DETAILED ACTION
Status of Claims:
Claims 1-5 and 7-20 are pending.
Claims 1, 10, and 17 are amended.
This Action is made Final.
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 3/10/2026 have been fully considered but they are not persuasive. The applicant argues that the double patenting rejection over 18/573,844 should be withdrawn because the copending claims do not disclose every limitation of the instant claims. This argument is not persuasive. It is noted that the applicant has not identified any limitations not disclosed in the copending application. The newly added limitations of “completely removing PFAS from the fluid”, although not stated in the copending claims, is inherent because an identical structure to that disclosed in the instant application is disclosed in the copending claims. An identical system (or system made by method of making the system) will inherently be configured for the same PFAS removal. The applicant has not addressed the double patenting rejection of claim 17 over 18/002,454.
The applicant argues that the double patenting rejection over USPN 12168622 should be withdrawn. The arguments are not persuasive for the reasons addressed below.
The applicant argues that Rittmann does not suggest the system of capable of breaking the C-F bonds of PFAS. This argument is not persuasive because it is well known that catalysts can break C-F bonds (see Liu Abstract) and through routine experimentation one skilled in the art would have found appropriate sources of contamination to treat with a known system. Although Rittmann does not explicitly teach complete removal of PFAS the claims do not limit the initial concentration or time in which complete removal is achieved. Therefore, with reference to the method claims, it would have been obvious to one skilled in the art to operate the first reactor until the PFAS is completely removed because PFAS is a known pollutant.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 7-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 40-55 of copending Application No. 18/573,844 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the instant claims are disclosed by the claims of the copending application. The copending application contains additional limitations in the claims, however these are not excluded from the instant invention. The same structure as disclosed by the applicant is claimed in the copending claims, therefore it is inherently configured for the same level of PFAS removal.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 5, and 8-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-15, 17, 18, and 21 of U.S. Patent No. 12168622 in view of Liu et al, the article, “Direct and efficient reduction of perfluorooctanoic acid using bimetallic catalyst supported on carbon”.
Regarding Claim 1: The claims of the patent disclose the system for removing contaminants from a fluid, the system comprising: a first reactor and a second reactor, wherein: the first reactor and the second reactor are in fluid connection; the first reactor comprises: a monometallic catalyst film that reduces PFAS to less fluorinated counterparts, the monometallic catalyst film comprising of nanoparticles of a precious metal, wherein the nanoparticles have diameters of less than 10 nm; a first nonporous membrane comprising a gas-phase side and a liquid-phase side, wherein the catalyst film is deposed on the liquid-phase side of the first nonporous membrane; and a hydrogen (H2) gas source, wherein the H2 gas source delivers H2 to the gas-phase side of the first nonporous membrane and the nanoparticles and the H2 gas catalyze reductive defluorination of PFAS; and the second reactor comprises: a biofilm that metabolizes the less fluorinated counterparts of PFAS; a second nonporous membrane comprising gas-phase side and a liquid-phase side, wherein the biofilm is deposed on the liquid-phase of the second nonporous membrane; and an oxygen (02) gas source, wherein the 02 gas source delivers 02 to the gas-phase side of the second non-porous membrane (see claim 1).
The claims do not teach that the contaminants are per- and polyfluoroalkyl substances (PFAS), that the catalyst is configured to reduce PFAS or that the biofilm is configured the metabolize the less fluorinated counterparts of PFAS. The catalyst film is inherently configured to reduce PFAS as it is the same catalyst film disclosed by the applicant as being capable of reducing PFAS. The claims do not limit the extent or rate of PFAS removal required by the catalyst film.
Liu teaches that catalysts can be used to reduce PFAS to less fluorinated counterparts (see Abstract).
