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
Applicant's arguments filed June 15, 2026 have been fully considered but they are not persuasive. Amendments to the current set of claims have changed the scope of the claimed invention, resulting in a modification of the previous prior art rejections.
On pages 11-15 of the Remarks section filed June 15, 2026, Applicant argues against the previous prior art rejection of independent Claim 1 involving the use of Shen et al., (“Shen 1”, “Removal of metallic ions at the parts per billion level from aqueous solutions using the polymer-surfactant aggregate process”, Journal of Water Process Engineering, vol. 30, 1 August 2019, 100486, 4 total pages). Applicant argues that Shen 1 was published within 1 year of the effective filing date of the instant application, in which the authors of Shen 1 are the same/overlap with the inventors of the instant application, providing a one-year grace period. The Examiner has withdrawn the rejections involving Shen 1 as a result. In addition, the remarks directed toward Shen 1 are considered moot. The Examiner notes that the remarks filed June 15, 2026 correspond very closely with the remarks filed earlier on April 30, 2026, so by addressing the June remarks, the April remarks are addressed as well.
On pages 15-29, Applicant argues against the use of Shen et al., (“Shen 2”, GB 2532433), in the previous prior art rejection of independent Claim 1, arguing that it does not disclose explicitly a covalent interaction occurring in the various example it provides, and also alleges that Shen 2 does not provide covalent interactions during the specific conditions now claimed in Claim 1, including “wherein the molar concentration of the ionic surfactant in the aqueous solution is at least 1 mM, and wherein the ratio of the monomeric molar concentration of the functionalized polymer to the molar concentration of the ionic surfactant in the aqueous solution is from 1:4 to 4:1.” In response, the Examiner notes that Shen 2 does not disclose all of the newly added claimed conditions, and has withdrawn the use of Shen 2 in disclosing independent Claim 1.
Applicant has presented numerous examples and conducted experiments to demonstrate that Shen 2 does not provide covalent interactions in the manner claimed, particularly under the conditions now claimed and required in Claim 1. The Examiner has withdrawn Shen 2 as disclosing Claim 1, since Shen 2 does not disclose these conditions in combination with the other features in the claim.
In regard to independent Claim 22, the Examiner has withdrawn any rejections involving either Shen 1 for the reasons involving its publication date. However, the amendments made to Claim 22 such as requiring “predominantly a covalent interaction” have resulted in a new prior art rejection involving Shen 2 and Porath, in which Porath discloses this feature instead.
In various excerpts on pages 15-29, Applicant discusses Shen 2 in which Shen 2 does not disclose “predominantly covalent” bonding occurring with its PSA, particularly in the conditions claimed. The Examiner notes that the rejections have been withdrawn for the reasons stated above regarding independent Claim 1, and its dependent claims. However, the term “predominantly covalent” has been rejected under 112(a) for introducing potential new matter as explained further in the 112 rejection section below. Furthermore, the Examiner notes that the remarks against Shen 2 and the claims do not appear to apply to presently amended independent Claim 24. Claim 24 does not require “predominantly covalent” bonding occurring, at the claimed conditions recited as in independent Claim 1, and only requires that the composition is “capable” of “covalent bonding” which is not the same as actually having this bonding occurring. The Examiner also notes that independent Claim 22 does not require any of the conditions required in Claim 1 for the concentrations related to the surfactant or the polymer, making the arguments about when chelation occurs inapplicable. Thus, the Examiner finds that due to the amendments made, a new 103 prior art rejection of independent Claim 24 involving Shen 2 as a primary reference and previous secondary reference Porath has been made.
The Examiner notes that the experimental data provided and various observations regarding Shen 2 do not apply to the current iteration of Claim 24, since covalent bonding is not actually required, and the conditions discussed earlier are also not claimed. Since the conditions discussed for Claim 1 are not claimed in Claim 22, they also do not apply to this claim, particularly since Porath is combined as well. Thus, these remarks are considered moot.
A relevant argument from Applicant, as on page 23 and 26 of the Remarks, toward Shen 2 in regard to Claim 24 states that “Shen 2 only discloses chelation occurring in the absence of any surfactant and at very low surfactant concentrations”. The Examiner notes that the concentration of surfactant is not claimed in Claims 22 or 24, and thus the disclosure from Shen 2 demonstrating chelation in those examples would read upon the claim as a result. The Examiner finds Applicant’s arguments unpersuasive here.
