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 .
Claim Status
Claims 1-20 are pending:
Claims 1-16 are rejected.
Claims 17-20 have been withdrawn
Response to Amendments
Amendments filed 03/04/2026 have been entered. Amendments overcome §112 rejections but do not §103 rejections as previously set forth in non-final Office Action mailed 09/04/2025.
Amendments have necessitated an update to the Office Action.
Response to Arguments
Arguments filed 03/04/2026 have been entered. Arguments were fully considered.
On pg. 4 of Applicant’s arguments, Applicant argues that:
II. Claim Objections
Claims 4-5, 8-10 and 14-16 are objected to because of alleged informalities of the claims reciting chemical formulas and not the full chemical name. Applicants respectfully disagree. Support for the nomenclature used in claims 4-5, 8-10 and 14-16 can be found throughout the application as filed, but particularly in FIGs. 2A, 2B, and paragraphs 12, 25, 27, 28, 31, and 32. The nomenclature used in the claims is clearly explained and representing chemical formula for the functionalized resins of the claims would be impractical and not according to accepted resin nomenclature.
This is persuasive therefore claim objections have been withdrawn.
On pg. 5 of Applicant’s arguments, Applicant argues that:
V. Claim Rejections Under 35 U.S.C. 103
Claims 1-16 are rejected under 35 U.S.C. 103 as allegedly being unpatentable over Kearney in view of Nesterenkoa. Applicants respectfully disagree.
Neither Kearney or Nesterenkoa disclose or teach all of the limiting elements of Applicant's currently amended claims 1 and 11 nor their dependent claims that contain specific chemical formulations of novel zwitterionic resins comprising imidazolium cations or quaternary ammonium cations.
The Office also cites Pizzoccaro as teaching an embodiment of zwitterionic resins but as the Office notes on page 11 of the Office Action Pizzoccaro does not disclose zwitterionic resins comprising CO2, SO3 or PO4 as do the claimed zwitterionic resins in Applicant's claims invention.
Accordingly, no combination of Kearney or Nesterenkoa and no combination of Kearney, Nesterenkoa and Pizzoccaro can obviate Applicant's claimed invention at least because Kearney, Nesterenkoa or Pizzoccaro do not disclose or teach all of the limiting elements of Applicant's claimed invention.
Applicants request that this rejection be withdrawn.
This is not persuasive because it is understood by one of ordinary skill in the art that phosphate (PO3) functional groups can be used as anionic functional groups in chromatographic separation materials. Because ion separation in zwitterionic systems is governed by electrostatic interactions with anionic functional groups (also referred to as “negatively charged functional groups” (see Fig. 1-4-13 on pg. 36 of Schematic diagram). The selection of a particular anionic functional groups such as phosphate, carboxylate or sulfonate as recited in claims 8 and 14, represents a known design choice used to tune separation behavior, and such groups would have been interchangeable for use in zwitterionic resins. Therefore, the combination of Kearney, Nesterenkoa and Pizzoccaro render claims 8 and 14 obvious.
Fig. 1-4-13 of Pizzoccaro
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Terminal Disclaimer
The terminal disclaimer filed on 03/04/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 19/087,176 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-6 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kearney (US 2012/0160772) in view of Nesterenkoa (Zwitterionic ion-exchangers in ion chromatography: A review of recent developments, see NPL attached in 892).
Regarding claim 1, Kearney teaches a method for separating salts from an aqueous solution (see ¶2) comprising the steps of contacting resins with an aqueous solution comprising salts and further comprising the step of performing simulated moving bed (SMB) chromatography on the resins and aqueous solution (preferred eluent for the SMB in this application may consist of water or a stream which is primarily water (i.e., an aqueous eluent). Other eluents known to those in the art are also contemplated herein. For example, if pure water is not available, a waste stream or material of less than pure quality may be used. Preferably, such an eluent should typically contain less than 5% dissolved contaminants on weight (such as acid or metal salts), see ¶24 and ¶27-28; a simulated moving bed containing anion resin and eluting with a water solution, see ¶10 and ¶32); and further comprising the step of isolating the salts from the aqueous solution by collecting samples generated from performing SMB chromatography (the invention provides a method for the recovery of acid and/or metals from an acid and metal salt solution, see ¶14; based on the teachings of ¶14, the collection of products streams constitutes isolation of slats from the aqueous solution).
Kearney does not teach wherein the resins is zwitterionic resins.
In a related field of endeavor, Nesterenkoa teaches zwitterionic ion-exchangers in ion chromatography (see ABS) developed for the separation of inorganic salts and small ionic compounds suing water or low concentration eluents (see §2.2) comprising zwitterionic resins used in ion chromatography for the separation of inorganic ions, wherein water is used as an eluent and analytes are separated based on ion pairing and electrostatic interactions (zwitterion exchangers through dynamic coating include
π
-
π
interactions between suitable aromatic molecules and poly(styrene-divinylbenzene) resins, see §3.3 on pg. 15 and pgs. 31-32).