The patent and Liu are analogous inventions in systems for removing PFAS contaminants. It would have been obvious to one skilled in the art to use the system of the patent to treat per- and polyfluoroalkyl substances (PFAS), as disclosed by Liu, and configure the catalyst to reduce PFAS, as disclosed be Liu because through routine experimentation one skilled in the art would have found appropriate uses for a known system. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). And it is known that PFAS can be reduced catalytically. It would have further been obvious to one skilled in the art to configure the biofilm of the patent because it would be obvious to use the biofilm to treat the contaminants present in the water being treated. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.). Additionally it would have been obvious to one skilled it the art to operate the system until the PFAS is completely removed because it is desirable to remove PFAS from water.
Regarding Claim 2:
The claims of the patent, as modified, teaches the system of claim 1, wherein the nanoparticles have diameters of less than 19 nm. Given that the prior art range of less than 19 nm encompasses the claimed range of less than 5 nm a prima facie case of obviousness exists and it would have been obvious to one skilled in the art to use a diameter of less than 5 nm (see MEPE 2144.05).
Regarding Claims 5, 8, 9:
Claim 5 of the instant invention directed correspond to claims 4 of the patent. Claims 8 and 9 of the instant invention correspond to claim 6 of the patent.
Regarding Claim 10:
The claims of the patent disclose the method of removing contaminants from a fluid, the method comprising: contacting a fluid comprising PFAS with a monometallic catalyst film to produce a fluid comprising less fluorinated counterparts of PFAS, wherein the monometallic catalyst film comprises nanoparticles of a precious metal with diameters of less than 10 nm (5-40 nm Given that the prior art range of less than 5-40 nm encompasses the claimed range of less than 10 nm a prima facie case of obviousness exists and it would have been obvious to one skilled in the art to use a diameter of less than 10 nm (see MEPE 2144.05)); and contacting the fluid comprising less fluorinated counterparts of PFAS with a biofilm comprising microorganisms that metabolizes the less fluorinated counterparts of PFAS to produce a fluid comprising CO2 (see claim 10).
The claims do not teach that the contaminants are per- and polyfluoroalkyl substances (PFAS).
Liu teaches that catalysts can be used to reduce PFAS to less fluorinated counterparts (see Abstract).
The patent and Liu are analogous inventions in systems for removing PFAS contaminants. It would have been obvious to one skilled in the art to use the system of the patent to treat per- and polyfluoroalkyl substances (PFAS), as disclosed by Liu, because through routine experimentation one skilled in the art would have found appropriate uses for a known system. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). And it is known that PFAS can be reduced catalytically.
Regarding Claims 11-14 and 16:
Claims 11-14 of the instant invention directly correspond to claims 10-12 and 15 of the patent. Claim 16 corresponds to claim 17
Regarding Claim 15:
The claims of the patent, as modified, discloses the method of claim 14, wherein: the first nonporous membrane is in a first reactor (see claim 13); the second nonporous membrane is in a second reactor (see claim 16); and the second reactor is in fluid connection with the first reactor (see claim 4).
Regarding Claim 17:
Claim 17 corresponds to claims 10 of the patent.
The claims do not teach that the contaminants are per- and polyfluoroalkyl substances (PFAS).
Liu teaches that catalysts can be used to reduce PFAS to less fluorinated counterparts (see Abstract).
The patent and Liu are analogous inventions in systems for removing PFAS contaminants. It would have been obvious to one skilled in the art to use the system of the patent to treat per- and polyfluoroalkyl substances (PFAS), as disclosed by Liu, because through routine experimentation one skilled in the art would have found appropriate uses for a known system. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). And it is known that PFAS can be reduced catalytically. Additionally it would have been obvious to one skilled it the art to operate the system until the PFAS is completely removed because it is desirable to remove PFAS from water.
Regarding Claim 18:
Claim 18 corresponds to claim 15 of the patent.
Regarding Claim 19:
The claims of the copending application, as modified, discloses the method of claim 18, wherein: the first nonporous membrane is in a first reactor (see claim 13); the second nonporous membrane is in a second reactor (see claim 16); and the second reactor is in fluid connection with the first reactor (see claim 4).
Claim 17 as provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 15-18 of copending Application No. 18/002,454 in view of Liu et al, the article, “Direct and efficient reduction of perfluorooctanoic acid using bimetallic catalyst supported on carbon”.
