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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03DEC2026 has been entered.
Response to Arguments
The Amendment filed 03DEC2025 has been entered. No new matter has been entered. Applicant's arguments filed 03DEC2025 have been fully considered.
Regarding criticisms of VAN HAUTE, see new rejections below as a secondary reference. Sodium bisulfite is a known biocide.
Regarding the concentration of sodium bisulfite, this was addressed in the previous office action. Note that the term “effective amount” is unspecified as only required an amount that is effective for its purpose, which obviously may be optimized. Furthermore, the Applicant has already filed a request for continued examination, which withdraws the finality of the previous Office action.
The Applicant alleges unexpected results and may file an Affidavit or Declaration Under 37 CFR 1.132 (see also MPEP 716.02). Sodium bisulfite is a known biocide and thus it would be expected to provide a reduction of VFA and/or bacteria. Furthermore, TABLES 1 and 2 do not appear to show greater than expected results. For example, the performance of sodium bisulfite compared to glutaraldehyde after 48h is about the same for acetic, butyric and propionic acids (TABLE 1).
Claim Rejections - 35 USC § 112
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.
Claims 22-23 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 22 line(s) 6 requires binding a metal ion (e.g. a chelant), whereas line(s) 4-5 provides for a chelant as optional. Therefor the claim scope cannot be ascertained.
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.
Claim(s) 1-4,9-12,14,16,25-26 are rejected under 35 U.S.C. 103 as being unpatentable over GURIJALA (EP 0726357) in view of MARTIN (US 20050155731).
Regarding claim 1, GURIJALA teaches inhibiting anaerobic production of volatile fatty acids and hydrogen by bacteria (title) including a method of controlling a volatile fatty acid (e.g. via inhibition; abstract) in an aqueous industrial system (e.g. a paper mill process water; abstract), comprising:
adding an effective amount of a control agent (e.g. biocide; abstract) to the aqueous industrial system, thereby (as a result) reducing, eliminating, or substantially eliminating a volatile fatty acid (abstract).
GURIJALA does not teach the control agent consists of sodium bisulfite. However, MARTIN teaches a process for making abrasion resistant paper and paper and paper products made by the process (title) and that control additives such as biocides are added in the papermaking process (par. [0058]) to inhibit the growth of microorganisms including bacteria. Such common biocides include sodium hydrogen sulfite (or sodium bisulfite, par. [0067]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to simply substitute one known biocide in the process of GURIJALA for another known biocide including sodium bisulfite as taught by MARTIN to obtain predictable results. The references are combinable, because they are in the same technological environment of papermaking processes. See MPEP 2141 III (B).
Regarding claims 16,25, GURIJALA teaches inhibiting anaerobic production of volatile fatty acids and hydrogen by bacteria (title) including a method of controlling a volatile fatty acid (e.g. via inhibition; abstract) in an aqueous industrial system (e.g. a paper mill process water; abstract), comprising:
adding an effective amount of a control agent (e.g. biocide; abstract) to the aqueous industrial system to provide a concentration of e.g. 100 ppm (P4/L10), which anticipates the claimed range of about 50 ppm to about 5,000 ppm, thereby (as a result) reducing, eliminating, or substantially eliminating a volatile fatty acid (abstract).
GURIJALA does not teach the control agent comprises sodium bisulfite. However, MARTIN teaches a process for making abrasion resistant paper and paper and paper products made by the process (title) and that control additives such as biocides are added in the papermaking process (par. [0058]) to inhibit the growth of microorganisms including bacteria. Such common biocides include sodium hydrogen sulfite (or sodium bisulfite, par. [0067]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to simply substitute one known biocide in the process of GURIJALA for another known biocide including sodium bisulfite as taught by MARTIN to obtain predictable results. The references are combinable, because they are in the same technological environment of papermaking processes. See MPEP 2141 III (B).
Regarding claims 2,10-12,26, GURIJALA teaches the volatile fatty acid is e.g. butyric acid (P5/L8) and
the aqueous industrial system comprises a volatile fatty acid-producing bacteria prior to addition of the control agent, which obviously the VFA bactericide kills the VFA bacteria already present.
Regarding claim 3, GURIJALA teaches a paper mill comprises the aqueous industrial system (abstract).
Regarding claims 4,9, GURIJALA teaches the control agent is added to a stream of e.g. a paper mill process water (abstract).
Regarding claim 14, GURIJALA teaches the volatile fatty acid is produced by a bacteria (abstract).
Claim(s) 5-6,18 are rejected under 35 U.S.C. 103 as being unpatentable over GURIJALA (EP 0726357) in view of MARTIN (US 20050155731) and VAN HAUTE (US 20130319627).
Regarding claim 5, GURIJALA is silent as to the control agent being added to a particular location. VAN HAUTE teaches methods of preserving starch in pulp and controlling calcium precipitation and/or scaling (title) including a method of controlling a volatile fatty acid or reducing an amount of a volatile fatty acid-producing bacteria (par. [0007]) in an aqueous industrial system (e.g. papermaking; abstract; par. [0028-0029]), comprising:
adding an effective amount of a control agent to the aqueous industrial system (e.g. chloramine and/or sodium hypochlorite; par. [0028,0030]), which results in reducing, eliminating, or substantially eliminating a volatile fatty acid (via killing bacteria for example); and,
wherein the control agent is added to a location e.g. a head box inlet stream (upstream a head box; par. [0028]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify the process of GURIJALA to specify the location of biocide as taught by VAN HAUTE for the purpose of inhibiting malodors in the paper. The references are combinable, because they are in the same technological environment of water treatment. See MPEP 2141 III (B).
