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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 6, 8-10, 14-15, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regard to claim 6, the limitation “raw calcium bentonite” is considered new matter. There is no support in the instant specification for this limitation. The Applicant points to paragraph [0016] as providing support for claim amendments; paragraph [0016] provides support for “raw bentonite” but does not provide support for “raw calcium bentonite”. No support is found for this term. Claims 8-10 and 14-15 are rejected as well since they depend on claim 6.
In regard to claim 21, the limitation “raw calcium bentonite” is considered new matter. There is no support in the instant specification for this limitation. The Applicant points to paragraph [0016] as providing support for claim amendments; paragraph [0016] provides support for “raw bentonite” but does not provide support for “raw calcium bentonite”. No support is found for this term. Further, there is no support for a weight ratio of 1000:135 for “raw calcium bentonite”.
Claims 6, 8-10, 14-15, and 21 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.
Claim 6 recites the limitation "sodium activated calcium bentonite”. There is insufficient antecedent basis for this limitation in the claim; this term was previously defined. Claims 8-10 and 14-15 are rejected as well since they depend on claim 6.
Claim 21 recites the limitation "the weight ratio”. There is insufficient antecedent basis for this limitation in the claim; this term has not previously been defined.
Claim Rejections - 35 USC § 103
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 1, 3-4, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Azrad (U.S. Patent No. 3909454) in view of Douglas (U.S. Patent No. 6350383).
In regard to claims 1 and 3, Azrad teaches a slurry (C2/L59-66; “Wyoming bentonite”, C3/L6-21; C5/L5-49); capable of treating phosphate oxyanion contamination in water; capable of sequestering phosphate oxyanions from the contaminated water. Azrad teaches water (C2/L56-66).
Azrad does not teach a rare-earth exchanged sodium activated calcium bentonite where the rare earth salt is lanthanum. However, Azrad teaches treatment of the sodium activated bentonite with the salt of heavy metal, such as Fe, Ni, Zn, Co, Cr, or Mn (C3/L5-10). Azrad teaches heavy metal salts have a catalytic effect corresponding to active sites (C2/L19-30). Azrad teaches a slurry for treatment of oxyanion contamination in water (C2/L59-63; C3/L5-10; C3/L6-21; C5/L5-48). Azrad teaches slurry used for water clarification (C5/L43-49). Azrad teaches a calcium bentonite (C1/L32-39). Azrad teaches raw bentonites (C3/L39-52).
Douglas discloses a material and method for water clarification, specifically the removal of environmental oxyanions including phosphates (abstract; Cl/LI 9-28; C1/L55 to C3/L18). Douglas teaches removing unwanted species from water systems (Cl/LI 9-28; C1/L55 to C3/L18). Douglas teaches the material comprises a mineral substrate such as a clay modified with complexing elements selected from Group IIIB, Group IVB, and lanthanide elements (abstract; C3/L55 to C4/L22). Douglas discloses that the mineral substrate is preferably expandable clay such as bentonite (C2/L46-51; C5/L34-46). The remediation material may be applied as a slurry to the surface of a waterbody, or directly to the surface of bottom sediments, or injected into the bottom sediments (C3/L27-29). The remediation material complexes with oxyanions (C3/L19-26). Douglas teaches the rare earth salt provides a plurality of active sequestration sites within or associated with the sodium activated bentonite (C3/L19-26). Douglas teaches incorporating lanthanum into the mineral substrate to form a lanthanum phosphate complex (C4/L10-22). Douglas teaches lanthanum creates a lanthanum phosphate complex, effectively removing phosphate from the water (C4/L10-22; C5/L21-46). Douglas teaches the lanthanum modified bentonite reduces dissolved phosphorus drastically (C5/L34-46). Douglas teaches mixing a solution of 0.1 M LaCI3 with high purity bentonite (e.g. Commercial Minerals CE150 — ca. 90% bentonite, C5/L57-60; reading on lanthanum chloride). LaCI3 is rare earth salt. Douglas teaches the rare earth salt is lanthanum chloride (C4/L10-22; C5/L21-46; C5/L34-46; e.g. Commerical Minerals CE150-ca. 90% bentonite, C5/L57-60).