Regarding Claim 17:
The claims of the copending application disclose the method of removing per- and polyfluoroalkyl substances (PFAS) from a fluid (oxidized contaminants) (see claim 2), the method comprising: providing a first nonporous membrane, the first nonporous membrane comprising a gas- phase side and a liquid-phase side; contacting the liquid-phase side of the first nonporous membrane with a catalyst-precursor medium, the catalyst-precursor medium comprising a precious metal salt and a solvent; and contacting the gas-phase side of the first nonporous membrane with hydrogen (H2) gas at a sufficient partial pressure to convert at least 90% of the precious metal salt in the precious metal medium to elemental form, wherein the elemental form of the precious metal is in the form of nanoparticles (see claims 1-3) with diameters of less than 10 nm (see claim 18, less than 5 nm) and the precious metal nanoparticles are deposed on the liquid-phase side of the first nonporous membrane to form a catalyst film (see claim 1-3).
The claims do not teach that the contaminants are per- and polyfluoroalkyl substances (PFAS).
Liu teaches that catalysts can be used to reduce PFAS to less fluorinated counterparts (see Abstract).
The patent and Liu are analogous inventions in systems for removing PFAS contaminants. It would have been obvious to one skilled in the art to use the system of the patent to treat per- and polyfluoroalkyl substances (PFAS), as disclosed by Liu, and configure the catalyst to reduce PFAS, as disclosed be Liu because through routine experimentation one skilled in the art would have found appropriate uses for a known system. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). And it is known that PFAS can be reduced catalytically. Additionally it would have been obvious to one skilled it the art to operate the system until the PFAS is completely removed because it is desirable to remove PFAS from water.
This is a provisional nonstatutory double patenting rejection.
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.
Claims 1-5 and 7-9 are 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 1:
The claim states “thereby completely removing PFAS from the fluid”. This limitation is directed to a method of operation (process), however the claim is directed to a system (product). It is not clear if infringement would only occur if PFAS was completely removed from the fluid or not. See MPEP 2173.05(p).
The remaining claims are indefinite as they depend from an indefinite claim.
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) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rittmann, the Article “Synergistic Reductive Dechlorination of 1,1,1-Trichloroethane and Trichloroethene and Aerobic Biodegradation of 1,4-Dioxane” in view of Liu et al, the article, “Direct and efficient reduction of perfluorooctanoic acid using bimetallic catalyst supported on carbon”
Regarding Claim 1:
Rittmann teaches the system for removing halogenated contaminants from a fluid (see pg. 39 section 3.1:Background), the system comprising: a first reactor and a second reactor, wherein: the first reactor and the second reactor are in fluid connection (see pg. 68, figure 5.1); the first reactor comprises: a monometallic catalyst film (palladium coating) that reduces contaminates, the monometallic catalyst film comprising of nanoparticles of a precious metal (palladium nanoparticles) (see pg. 39, section 3.1:Background); and the second reactor comprises: a biofilm that metabolizes the less halogenated counterparts of the contaminants. The catalyst film is inherently configured to completely remove PFAS from the fluid as it is capable of removing PFAS. The claims do not limit the time in which complete removal is required to occur or the initial concentration that is removed.
Rittmann does not teach that the halogenated contaminates are per- and polyfluoroalkyl substances (PFAS), or explicitly teach the catalytic film is configured to reduce PFAS or teach the biofilm configured to metabolize the less fluorinated counterpart of PFA. The catalytic film of Rittmann would inherently be configured to reduce PFAS to the less fluorinated counterparts because the same catalytic film as disclosed in the instant invention is used by Rittmann (palladium nanoparticle catalytic film). As the catalytic film of Rittmann would be capable of reducing PFAS it is configured to reduce PFAS. The claims do not limit the PFAS reduction rate.
Liu teaches that PFAS (PFAO) can be reduced with a catalyst in polluted wastewater (see abstract).
