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
Applicant’s election of claims 1, 2, 4, 6, 9, 10, 12, 19 and 20 in the reply filed on 7/30/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 23, 26-28, 30, 33, 35, 37, 41, 49 and 50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/30/25.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: for Figure 4, reference number 20 is mentioned at page 7 line 27. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
on page 7, line 31 reference numeral 10 is used to designate both the gas cylinder and the flow rate controller; however, it appears the flow rate controller should be designated 12
on page 10, lines 27-28 list out reference numerals 37, 38 and 39; however, the reference numerals do not appear to match up with what is depicted in Fig. 25
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Specifically, it is noted that in claim 1, there are two limitations that are being interpreted under the provisions of 35 U.S.C. 112(f) as set forth above. These limitations are the two “means for” limitations in lines 7-8 and lines 12-13. For each, it is noted that the means for introducing a reductant or oxidant into the medium in the first chamber or into the regeneration solution in the second chamber are being treated as a pipe or tubing to convey the reductant or oxidant as depicted in Fig. 25.
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) 1, 2, 4, 6, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by KR101559480 B1 to Choi et al., with reference to the machine translation provided with the Restriction Requirement mailed 6/23/25, hereinafter referred to as “CHOI”.
Regarding claim 1, CHOI teaches a system for decreasing an amount of ions in a liquid medium (see generally CHOI at Abstract), comprising:
a first chamber that comprises the medium, a plurality of conductive porous particles and a catalyst in conductive contact with the particles (see CHOI at ⁋17 and ⁋18 teaching the porous carbon also having a catalyst on the carbon skeleton support; see also CHOI at ⁋54 teaching the carbon being granular activated carbon, i.e. GAC; see also CHOI at Fig. 1 depicting a column that comprises the first chamber)
with the catalyst capable of catalyzing an oxidation reaction upon exposure to a reductant in the medium and/or a reduction reaction upon exposure to an oxidant in the medium as claimed (see CHOI at Abstract and ⁋19 teaching the introduction of hydrogen gas to decompose the anions and so capable of acting as claimed); and
means for introducing said reductant or said oxidant into the medium in said first chamber (see CHOI at Fig. 1 depicting a column having a lower inlet tube that would be attached to other tubing to allow for the flowing of the H2 gas into the column; see also CHOI at ¶19 teaching the use of various fluid reducing agents which would be connected by pipes/conduits for introducing the reducing agents to the saturated material).
Regarding claims 2, 4 and 6, it is noted that claim 1 merely requires the catalyst being capable of catalyzing an oxidation or reduction reaction as claimed (see rejection of claim 1 above). As such, the further limitations of claims 2, 4 and 6, as currently presented, are being treated as just further requiring the capability of catalyzing a gas phase reduction or oxidation reaction, and so met by the teachings of CHOI as set forth above with respect to the rejection of claim 1 which is incorporated herein.
Regarding claim 12, CHOI teaches the system wherein the surface of the conductive porous particles comprises a functional group, said functional group capable of enhancing selectivity of the particles towards specific ions (see CHOI at ¶23-¶24 teaching the modification of the carbon surface with cationic surfactants having various functional groups; see also CHOI at ¶17 and ¶38 teaching the improvement in ion selectivity and adsorption capacity).
Regarding claims 19 and 20, CHOI teaches the system wherein the catalyst is physically attached to the conductive porous particles (see CHOI at ¶18) so as to read on claims 19 and 20 as set forth.
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) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHOI in view of US Pat. No. 7,374,693 to Rutberg et al., (hereinafter referred to as “RUTBERG”).
Regarding claims 9 and 10, while CHOI teaches the use of wide array of metal particles as a catalyst on the porous carbon particles (see CHOI at ¶7 and ¶18), CHOI fails to teach the conductive porous particles comprising a pseudocapacitive material wherein the pseudocapacitive material is a transition metal oxide or sulfide as claimed.
However, RUTBERG teaches it is known to use metal oxides including iron oxide, cobalt oxide, nickel oxides, or manganese oxide and further including platinum or palladium as a noble metal as a catalyst material on an activated carbon carrier (see RUTBERG at col. 1 lines 62-67 teaching the presence of transition metal oxides such as manganese oxide or iron oxide as the pseudocapacitive material in addition to platinum or palladium as the catalytic material). As such, one of ordinary skill in the art would have appreciated that the catalyst of CHOI could be any known catalyst material. Furthermore, RUTBERG teaches a catalyst that is known to be used on activated carbon and would be reasonably expected to help catalyze the desired reaction.
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 employed the mixed catalyst of RUTBERG in the system of CHOI so as to have the activated carbon with a noble metal catalyst and, in addition, a transition metal oxide as claimed.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794