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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I: Claims 1-22, drawn to an invention which includes a composition, a device and a system which includes the device of the composition, classified in CPCs which include C02F2201/46115.
Group II: Claims 23-25, drawn to an invention which includes a method, classified in CPCs which include C02F1/4691.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of thiol-functionalized graphene oxide coated on activated carbon, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Mojoudi ("Synthesis and evaluation of activated carbon/nanoclay/thiolated graphene oxide nanocomposite for lead(II) removal from aqueous solution", Water Sci Technol 79 (3): 466–479. https://doi.org/10.2166/wst.2019.071). In this case, Mojoudi teaches the special features of the device, such that the structure and method of use of the device are disclosed (introduction pg.466-467).
During a telephone conversation with William Carrol at 414-271-6560 on 7/15/2025 a provisional election was made without traverse to prosecute the invention of Group I, Claims 1-22. Affirmation of this election must be made by applicant in replying to this Office action. Claims 23-25 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/24/2022 has been considered by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mojoudi ("Synthesis and evaluation of activated carbon/nanoclay/thiolated graphene oxide nanocomposite for lead(II) removal from aqueous solution", Water Sci Technol 79 (3): 466–479. https://doi.org/10.2166/wst.2019.071).
Regarding Claim 1, Mojoudi teaches a composite material comprising: Activated carbon (“to increase the adsorption performance of an AC [activated carbon], it can be composed with nanomaterials e.g. graphene oxide” [introduction pg.466]); and
Thiol-functionalized graphene oxide coated on the activated carbon (“the aim of the present study was utilization of the great adsorption potential of AC, nanoclay and graphene oxide…to remove lead from aqueous solution…[using] thiolated graphene oxide and Montmorillonite as nanofillers” [introduction, pg.467]).
Regarding Claim 2, Mojoudi discloses all the limitations of the material of Claim 1. Mojoudi additionally discloses the activated carbon is in the form of particles (Mojoudi discloses the synthesis of activated carbon (AC) from powdered graphite [“Preparation of activated carbon/nanoclay (AC/NC) nanocomposite and Synthesis of thiolated graphene oxide (TGO)”, pg.467]. Mojoudi states that “KOH” was used as an activating agent. It is known to those of ordinary skill that AC may be made from graphite that is treated with strong acids or bases. Photographs of the powdered/particulate material show a composite material which is stated to contain AC [Figure 2a/b, Figure 2a/b caption, pg.470], the micrographs show discrete particular grains of material).
Regarding Claim 3, Mojoudi discloses all the limitations of the material of Claim 2. Mojoudi additionally discloses the particles may be micro-sized particles from 0.5 to 50 µm in diameter (The scale bar in Figure 2 shows that the majority of the particulate matter is of a size less than 20 µm and larger than 0.5 µm [Figure 2b, pg.470]).
Regarding Claim 4, Mojoudi discloses all the limitations of the material of Claim 1. Mojoudi additionally discloses the activated carbon may comprise pores of less than 50 nm (Table 2 discloses the pore size is 4 and 3.12 nm, which is less than 50 nm [Table 2, pg.469]).
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mojoudi in view of Jiang (CN-106582533-A).
Huang 2019 ("Zero-wastewater capacitive deionization: selective removal of heavy metal ions in tap water assisted by phosphate ions", Environ. Sci.: Nano, 2019,6, 3225-3231) and Huang 2019 SI ("Supporting Information: Zero-wastewater capacitive deionization: selective removal of heavy metal ions in tap water assisted by phosphate ions", Environ. Sci.: Nano, 2019,6, 3225-3231) are used as evidence for claim 8.
Regarding Claim 5, Mojoudi discloses all the limitations of the material of Claim 1. Mojoudi additionally discloses the thiol-functionalized graphene oxide is graphene oxide functionalized with a thiol-containing group [introduction, pg.467, Mojoudi]. Mojoudi does not disclose the thiol-containing group may comprise a -C1-10alkylene-SH group.
Jiang discloses a graphene oxide composite material functionalized with 3-mercaptopropyltrimethoxy Silane [para 0014, Jiang] which comprises a -C1-10alkylene-SH moiety. Jiang and Mojoudi are both directed to the subject field of composite materials comprising functionalized graphene oxide [para 0013-0014, Jiang] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use a longer chain alkylene functional group disclosed by Jiang attached to the activated carbon/graphene oxide composite of Mojoudi in order to more effectively filter “heavy metal ions and organic pollutants” from polluted water [Jiang, abstract].