Rittmann and Liu are analogous inventions in the art of reducing halogenated contaminants in wastewater with a catalyst. It would have been obvious to one skilled in the art to configure the catalyst of Rittmann to reduce PFAS, as disclosed by Liu, because through routine experimentation one skilled in the art would have found appropriate uses for the known reduction catalyst. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.). It would have further been obvious to configure the biofilm to metabolize the less fluorinated counterparts of PFAS because when the system is used to treat PFAS containing wastewater (as when modified by Liu) the less fluorinated counterparts of PFAS are the products formed by the catalyst, and it would be obvious to use a biofilm configured to treat the contaminant present. Further Rittmann teaches selecting an inoculant (bacteria forming the biofilm) from different sources including aerobic sludge from a wastewater treatment plant (see Rittmann pg. 37 section 4.2) which is one of the same inoculating materials used in the instant invention (see para. 0059 instant application’s specification).
Claim(s) 2, 4, 5, and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rittmann, the Article “Synergistic Reductive Dechlorination of 1,1,1-Trichloroethane and Trichloroethene and Aerobic Biodegradation of 1,4-Dioxane” in view of Liu et al, the article, “Direct and efficient reduction of perfluorooctanoic acid using bimetallic catalyst supported on carbon” as applied to claim 1 above and further in view of Jia et al (USPN 9,527,068).
Regarding Claim 2:
Rittmann, as modified, teaches the system of claim 1.
Rittmann does not explicitly teach that the nanoparticles have diameters of less than 5 nm. Rittman further teaches that the reaction kinetics are dependent on particle size (see pg. 39 section 3.1 Background).
Jia teaches a metal catalyst comprising nanoparticle of 1 to 100 nm (see col. 1 lines 35-39). Given that the prior art range of 1-100 nm overlaps the claimed range of less than 5 nm a prima facie case of obviousness exists and it would have been obvious to one skilled in the art to use a nanoparticle with a diameter of less than 10 nm. (See MEPE 2144.05).
Rittmann (as modified) and Jia are analogous inventions in the art of nanoparticle catalysts. It would have been obvious to one skilled in the art to use a nanoparticle of less than 5 nm, as disclosed by Jia, in the invention of Rittmann because it is within a range known to be effective for metal catalysts and Rittmann teaches that the particle size is a result effective variable effecting the reaction rate. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re
Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding Claim 4:
Rittmann, as modified, teaches the system of claim 1, wherein the biofilm comprises heterotrophic bacteria (bacteria uses organic carbon (dioxane, acetate and ethane) (see Rittmann pg. 55-56 section 4.1) capable of oxidizing partially fluorinated or non-fluorinated alkyl acids (bacteria are from the same source (activated sludge) as in the instant invention, therefore they would be capable of oxidizing the same materials) (see Rittmann pg. 56 section 4.1)
Regarding Claim 5:
Rittmann, as modified, teaches system of claim 1, further comprising a pump, wherein the pump ensures fluid flows from the first reactor to the second reactor (pump is show in figures) (see Rittmann pg. 68, fig, 5.1).
Regarding Claim 7:
Rittmann, as modified, teaches the system of claim 1, wherein the nonporous membranes are hollow-fiber membranes (see Rittmann pg. 15 section 2.3.2).
Regarding Claims 8 and 9:
Rittmann, as modified, teaches the system of claim 1, wherein the precious metal is a platinum group metal (palladium) (see Rittmann pg. 39 section 3.1).
Claim(s) 10-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rittmann, the Article “Synergistic Reductive Dechlorination of 1,1,1-Trichloroethane and Trichloroethene and Aerobic Biodegradation of 1,4-Dioxane” in view of Liu et al, the article, “Direct and efficient reduction of perfluorooctanoic acid using bimetallic catalyst supported on carbon” and further in view of Jia et al (USPN 9,527,068).
