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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on 01/08/2026.
Status of Rejections
The rejection(s) of claim(s) 8-9 and 29 is/are obviated by applicant’s cancellation.
All other previous rejections are withdrawn in view of applicant’s amendments.
New grounds of rejection are necessitated by applicant’s amendments.
Claims 1, 6-7, 10-12, 21-26, 28 and 30-34 are pending and under consideration for this Office Action.
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, 7, 10-12, 24-26 and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (U.S. 2011/0042236) in view of Butler et al. (U.S. 2009/0152123).
Regarding claim 1, Kim teaches a reactive electrochemical membrane system for an aqueous liquid (see e.g. Paragraphs 0009 and 0011, and Paragraph 0055, lines 1-3, flow through filter system for purifying drinking water with applied voltage, i.e. electrochemically), the system comprising:
a tank (see e.g. Fig. 1, case containing filter unit 100; Paragraph 0055, lines 6-8);
a membrane anode in the tank (see e.g. Fig. 1, first activated carbon filter 10a of filter unit 100 to which positive voltage is applied, i.e. making it anodic; Paragraph 0053, lines 1-4 and 14-18), the membrane anode comprising one layer of activated carbon fiber cloth, wherein the layer of activated carbon fiber cloth comprises woven activated carbon fibers (see e.g. Paragraph 0052, lines 3-6, first activated carbon filter 10a comprising activated carbon fiber woven fabric);
a cathode in the tank (see e.g. Fig. 1, second activated carbon filter 10b and second current collecting layer 20b to which negative voltage is applied, i.e. making it cathodic; Paragraph 0053, lines 4-8 and 14-18);
one non-conductive separator (see e.g. Fig. 1, separation layer 5 comprising insulator; Paragraph 0053, lines 10-11); and
a conductive contactor, wherein the conductive contactor is direct contact with the membrane anode (see e.g. Fig. 1, first current collecting layer 20a provided on lower surface of first activated carbon filter 10a; Paragraph 0052, lines 14-17), and
wherein the one non-conductive separator is placed between the membrane anode and the cathode, and at least a portion of the cathode is exposed to the membrane anode (see e.g. Fig. 1, separation layer 5 between filters 10a and 10b being water permeable, e.g. a mesh, and thereby partially exposing the filters to one another through the holes/pores therein; Paragraph 0052, lines 8-11, and Paragraph 0078, line 6).
Kim does not explicitly teach the cathode being in the form of a grid and the conductive contactor being in the form of a grid, but does teach that they may both be formed with holes, as well as the desire for water to flow through the anode and cathode to be purified and discharged (see e.g. Paragraph 0055, lines 3-6 and 11-18).
Butler teaches an electrolytic cell for destroying contaminants in an aqueous solution (see e.g. Abstract) comprising a flow-through carbon anode conductively coupled to an electrical connector preferably having a grid shape to allow flow of anolyte to be treated through the connector and the carbon anode (see e.g. Paragraph 0020, lines 10-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cathode and conductive contactor of Kim to each be in the form of a grid as taught by Butler as a suitable structure that provides the desired holes to enable water to be treated to flow through the conductive contactor, cathode and membrane anode. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 7, modified Kim teaches the membrane anode, the cathode and the conductive contactor being arranged in parallel to each other (see e.g. Kim Fig. 1, first and second activated carbon filters 10a/10b and first and second current collecting layers 20a/20b shown as parallel stacked sheets; Paragraph 0062, lines 1-4).
Regarding claim 10, modified Kim teaches the tank comprising an inlet configured to supply the aqueous liquid into the tank and an outlet configured to remove the aqueous liquid from the tank after the aqueous liquid passes through the membrane anode (see e.g. Kim Paragraph 0055, lines 6-9 and 15-18, case including an inlet and outlet by which water is introduced, purified while flowing through the activated carbon filters and discharged).
Regarding claim 11, Kim as modified by Butler above does not explicitly teach a pump arranged to supply the aqueous liquid into the tank, but does teach water being introduced to be purified while flowing through the system (see e.g. Paragraph 0055, lines 1-6 and 15-18).
Butler further teaches electrolyte being preferably pumped to the electrolytic cell at a predetermined flow rate suitable for the desired operation conditions (see e.g. Paragraphs 0023-0024).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of modified Kim to comprise a pump arranged to supply the aqueous liquid to the tank as taught by Butler to enable the liquid to be provided at a predetermined flow rate suitable for the desired operation conditions.