It would have been obvious to one of ordinary skill in the art at the time of the invention to further modify the sodium activated bentonite, as taught by Azrad, by substituting the salt of the heavy metal of Azrad with a rare earth salt, as taught by Douglas, in order to clarify water, specifically removing phosphorous. One of ordinary skill in the art would recognize that oxygen, phosphorous, and other materials are commonly removed through water clarification and would be motivated to incorporate a rare earth salt, as taught by Douglas, into the sodium activated bentonite slurry of Azrad in order to effectively remove phosphorous from water system. One of ordinary skill in the art at the time of the invention would recognize that heavy metal salts of Azrad and rare earth salts of Douglas have the same purpose as active sites in water clarification with bentonite materials. It would be obvious to one of ordinary skill in the art to substitute known alternative materials with the same properties for one another.
Azrad teaches the expandable bentonite is treated to have a sodium content in excess of 3.00 wt% disodium monoxide to form sodium activated bentonite (Azrad, table 3, Bentonite from USA, Wyoming).
A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). This applies to “for treatment of phosphate oxyanion contamination in water”.
Regarding limitations recited in claim 1, which are directed to method of making said slurry (e.g. “on testing with x-ray fluorescence”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the slurry as recited in claims 4 is the same as the slurry disclosed by modified Azrad, as set forth above, the claim is unpatentable. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Regarding limitations recited in claim 4, which are directed to method of making said slurry (e.g. “prepared by exchange of at least some divalent alkaline earth cations therein with sodium cations”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the slurry as recited in claims 4-5 is the same as the slurry disclosed by modified Azrad, as set forth above, the claim is unpatentable. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In regard to claim 13¸Azrad teaches the slurry comprises water from a site where the phosphate oxyanion contamination is to be treated (C5/L42-49; C2/L42-66).
Regarding limitations recited in claim 19, which are directed to method of making said briquette (e.g. “prepared by mixing raw calcium bentonite with sodium carbonate”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the briquette as recited in claims 1 and 6-7 is the same as the briquette disclosed by modified Stephens, as set forth above, the claim is unpatentable even though the briquette of modified Stephens was made by a different process. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In regard to claim 21, Azrad teaches typically about 10% by weight of heavy metal salt is incorporate into the bentonite (abstract; C3/L5-35). Azrad does not explicitly teach the weight ratio of raw calcium bentonite to lanthanum chloride is 1000:135; however, as the slurry rheological properties, cost of construction, and efficiency of separation are variables that can be modified, among others, by adjusting said weight ratio of calcium bentonite to lanthanum chloride, the precise weight ratio of calcium bentonite to lanthanum chloride would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed weight ratio of calcium bentonite to lanthanum chloride cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the weight ratio of calcium bentonite to lanthanum chloride in the slurry of modified Azrad to obtain the desired balance between the rheological properties, construction cost, and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claims 6, 8-9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Azrad (U.S. Patent No. 3909454) in view of Douglas (U.S. Patent No. 6350383) further in view of U.S. Patent No. 5656568 by Shiuh et al. (Shiuh), as evidenced by Kutlic et al. (Bentonite Processing, 2012).
In regard to claims 6 and 9, Azrad teaches a method of remediation of contaminated water having phosphate oxyanion contamination (C2/L59-63; C3/L5-10; “water clarification treatment”, “Wyoming bentonite”, C3/L6-21; C5/L5-48). Azrad teaches bentonite (Azrad, C2/L59-66; “Wyoming bentonite”, C3/L6-21; C5/L5-48; Example 5, C6/L65 to C7/L10). Azrad teaches the expandable bentonite is treated to have a sodium content in excess of 3.00 wt% disodium monoxide to form sodium activated bentonite (Azrad, table 3, Bentonite from USA, Wyoming). Azrad teaches raw bentonites (C3/L39-52).
Azrad teaches calcium bentonite (C1/L32-39).
As evidenced by Kutlic, the bentonite contains at least 0.50 wt% disodium monoxide (Kutlic, Table 1, Wyoming bentonite 2.59 wt% Na20). One of ordinary skill in the art would recognize the values in Table 1 are weight percentages.
