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/Restrictions
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/14/25.
Applicant's election with traverse of claims 10-14 in the reply filed on 7/14/25 is acknowledged. The traversal is on the ground(s) that the restriction requirement does “not identify a technical feature for each group that defines a contribution over the prior art because the restriction requirement does not identify or cite any prior art” (see Election received 7/14/25 (“Election”) at page 2 lines 4-6). Applicant also notes that the restriction requirement does not explain why each group lacks unity with each other group after identifying the unique special technical feature (see Election at page 2 lines 7-8), and that the International Searching Authority “ISA” did not find there to be a lack of unity of invention (see Election at page 2 lines 9-11).
However, these reasons are not found persuasive for at least the following reasons. First, it is noted that restriction, when proper, is still at the discretion of the examiner. Moreover, it is noted that the USPTO is not bound by the actions of the ISA in any degree. Consequently, the fact that the ISA did, or did not as is the case here, address unity of invention is not dispositive of the issue. Moreover, as to the asserted failure by the examiner to cite art and, therefore, the alleged failure to explain lack of unity with respect to each group, it is noted that it is also possible for lack of unity to be evident “a priori”, i.e. before considering the claims in relation to any prior art (see MPEP §1850(II), paragraph 3). The restriction requirement sets forth that this was the case by explaining that the groups lack unity of invention due to their failure to share the same or corresponding technical feature (see Restriction at page 3, section 3). As such, no prior art needed to be cited to establish lack of unity, and for these reasons the restriction was properly set forth.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. PCT/DE2020/100750 filed 8/25/20, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Specifically, claim 13 – which as written would appear to require the removal of all 22 compounds as listed – is not disclosed within the PCT application. Instead, the PCT application states:
“In a still further embodiment according to the invention, a method is provided, wherein the method is suitable for removing phosphates, triazine herbicides, acidic pesticides, perfluoro-octanoic acid, perfluoro-octanesulfonic acid, benzotriazole, 4-methyl-lH-benzotriazole, 5-methyl-lH-benzotriazole, ethylenediaminetetraacetic acid, diethyldiaminepentaacetic acid, carbamazepine, diclifenac, 17ss-estradiol [sic], estron, gabepentine, iohexol, iomeprol, iopamidol, iopromide, irbesartan, metoprolol, sulfamethoxazole from the wastewater” (see WIPO machine translation of WO2021043369, i.e. the WIPO publication of PCT/DE2020/100750, at section titled “Summary of the Invention” paragraph 12 (hereinafter referred to as “WO2021043369”)).
In looking at the original German application, it is noted that the specification also discloses something similar to WO2021043369 (see ESPACENET machine translation of DE102019123943A1 at ¶13 (hereinafter referred to as “DE102019123943”)) which merely states the suitability of the method for removing the listed compounds.
As such, both WO2021043369 and DE102019123943 disclose something similar to the present application’s specification which states:
“In yet another embodiment according to the invention, a method is provided, wherein the method is suited for removing phosphates, triazine herbicides, acidic pesticides, perfluorooctanoic acid, perfluorooctanesulfonic acid, benzotriazole, 4-methyl-1H-benzotriazole, 5-methyl-1H-benzotriazole, ethylenediaminetetraacetic acid, diethylenediaminepentaacetic acid, carbamazepine, diclifenac, 17β-estradiol, estrone, gabepentine, iohexol, iomeprol, iopamidol, iopromide, irbesartan, metoprolol, sulfamethoxazole from the wastewater” (see Specification at ¶14).
As set forth above, the disclosures of the priority documents and even the specification of the instant application all merely disclose the capability of the method for removing an array of 22 compounds as recited and not the removal of all of them at once as apparently stated in claim 13.
Consequently, claim 13 is given an effective filing date of 4/7/22 since, as set forth above, it is not supported by the earlier filed priority applications.
Claim Rejections - 35 USC § 112(a)
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.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of treatment of wastewater for the removal of a content substance in which the substance is any of the compounds/materials listed in claim 13, does not reasonably provide enablement for the operation of the method of claim 10 in which a resonance frequency is selected and the method resulting in the removing of all 22 listed compounds/materials. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Specifically, it is noted that claims 10 and 13, as written, would appear to require the removal of all 22 compounds/materials listed in claim 13 based on a single selecting of a resonant frequency or a frequency close to the resonant frequency. Furthermore, it is noted that the specification fails to provide guidance on the selecting of the resonant frequencies when there are multiple substances or give any working examples of how this might occur in a system with all 22 compounds/materials. Consequently, the quantity of experimentation needed to allow for the operation of the method of claims 10 and 13 as provided in which the application of an alternating electromagnetic field is at or near a resonance frequency for a content substance which results in the removing of all 22 compounds/materials as recited in claim 13 would seem extremely high based on the facts of this particular situation.