Regarding Claim 6, Mojoudi discloses all the limitations of the material of Claim 5. Mojoudi does not disclose the thiol-containing group is -silyl-C1-10alkylene-SH.
Jiang discloses a graphene oxide composite material functionalized with 3-mercaptopropyltrimethoxy Silane [para 0014, Jiang] which comprises a silyl-C1-10alkylene-SH moiety.
Jiang and Mojoudi are both directed to the subject field of composite materials comprising functionalized graphene oxide [para 0013-0014, Jiang] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use a silyl-containing longer chain alkylene functional group disclosed by Jiang attached to the activated carbon/graphene oxide composite of Mojoudi in order to more effectively filter “heavy metal ions and organic pollutants” from polluted water [Jiang, abstract].
Regarding Claim 7, Mojoudi discloses all the limitations of the material of Claim 6. Mojoudi does not disclose the -silyl-C1-10alkylene-SH group may be -silyl-(CH2)3-SH.
Jiang discloses a graphene oxide composite material functionalized with 3-mercaptopropyltrimethoxy Silane [para 0014, Jiang] which is the trade name of a -silyl-(CH2)3-SH compound.
Jiang and Mojoudi are both directed to the subject field of composite materials comprising functionalized graphene oxide [para 0013-0014, Jiang] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use a -silyl-(CH2)3-SH functional group disclosed by Jiang attached to the activated carbon/graphene oxide composite of Mojoudi in order to more effectively filter “heavy metal ions and organic pollutants” from polluted water [Jiang, abstract].
Regarding Claim 8, Mojoudi discloses all the limitations of the material of Claim 1. Mojoudi does not explicitly disclose the material may have from 0.1-5 wt% sulfur.
Jiang discloses several method which involve the treatment of carboniferous materials with an oxidizing acid solution (“add natural graphite into concentrated sulfuric acid with a mass fraction of 98%...add sodium nitrate and potassium permanganate” [para 0024, Jiang]) followed by treatment with 3-mercaptopropyl trimethoxysilanes (“add acetic acid and 3-mercaptopropyltrimethylsilane and leave at room temperature…to obtain thiol-modified graphene carbon…” [para 0026, Jiang])
The methods of Huang 2019/Huang 2019 SI disclose that thiol functionalization in the 0.1-5 wt% range (“Si and S…with contents of 0.82 and 0.89 wt%, respectively” [col 2, para 2, pg.3226, Huang 2019]) would result from the treatment of carboniferous materials treated with an oxidizing acid solution followed by treatment with 3-mercaptopropyl trimethoxysilanes (“2 g of graphene oxide (GO) was dispersed in 50 mL concentrated nitric acid and heated for 2h while stirring…Then, 6 mg of 3-(Mercaptopropyl)trimethoxysilane (MPS) was added to 30 mL GO dispersion and heated at 60 for 4h” [pg 1, “experimental” para 2, Huang 2019 SI]).
Jiang and Mojoudi are both directed to the subject field of composite materials comprising functionalized graphene oxide [para 0013-0014, Jiang] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use thiol functionalization method of Jiang with the activated carbon/graphene oxide composite of Mojoudi in order to more effectively filter “heavy metal ions and organic pollutants” from polluted water [Jiang, abstract] and predictably obtain a wt% of functionalization within the 1-5 wt% range as applying a known technique to a known device (method, or product) ready for improvement may yield predictable results (see MPEP2141(III)(d)).
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Mojoudi in view of Dong ("Selective removal of lead ions through capacitive deionization: Role of ion-exchange membrane", Vol 361, 1 April 2019, Pages 1535-1542, https://doi.org/10.1016/j.cej.2018.10.208).
Regarding Claim 9, Mojoudi discloses all the limitations of the material of Claim 1. Mojoudi does not disclose the material may further comprise carbon black.
Dong discloses a capacitive deionization system and a material for removing heavy metal ions from aqueous solution [abstract, Dong] and that electrodes may be prepared from “activated carbon…mixed with carbon black” [“2.2 Electrode preparation”, pg.1536, Dong].
