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 Arguments
The Amendment filed 08MAY2026 has been entered. No new matter has been entered. Applicant’s amendments have overcome each and every 112(b) rejections previously set forth in the Non-Final Office Action mailed 11FEB2026.
Applicant's arguments filed 08MAY2026 have been fully considered.
The claimed invention is obvious, because substituting art-recognized equivalents known for the same purpose is obvious (see also MPEP 2144.06.II). GURIJALA teaches several examples of biocides including e.g. glutaraldehyde; Example V, TABLE I). MARTIN teaches several examples of biocides including e.g. glutaraldehyde and sodium hydrogen sulfite (sodium bisulfite; par. [0067]). Clearly it is obvious to one having ordinary skill in the art to substitute one known biocide (e.g. glutaraldehyde) for another known biocide (e.g. sodium bisulfite), because one having ordinary skill in the art would expect similar results.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness including (B) Simple substitution of one known element for another to obtain predictable results (MPEP 2141.III). Such substitutions are clearly obvious to one having ordinary skill in the art.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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).
Such substitutions are not hindsight, but common sense that known equivalents may be substituted for each other. It is noted that the "expansive and flexible" post-KSR approach to obviousness that must not "deny factfinders recourse to common sense." Id. at 1238, 95 USPQ2d at 1530-31. (quoting KSR, 550 U.S. at 415, 421, 82 USPQ2d at 1395, 1397). Examiners are not precluded from employing common sense. In DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006), the use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations. Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329, 92 USPQ2d 1849, 1854 (Fed. Cir. 2009).
The Supreme Court has made clear that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). That is because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”
The Applicant cites the board decision in 13/047,175, which is directed towards a catheter grip. A catheter grip is not relevant to a method of controlling a volatile fatty acid in an aqueous industrial system. Nor does the board decision address simple substitution of one known element for another known element to obtain similar and predictable results. Other cited board decisions of 10/250,890 and 09/555,391 are also not relevant.
The Applicant argues the sodium hydrogen sulfite (biocide) of Martin is fundamentally different from the biocides of GURIJALA. This is not persuasive, because GURIJALA teaches biocides generally or a non-biocidal electron acceptor (abstract). See also method under “summary of the invention” of treating the environment with a biocide; P3/L11-13). GURIJALA further lists a few examples of commercially available biocides (Example V; TABLE I) and is not particularly limiting of which biocides to use.
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) 1-4,9-12,14,16,22-23,25-26 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 teaches examples of biocides (e.g. glutaraldehyde; Example V, TABLE I). 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 glutaraldehyde and sodium hydrogen sulfite (or sodium bisulfite, par. [0067]).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to simply substitute one known biocide (e.g. glutaraldehyde) in the process of GURIJALA for another known biocide e.g. sodium bisulfite as taught by MARTIN to obtain similar and 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 teaches examples of biocides (e.g. glutaraldehyde; Example V, TABLE I). 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 glutaraldehyde and sodium hydrogen sulfite (or sodium bisulfite, par. [0067]).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to simply substitute one known biocide (e.g. glutaraldehyde) in the process of GURIJALA for another known biocide e.g. sodium bisulfite as taught by MARTIN to obtain similar and 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).
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 teaches examples of biocides (e.g. glutaraldehyde; Example V, TABLE I). 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 glutaraldehyde and sodium hydrogen sulfite (or sodium bisulfite, par. [0067]).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to simply substitute one known biocide (e.g. glutaraldehyde) in the process of GURIJALA for another known biocide e.g. sodium bisulfite as taught by MARTIN to obtain similar and predictable results. The references are combinable, because they are in the same technological environment of papermaking processes. See MPEP 2141 III (B).
Regarding claim 23, GURIJALA teaches a paper mill comprises the aqueous industrial system (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, before the effective filing date of the invention, 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 (A) & (G).
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, before the effective filing date of the invention, 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) 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 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, before the effective filing date of the invention, 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 CUISIA 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 (A) & (G).
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.
GURIJALA’s modified method 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, before the effective filing date of the invention, 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
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 LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, VICKIE KIM can be reached at (571)272-0579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1773
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