Regarding claims 1 and 11, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of Kearney by applying the zwitterionic resins as disclosed by Nesterenkoa because said zwitterionic resins have the ability to separate inorganic cations and anions (Nesterenkoa, see §2.1 on pg. 2) and have the potential for selectivity optimisation in IC due to control of the ratio of electrostatic attraction/repulsion forces between analyte ions and ion-exchange groups (Nesterenkoa, see ABS).
Regarding claim 11, Kearney teaches a method for isolating salt free water from a salt containing aqueous solution (see ¶2, ¶16 and ¶19) comprising the steps of contacting resins with the salt containing aqueous solution and further comprising the step of performing simlulated moving bed (SMB) chromatography on the resins and salt containing aqueous solution (preferred eluent for the SMB in this application may consist of water or a stream which is primarily water (i.e., an aqueous eluent). Other eluents known to those in the art are also contemplated herein. For example, if pure water is not available, a waste stream or material of less than pure quality may be used. Preferably, such an eluent should typically contain less than 5% dissolved contaminants on weight (such as acid or metal salts), see ¶24 and ¶27-28; a simulated moving bed containing anion resin and eluting with a water solution, see ¶10 and ¶32); and further comprising the step of isolating salt free water from the salt containing aqueous solution by collecting samples generated from performing SMB chromatography (another embodiment, the production of at least one process stream may be adjusted so that at least one product stream exhibits a minimum conductivity. For example, the recirculation stream and/or one or more output product streams may be measured for conductivity. Such monitoring of conductivity may optionally be used in adjusting the flow rate of a recirculation stream in the simulated moving bed process, see ¶19; based on the teachings in ¶19, since conductivity correlates with dissolved ion species, a stream with reduced conductivity corresponds to a salt-depleted or salt-free aqueous stream).
Kearney does not teach wherein the resins is zwitterionic resins.
In a related field of endeavor, Nesterenkoa teaches zwitterionic ion-exchangers in ion chromatography (see ABS) developed for the separation of inorganic salts and small ionic compounds suing water or low concentration eluents (see §2.2) comprising zwitterionic resins used in ion chromatography for the separation of inorganic ions, wherein water is used as an eluent and analytes are separated based on ion pairing and electrostatic interactions (zwitterion exchangers through dynamic coating include
π
-
π
interactions between suitable aromatic molecules and poly(styrene-divinylbenzene) resins, see §3.3 on pg. 15 and pgs. 31-32).
Regarding claim 2, Kearney and Nesterenkoa teach the method of claim 1 wherein the salts comprise different salts (Nesterenkoa, see ABS).
Regarding claim 3, Kearney and Nesterenkoa teach the method of claim 2 wherein the different salts are separated from each other (Nesterenkoa, see ABS).
Regarding claim 4, Kearney and Nesterenkoa teach the method of claim 3 wherein the salts comprise LiCl (Nesterenkoa, the zwitterionic properties of stationary phases modified with -amino acids have been only studied relatively recently [23–25]. As amino acids on the surface can exist in several forms, depending upon the pH, both cation- and anion-exchange properties can be observed and simultaneous separations of cations and anions are possible. Thus the retention of alkali and alkaline earth metal cations and anions on a silica phase with covalently attached histidine, using a 5 mM lithium benzoate solution as an eluent has been shown [24]. It was found that this stationary phase exhibits zwitterionic properties at pH about 6, and that the retention order for anions at pH 5.0 was Cl− < NO3 − < SCN− < SO4 2−, and Na+ < K+ < Mg2+ < Ca2+ for cations at pH 6.5, see §2.1 on pg. 8).
Regarding claim 5, Kearney and Nesterenkoa teach the method of claim 3 wherein the salts comprise LiCl, CaCl2 and MgCl2 (Nesterenkoa, the zwitterionic properties of stationary phases modified with -amino acids have been only studied relatively recently [23–25]. As amino acids on the surface can exist in several forms, depending upon the pH, both cation- and anion-exchange properties can be observed and simultaneous separations of cations and anions are possible. Thus the retention of alkali and alkalineearth metal cations and anions on a silica phase with covalently attached histidine, using a 5 mM lithium benzoate solution as an eluent has been shown [24]. It was found that this stationary phase exhibits zwitterionic properties at pH about 6, and that the retention order for anions at pH 5.0 was Cl− < NO3 − < SCN− < SO4 2−, and Na+ < K+ < Mg2+ < Ca2+ for cations at pH 6.5, see §2.1 on pg. 8).
Regarding claim 6, Kearney and Nesterenkoa teach the method of claim 1 wherein the zwitterionic resins comprise quaternary ammonium cations (Nesterenkoa, quaternary ammonium functional group of the zwitterion, see §3.1 on pg. 13).