Azrad teaches combining the sodium activated bentonite with water to produce a sodium activated slurry (C2/L63-66). Azrad discloses that 10% by weight of Na2C03 is dissolved in suspension of 5g bentonite/100 cc water (C2/L63-66). By estimation, the total sodium would produce sodium contents in excess of 3.00 wt% sodium content. It would be obvious to have sodium content in excess of 3.00 wt% sodium as disodium monoxide. The sodium content relative to the sodium activated bentonite is estimated to be approximately 9% : 9% :
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Azrad discloses the sodium activated bentonite is prepared by exchange of at least some of the divalent alkaline earth cations (calcium ion) existing therein with sodium cations (C1/L31-35).
Azrad teaches the bentonite is capable of exchanging at least a portion of sodium cations with divalent alkaline cations (C1/L31-35). Azrad does not teach the rare earth cations is lanthanum salt. However, Azrad teaches treatment of the sodium activated bentonite with the salt of heavy metal, such as Fe, Ni, Zn, Co, Cr, or Mn (C3/L5-10). Azrad teaches heavy metal salts have a catalytic effect (C2/L19-30); corresponding to active sites.
Further, Douglas discloses a material and method for water clarification, specifically the removal of environmental oxyanions including phosphates (abstract; Cl/LI 9-28; C1/L55 to C3/L18; reading on claim 9). Douglas teaches removing unwanted species from water systems (Cl/LI 9-28; C1/L55 to C3/L18). Douglas teaches the material comprises a mineral substrate such as a clay modified with complexing elements selected from Group IIIB, Group IVB, and lanthanide elements (abstract; C3/L55 to C4/L22). Douglas discloses that the mineral substrate is preferably expandable clay such as bentonite (C2/L46-51; C5/L34-46). The remediation material may be applied as a slurry to the surface of a waterbody, or directly to the surface of bottom sediments, or injected into the bottom sediments (C3/L27-29). The remediation material complexes with oxyanions (C3/L19-26). Douglas teaches the rare earth salt provides a plurality of active sequestration sites within or associated with the sodium activated bentonite (C3/L19-26). Douglas teaches incorporating lanthanum into the mineral substrate to form a lanthanum phosphate complex (C4/L10-22). Douglas teaches lanthanum creates a lanthanum phosphate complex, effectively removing phosphate from the water (C4/L10-22; C5/L21-46). Douglas teaches the lanthanum modified bentonite reduces dissolved phosphorus drastically (C5/L34-46). Douglas teaches mixing a solution of 0.1 M LaCI3 with high purity bentonite (e.g. Commercial Minerals CE150 — ca. 90% bentonite, C5/L57-60). LaCI3 is rare earth salt (reading on claims 33-34).
It would have been obvious to one of ordinary skill in the art at the time of the invention to further modify the sodium activated bentonite, as taught by Azrad, by substituting the salt of the heavy metal of Azrad with a rare earth salt, as taught by Douglas, in order to clarify water, specifically removing phosphorous. One of ordinary skill in the art would recognize that oxygen, phosphorous, and other materials are commonly removed through water clarification and would be motivated to incorporate a rare earth salt, as taught by Douglas, into the sodium activated bentonite slurry of Azrad in order to effectively remove phosphorous from water system. One of ordinary skill in the art at the time of the invention would recognize that heavy metal salts of Azrad and rare earth salts of Douglas have the same purpose as active sites in water clarification with bentonite materials. It would be obvious to one of ordinary skill in the art to substitute known alternative materials with the same properties for one another.
Azrad teaches distributing the rare earth exchanged slurry in the contaminated water (C2/L59-63; C3/L5-10; “water clarification treatment”, “Wyoming bentonite”, C3/L6-21; C5/L5-48).
Modified Azrad does not explicitly teach determining content by X-ray fluorescence.
Shiuh teaches a method of precisely measuring mineral content in clay materials (C2/L31-44). Shiuh teaches X-ray fluorescence spectrometry is a highly accurate measurement technique to determine the total content of sodium (C8/L55-59). It would be obvious to one of ordinary skill in the art to use an x-ray fluorescence technique to emasurem the concentration of sodiu, as taught by Shiuh, in the method of modified Azra, as X-ray fluorescence is a known highly accurate technique to measure sodium content in clay materials.
In regard to claim 8, Douglas teaches the rare earth salt is lanthanum chloride (C4/L10-22; C5/L21-46; C5/L34-46; e.g. Commerical Minerals CE150-ca. 90% bentonite, C5/L57-60).