On pages 29-35, Applicant presents arguments against the combination of previous secondary reference Porath, (US 5,185,313), with Shen 2. Applicant argues that Shen 2 teaches “electrostatic absorption” between PSA and metal species, while Porath teaches “complexation between the ligands on the polymer and the metal ion species”. Applicant asserts that these are different binding mechanisms and as such, there is no motivation to combine the two references. The Examiner notes here that Shen 2 does disclose both electrostatic absorption and also chelation occurring, which is relevant since no specific concentrations of the components in Claims 22 or 24 are required. Furthermore, complexation involves the use of chelation and covalent bonding. Thus, this binding principle overlaps in scope with Shen 2 which discusses both chelation and electrostatic absorption in different scenarios. The Examiner maintains that the two references are relevant to each other, and that the motivation already provided from Porath still applies.
Applicant also asserts that Porath is not concerned with a process to remove metal ions from an aqueous solution. The Examiner disagrees with this assertion, pointing to column 1, lines 6-9, of Porath which explicitly states that it relates to “methods for adsorption of heavy metals from water solutions”, which is the same technology as claimed, and in Shen 2. The Examiner finds this remark unpersuasive.
Applicant also argues that Porath relies only on the polymer to bind the metal ion, not a surfactant or a PSA. The Examiner notes that Shen 2 already discloses the PSA, and that it is not required for Porath to disclose each and every feature as well. Such an argument is piecemeal analysis, and is thus unpersuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant also argues that the claims relate to a soluble polymer, and that Porath uses an insoluble adsorbent instead. Applicant argues that Claim 1 requires the functionalized polymer in aqueous solution. The Examiner notes that such language as also applied to Claims 22 & 24 does not require a “soluble” polymer, the polymer could be submerged or immersed in the water instead. The Examiner finds this remark unpersuasive.
Applicant also argues that the two references cannot be combined because Porath is not concerned with an electrostatic interaction between cationic heavy metal ions and anionic surfactant groups on the complexes, since it does not require an ionic surfactant, and that Shen 2 already uses a PSA to bind the metallic species, indicating that the charged ionic surfactant would compete with the first charged species for binding to the PSA. Applicant asserts that having this surfactant as in Shen 2 when applied with Porath would lead to a poorer metal recovery as the modified polymer binds to the ionic surfactant instead. The Examiner takes the position that there is no evidence provided for this particular assertion. Furthermore, the Examiner also notes that Shen 2 already explicitly notes that chelation does occur at certain concentrations with the ionic surfactant in combination with the polymer, (See page 42, lines 19-25, Shen 2). Claims 22 & 24 do not specify the concentration required, so the Examiner finds this remark by Applicant unpersuasive.
Response to Amendment
The declaration under 37 CFR 1.132 filed June 15, 2026 is insufficient to overcome the rejection of Claims 22 or 24 as set forth in the last Office action because:
In the Declaration filed, Applicant argues that zinc hydroxide is a low solubility metal hydroxide, linking this characteristic to removing zinc below its bulk thermodynamic threshold. Applicant states that at low SDS concentrations below 10-4 M, as demonstrated in Figure 10 of Shen 2, there is no meaningful surfactant aggregation or complex formation occurring, while zinc removal is already at 65%. Applicant asserts that this removal cannot be attributed to any polymer-metal interaction and not to chelation. However, the Examiner notes the data from Figure 10 and in Shen 2 indicates that SDS is still present at these values. The Examiner also comments that Claims 22 and 24 do not require the exclusion of hydroxide precipitation as a means of removal or binding the hydroxide to the polymer. Applicant then details the results of the experiments on zinc hydroxide and varying levels of pH, some examples conducted with PEI present, and some without. Applicant argues that the results demonstrate very little variation or change between the examples, both with PEI and without PEI. Applicant concludes that the main mechanism for zinc hydroxide removal is precipitation due to changes from pH, not from the presence of PEI or even SDS (the surfactant) through any chelation. Applicant asserts that chelation cannot be present due to these conclusions. Applicant also notes that magnesium is not removed even when present in larger amounts, versus zinc, demonstrating that magnesium is not chelated in the presence of PEI.
In response, the Examiner notes that while Applicant may have proven that chelation from PEI most likely has little effect on the removal of zinc, the experiments have not proven that no chelation is present or occurs at all. Even if the chelation itself is minor, or has a negligible impact on removal of zinc or a metal, the Examiner observes that Shen 2 explicitly states that chelation occurs on page 42, lines 22-23. The level of performance of the composition desired is also not claimed. Furthermore, the Examiner also notes that Porath has been combined to demonstrate a stronger coordination complexing effect, also known as chelation, of the metal ion of interest to the polymer itself. Both Shen 2 and Porath should be considered in combination as a result. The Examiner also notes that the ranges of concentrations for the surfactant (SDS) under which electrostatic interactions take over from chelation in Shen 2 as asserted by Applicant are not claimed. For these reasons, the Examiner finds Applicant’s statements here unpersuasive.
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 1, 22 and their dependent claims 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.
