DETAILED ACTION
This action is in response to the amendments and remarks filed 09/10/2025, in which claims 12-13 are pending and ready for examination.
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.
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) 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.
Claim 13 recites the limitation “a reactor” in line 4, this conflicts with the same term in claim 12. Correction is required. It is suggested it is corrected to “the reactor”.
Claim 13 recites the limitation “dry resin based spheres” in line 14 conflicts with the same term in claim 12. Correction is required. It is suggested it is corrected to “the dry resin based spheres”.
Claim 13 recites the limitation “drying” in line 14 conflicts with the same step/term in claim 12. Correction is required. It is suggested it is corrected to “the drying”.
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 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 12 is rejected under 35 U.S.C. 103 as being unpatentable over CN 102600810 A (hereinafter “Dong”) in view of US 2020/0139348 A1 (hereinafter “Bessonov”), and as evidenced by and/or in view of the Espacenet translation of the Abstract of Dong (hereinafter “EspacenetAbstract”).
Regarding Claim 12 Dong discloses an adsorbent resin for removing dye from a body of water (Abstract),
wherein the resin may be a polymer made from crosslinked styrene and divinylbenzene which is further crosslinked using p-dichlorodimethylbenzene (claim 1) and thus has a rigid benzene ring structure in a skeleton thereof,
a particle size distribution of 0.3-1.0 mm (Claim 1, which overlaps the range claimed, wherein it would have been obvious to produce the claim particle sizes according to any known means of measuring the particle size including as tested by using Malvern MS3000 laser particle sizer), and
a specific surface area of 1000-1300 m2/g (Claim 1, which overlaps the range claimed at the value 1000) and
a pore size (i.e. an average micropore diameter) of 5-10 nm (claim 1);
wherein the rigid benzene ring structure is introduced into the skeleton of the resin via a second polymerization reaction initiated using a post-crosslinking agent, which may be XDC; (Abstract, claim 1 and steps 1) to 6) on pgs. 2-3).
Note: Google has translated the chemical referred to as XDC to be “p-dichlorodimethylbenzene” as in the abstract shown in the printed Google Patents Translation, however the EspacenetAbstract, shows XDC translated as “xylene dichloride” (a.k.a. xylylene dichloride), since xylene dichloride fits the acronym XDC which is used in all documents, including the original, it is expected, and one of ordinary skill in the art would find it obvious, that XDC correctly translates to p-xylylene dichloride, i.e. the same as claimed.
wherein a process for preparing the adsorbent resin comprises the following steps of:
(1) preparation of polystyrene macroporous adsorbent resin-based spheres: carrying out a suspension polymerization using divinylbenzene as a reactive compound with adding a porogen to obtain macroporous adsorbent resin-based spheres, and drying after removing the porogen to obtain dry resin-based spheres for use (See steps 1) to 5) on pgs. 2-3, where a polymerization mixture oil phase comprising pore-forming agent/porogen (divinyl benzene with hexahydrotoluene or normal heptane and 1,2-dichloroethanes or toluene mix), is mixed with an aqueous phase, to then crosslink into resin particles, and it is thus a suspension polymerization and while they are not specifically disclosed to be macroporous spheres, this is expected to be inherent to the polymerization process disclosed, See MPEP 2112.01.); and
(2) a post-crosslinking reaction of the adsorbent resin:
The Archon (i.e. dry resin based spheres) prepared in the claimed step (1) are swollen by mixing with excess pore forming agent (i.e. solvent which may comprise 1,2-dichloroethanes, supra), then adding XDC (which will inherently also swell the resin, and while mixing for swelling is not specifically disclose it would have been obvious in order to evenly distribute the resin based spheres, and it would have been obvious to swell at room temperature as no heating is disclosed) and then adding ferric trichloride (i.e. ferric chloride), stirring the mixture for 1-3 hours, then heating it to 50-80°C for 6-12 hours to inherently allow the resin to undergo a second post-crosslinking reaction, then leaching resin with ethanol and then washing with water before drying; (step 6), pg. 3).
wherein in the step (1), the porogen may comprise toluene (pore forming agent disclosed in step 3 may include toluene, supra. Where the transitional phrase “is” is interpreted to mean “comprises”, see MPEP 2111.03, or alternatively the portion of the pore forming agent which is toluene is considered to be defined as the claimed “porogen”),
wherein in the step (1), a mass ratio of the porogen to divinylbenzene is (2-4x the monomer phase which may be up to 80% DVB – step 4), pg. 3)
wherein in the step (2),
dichloroethane acts as a solvent and is added in an amount 15-25 times that of the mass of the divinylbenzene; (swelling of dry spheres is in 15-25x solvent, which may be 50-80% dichloroethane, and where the spheres may be up to 50-80% DVB, steps 2)-6), pgs. 2-3);
XDC acts as a second crosslinking agent (i.e. inherently) and is added in an amount 0.315-0.9375 times that of the mass of the divinylbenzene, which overlaps the range claimed (XDC is added in an amount of 25-75% weight of spheres, which may be up to 50-80% DVB, steps 2)-6), pgs. 2-3); and
ferric chloride acts as the catalyst (i.e. inherently) and is added in an amount 0.125-0.375 times that of the mass of the divinylbenzene (10-30% of the resin, which may be up to 50-80% DVB, steps 2)-6), pgs. 2-3).