Regarding claim 12, Kearney and Nesterenkoa teach the method of claim 11 wherein the zwitterionic resins comprise quaternary ammonium cations (Nesterenkoa, quaternary ammonium functional group of the zwitterion, see §3.1 on pg. 13).
Claims 7-10 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kearney (US 2012/0160772) in view of Nesterenkoa (Zwitterionic ion-exchangers in ion chromatography: A review of recent developments, see NPL attached in 892) and further in view of Pizzoccaro (Design of Phosphonated Imidazolium-Based Ionic Liquids Grafted on gamma-Alumina: Potential Model for Hybrid Membranes, see NPL in IDS filed 06/09/2022).
Regarding claims 7 and 13, Kearney and Nesterenkoa teach the method of claims 1 and 11, respectively.
The combination does not teach wherein the zwitterionic resins comprise imidazolium cations.
In a related field of endeavor, Pizzoccaro teaches design of phosphonated imidazolium-based ionic liquids grafted on γ-alumina: potential model for hybrid membranes (see ABS) wherein the zwitterionic resins comprise imidazolium cations (Imidazolium bromide-based ionic liquids bearing phosphonyl groups, see ABS).
Regarding claims 7 and 13, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the in the zwitterionic resins of Kearney by incorporating imidazolium cations as disclosed by Pizzoccaro because it is can used for a range of applications including catalysis, chromatography and gas separation (Pizzoccaro, see §1.1 Introduction on pgs. 1-2).
Regarding claims 8 and 14, Kearney and Nesterenkoa teach the method of claims 1 and 11, respectively.
The combination does not teach wherein the zwitterionic resins comprise anions selected from the group consisting of CO2,SO3 and P03.
In a related field of endeavor, Pizzoccaro teaches design of phosphonated imidazolium-based ionic liquids grafted on γ-alumina: potential model for hybrid membranes (see ABS) wherein the zwitterionic resins comprise anions selected from the group consisting of P03 (tridentate phosphonate PO3 units grafted on the γ-Al2O3 surface, see pg. 8)…
Regarding claims 8 and 14, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the in the zwitterionic resins of Kearney by incoporating tridentate phosphonate PO3 units grafted on the γ-Al2O3 surface as disclosed by Pizzoccaro because it is can used for a range of applications including catalysis, chromatography and gas separation (Pizzoccaro, see §1.1 Introduction on pgs. 1-2). Additionally, it is well known in the art that phosphate function group can be used as an anionic functional group in chromatographic separation and because phosphate functional groups are used in separation materials, it is interchangeable with the anionic functional groups in zwitterionic resins (Ekaterina, see pg. 36) making it an obvious design choice.
Regarding claims 9 and 15, Kearney and Nesterenkoa teach the method of claims 1 and 11, respectively.
The combination does not teach wherein the zwitterionic resins are selected from the group consisting of QAC1CA, QAC2CA, QAC3CA, QAC1PO3, QAC2PO3, QAC3PO3, QAC1SO3, QAC2SO3, and QAC3SO3.
In a related field of endeavor, Pizzoccaro teaches design of phosphonated imidazolium-based ionic liquids grafted on γ-alumina: potential model for hybrid membranes (see ABS) comprising QAC1PO3, QAC2PO3, QAC3PO3 (tridentate phosphonate PO3 units grafted on the γ-Al2O3 surface, see pg. 8)…
Regarding claims 9 and 15, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the in the zwitterionic resins of Kearney by incorporating tridentate phosphonate PO3 units grafted on the γ-Al2O3 surface as disclosed by Pizzoccaro because it is can used for a range of applications including catalysis, chromatography and gas separation (Pizzoccaro, see §1.1 Introduction on pgs. 1-2).
Regarding claims 10 and 16, Kearney and Nesterenkoa teach the method of claims 1 and 11, respectively.
The combination does not teach wherein the zwitterionic resins are selected from the group consisting of IC1CA, IC2CA, IC3CA, IC1PO3, IC2PO3, IC3PO3, IC1S03, IC2SO3, and IC3SO3.
In a related field of endeavor, Pizzoccaro teaches design of phosphonated imidazolium-based ionic liquids grafted on γ-alumina: potential model for hybrid membranes (see ABS) comprising IC1PO3, IC2PO3, IC3PO3 (Imidazolium bromide-based ionic liquids bearing phosphonyl groups, see ABS).
Regarding claims 10 and 16, it would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the in the zwitterionic resins of Kearney by incorporating Imidazolium bromide-based ionic liquids bearing phosphonyl groups as disclosed by Pizzoccaro because it is can used for a range of applications including catalysis, chromatography and gas separation (Pizzoccaro, see §1.1 Introduction on pgs. 1-2).
Conclusion
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 EKANDRA S. MILLER-CRUZ whose telephone number is (571)270-7849. The examiner can normally be reached M-Th 7 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L. 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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/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773