Mojoudi and Dong are both directed to the subject field of composite materials used in systems which are intended for removing heavy metal ions from solution [title, Dong] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use the carbon black material of Dong within the graphene oxide composite material of Mojoudi in order to more effectively blend the AC with a binder material (Dong discloses PVDF) for use in stable electrodes [“2.2 Electrode preparation”, pg.1536, Dong].
Regarding Claim 10, Mojoudi discloses all the limitations of the material of Claim 1. Mojoudi discloses that the material may be prepared from “Sugar beets, molasses powder and nanoclay” [“preparation of activated carbon nanoclay…”, pg.467, Mojoudi] and the use of these diverse materials may teach towards the implementation of a binder.
Dong explicitly discloses the use of a “polyvinylidene fluoride (PVDF) binder (72:8:20, by weight)…” for adhering the material to “graphite foil” to obtain “single-side electrodes” [“2.2 Electrode preparation”, pg.1536, Dong].
Mojoudi and Dong are both directed to the subject field of composite materials used in systems which are intended for removing heavy metal ions from solution [title, Dong] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use the binder material of Dong within the graphene oxide composite material of Mojoudi in order to strengthen the composite for better adhesion to an electrode intended for use in a capacitive deionization system rather than a loose adsorptive powder as disclosed by Mojoudi.
Regarding Claim 11, Mojoudi discloses the material of Claim 1. Mojoudi does not teach that the material may be fashioned into an electrode.
Dong teaches application of a carbon-containing material to “graphite foil” to obtain “single-side electrodes” [“2.2 Electrode preparation”, pg.1536, Dong].
Mojoudi and Dong (hereafter referred to as modified Mojoudi) are both directed to the subject field of composite materials used in systems which are intended for removing heavy metal ions from solution [title, Dong] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use the graphene oxide composite material of Mojoudi as a material on the electrodes of Dong in order to create a more efficacious thiol-functionalized material for the removal of heavy metal ions from solution. Dong mentions “practical applications” for the process developed which include citations directed to the “3D nanoporous graphene for desalination and bio-decontamination of brackish water via asymmetric capacitive deionization” [“Introduction” and citation [11], Dong].
Regarding Claim 12, modified Mojoudi disclose all the limitations of the electrode of Claim 11. Modified Mojoudi further discloses that the activated carbon/binder/carbon black material is coated on the current collector [“2.2 Electrode preparation”, pg.1536, Dong].
Regarding Claim 13, modified Mojoudi disclose all the limitations of the electrode of Claim 12. Modified Mojoudi additionally discloses the current collector is a conductive “graphite foil” (carbon) material [“2.2 Electrode preparation”, pg.1536, Dong].
Regarding Claim 14, modified Mojoudi disclose all the limitations of the electrode of Claim 13. Modified Mojoudi discloses the use of “graphite foil” as the conductive carbon material substrate [“2.2 Electrode preparation”, pg.1536, Dong]. Although “graphite foil” is not always a woven cloth material, it would be obvious to one of ordinary skill to use a woven carbonaceous material (such as carbon fiber or buckypaper) as the substrate as such materials are known to those of ordinary skill to provide similar and often superior functionality in similar applications to “graphite foil”.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Dong in view of modified Mojoudi.
Regarding Claim 15, Dong discloses a capacitive deionization cell [“introduction” and Fig 1, Dong] comprising a first electrode and a second electrode [Fig 1, Dong]. Dong does not disclose the first electrode being an electrode of claim 11.
Modified Mojoudi discloses the limitations of claim 11 as they apply to an electrode (see rejection of claim 11 above).
Dong and modified Mojoudi are both directed to the subject field of composite materials used in systems which are intended for removing heavy metal ions from solution [title, Dong] [title, Mojoudi].
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use the material of modified Mojoudi on the electrode of Dong within the capacitive deionization system of Dong in order to create a more efficacious thiol-functionalized material for the removal of heavy metal ions from solution. Dong mentions “practical applications” for the process developed which include citations directed to the “3D nanoporous graphene for desalination and bio-decontamination of brackish water via asymmetric capacitive deionization” [“Introduction” and citation [11], Dong].
Regarding Claim 16, Dong in view of modified Mojoudi disclose all the limitations of the capacitive deionization cell of Claim 15. Dong additionally discloses the cell may further comprise an anion exchange membrane [Figure 1b, Dong].
