DETAILED ACTION
This detailed action is in response to the amendments and arguments filed on 10/03/2025, and any subsequent filings.
Notations “C_”, “L_” and “Pr_” are used to mean “column_”, “line_” and “paragraph_”.
Claims 13-15 are canceled. Claims 1, 3, 6-12 and 16-19 are pending.
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
Claim 1
The Applicant argues that the membranes of Ren achieved volume reduction and lignin concentration with cleaning every 4-6 hours, an estimated lifespan of several weeks and unacceptable permeate quality, so a skilled person would not have considered the use of the membranes of Ren to be a viable alternative to the treatment of black liquor (pg. 4). This argument is unpersuasive because a limitation does not preclude the use of the membranes of Ren. Furthermore, Ren does not refer to the quality of the permeate as “unacceptable”, but notes that that profits gained from reusing the permeate stream in the cooking process (Ren, abstract) and teaches that the experimental results compared favorably to literature results (Ren, abstract and pg. 136). Furthermore, Ren teaches that microbial treatment largely reduces the COD of the effluent, enabling regular effluent treatment (Ren, pg. 13), so arguments towards the cleaning frequency, estimated membrane lifespan and permeate quality of Ren are considered unpersuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references (pg. 4), 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, the membranes of Ren offer a cost benefit in recovering lignin (Ren, pgs. 150-151) by achieving volume reduction (Ren, pg. 136) and lignin concentration (Ren, pg. 108).
The Applicant argues that Ren describes black liquor as a by-product and does not teach that raw black liquor is typically discharged from a pulp and paper mill except in the case of small-scale kraft paper mills in India, so a skilled person would not consider raw black liquor to be the same as an industrial effluent described by reference Evans (pgs. 4-5). This argument is unpersuasive because, Ren refers to black liquor as an effluent (Ren, pg. 21). Furthermore, Evans is concerned with the treatment of an industrial water stream, which may be a stream from a pulp or paper mill (Evans, [0011]) and Ren refers to black liquor wastewater streams (Ren, pg. 17).
In response to applicant's argument that Ren is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Ren is also concerned with a process for treating pulp mill wastewater (Ren, abstract). Furthermore, Evans is concerned with the treatment of an industrial water stream, which may be a stream from a pulp or paper mill (Evans, [0011]) and Ren refers to black liquor wastewater streams (Ren, pg. 17).
The Applicant argues that a skilled person would not find it obvious to choose a 3 kDa membrane if they have one beneficial quality but also some disadvantages (pg. 5). This argument is unpersuasive because obviousness requires a reasonable expectation of success (see MPEP 2143.02 Reasonable Expectation of Success Is Required).
The Applicant argues that the HYDRACoRe membrane was not the preferred membrane of Evans, so a skilled person would choose a MWCO of 1000 Da or less (pg. 5). This argument is unpersuasive because nonpreferred and alternative embodiments constitute prior art (see MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments).
The Applicant argues that reference Area selects a 3 kDa membrane in an effluent unlike that of Evans and would not make it obvious for the skilled person to depart from the molecular weight cut offs of Evans (pg. 5). This argument is unpersuasive because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prefer low MWCO membranes to obtain a purer permeate stream while to obtain purer lignin, high MWCO membranes are used (Ren, pg. 23). Furthermore, this argument is unpersuasive because obviousness requires a reasonable expectation of success (see MPEP 2143.02 Reasonable Expectation of Success Is Required). Furthermore, Area is also concerned with a process for treating pulp mill wastewater (Area, abstract).
In response to applicant's argument that Area is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Area is also concerned with a process for treating pulp mill wastewater (Area, abstract).
Claim 6
The Applicant argues that there is nothing in the alleged combination to indicate a concentrate of the intermediate permeate as claimed would help with the evaporation process or enhance the efficiency of evaporators, as the black liquor in Ren is raw black liquor that has not been subjected to biological treatment (pg. 6). This argument is unpersuasive because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to send the concentrate from the membrane to a black liquor evaporator because concentrated black liquor would greatly help with the evaporation process and greatly enhance the efficiency of the evaporators (Ren, pg. 107, section 6.3.3 Lignin Rejection and Passage, Pr1)).
In response to applicant's argument that there is nothing in the alleged combination to indicate a concentrate of the intermediate permeate as claimed would help with the evaporation process or enhance the efficiency of evaporators, as the black liquor in Ren is raw black liquor that has not been subjected to biological treatment (pg. 6), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim 7
The Applicant argues that Perry does not teach the limitations of Claim 7 (pgs. 6-7). This argument is unpersuasive because Perry teaches operating the membrane at a recovery rate of 95% or more (Perry, [0063-0067], nanofiltration unit and ultrafiltration unit recovers more than 95% of the stream).