Regarding claim 12, the limitation of “the system, when in use, has a unit energy consumption less than 2 kWh/L” is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”. Modified Kim teaches all the structural limitations of the claimed system as stated above, and could therefore be operated with the claimed energy consumption.
Regarding claim 24, modified Kim teaches, when in use, the membrane anode oxidizing the aqueous liquid in the tank to generate reactive oxygen species that are effective in disinfecting pathogens in the aqueous liquid (see e.g. Kim Fig. 5B, reactive oxygen species generated at first activated carbon filter 10a to sterilize microorganisms 1/1’ in tap water; Paragraph 0068, lines 7-8 and 11-21).
It should be noted that this limitation is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”.
Regarding claim 25, modified Kim teaches, when in use, the membrane anode retaining pathogens presented in the aqueous liquid when the aqueous liquid passes through the membrane (see e.g. Kim Figs. 5A/5B, microorganisms 1/1’ adsorbed onto first activated carbon filter 10a, Paragraph 0067, lines 2-4, and Paragraph 0068, lines 11-13).
It should be noted that this limitation is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”.
Regarding claim 26, Kim teaches a kit for assembling a reactive electrochemical membrane system for an aqueous liquid (see e.g. Paragraphs 0009 and 0011, and Paragraph 0055, lines 1-3, components for constructing flow through filter system for purifying drinking water with applied voltage, i.e. electrochemically), the kit comprising:
a tank configured to contain an aqueous liquid (see e.g. Fig. 1, case containing filter unit 100 to which water is flowed; Paragraph 0055, lines 3-8);
a membrane anode comprising one layer of activated carbon fiber cloth, wherein the layer of activated carbon fiber cloth comprises woven activated carbon fibers, the membrane anode configured to be placed inside the tank when in use (see e.g. Fig. 1, first activated carbon filter 10a of filter unit 100 to which positive voltage is applied, i.e. making it anodic, comprising activated carbon fiber woven fabric; Paragraph 0053, lines 1-4 and 14-18, and Paragraph 0052, lines 3-6);
a cathode configured to be placed inside the tank when in use (see e.g. Fig. 1, second activated carbon filter 10b and second current collecting layer 20b to which negative voltage is applied, i.e. making it cathodic; Paragraph 0053, lines 4-8 and 14-18);
one non-conductive separator, wherein the one non-conductive separator is configured to be placed between the membrane anode and the cathode inside the tank, and at least a portion of the cathode is exposed to the membrane anode (see e.g. Fig. 1, separation layer 5 between filters 10a and 10b comprising a water permeable, e.g. a mesh, insulator and thereby partially exposing the filters to one another through the holes/pores therein; Paragraph 0052, lines 8-11, and Paragraph 0078, line 6);and
a conductive contactor, wherein the conductive contactor is configured to be placed inside the tank and in direct contact with the membrane anode (see e.g. Fig. 1, first current collecting layer 20a provided on lower surface of first activated carbon filter 10a; Paragraph 0052, lines 14-17).
Kim does not explicitly teach the cathode being in the form of a grid and the conductive contactor being in the form of a grid, but does teach that they may both be formed with holes, as well as the desire for water to flow through the anode and cathode to be purified and discharged (see e.g. Paragraph 0055, lines 3-6 and 11-18).
Butler teaches an electrolytic cell for destroying contaminants in an aqueous solution (see e.g. Abstract) comprising a flow-through carbon anode conductively coupled to an electrical connector preferably having a grid shape to allow flow of anolyte to be treated through the connector and the carbon anode (see e.g. Paragraph 0020, lines 10-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cathode and conductive contactor of Kim to each be in the form of a grid as taught by Butler as a suitable structure that provides the desired holes to enable water to be treated to flow through the conductive contactor, cathode and membrane anode. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Regarding claim 30, modified Kim teaches, when in use, the membrane anode oxidizing the aqueous liquid in the tank to generate reactive oxygen species that are effective in disinfecting pathogens in the aqueous liquid (see e.g. Kim Fig. 5B, reactive oxygen species generated at first activated carbon filter 10a to sterilize microorganisms 1/1’ in tap water; Paragraph 0068, lines 7-8 and 11-21).
It should be noted that this limitation is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”.