Regarding Claim 10:
Rittmann teaches the method of removing halogenated contaminants (TCA and TCE) from a fluid, the method comprising: contacting a fluid comprising contaminants with a monometallic catalyst film (coated PdNPs) (see pg. 40 section 3.2) to produce a fluid comprising less halogenated counterparts (see pg. 42-43 section 3.3.1), wherein the monometallic catalyst film comprises nanoparticles of a precious metal (palladium nanoparticles) (see pg. 40 section 3.2); and contacting the fluid comprising less fluorinated counterparts of PFAS with a biofilm comprising microorganisms that metabolizes the less halogenated counterparts to produce a fluid comprising CO2.(the same biodegradation step will have the same product) (see pg. 59, section 4.3).
Rittmann does not teach that the halogenated contaminates are per- and polyfluoroalkyl substances (PFAS), that the nanoparticles have diameters of less than 10 nm, or completely removing PFAS from the fluid. Rittman further teaches that the reaction kinetics are dependent on particle size (see pg. 39 section 3.1 Background).
Liu teaches that PFAS (PFAO) can be reduced with a catalyst in polluted wastewater (see abstract).
Rittmann and Liu are analogous inventions in the art of reducing halogenated contaminants in wastewater with a catalyst. It would have been obvious to one skilled in the art to configure the catalyst of Rittmann to reduce PFAS, as disclosed by Liu, because through routine experimentation one skilled in the art would have found appropriate uses for the known reduction catalyst. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.). It would have further been obvious to have the biofilm metabolize the less fluorinated counterparts of PFAS because when the system is used to treat PFAS containing wastewater (as when modified by Liu) the less fluorinated counterparts of PFAS are the products formed by the catalyst, and it would be obvious to use the biofilm to treat the contaminant present. Further Rittmann teaches selecting an inoculant (bacteria forming the biofilm) from different sources including aerobic sludge from a wastewater treatment plant (see Rittmann pg. 37 section 4.2) which is one of the same inoculating materials used in the instant invention (see para. 0059 instant application’s specification). When treating PFAS it would have been obvious to one skilled in the art to completely remove PFAS from the fluid when contacting with the catalyst film because they are known to be harmful to the environment (see Liu pg. 1: introduction)
Jia teaches a metal catalyst comprising nanoparticle of 1 to 100 nm (see col. 1 lines 35-39). Given that the prior art range of 1-100 nm overlaps the claimed range of less than 10 nm a prima facie case of obviousness exists and it would have been obvious to one skilled in the art to use a nanoparticle with a diameter of less than 10 nm. (See MEPE 2144.05).
Rittmann (as modified) and Jia are analogous inventions in the art of nanoparticle catalysts. It would have been obvious to one skilled in the art to use a nanoparticle of less than 10 nm, as disclosed by Jia, in the invention of Rittmann because it is within a range known to be effective for metal catalysts and Rittmann teaches that the particle size is a result effective variable effecting the reaction rate. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re
Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding Claim 11:
Rittmann, as modified teaches the method of claim 10, further comprising: providing a first nonporous membrane (nonporous polypropylene fiber or Model MHF 200TL), wherein the first nonporous membrane comprises a gas-phase side and a liquid-phase side (see pg. 40 section 3.2, fig. 3.2); contacting the liquid-phase side of the first nonporous membrane with a catalyst-precursor medium, the catalyst-precursor medium comprising a precious metal salt (Na2PdCl4) and a solvent (material is soluble and added in mg/l therefore there is inherently a solvent of some kind) (see Rittmann pg. 40 section 3.2, 3rd paragraph); and contacting the gas-phase side of the first nonporous membrane with hydrogen (H2) gas (see Rittmann pg. 40 section 3.2, 2nd paragraph) at a sufficient partial pressure to convert at least 90% of the precious metal salt in the precious metal medium to elemental form, wherein the elemental form of the precious metal is in the form of nanoparticles and is deposed on the liquid-phase side of the first nonporous membrane to form the monometallic catalyst film (same partial pressure is used in the prior art 10 psig as is disclosed in the instant invention, therefore the partial pressure would inherently be sufficient to convent at least 90% of the precious metal salt) (see Rittmann pg. 42 Table 3.1, instant invention para. 0031).
Regarding Claim 12:
Rittmann, as modified, teaches the method of claim 10, wherein the precious metal concentration in the catalyst-precursor medium is 0.01-100 mM (0.1 mmol/ L) (see Rittmann pg. 42, Table 3.1).