Claim 8
The Applicant argues that a skilled person would not see any relationship between whether the pulp mill wastewater is treated with or without dilution in reference Driessen (pg. 7). This argument is unpersuasive because there is a positive correlation between COD removal efficiency and COD concentration due to more intensive contact between the anaerobic biomass and the wastewater (Driessen, pg. 4 of 6 of the document, section Operational results, Prl-2 and Fig. 1). Evans and Ren also are concerned with COD removal (Evans, [0025] and Ren, pgs. 77-78).
Claims 17 and 19
The Applicant argues that a further combination with reference Rosa is inconsistent with the analysis of Claim 1 (pg. 8). ). This argument is unpersuasive because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prefer low MWCO membranes to obtain a purer permeate stream while to obtain purer lignin, high MWCO membranes are used (Ren, pg. 23). Furthermore, this argument is unpersuasive because obviousness requires a reasonable expectation of success (see MPEP 2143.02 Reasonable Expectation of Success Is Required). Furthermore, this argument is unpersuasive because obviousness requires a reasonable expectation of success (see MPEP 2143.02 Reasonable Expectation of Success Is Required) and because nonpreferred and alternative embodiments constitute prior art (see MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments).
In response to applicant's argument that Rosa is nonanalogous art (the Applicant argues that rejection of color from Rosa is not relevant to claim 1 (pg. 8)), it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Rosa is also concerned with a process for treating pulp mill wastewater (Rosa, abstract). Furthermore, Evans teaches that pulp and paper mill effluent is typically highly coloured, the colour being primarily attributable to dissolved organic carbon in the form of lignin degradation products formed during various pulping and bleaching operations (Evans, [0003]).
Response to Amendment
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.
Claims 1, 3, 6, 9-12, 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20120085701A1 (‘Evans’) in view of Publication Evaluation of membrane filtration for treatment of black liquor in small-scale pulp and paper mills in India (‘Ren’, the document has been provided with a previous office action) and in further view of Publication UPGRADING SPENT LIQUORS FROM NSSC PROCESS : III . SEPARATION OF SPENT LIQUORS COMPONENTS BY ULTRAFILTRATION (‘Area’, the document has been provided with this office action).
The Applicant’s claims are directed towards a method.
Regarding Claims 1, 3, 6, 9-12, 16 and 18, Evans teaches a process (abstract) for treating pulp mill wastewater ([0011] and [0024]) comprising,
treating the pulp mill wastewater with a membrane bioreactor (MBR) (Fig. 1, [0024], membrane bioreactor systems AB1/MOS1 and AB2/MOS2), or a biological treatment process followed by a tertiary filtration filter, to produce an intermediate permeate ([0026]); and,
treating the intermediate permeate with a membrane (Fig. 1, [0028], nanofiltration process unit 20) having a molecular weight cut-off ([0030]).
However, Evans does not teach a molecular weight cut-off of 1,500 - 4,500 Da on polyethylene glycol.
Ren also relates to a process for treating pulp mill wastewater (abstract), including a membrane having a molecular weight cut-off of 1,500 - 4,500 Da on polyethylene glycol (Ren, pg. 73, 3kDa).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the membrane of Evans to have the molecular weight cut-off of Ren, because a membrane with a pore size of 3000 Daltons gave the best results for lignosulfonates separation, having the highest selectivity (Area, pg. 5 of 11, last Pr. Note that Area used membranes with molecular weight cut-offs of 500, 2000, 3000 and 10,000 Daltons (abstract). Ren also involves using membrane treatment for lignin separation to create value-added products (Ren, pg. 14, Pr1)).
Additional Disclosures Included:
Claim 3: the membrane has a molecular weight cut-off of 1,500 - 3,500 Da on polyethylene glycol (Ren, pg. 74, 3 kDa).
Claim 6: concentrate from the membrane is sent to a black liquor evaporator of the pulp mill (Ren demonstrates concentrating lignin solution for further processing via membrane treatment (Ren, pg. 14, Fig. 1-3 and pg. 151, Fig. 1-2 and last Pr). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to send the concentrate from the membrane to a black liquor evaporator because concentrated black liquor would greatly help with the evaporation process and greatly enhance the efficiency of the evaporators (Ren, pg. 107, section 6.3.3 Lignin Rejection and Passage, Pr1)).
Claim 9: intermediate permeate is sent directly to the membrane (Evans, Fig. 1).
Claim 10: permeate from the membrane is desalinated (Evans, [0028] and [0031-0032]).