Regarding claim 31, modified Kim teaches, when in use, the membrane anode retaining pathogens presented in the aqueous liquid when the aqueous liquid passes through the membrane (see e.g. Kim Figs. 5A/5B, microorganisms 1/1’ adsorbed onto first activated carbon filter 10a, Paragraph 0067, lines 2-4, and Paragraph 0068, lines 11-13).
It should be noted that this limitation is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”.
Claims 6 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Butler, as applied to claims 1 and 26 above, and further in view of Liang et al. (“Electrochemical inactivation of bacteria with a titanium sub-oxide reactive membrane”, Water Research, 2018).
Regarding claims 6 and 34, modified Kim teaches all the elements of the system of claim 1 and kit of claim 26 as stated above. Modified Kim does not explicitly teach the conductive contactor and/or the cathode comprising mixed metal oxide, but does teach the conductive contactor generally being formed of a material with low electrical resistance (see e.g. Kim Paragraph 0052, lines 20-24).
Liang teaches a reactive electrochemical system for water disinfection by inactivation of E. coli (see e.g. Abstract) comprising an anode and a cathode which both comprise a membrane provided with an MMO, i.e. mixed metal oxide, grid plate as an electrical connector, i.e. having low electrical resistance (see e.g. Fig. 1A and Page 173, Col. 2, bottom paragraph, lines 4-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of modified Kim to comprise mixed metal oxide as the conductive contactor as well as a part of the cathode as taught by Liang as a suitable low electrical resistance material for the respective components in an electrochemical system for inactivating a contaminant such as E. coli in water. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Furthermore, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claims 21 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Butler, as applied to claims 1 and 26 above, and further in view of Sekiguchi et al. (JP H10237683 A, citations based on translation).
Regarding claims 21 and 28, modified Kim teaches all the elements of the system of claim 1 and kit of claim 26 as stated above. Modified Kim does not explicitly teach the activated carbon fiber cloth comprising a plurality of pores having a diameter between 1 nm and 1 mm, but does teach the activated carbon fiber cloth generally being porous (see e.g. Kim Paragraph 0055, lines 3-5, water flows through the activated carbon filters, indicating their porosity) and being used for sterilization of water containing microorganisms (see e.g. Kim Paragraph 0068).
Sekiguchi teaches an electrolytic cell for inhibition and sterilization of water containing microorganisms (see e.g. Paragraphs 0002-0003) comprising a porous carbon electrode such as a woven fabric made of activated carbon (see e.g. Paragraph 0008, lines 1-3), wherein the pore diameter of the porous carbon electrode is preferably 30 to 90 µm to prevent the pores from too easily being clogged by microorganisms while providing increased contact between the microorganisms in the water and the carbon material to increase sterilization efficiency (see e.g. Paragraph 0020, lines 1-8)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the pores of the activated carbon fiber cloth of modified Kim to have a diameter of 30 to 90 µm as taught by Sekiguchi to prevent the pores from too easily being clogged by microorganisms while providing increased contact between the microorganisms in the water and the carbon material to increase sterilization efficiency.
Claims 22 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Butler, as applied to claims 1 and 26 above, and further in view of Mayer et al. (“Adsorption of Shewanella oneidensis MR-1 to the electrode material activated carbon fabric”, J Chem Technol Biotechnol, 2018); claims 32-33 evidenced by Hayes et al. (“Activated Carbon Fibers and Textiles”, Kynol Europa GmbH, 1994).
Regarding claim 22, modified Kim teaches all the elements of the system of claim 1 as stated above. Modified Kim does not explicitly teach the activated carbon fiber cloth having a surface area between 10 m2/g and 5000 m2/g, but does teach it being used for adsorption of microorganisms (see e.g. Kim Paragraph 0067, lines 1-4).
Mayer teaches activated carbon fabric electrode materials used for adsorption of microorganism cells (see e.g. Abstract) comprising specific examples of including woven activated carbon fabrics with specific surface areas of 1500 and 2000 m2/g (see e.g. Table 1, ACC-5092-15/20 and ACC-507-15/20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the activated carbon fiber cloth of modified Kim to particularly be one of the activated carbon fiber cloths with a specific surface area of 1500 or 2000 m2/g taught by Mayer as suitable particular woven activated carbon fiber cloth electrode materials for adsorption of microorganisms. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Further, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claims 32 and 33, modified Kim teaches all the elements of the system of claim 1 and kit of claim 26 as stated above. Modified Kim does not explicitly teach the layer of activated carbon fiber cloth having a surface area between 1000 m2/g and 2000 m2/g, inclusive, based on a geometric area of about 6.67x10-3 m2/g, but does teach it being used for adsorption of microorganisms (see e.g. Kim Paragraph 0067, lines 1-4).