Claims 1 and 22 recite the added limitation “wherein the interaction between the chelating groups of the functionalized polymer and the first charged species comprises predominantly a covalent interaction”. However, it is not clear from the instant Specification or the remainder of the Application that the interaction depends “predominantly” on covalent interaction. The Specification presents the options as “the interaction, in the modified PSA, between (a) a group of the functionalised polymer in the PSA that binds preferentially to the first charged species (a functional group) and (b) the first charged species itself, may be any suitable interaction. It is often a chelation, but it may alternatively for instance involve ion-pair formation between (a) and (b), electrostatic bonding between (a) and (b), or any other kind of non-covalent or covalent bonding between (a) and (b)”, (See page 33, Specification).
Based on this text, the Examiner finds that multiple options of bonding may be used but not that covalent bonding is “predominant” over the other forms of bonding. In addition, it is not clear if the bonding options are presented as alternatives to one another, or if a spectrum of bonding options occurs at the same time, such that “predominant” would then be supported. The text appears to indicate alternatives of bonding to each other, in which “chelation” is often chosen, but it is also not explicitly demonstrated that it is solely “covalent” in bonding. For these reasons, the Examiner finds this addition to the claims to be new matter without support.
Claim Rejections - 35 USC § 103
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 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) 22 & 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al., (“Shen 2”, GB2532433A), as evidenced by “Chelation”, (“Chelation”, Wikipedia, https://en.wikipedia.org/wiki/Chelation, obtained from Web on 1/27/2026), in view of Porath, (US 5,185,313).
Claim 22 is directed to a process for selectively removing a first charged species, a method type invention group.
Regarding Claim 22, Shen 2 discloses a modified polymer-surfactant aggregate, (modified PSA), which comprises: (i) a polymer-surfactant aggregate (PSA), (See page 5, lines 19-21), comprising: a functionalised polymer, (See page 5, lines 20-22, See page 9, lines 23-34, page 10, lines 1-3; “Polyethyleneimine (PEI) is a hydrophilic cationic polymer”, See page 5, Millipore Sigma evidentiary reference), and an ionic surfactant, (See page 5, lines 20-22, See page 9, lines 23-34, page 10, lines 1-3), and a first charged species, (See Figure 8, affinity for removing zinc (Zn), See page 6, lines 29-31, See page 41, lines 20-27), wherein the functionalized polymer is a hydrophilic polymer, (“Polyethyleneimine (PEI) is a hydrophilic cationic polymer”, See page 5, Millipore Sigma evidentiary reference), which comprises chelating groups that have a greater binding affinity to the first charged species over at least one further charged species, (See Figure 8, affinity for removing zinc (Zn) is higher than magnesium (Mg), See page 6, lines 29-31, See page 41, lines 20-27), which is different from the first charged species, (See page 11, lines 3-11; See page 12, lines 19-24), wherein the first charged species and the at least one further species are metallic ions of the same polarity, (See page 11, lines 3-11; See page 12, lines 19-24; both are positively charged), wherein each chelating group of the functionalized polymer comprises at least two donor atoms, which are the same or different, that are capable of bonding to the first charged species, (As evidenced by “Chelation”, in Wikipedia, chelation is known to include at least a covalent interaction/bond between the ligand and the metal of interest; https://en.wikipedia.org/wiki/Chelation, obtained from Web on 1/27/2026),
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the donor atoms being selected from the group consisting of carbon, nitrogen, oxygen, phosphorous, and sulphur, (“”polymer comprising ionizable groups such as a polymer that is positively or neutral charged…polyethyleneimine (PEI)”; PEI has an amine group which has carbon and nitrogen) and wherein the functionalised polymer is a polyamine and positively charged or negatively charged when in aqueous solution, (“”polymer comprising ionizable groups such as a polymer that is positively or neutral charged…polyethyleneimine (PEI)”; PEI has an amine group which has carbon and nitrogen; the Specification considers PEI to be a polyamine).
Shen 2 does not disclose that the functionalized polymer is a polymer which is functionalized to provide the chelating groups, or wherein the interaction between the chelating groups of the functionalized polymer and the first charged species comprises predominantly a covalent interaction.
Porath discloses a process for removing a first charged species in an aqueous solution where its functionalized polymer is a polymer which is functionalized to provide the chelating groups, (See column 3, lines 23-45, See Fig. 1A, See column 3, lines 46-65, and See column 8, lines 20-22, Porath), wherein the interaction between the chelating groups of the functionalized polymer and the first charged species comprises predominantly a covalent interaction, (See column 1, lines 46-60, Porath; refer to the above definition of chelation which requires covalent bonds).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the process of Shen 2 by incorporating that the functionalized polymer is a polymer which is functionalized to provide the chelating groups and wherein the interaction between the chelating groups of the functionalized polymer and the first charged species comprises predominantly a covalent interaction as in Porath in order to provide a ligand that is “especially effective to bind heavy metals”, (See column 2, lines 2-3, Porath), because “the adsorption capacity can be strengthened so that more of one metal ion is adsorbed upon a given amount of adsorbent as well as the selectivity also can be strengthened by inserting further coordinating atoms, especially N” in which “the strengthening will be markedly more effective if these atoms are inserted so that…6-rings can be formed together with the coordinating atoms”, (See column 3, lines 9-15, Porath).