While “accurately weighing the dry resin based spheres prepared in the step (1) into a reactor” is not sepficially disclosed in step (2), it would have been obvious to measure quantities arcuately to have a repeatable process, and the vessel in which the reaction takes place may be considered, inherently, a reactor. Further, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe F.2d 695, 698, 227 USPQ 964,966 (Fed. Cir. 1985) and MPEP 2113.
While the catalyst is step (2) is not disclosed to be added “in batches” to do so would have been obvious to one of skill in the art at the time of the invention in order to use available storage and measuring devices, i.e. it would have been obvious to store or measure the catalyst in multiple containers/measuring cups, and thus add them in batches.
While it is not specifically disclosed in step (2) that the post-crosslinked spheres are then process by “firstly washing with boiling water, then cooling to room temperature, soaking and washing with ethanol, rinsing with deionized water, and filtering out the product”; it is disclosed that the prost-crosslinked spheres are rinsed, i.e. leaching the resin with ethanol and then washing with water before drying in step 6). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe F.2d 695, 698, 227 USPQ 964,966 (Fed. Cir. 1985) and MPEP 2113. The specific process of “firstly washing with boiling water, then cooling to room temperature, soaking and washing with ethanol, rinsing with deionized water, and filtering out the product” is not seen to result in a product different from one having treated by leaching the resin with ethanol and then washing with water before drying as disclosed.
Dong does not disclose (A) wherein the average micropore diameter is less than 5 nm, (B) in step (1) a mass ratio of the porogen to divinylbenzene is (1-1.4):1, (C) in the step (2), dichloroethane acts as a solvent and is added in an amount 8-9 times that of the mass of the divinylbenzene.
However, with regard to (A) the micropore diameter, Dong discloses the pore size (i.e. an average micropore diameter) is of 5-10 nm (claim 1); thus the claims differ in that 5 nm is disclosed which is close to, but does not sepficially include, “less than 5 nm” as claimed. However, Dong dos not disclose a specific reason that 5 nm would be ok for a pore size but 4.999 nm would not, thus one of skill in the art would see values very close to 5 nm, but slightly under, as acceptable pore size for the resin, and would find such vales obvious to use as no detrimental effect is disclosed. Further, pore size/average micropore diameter is well-known to effect adsorbent particle filtration properties, such as effecting what materials are removed by the adsorbent, and is thus a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values around a slightly outside of the disclosed range, so as to produce desired end results. See MPEP § 2144.05 (B).
While the micropore diameter is not specially disclosed to be as “tested by using 3H-2000III automatic nitrogen adsorption specific surface area tester”, it is seen as obvious to use a micropore diameter as measured by any means to measure the micropore diameter, including the claimed 3H-2000III automatic nitrogen adsorption specific surface area tester.
With regard to (B) the mass ratio of porogen, it is first noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe F.2d 695, 698, 227 USPQ 964,966 (Fed. Cir. 1985) and MPEP 2113. Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II). Specifically it is not clear that resin-based spheres made with a different ratio of porogen to divinylbenzene in step (1) will result in a different structure of the final resin-based spheres.
However, to address the product-by-process step directly, it is noted that Bessonov discloses a similar secondarily crosslinked polystyrene adsorbent resin, also using XDC as a secondary cross-linker (Abstract, Examples. 1-2, 9-10) and thus has a rigid benzene ring structure in a skeleton thereof, wherein the preparation process of the adsorbent resin comprises a similar step (1) preparation of polystyrene macroporous adsorbent resin-based spheres: carrying out a suspension polymerization by using divinylbenzene as a reactive compound (Example 2 uses 100% DVB as the monomer) with adding a porogen to obtain macroporous adsorbent resin-based spheres and drying after removing the porogen for use ([0031]-[0033], [0037], [0044], [0046], Example 2); and wherein in the step (1), “the porogen may be used in an amount ranged from 5 vol . % to 200 vol % base on a total volume of a monomer to be used or a monomer starting mixture to be used” [0063] and the monomer may be just divinylbenzene or a mixture of styrene and divinyl benzene with styrene:divinylbenzene ratios of 99.9:0.01 vol. % to 0.01:99.9 vol.% [0046].
