurvich total pore volume, the hydrophilicity, the fractal dimension, and the water wettability of the activated carbon. Non-distilled water to be treated typically has at least some microorganism in it as it is not sterile.
Bohringer et al disclose a spherical activated carbon (see paragraph 98) that can be brought into contact with water to be treated (see paragraphs 2 and 98), the activated carbon having a Gurvich total pore volume in the range of from 0.15 cm3/g to 3.95 cm3/g (see paragraph 41), wherein not less than 60% of the Gurvich total pore volume of the activated carbon is formed by pores having pore diameters of not more than 50 nm (see paragraph 68). The activated carbon can have an ash content of not more than 1% (paragraph 75). Bohringer et al disclose activated carbon having a particle diameter in the range from .01-2.0 mm which overlaps with the claimed range of 0.01 mm to 2.5 mm (see paragraph 74).
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Further, the pore volume, pore diameters, ash content, and particle diameter of activated carbon particles are all well-known result effective variables that are routinely controlled and optimized to produce an effective adsorption and separation product comprising the activated carbon. “[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) (see MPEP § 2144.05, II.).
Schonfeld teaches a fractal dimension of open porosity of at least 2.30. Schonfeld further teaches that the closer the fractal dimension comes to 3, the finer and thus microrougher the structure of the surface is (see paragraph 11). Shonfeld further teaches that the fractal dimension can be adjusted to provide improved adsorption capacity (id. paragraph 12).
Schonfeld clearly teaches that the fractal dimension is a result effective variable that is routinely optimized to control the micro structure of the surface of the activated carbon to control adsorption capacity.
In view of these findings, it is respectfully submitted that it would have been obvious to have substituted the spherical activated carbon of Bohringer et al for that employed by Ikuno in order provide the predictable result of purifying water as taught by Bohringer et al.
In addition, previously it has been held that “[i]Jn the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. MPEP § 2144.05(l) (citations omitted). Notably the claimed range of fractal dimension of open porosity lies inside Schonfeld’s disclosed range. Thus in accordance with MPEP § 2144.05(\), it is respectfully submitted that at the time Applicant’s invention was effectively filed, it would have been prima facie obvious to one skilled in the art to use a fractal dimension of open porosity in the claimed range. Furthermore, previously it has been held that “where 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.” in re Aller, 220 F.2d 454, 456 (CCPA 1955). It has also been held that “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.” in re Petersen, 315 F.3d 1325, 1330 (Fed. Cir. 2003). With these holdings in mind, it is respectfully submitted that at the time Applicant's invention was effectively filed, it would have been obvious to one skilled in the art to optimize, via routine experimentation, the fractal dimension of open porosity of the activated carbon of the instant combination: in order to enhance adsorption capacity. Aller, 220 F.2d at 456; Petersen, 315 F.3d at 1330.
As it applies to the limitations directed to hydrophilicity, water wettability, absolute hardness, and extending in-service life, the activated carbon of the instant combination has the same structural features as the activated carbon described in claim 91: Gurvich total pore volume and fractal dimension of open porosity. As such, both activated carbons are presumed to have the same properties—including the claimed hydrophilicity, absolute hardness, and extension of in-service life—until such time as Applicant provides evidence demonstrated otherwise. See MPEP § 2112. In addition, Bohringer discloses that the abrasion hardness can be about 100% (paragraph 64).
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Applicant’s claimed invention can be simplified into a method wherein a polymer-based spherical activated carbon with water having microorganisms in it. The polymer-based spherical activated carbon comprising specific values of a divinylbenzene content, Gurvich total pore volume, a specific hydrophilicity, fractal dimension, wettability, and abrasion hardness.
The use of polymer-based spherical activated carbon to treat water with bacteria is well-known and routine this is shown in both Ikuno’s background, their discussion of chlorine amount, and their Comparative Example 2. All of the variables recited above have been shown on the record to be result effective variables that are routinely optimized for a variety of reasons as is explained in the rejection above. Applicant has failed to demonstrate any new or unexpected results associated with the values of the claimed variables. Any such demonstration must be supported by evidence. Attorney arguments cannot take the place of evidence. Further, it is unclear how or if these variables are related to “resistance” and the “in-service” life of the filter because these terms are not defined in the claim or in the specification.
Applicant presents two main arguments:
The prior art does not teach the “increasing resistance” and “extending in-service life” of the filter.
The prior art does not teach introducing water comprising microorganisms and germs to the polymer based activated carbon.
Applicant argues that the “if compared to…” language renders the claim definite as a comparison.
The Examiner disagrees. There is no indication of how the “in-service life” and “resistance” are defined. It’s not possible to compare two things when the way in which they are to be determined is indefinite.
The amendment is indefinite as it is also unclear what exactly the structure is of the “a selected polymer-based activated carbon”. And the limitation isn’t even positively recited as part of the claim given that it recites “if compared…” which means comparison is not compulsory in the claim.
Applicant argues that claim 70 provides “specific metrics for comparison”. Applicant fails to define how the “resistance” and “in-service life” is determined. There is no way for one of ordinary skill in the art to know what is required of the claim if there is no way to know what is required of “extending an in-service life” and “increasing resistance”. It is also impossible to make a comparison “if compared” to a filtering unit that has no clear definition, i.e. there is no indication what the polymer is, how to determine “high hydrophilicity”; even if hydrophilicity could be defined by Applicant as the claimed “water vapor adsorption behavior”, there is no indication what would constitute “high” hydrophilicity versus low, or standard.