Regarding Claim 17, Dong in view of modified Mojoudi discloses all the limitations of the capacitive deionization cell of Claim 15. Dong additionally discloses the cell may be lamellar (i.e. arranged in plates) [Figure 1b, Dong].
Regarding Claim 18, Dong in view of modified Mojoudi disclose all the limitations of the capacitive deionization cell of Claim 15. Dong additionally discloses that the cell may be configured as a flow-through cell (“Various CDI architectures such as flow-through and flow-between with ion-exchange membrane variations have been explored to remove ions in water” [Introduction, Dong]). Although Dong does not specifically disclose the structural details of the construction of a flow-through cell, it would be obvious to one of ordinary skill to construct such a cell given the teaching provided by Dong and the citations towards the use of flow-through cells provided by Dong for use in similar applications [citation 7, Dong].
Claims 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Huang 2014 ("Capacitive deionization (CDI) for removal of phosphate from aqueous solution", desalination and water treatment, 52:4-6, 759-765) in view of Dong and modified Mojoudi. Huang 2019 is used as evidence.
Regarding Claim 19, Huang 2014 discloses a water purification system comprising one or more capacitive deionization cells [Figure 1, Huang 2014] which may be comprise electrodes fashioned from the design of claim 15;
An electrical circuit for controlling the operation of the one or more capacitive deionization cells [Figure 1, Huang 2014]; and
A filter, the filter being in fluid communication with the one or more capacitive deionization cells (“The influent water is pumped from a storage tank through a 10-lm filter…It then flows into two carbon electrode cells that are connected in parallel” [“2.2. CDI pilot”, pg.760, Huang 2014]).
Huang 2014 does not disclose that the capacitive deionization cell comprises the limitations of apparatus of claim 15.
Dong in view of modified Mojoudi disclose a capacitive deionization cell of claim 15 (see rejection of claim 15 above).
Mojoudi, Dong, and Huang 2014 are all directed to the subject field of composite materials used in systems which are intended for removing ions from solution [title, Dong] [title, Mojoudi] [title, Huang 2014]. Although Huang 2014 does not explicitly teach that the phosphate ions may be heavy metal ions, it was known to those of ordinary skill prior to the effective filing date of the claimed invention that lead ions in phosphate form were ideally removed from aqueous solutions using CDI technology (“formation of lead phosphate particulates [occurs] in tap water, even when lead concentrations are very low” [pg.3229, Huang 2019]).
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to use the multiple CDI cells, electrical circuit and filter of Huang 2014 to remove phosphate ions from solution which contain lead as a cation as disclosed by Dong in view of Mojoudi. If the target for removal was indeed lead ions or lead phosphate ions, the use of an electrode material taught by Dong in view of Mojoudi would ideally be selected.
Regarding Claim 20, modified Huang 2014 discloses all the limitations of the system of claim 19. Huang 2014 does not explicitly disclose that the filter may be configured to entrap a phosphate salt. However, given the well-known low solubility of lead phosphate and the configuration of a CDI system of claim 19, it would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to employ a filter within such a CDI system’s circulation loop, as it would be necessary to trap the largely insoluble lead phosphate precipitate.
Regarding Claim 21, modified Huang 2014 discloses all the limitations of the system of claim 20. Although Huang 2014 does not explicitly disclose that the phosphate salt is a lead phosphate salt, it would be obvious to one of ordinary skill on or around the effective filing date of the claimed invention that lead phosphate would be a heavy metal compound targeted for removal with CDI technology as lead phosphate is an ideal candidate due to its well-known insolubility (as evidenced by Huang 2019 “the Pb5(PO4)3(OH) precipitate formed as a result of native phosphate ions in the tap water” [pg.3228, Huang 2019]).
Regarding Claim 22, modified Huang 2014 discloses all the limitations of the system of claim 21. Although Huang 2014 does not explicitly disclose that the lead phosphate salt comprises Pb5(PO4)3(OH), it would be obvious to one of ordinary skill that the lead phosphate compound targeted for removal with CDI technology may be Pb5(PO4)3(OH). The low solubility of Pb5(PO4)3(OH) was well known to those of ordinary skill on or around the effective filing date of the claimed invention [pg.3228, Huang 2019].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID M WIRTH whose telephone number is (571)272-3923. The examiner can normally be reached M-F 8:00 AM - 5:00 PM (PT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached on (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.M.W./Examiner, Art Unit 1795
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795