Claim 11: the MBR or tertiary filtration filter comprises an ultrafiltration membrane (Evans, [0026]).
Claim 12: the membrane is a thin film composite membrane (Evans, [0029]).
Claim 16: permeate from the membrane is desalinated by treatment by reverse osmosis (Evans, [0028] and [0031-0032]).
Claim 18: the membrane is a flat sheet thin film composite membrane in a spiral wound module (Evans, [0028-0029]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20120085701A1 (‘Evans’) in view of Publication Evaluation of membrane filtration for treatment of black liquor in small-scale pulp and paper mills in India (‘Ren’, the document has been provided with a previous office action) and Publication UPGRADING SPENT LIQUORS FROM NSSC PROCESS : III . SEPARATION OF SPENT LIQUORS COMPONENTS BY ULTRAFILTRATION (‘Area’, the document has been provided with this office action) as applied to claim 1 above, and further in view of U.S. Publication US20090101583A1 (‘Perry’).
The Applicant’s claim is directed towards a method.
Regarding Claim 7, the combination of Evans, Ren and Area teaches the process of Claim 1.
However, the combination of Evans, Ren and Area does not teach operating the membrane at a recovery rate of 95% or more.
Perry also relates to a process for treating pulp mill wastewater ([0078]), comprising operating the membrane at a recovery rate of 95% or more ([0063-0067], nanofiltration unit and ultrafiltration unit recovers more than 95% of the stream).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to operate the membrane of the combination of Evans, Ren and Area at a recovery rate of 95% or more, as demonstrated by Perry, to separate pure water and a concentrate in as small as possible a volume (Perry, [0079]), where the water can be reused, thereby minimizing the volume of hazardous stream and the concentrate can be recovered to generate revenue (Perry, [0079]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20120085701A1 (‘Evans’) in view of Publication Evaluation of membrane filtration for treatment of black liquor in small-scale pulp and paper mills in India (‘Ren’, the document has been provided with a previous office action) and Publication UPGRADING SPENT LIQUORS FROM NSSC PROCESS : III . SEPARATION OF SPENT LIQUORS COMPONENTS BY ULTRAFILTRATION (‘Area’, the document has been provided with this office action) as applied to claim 1 above, and further in view of Publication Anaerobic Treatment of Recycled Paper Mill Effluent With the Internal Circulation Reactor (‘Driessen’, 6th IAWQ Symposium on Forest Industry Wastewaters, Tampere, Finland, 6-10 June 1999, this document was provided with a previous office action).
The Applicant’s claim is directed towards a method.
Regarding Claim 8, the combination of Evans, Ren and Area teaches the process of Claim 1.
However, the pulp mill wastewater is treated substantially without dilution.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the pulp mill wastewater of Evans, Ren and Area to be treated substantially without dilution because there is a positive correlation between COD removal efficiency and COD concentration due to more intensive contact between the anaerobic biomass and the wastewater (Driessen, pg. 4 of 6 of the document, section Operational results, Pr1-2 and Fig. 1).
Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20120085701A1 (‘Evans’) in view of Publication Evaluation of membrane filtration for treatment of black liquor in small-scale pulp and paper mills in India (‘Ren’, the document has been provided with a previous office action) and Publication UPGRADING SPENT LIQUORS FROM NSSC PROCESS : III . SEPARATION OF SPENT LIQUORS COMPONENTS BY ULTRAFILTRATION (‘Area’, the document has been provided with this office action) as applied to claim 1 above, and further in view of Publication The role of ultrafiltration and nanofiltration on the minimisation of the environmental impact of bleached pulp effluents (‘Rosa’, Journal of Membrane Science 102 (1995) 155-161).
The Applicant’s claims are directed towards a method.
Regarding Claims 17 and 19, the combination of Evans, Ren and Area teaches the process of Claim 1, including a molecular weight cut-off of 1,500 - 2,500 Da on polyethylene glycol (Area, abstract, 2000 Da).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the membrane of Evans, Ren and Area with the molecular weight cut-off of Area to reject color, total organic carbon (TOC) and total organochlorinated compounds (TOX) (Rosa, pg. 159, Table 5, row CA-400-22. The cut-off of CA-400-22 is in Rosa, pg. 157, Table 2).
Additional Disclosures Included:
Claim 19: the membrane is a flat sheet thin film composite membrane in a spiral wound module (Evans, [0028-0029]).
Conclusion
THIS ACTION IS MADE FINAL. 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 BOI-LIEN THI NGUYEN whose telephone number is (703)756-4613. The examiner can normally be reached Monday to Friday, 8 am to 6 pm.
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/BOI-LIEN THI NGUYEN/Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779