DETAILED ACTION
This detailed action is in response to the amendments and arguments filed on 11/11/2025, and any subsequent filings.
Notations “C_”, “L_” and “Pr_” are used to mean “column_”, “line_” and “paragraph_”.
Claims 2, 17, 35, 37 and 48 are canceled. Claims 1, 7-8, 15, 24-25, 32-33, 38-39, 46, 56-57, 64-66, and 70-71 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/11/2025 has been entered.
Response to Arguments
Claim Objections
Due to the Applicant’s amendments, new claim objections are submitted below.
Claim Rejections - 35 USC § 112
Due to the Applicant’s amendments, new 35 USC § 112 rejections are submitted below.
Claim Rejections - 35 USC § 103
In response to applicant's argument that the present invention is not a thermoresponsive solution (pg. 12-14 and 16-17), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's argument that reference Briggs 2 is nonanalogous art (pg. 12-14), 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, Briggs 2 and the present invention both involve releasing water from a solvent mixture (instant specification, [0001] and Briggs 2, [0001], separating or purifying solutes and/or water from an aqueous solution).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (pg. 13), 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).
The Applicant argues that reference Hu does not teach alkylsulfonic acids (pg. 14-16). This argument is unpersuasive because Hu teaches anions including sulfonates and methane sulfonates (Hu, [0067]), which are the conjugate bases of sulfonic acids and methane sulfonic acids.
In response to applicant's argument that reference Lee is nonanalogous art (pg. 16-17), 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, Briggs 2 and the present invention both involve releasing water from a solvent mixture (instant specification, [0001] and Lee, [0017-0019], clean water flows from the unpurified water).
Response to Amendment
Claim Objections
Claims 1, 15 and 33 are objected to because of the following informalities:
Claim 1 reads “(b)”, however “(b)” was present in Claim 1 of the 02/28/2025 claim set.
Claim 1 lacks the “(c)” and “(d)” present in Claim 1 of the 02/28/2025 claim set.
Claim 15 reads “…of the solvent,” in line 2. However, Claim 15 of the 02/28/2025 claim set read “of the solvent”.
Claim 33 contains two item c).
Appropriate correction is required.
Claim Interpretation
Claim 70 refers to “one or more solvent drying compositions” and “one or more complex compositions”. Claim 70 is being interpreted to involve one or more of any composition capable of solvent drying and one or more of any complex composition, which may or may not be the solvent drying composition of Claim 1 and the complex composition of Claim 33, as required by Claim 65. This interpretation also affects Claim 71.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 33-38-39, 46, 56-57, 64-66 and 70-71 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. Claim 33 reads “with the carbonyl of Formula I” in item c), but paragraphs [0010], [0016], [0023] and [0052] read “with the carbonyl of Formula II”.
Dependent claims not recited above require all of the limitations of independent Claim 33, and therefore are rejected for the same reasons set forth above.
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 1, 7-8, 15, 24-25, 32-33, 38-39, 46, 56-57, 64-66, and 70-71 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 1 recites the limitation "the carboxylic acid containing compound" in item i). There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least one carboxylic acid containing compound”, and the claim also recites “the carboxylic acid containing compound” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites the limitation " the enolisable carbonyl compound of Formula II or a combination of enolisable carbonyl compounds of Formula II" in item i). There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 33 recite the broad recitation “at least one enolisable carbonyl compound of Formula II”, and the claims also recite “the carbonyl of Formula II” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Dependent claims not recited above require all of the limitations of independent Claim 1, and therefore are rejected for the same reasons set forth above.
Dependent claims not recited above require all of the limitations of independent Claim 33, and therefore are rejected for the same reasons set forth above.
Claim 8 reads “…or an alkylsulfonic acid”. It is unclear whether the “an alkylsulfonic acid” of Claim 8 and the “an alkylsulfonic acid” of Claim 1 are the same or distinct, rendering the claim indefinite.
Claim 15 reads “…the amine containing compound”. It is unclear to which of the “at least one amine…” of Claim 1 this refers, rendering the claim indefinite.
Claim 24 reads “the enolisable carbonyl compound of Formula II”. It is unclear to which of the “at least one enolisable carbonyl compound of Formula II” of Claim 1 this refers, rendering the claim indefinite. This also applies to Claim 56.
Claim 25 reads “the one or more enolisable carbonyls of Formula II or combination thereof”. There is insufficient antecedent basis for this limitation in the claim. This also applies to Claim 57.
Claim 25 reads “the one or more enolisable carbonyls of Formula II or combination thereof”. It is unclear whether “the one or more enolisable carbonyls of Formula II or combination thereof” of Claim 25 is the same or distinct from the “at least one enolisable carbonyl compound of Formula II” of Claim 1, rendering the claim indefinite. This also applies to Claim 57.
Claim 33 is directed towards a complex composition comprising items a. and b., then refers to “the complex” which recovers water from a solvent. Then, dependent claims 38-39, 46, 56-57 and 64 refers to “the complex of Claim 33”, some of which use claim language to further limit the solvent. Are dependent claims 38-39, 46, 56-57 and 64 referring a “complex composition” or solely “the complex”? Is the solvent a part of “the complex” in the dependent claims but separate in independent Claim 33?
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “complex” in claims 46 and 56-57 is used by the claim to mean “composition,” while the accepted meaning is “a molecular entity formed by a loose bond involving two or more molecular entities (ionic or non-charged) or corresponding chemical species. The bonds between components are usually weaker than covalent bonds.” The term is indefinite because the specification does not clearly redefine the term.
Claim 38 reads “the alkylsulfonic acid”. It is unclear to which of the “at least an alkylsulfonic acid” of Claim 33 this refers.
Claim 39 reads “an alkylsulfonic acid”. It is unclear to which of the “at least an alkylsulfonic acid” of Claim 33 this refers.
Claim 46 reads “the at least one amine containing compound”. It is unclear if the at least one amine containing compound” of Claim 46 is the same or distinct from the “at least one amine or ammonium salt containing compound or a secondary or tertiary amine containing compound or a combination thereof” of Claim 33. This also applies to Claim 57.
Conclusion
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
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