Claim 24 is directed to a process for selectively removing a first charged species, a method type invention group.
Regarding Claim 24, Shen 2 discloses a polymer-surfactant aggregate, (See page 5, lines 19-21), comprising: a functionalised polymer that is an hydrophilic polymer, (See page 5, lines 20-22, See page 9, lines 23-34, page 10, lines 1-3; “Polyethyleneimine (PEI) is a hydrophilic cationic polymer”, See page 5, Millipore Sigma evidentiary reference), and has chelating groups that have a greater binding affinity to a first charged species over at least one further charged species, (See Figure 8, affinity for removing zinc (Zn) is higher than magnesium (Mg), See page 6, lines 29-31, See page 41, lines 20-27), which is different from the first charged species, (See page 11, lines 3-11; See page 12, lines 19-24), wherein the first charged species and the at least one further species are metallic ions of the same polarity, (See page 11, lines 3-11; See page 12, lines 19-24; both are positively charged), and (ii) an ionic surfactant, (See page 5, lines 20-22, See page 9, lines 23-34, page 10, lines 1-3), wherein each chelating group comprises at least two donor atoms, which are the same or different, that are capable of bonding to the first charged species, (As evidenced by “Chelation”, in Wikipedia, chelation is known to include at least a covalent interaction/bond between the ligand and the metal of interest; https://en.wikipedia.org/wiki/Chelation, obtained from Web on 1/27/2026),
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the donor atoms being selected from the group consisting of carbon, nitrogen, oxygen, phosphorous, and sulphur, (“”polymer comprising ionizable groups such as a polymer that is positively or neutral charged…polyethyleneimine (PEI)”; PEI has an amine group which has carbon and nitrogen) and wherein the functionalised polymer is a polyamine and positively charged or negatively charged when in aqueous solution, (“”polymer comprising ionizable groups such as a polymer that is positively or neutral charged…polyethyleneimine (PEI)”; PEI has an amine group which has carbon and nitrogen; the Specification considers PEI to be a polyamine).
Shen 2 does not disclose that the functionalized polymer is a polymer which is functionalized to provide the chelating groups.
Porath discloses a process for removing a first charged species in an aqueous solution where its functionalized polymer is a polymer which is functionalized to provide the chelating groups, (See column 3, lines 23-45, See Fig. 1A, See column 3, lines 46-65, and See column 8, lines 20-22, Porath).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the process of Shen 2 by incorporating that the functionalized polymer is a polymer which is functionalized to provide the chelating groups as in Porath in order to provide a ligand that is “especially effective to bind heavy metals”, (See column 2, lines 2-3, Porath), because “the adsorption capacity can be strengthened so that more of one metal ion is adsorbed upon a given amount of adsorbent as well as the selectivity also can be strengthened by inserting further coordinating atoms, especially N” in which “the strengthening will be markedly more effective if these atoms are inserted so that…6-rings can be formed together with the coordinating atoms”, (See column 3, lines 9-15, Porath).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: after withdrawing the previous prior art rejections of independent Claim 1 for the reasons stated above in the Response to Arguments section, the Examiner has conducted further searching and consideration of the prior art in the relevant fields of endeavor. After doing so, the Examiner has determined that the limitations “wherein the molar concentration of the ionic surfactant in the aqueous solution is at least 1 mM, and wherein the ratio of the monomeric molar concentration of the functionalized polymer to the molar concentration of the ionic surfactant in the aqueous solution is from 1:4 to 4:1” in combination with the other claimed features of independent Claim 1 such as “each chelating group…that are capable of covalent bonding to the first charged species…wherein the interaction between the chelating groups of the functionalized polymer and the first charged species comprises…a covalent interaction such that treating the aqueous solution with the functionalised polymer and the ionic surfactant results in formation of a modified polymer-surfactant aggregate (PSA)” is allowable over the closest prior art such as Shen et al., (GB2532433A), and Porath, (US 5,185,313). The Examiner notes that 112 issues remain with Claim 1, and that independent Claims 22 & 24 are still rejected for the reasons stated above in the Response to Argument section and prior art rejection section.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JONATHAN M PEO whose telephone number is (571)272-9891. The examiner can normally be reached M-F, 9AM-5PM.
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/JONATHAN M PEO/Primary Examiner, Art Unit 1779
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