In the Remarks, Applicant states that the disclosure and an article titled “Hidden Danger in Your Filter…” explain how one in the art would simply ‘know’ how to determine the “in-service life” of a filter. However, neither the disclosure nor the article provide a definition of “in-service life”. The Examiner has said multiple times and maintains that there is no way to determine the “in-service life” of the filter claimed or make any such comparison.
Further, while claims are read in light of the specification, limitations from the specification are not read into the claims.
In the Remarks, Applicant states that the undefined, theoretical “different filter unit” is different because the “inventive method” has a hydrophilicity wherein not more than 25% of the maximum water vapor adsorption capacity of the activated carbon is utilized. This is not recited in the claims.
Applicant argues that the “aquatic single-cell or multi-cell germs and microorganisms” is definite. The Examiner disagrees. Even with the amendment, it is unclear if aquatic single-cell or multi-cell germs can be the claimed microorganisms. A microorganism is defined by Oxford Languages as “a microscopic organism, especially a bacterium, virus, or fungus.” Any one of these necessarily is a single-cell or multi-cell. Any aquatic single-cell or multi-cell germ is necessarily a microorganism. Therefore, it is unclear if Applicant intends for “microorganism” to require something different or if it is redundant.
Applicant argues that the Examiner’s rejection based on Ikuno is not relevant because the background of the reference is cited. MPEP teaches that references “are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). And, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). The entire purpose of Ikuno is to “inhibit slime” [0027] and slime control [0027]. The slime is aggregation of microorganisms that are present in the raw water introduced. This raw water includes river water and ground water [0062].
Applicant argues that Ikuno does not meet the claim because the water is sterilized before entering the column.
Ikuno discusses that at certain chlorine concentrations, slime growth may occur after the activated carbon contact [0067] which means that there is at least some microorganism still in the water when it is introduced to the activated carbon. Ikuno discussed that less than 1 mgCl/L of slime-controlling agent results in microorganism growth downstream [0063] which means that in at least one scenario Ikuno introduced water comprising microorganism to the column to determine their optimized chlorine amount. Further, Comparative Example 2 does not use Ikuno’s slime-control agent and Ikuno discusses how slime forms on the downstream membrane [0096] which means that the water contacting the activated carbon comprised microorganisms.
Applicant states that the Examiner fails to answer the “inconvenient question” of why one would modify Ikuno which they argue “any carbon will work” for.
This is exactly how obviousness works. The prior art and one of ordinary skill in the art at the time of the invention suggest improving upon activated carbon and optimizing the material for the best possible removal outcome.
Applicant argues, again, regarding the “resistance” and “in-service life” but still fails to define these limitations.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Microorganisms are not fully absent in the system as applicant alleges. It is nearly impossible to eradicate all microorganisms from water. Ikuno describes more than one scenario when there is growth downstream of the activated carbon meaning the water coming from the activated carbon comprises microorganisms.
The Examiner has addressed each claim limitation. Applicant may not agree with the Examiner’s position but the limitations are addressed.
With respect to the result effective variable argument, these variables are well-known in the art. It also appears, by Applicant’s argument, that the claimed PBSAC is not of importance or critical.
To make a claim of unexpected or superior results, the showing of results must be specific and commensurate in scope with the claims. A general allegation of improvement is not sufficient. And the “achieved result” alleged by Applicant has no specificity and is not tied to any evidence.
The arguments presented by Applicant are fundamentally the same as the previous response. There being no difference in substance. All of the arguments are responded to in the remarks above and within the office action.
Applicant makes vague, far reaching arguments that are addressed here:
Applicant argues:
The Examiner fails to provide proper motivation to combine.
Please see the rejection above.
Applicant’s invention is not considered as a “whole”, as is required by MPEP 2141.02 V.
The Examiner disagrees. In fact, the Examiner has considered overall what Applicant’s invention is and what the goal of their claims is. The Examiner has a strong understanding of the prior art and fully addresses both individual limitations and the invention as a whole. See the rejection above.
The hypothetical activated carbon cannot be used to support an obviousness rejection for the specific properties.
Bohringer et al. teach many of the recited specifics. The other specifics are routinely optimized result effective variables. Applicant has failed to establish any criticality or relevance of their recited specific properties that are already recognized in the art as common and commonly optimized in routine experimentation.
MPEP 2143.01 states that a “proposed modification cannot render the prior art unsatisfactory for its intended purpose”.
The proposed modification does not render Ikuno et al. unsatisfactory. It simply enhances Ikuno by providing a specific material recognized for its intended use in filtration applications is stated in Bohringer et al. This does not destroy or render Ikuno unsatisfactory as would be required in MPEP 2143.01 to apply.
MPEP 2143.01 states that a “a proposed modification cannot change the principle of operation of a reference”.
The proposed modification does not change the principle operation of Ikuno et al. It simply enhances Ikuno by providing a specific material recognized for its intended use in filtration applications is stated in Bohringer et al. There is no modification or change to the principle operation.
The Applicant continues to send in broad, general allegations of unsatisfactory rejection or patentability. None of which address the true rejections provided above and in the previous rejections.
Conclusion
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/Primary Examiner, Art Unit 1773
Prosecution Insights