In regard to claim 15¸Azrad teaches the slurry comprises water from a site where the phosphate oxyanion contamination is to be treated (C5/L42-49; C2/L42-66).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Azrad (U.S. Patent No. 3909454) in view of Douglas (U.S. Patent No. 6350383) further in view of U.S. Patent No. 5656568 by Shiuh et al. (Shiuh), as evidenced by Kutlic et al. (Bentonite Processing, 2012) and further in view of U.S. Patent Publication U.S. 2009/0111689 by Burba (Burba).
In regard to claim 10, modified Azrad teaches the limitations as noted above. Modified Azrad does not explicitly teach that the sodium activated bentonite has a particle size of greater than 80% passing a 75 pm sieve and less than 3% retained in a 200 pm sieve.
Burba teaches a slurry comprising a composition comprising a rare earth metal and bentonite (abstract; [0048]). Burba teaches the slurry is used to remove contaminants in the fluid (abstract). Further, Burba teaches the composition comprises particulates have a mean size of around 0.1 mm ([0052], Burba teaches reducing the size of the composition by cutting, crushing, milling, and sieving ([0016]; [0052]). Burba teaches the composition is formed into a desired shape for intended applications ([0052]).
It would be obvious to one of ordinary skill in the art at the time of the invention to tune the size of the particle size, as taught by Burba, in the slurry of modified Azrad in order to form a desired shape for intended applications. As the slurry efficiency and intended use are variables that can be modified, among others, by adjusting said particle size, the precise particle size would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed particle size cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the particle size in the slurry of modified Azrad to obtain the desired balance between desired shape and intended use (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Alter, 105 USPQ 223).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Azrad (U.S. Patent No. 3909454) in view of Douglas (U.S. Patent No. 6350383) further in view of U.S. Patent No. 5656568 by Shiuh et al. (Shiuh), as evidenced by Kutlic et al. (Bentonite Processing, 2012), as noted above, and further in view of U.S. Patent No. 5827362 by McLeod (McLeod).
In regard to claim 11, modified Azrad teaches the limitations as noted above. Azraad teaches the bentonite is a montmorillonite (C1/L1-15). Azrad does not teaches 2:1 type phyllosilicates.
McLeod teaches montmorillonite has cation exchange and swelling properties which make tehm unique (C1/L29-39; C5/L16-25). McLeod teaches layers of lattice structures in which two dimensional oxyanions are separated by layers of hydrated cations; the structural basis classifies them as 2:1 phyllosilicates (C1/L29-39; C5/L16-25). It would have been obvious to one of ordinary skill in the art that the material of modified Azrad will display a 2:1 type phyllosilicate structure with exchangeable positions as this is a known and common configuration of montmorillonite when occupied with cations.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Azrad (U.S. Patent No. 3909454) in view of Douglas (U.S. Patent No. 6350383) further in view of U.S. Patent No. 5656568 by Shiuh et al. (Shiuh), as evidenced by Kutlic et al. (Bentonite Processing, 2012) further in view of U.S. Patent Publication U.S. 2009/0111689 by Burba (Burba).
In regard to claim 12, modified Azrad teaches the limitations as noted above. Modified Azrad does not explicitly teach that the sodium activated bentonite is comminuted to have a particle size of greater than 80% passing a 75 pm sieve and less than 3% retained in a 200 pm sieve.
Burba teaches a slurry comprising a composition comprising a rare earth metal and bentonite (abstract; [0048]). Burba teaches the slurry is used to remove contaminants in the fluid (abstract). Further, Burba teaches the composition comprises particulates have a mean size of around 0.1 mm ([0052], Burba teaches reducing the size of the composition by cutting, crushing, milling, and sieving ([0016]; [0052]). Burba teaches the composition is formed into a desired shape for intended applications ([0052]).