Claim Rejections - 35 USC § 112(b)
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.
Claim 13 is 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.
Regarding claim 13, while the plain language of claim 13 would appear to be clear, i.e. the requirement that all 22 listed compounds/materials be removed, it is noted that the specification in discussing the compounds to be removed (see Specification at ¶14) only discloses the method being “suited” or capable of removing the 22 different compounds/materials. As such, it would seem that there is a discrepancy between the disclosure and what is claimed so that one of ordinary skill in the art could be unclear as to whether claim 13 is really requiring one of each of the 22 compounds/materials to be removed or if it is merely expressing the capability of the method to be used to remove any of the recited materials.
Please note, for purposes of claim interpretation the examiner will be treating the claim as written and requiring the method to include the removal of all 22 compounds/ types of materials as recited.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 10, 12 and 14 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US Pub. No. 2019/0225521 to Heath (hereinafter referred to as “HEATH”).
Regarding claim 10, HEATH teaches a method for the treatment of wastewater (see generally HEATH at Abstract and ¶1 & ¶4-¶13), the method comprising:
exposing to an alternating electromagnetic field (“EMF”) in order to remove a content substance from the wastewater (see HEATH at ¶6, ¶11 and ¶13 teaching the EMF as varying so as to be alternating as claimed);
selecting a resonance frequency or a frequency in proximity to the resonance frequency for splitting up and for flocculating the content substance or parts of the content substance (see HEATH at ¶4-¶5 teaching the application of frequencies such that the treatment inactivates or removes a contaminant such that the frequency would be in proximity to a resonance frequency for splitting up and flocculating, i.e. separating out, as stated; see also HEATH at ¶13 teaching further filtration and separation of the contaminant or pollutant from the treated water).
Regarding claim 12, HEATH teaches the method for treatment of wastewater further comprising removing phosphate, triazine herbicides, acidic pesticides, perfluorooctanoic acid, perfluorooctanesulfonic acid, benzotriazole, 4-methyl-1H-benzotriazole, 5-methyl-1H-benzotriazole, ethylenediaminetetraacetic acid, diethylenediaminepentaacetic acid, carbamazepine, diclofenac, 17β-estradiol, estrone, gabapentin, iohexol, iomeprol, iopamidol, iopromide, irbesartan, metoprolol, or sulfamethoxazole (see HEATH at ¶5 and ¶12 teaching the method for removing impurities such as pharmaceuticals, PFCs, pharmaceuticals, pesticides, and hormones).
Regarding claim 14, HEATH teaches a non-transitory computer storage medium storing a program to be executed by a processor to perform the method of claim 10 (see HEATH at ¶197-¶200)
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over HEATH in view of US Pub. No. 2003/0140940 to Meldrum (hereinafter referred to as “MELDRUM”).
Regarding claim 11, while HEATH teaches the method for removing or purifying the toxic or contaminant compound (see HEATH at ¶1 and ¶5) with the application of an alternating EMF (see HEATH at ¶6), HEATH fails to explicitly teach the varying of the frequency until reaching the resonance frequency of the content substance or the frequency in proximity to the resonance frequency.
However, MELDRUM teaches a method of treating water with pathogens and/or synthetic molecules contaminants such as fungicides, herbicides and pesticides (see MELDRUM at Abstract and ¶11 and ¶12). Moreover MELDRUM teaches the application of electrical energy at a resonant frequency range that acts to destroy or transform the contaminants (see MELDRUM at ¶12 and ¶13).
As such, even though MELDRUM is specifically directed towards the treatment of wash water producing from washing produce (see MELDRUM at ¶3), one of ordinary skill in the art would have recognized that HEATH is also directed towards a similar problem, i.e. the removal of harmful synthetic molecules from a water source. Specifically, HEATH also notes contaminants as including viruses, bacteria, parasites, and pathogens (see HEATH at ¶12). As a result, one of ordinary skill in the art would have recognized the benefit taught by MELDRUM of employing the use of frequencies at or near the resonant frequencies of the contaminants to be removed in the process of treating the contaminants of HEATH since those frequencies would be most likely to allow for the efficient treatment and removal of those impurities.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have varied the frequency of the alternating EMF applied in the method of HEATH so as to reach or be as close as possible to the resonance frequency of the contaminant material as taught by MELDRUM so as to provide for the most efficient and effective treatment of the contaminant containing water.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pub. No. 2009/0242407 to Shiga teaching an EMF treatment method and EMF treatment equipment for water
US Pub. No. 2019/0152812 to Engle et al., teaching a method and system for electromagnetic fluid treatment utilizing frequencies and harmonics
US Pub. No. 2016/0016829 to Hughes et al., teaching method of treating liquids with electromagnetic fields
US Pub. No. 2015/0344328 to Suvorov teaching a method and device for water treatment using radio waves
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794