Regarding claim 6, GURIJALA’s modified method teaches as above (the rejection of claim 5 is incorporated by reference) and the paper mill is a recycled packaging paper mill (par. [0002]).
Regarding claim 18, GURIJALA’s modified method teaches as above (the rejection of claim 5 is incorporated by reference). VAN HAUTE teaches further that the control agent can be formed as a stock solution that can be introduced to the process water (par. [0056] on P7).
Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art MPEP 2144.05.II.A.
The concentration of the aqueous solution has not been established to provide any criticality or to provide any unexpected result/benefit over the prior art of record. It has been held that where the general conditions of a 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 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USP 215 (CCPA 1980). MPEP 2144.05.II.A.
It is obvious to one having ordinary skill in the art to try various concentrations (note that a concentration range of 1-99% is nearly the entire practical workable concentration) of a stock solution to obtain predictable solutions with a reasonable expectation of success by reaching a workable solution as desired in order to effectively and easily dose the control agent. See MPEP 2143.I.(E); 2144.05 II, A & B.
Claim(s) 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over GURIJALA (EP 0726357) in view of MARTIN (US 20050155731) and O'BRIEN (US 4115188).
Regarding claim 7, GURIJALA is silent as to a closed water loop. However, O'BRIEN teaches a method for recycling paper mill wastewater (title) and water may be reused in a closed loop system, which is known to provide ecological benefits (C4/L64-C5/L2).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify/specify the method of GURIJALA to include a closed water loop for ecological reasons as is known in the art. The references are combinable, because they are in the same technological environment of water treatment technologies. See MPEP 2141 III (A) and (G).
Regarding claim 8, GURIJALA’s modified method teaches the control agent is added to process water (GURIJALA abstract) in the closed water loop (see also GURIJALA P2/L40-41).
Claim(s) 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over GURIJALA (EP 0726357) in view of MARTIN (US 20050155731) and CUISIA US 5244600).
Regarding claim 22, GURIJALA teaches inhibiting anaerobic production of volatile fatty acids and hydrogen by bacteria (title) including a method of reducing an amount of a volatile fatty acid-producing bacteria (e.g. via a biocide; abstract) in an aqueous industrial system (e.g. a paper mill process water; abstract), comprising:
adding an effective amount of a control agent (e.g. biocide; abstract) to the aqueous industrial system.
GURIJALA does not teach the control agent consists of sodium bisulfite. However, MARTIN teaches a process for making abrasion resistant paper and paper and paper products made by the process (title) and that control additives such as biocides are added in the papermaking process (par. [0058]) to inhibit the growth of microorganisms including bacteria. Such common biocides include sodium hydrogen sulfite (or sodium bisulfite, par. [0067]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to simply substitute one known biocide in the process of GURIJALA for another known biocide including sodium bisulfite as taught by MARTIN to obtain predictable results. The references are combinable, because they are in the same technological environment of papermaking processes. See MPEP 2141 III (B).
GURIJALA does not teach the control agent consists of a combination of sodium bisulfite and a chelant. However, CUISIA teaches a method of scavenging oxygen in aqueous systems (title) including inhibiting or preventing corrosion of metals in an aqueous system by adding an oxygen scavenger (i.e. a reducing agent; abstract; see also the example of sodium sulfite in TABLE 1) used in combination with other conventional water treating agents including biocides and chelants (C2/L65-68).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the process of GURIJALA to include the combination of a biocide and a chelant as taught by GURIJALA for the purpose of inhibition metal corrosion. The references are combinable, because they are in the same technological environment of water treatment. See MPEP 2141 III (B).
Note that chelants have the natural result of binding a metal ion and thus in combination with a biocide thereby result in reducing the amount of the volatile fatty acid-producing bacteria.
Regarding claim 23, GURIJALA teaches a paper mill comprises the aqueous industrial system (abstract).
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over GURIJALA (EP 0726357) in view of MARTIN (US 20050155731), CUISIA US 5244600) and SELTZER (US 6447644).
Regarding claim 15, GURIJALA’s modified method teaches as above (the rejection of claim 22 is incorporated by reference) but does not specify the chelant. However, SELTZER teaches inhibition of pulp and paper yellowing using nitroxides, hydroxylamines and other co additives (title) including adding a well-known and commercially available metal-binding chelant (e.g. DTPA; C22/L7-18).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to specify the chelant of GURIJALA’s modified method with the chelant of SELTZER as a well-known and commercially available metal-binding chelant. The references are combinable, because they are in the same technological environment of pulp and paper technologies. See MPEP 2141 III (A) and (G).
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~11:00~15:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Liam Royce/ Primary Examiner, Art Unit 1777
LIAM A. ROYCE
Primary Examiner
Art Unit 1777