It would be obvious to one of ordinary skill in the art at the time of the invention to tune the size of the particle size, as taught by Burba, in the slurry of modified Azrad in order to form a desired shape for intended applications. As the slurry efficiency and intended use are variables that can be modified, among others, by adjusting said particle size, the precise particle size would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed particle size cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the particle size in the slurry of modified Azrad to obtain the desired balance between desired shape and intended use (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Alter, 105 USPQ 223).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Azrad (U.S. Patent No. 3909454) in view of Douglas (U.S. Patent No. 6350383) further in view of U.S. Patent No. 5656568 by Shiuh et al. (Shiuh), as evidenced by Kutlic et al. (Bentonite Processing, 2012), as noted above, further in view of Preliminary assessment of the suitability of clays for use in the manufacture of Phoslock by Douglas et al. (referred to as Pinchand, secondary author, for clarity).
In regard to claim 14, modified Azrad teaches all the limitations as noted above. Modified Azrad does not teach the rare earth phosphate complex forms a rhabdophanic structure with phosphates.
Pinchand teaches lanthanum phosphorus uptake in clays forms rhabdophane structures (Figure 8; section 3.5; section 4). Pinchand teaches the rhabdophane stcture is most likely due to binding of lanthanum with inert matrix of clay (section 4). It would be obvious to one of ordinary skill in the art that the rare earth phosphate complex forms a rhabdophanic structure as Pinchand teaches this is the known configuration of clays complexed with lanthanum and phosphate.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Azrad (U.S. Patent No. 3909454) in view of Douglas (U.S. Patent No. 6350383), as noted above, in view of U.S. Patent No. 6150300 by Khare et al. (Khare).
In regard to claim 16, modified Azrad teaches the limitations as noted above. Modified Azrad does not teach a solid content of 25 wt%.
Khare teaches a slurry for water treatment (abstract). Khare teaches typical solid contents are from 1 to 30 weight percentage ([0021]). It would be obvious to one of ordinary skill in the art at the time the invention was effectively filed to tune the solid content in the material of Azrad as Khare teaches this is a known typical range of solid content in the art.
Response to Arguments
Applicant's arguments filed 9/29/2025 have been fully considered but they are not persuasive.
In regard to the Applicant’s argument regarding support for the term “raw”, the Examiner does not find this persuasive.
The Applicant points to paragraph [0016] as providing support for claim amendments; paragraph [0016] provides support for “raw bentonite” but does not provide support for “raw calcium bentonite”. No support is found for this term. All dependent claims are rejected as well.
In regard to the Applicant’s argument that a person having ordinary skill in the art would not have been motivated to combine Azrad with Douglas; Azrad is directed towards a completely different problem than Douglas; Azrad relates to the improvement of the rheological properties of bentonite using heavy metals; there is no reasonable expectation of success that substituting heavy metals with lanthanides would have achieved a slurry suitable for treatment of phosphate oxyanion contamination in water; simply substituting catalytic amounts of heavy metals in Azrad with rare earth ions would not lead to a stable product suitable for water treatment; the claimed invention provides a stable product where the rare earth ions remain securely bound via electrostatic bonding which also being able to react with and bind to oxyanions to form rhabdophane; the Examiner does not find this persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art at the time of the invention to further modify the sodium activated bentonite, as taught by Azrad, by substituting the salt of the heavy metal of Azrad with a rare earth salt, as taught by Douglas, in order to clarify water, specifically removing phosphorous. One of ordinary skill in the art would recognize that oxygen, phosphorous, and other materials are commonly removed through water clarification and would be motivated to incorporate a rare earth salt, as taught by Douglas, into the sodium activated bentonite slurry of Azrad in order to effectively remove phosphorous from water system. One of ordinary skill in the art at the time of the invention would recognize that heavy metal salts of Azrad and rare earth salts of Douglas have the same purpose as active sites in water clarification with bentonite materials. It would be obvious to one of ordinary skill in the art to substitute known alternative materials with the same properties for one another.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., stable product where the rare earth ions remain securely bound via electrostatic bonding which also being able to react with and bind to oxyanions to form rhabdophane) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In regard to the Applicant’s arguments that the slurry possesses unexpected properties; Lab data shows comparative examples; has a much higher lanthanum uptake;
Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
In regard to the Applicant’s argument regarding the order of steps in claim 6; a specific order is non-obvious; the Examiner does not find this persuasive.
The order of performing process steps is prima facie obvious in the absence of new or unexpected results; the selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
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 KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
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/KARA M PEO/Primary Examiner, Art Unit 1777