Mayer teaches activated carbon fabric electrode materials used for adsorption of microorganism cells (see e.g. Abstract) comprising specific examples of including woven activated carbon fabrics with specific surface areas of 1500 and 2000 m2/g (see e.g. Table 1, ACC-5092-15 and ACC-5092-20), based on geometric areas of 6.06x10-3 m2/g and 6.67x10-3 m2/g (see e.g. Table 1, ACC-5092-15 and ACC-5092-20; which are evidenced by Hayes to have weights of 165 and 150 g/m2, which invert to geometric areas of 6.06x10-3 m2/g and 6.67x10-3 m2/g, see e.g. Hayes Table III), which are equivalent to “about 6.67x10-3 m2/g”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the activated carbon fiber cloth of modified Kim to particularly be one of the activated carbon fiber cloths with a specific surface area of 1500 or 2000 m2/g and geometric area of 6.06x10-3 m2/g and 6.67x10-3 m2/g taught by Mayer as suitable particular woven activated carbon fiber cloth electrode materials for adsorption of microorganisms. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.)” Further, MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Butler, as applied to claim 7 above, and further in view of Cui et al. (U.S. 2011/0259747).
Regarding claim 23, modified Kim teaches all the elements of the system of claim 1 as stated above. Modified Kim does not explicitly teach the distance between the membrane anode and the cathode being between 1 cm and 50 cm, but does teach an insulating separating layer being provided between the membrane anode and the cathode (see e.g. Kim Fig. 1, separation layer 5 comprising insulator; Paragraph 0053, lines 10-11).
Cui teaches a water sterilization device (see e.g. Abstract) comprising two porous electrodes with a separator disposed between them to maintain a desired spacing between the electrodes such as up to 10 cm (see e.g. Fig. 4, porous electrodes 412 and 208 separated by distance d’ of up to cm with separator 414; Paragraph 0061, lines 1-11), overlapping the claimed range of the present invention.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of modified Kim to have a distance of up to 10 cm maintained between the anode and cathode as taught by Cui as a suitable desired spacing to be formed via a separator between electrodes in a water sterilization device. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. Further, MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Response to Arguments
Applicant’s arguments, see pages 9-11, filed 01/08/2026, with respect to the rejection(s) of amended claim(s) 1 under 35 USC 102 over Kim, particularly regarding both the conductive contactor and the cathode being in the form of a grid, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kim and Butler.
Applicant's arguments filed 01/08/2026 have been fully considered but they are not all persuasive.
On page 11, Applicant argues that the separation layer of Kim physically blocks the anode from the cathode and therefore does not allow at least a portion of the cathode to be exposed to the anode, as required by the amended claim. This is not considered persuasive. Kim teaches the separation layer being water permeable, e.g. a mesh, and therefore having openings that would allow the cathode to be exposed at least in part to the anode, instead of being completely blocked (see e.g. Kim Paragraph 0052, lines 8-11, and Paragraph 0078, line 6).
On page 12, Applicant argues that, because Kim indicated that the cited embodiment may have excellent regeneration efficiency, one would not modify the system of Kim to change the form of the cathode, conductive contactor and separator and have a reasonable expectation of success, as this would require a complete redesign of the system of Kim for no reason. This is not considered persuasive. As stated above, the water permeable, e.g. mesh, separation layer of Kim meets the claimed limitation of allowing at least a portion of the cathode to be exposed to the anode. As for the form of the cathode and conductive contactor, Kim teaches that the current collecting layers and cathodic filter layer may be formed as a structure with holes with water flowing through them (see e.g. Kim Paragraph 0055, lines 11-18). This is not inherently limited to a solid plate structure with holes. Butler then teaches an electrolytic cell for destroying contaminants in an aqueous solution (see e.g. Butler Abstract) comprising a flow-through carbon anode conductively coupled to an electrical connector preferably having a grid shape to allow flow of anolyte to be treated through the connector and the carbon anode (see e.g. Butler Paragraph 0020, lines 10-16), therefore providing an exemplary specific structure that provides the desired holes for fluid flow for the system of Kim. This modification does not constitute a redesign of the system of Kim, but is instead a particular suitable structure that fits within the basic design of the system of Kim.
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.
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/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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