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Dong by using a mass ratio of porogen of 5 vol . % to 200 vol % base on a total volume of a monomer to be used as disclosed by Bessonov because this involves the simple substitution of known porogen to monomer solution ratios used for forming polystyrene adsorbent particles which are later secondarily crosslinked with XDC to obtain the predictable result of forming successful polystyrene adsorbent resin particles. This will result in a mass ratio of porogen to divinyl benzene overlapping the range claimed.
With regard to (C) the mass ratio of dichloroethane, it is first noted that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe F.2d 695, 698, 227 USPQ 964,966 (Fed. Cir. 1985) and MPEP 2113. Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II). Specifically it is not clear that resin-based spheres made with a different ratio of dichloroethane to divinylbenzene in step (2) will result in a different structure of the final resin-based spheres.
However, to address the product-by-process step directly, it is noted that Bessonov discloses a similar secondarily crosslinked polystyrene adsorbent resin, also using XDC as a secondary cross-linker (Abstract, Examples. 1-2, 9-10) and thus has a rigid benzene ring structure in a skeleton thereof, wherein the preparation process of the adsorbent resin comprises a similar step (2) a post-crosslinking reaction of the adsorbent resin: weighing the dry resin-based spheres prepared in the step (1) into a three-neck flask (i.e. a reactor), adding solvent (which may preferably be dichloroethane [0054]) and crosslinker (which may preferably be p-xylylene dichloride [0053]), stirring and swelling at room temperature (since it is obvious to start at room temperature since no other is specified), adding catalyst slowly while agitating, and allowing the resin to undergo a second post-crosslinking reaction; washing with water and acetone until no chlorine ions remain in water ([0034]-[0036], Examples 9-13). Wherein in the step (2), dichloroethane (DCE) may be selected to act as a solvent [0054] and is added in “an amount ranged from 200 vol . % to 1000 vol . % based on a total volume of the polymer obtained in course of the polymerization or copolymerization” (which overlaps the claimed ratio on 8-9 times that of the mass of the divinylbenzene);
Therefore, at the time of filing, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Dong by using a ratio of dichloroethane of 200 vol . % to 1000 vol . % based on a total volume of the polymer obtained as disclosed by Bessonov because this involves the simple substitution of known dichloroethane to polymer ratios used for secondarily crosslinking an adsorbent polystyrene particle with XDC to obtain the predictable result of forming successful polystyrene adsorbent resin particles. This will result in a mass ratio of dichloroethane to divinyl benzene overlapping the range claimed.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Note: With regard to the adsorbent resin being for removing perfluorinated pollutants from a body of water; this is a functional limitation which attempts to define this apparatus claim’s structure in terms of its functional abilities. Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114), and thus the prior art need only disclose structure capable of achieving the recited function(s) to read on the functional limitations. These functional limitations do not further define over the prior art because the structure disclosed by Dong in view of Bessonov and EspacenetAbstract would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The Examiner agrees with Applicants’ arguments filed 09/10/2025, that the prior art cited fails to make obvious the detailed method of claim 13. Specifically Bessonov discloses that large pores (20 nm and larger [0083]) are desired so it would therefore not have been obvious to modify the resin of Bessonov to have pores in the range claimed of greater than or equal to 3 nm and less than 5 nm. Further the invention of claim 13 is seen to provide the unexpected results, as argued by Applicants’ the instant Example 1 shows unexpectedly improved removal effect of over 99% on trace perfluorinated pollutants in water, and is therefore not obvious over the cited prior art.
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, as well as overcoming the 112(b) rejections.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant's arguments filed 09/10/2025 have been fully considered and they are persuasive with regard to claim 13, and they are persuasive with regard to the previous rejections as they would apply to the amended claim 12, but claim 12 remains rejected now citing Dong as the primary reference.
In response to Applicants’ argument that Claim 12 possesses unexpected results and is therefore not obvious over the prior art; the Examiner disagrees. The data provided in the instant disclosure are not sufficient to show unexpected results of the claimed invention. Specifically:
It is well settled that evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains and that such evidence which is considerably narrower in scope than claimed subject matter is not sufficient to rebut a prima facie case of obviousness. See 2145 and 716.02(d) which states “[w]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range” and “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range”.
1. As rejected claim 1 is significantly broader than instant example 1, which applicant cites as an example of unexpected results and which are limited to the specific material produced through the process as described in Example 1, i.e. which at least appears to be limited to a specific micropore diameter, particle size and surface area, that are more narrow then those recited in claim 12, and thus the evidentiary showing is not commensurate in scope with the degree of patent protection sought.
Thus the claimed invention is not seen to possess unexpected results and is obvious in view of the cited art.
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.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773