Regarding Claim 13:
Rittmann, as modified, teaches the method of claim 12 wherein the pH of the catalyst-precursor medium is 6-8 (pH 7) (see Rittmann pg. 40, section 3.2, 1st paragraph).
Regarding Claim 14:
Rittmann, as modified, teaches the method of claim 10, further comprising: submerging a second nonporous membrane with a microorganism-enrichment medium comprising an organic carbon source (acetate); contacting an inoculant (wetland sediment or activated sludge) with the second nonporous membrane (Model MHF 200TL) (see Rittmann pg. 61, pg. 37 section 4.2), wherein the inoculant comprises heterotrophs capable of oxidizing partially fluorinated or non-fluorinated alkyl acids (same inoculants as disclosed by the applicant are used by Rittmann, therefore they would be capable of the same oxidation); and pressurizing the gas-phase side of the second nonporous membrane with oxygen (02) gas at desired partial pressure, whereby the biofilm that metabolizes the less fluorinated counterparts of PFAS is formed on the liquid-phase side of the second nonporous membrane (see Rittman pg. 59 section 4.3).
Regarding Claim 15:
Rittmann, as modified, teaches the method of claim 14, wherein: the first nonporous membrane is in a first reactor; the second nonporous membrane is in a second reactor; and the second reactor is in fluid connection with the first reactor (see Rittman fig. 5.1).
Regarding Claim 16:
Rittmann teaches the method of claim 10, wherein the fluid comprising PFAS flows at a hydraulic retention time (HRT) of no more than 24 hours (12 hours) (See Rittmann pg. 46 section 3.3.2).
Regarding Claim 17:
Rittmann teaches the method of removing halogenated substances from a fluid, the method comprising: providing a first nonporous membrane (nonporous polypropylene fiber or Model MHF 200TL), wherein the first nonporous membrane comprises a gas-phase side and a liquid-phase side (see pg. 40 section 3.2, fig. 3.2); contacting the liquid-phase side of the first nonporous membrane with a catalyst-precursor medium, the catalyst-precursor medium comprising a precious metal salt (Na2PdCl4) and a solvent (material is soluble and added in mg/l therefore there is inherently a solvent of some kind) (see Rittmann pg. 40 section 3.2, 3rd paragraph); and contacting the gas-phase side of the first nonporous membrane with hydrogen (H2) gas (see Rittmann pg. 40 section 3.2, 2nd paragraph) at a sufficient partial pressure to convert at least 90% of the precious metal salt in the precious metal medium to elemental form, wherein the elemental form of the precious metal is in the form of nanoparticles and is deposed on the liquid-phase side of the first nonporous membrane to form the monometallic catalyst film (same partial pressure is used in the prior art 10 psig as is disclosed in the instant invention, therefore the partial pressure would inherently be sufficient to convent at least 90% of the precious metal salt) (see Rittmann pg. 42 Table 3.1, instant invention para. 0031). wherein the catalyst film reduces halogenated contaminants to produce less halogenated counterparts and the biofilm metabolizes the less halogenated counterparts (flow is from one reactor to the next) (see Rittmann pg. 49 figure 5.1)
Rittmann does not teach that the halogenated contaminates are per- and polyfluoroalkyl substances (PFAS), that the nanoparticles have diameters of less than 10 nm, or completely removing PFAS from the fluid. Rittman further teaches that the reaction kinetics are dependent on particle size (see pg. 39 section 3.1 Background).
Liu teaches that PFAS (PFAO) can be reduced with a catalyst in polluted wastewater (see abstract).
Rittmann and Liu are analogous inventions in the art of reducing halogenated contaminants in wastewater with a catalyst. It would have been obvious to one skilled in the art to configure the catalyst of Rittmann to reduce PFAS, as disclosed by Liu, because through routine experimentation one skilled in the art would have found appropriate uses for the known reduction catalyst. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.). When treating PFAS it would have been obvious to one skilled in the art to completely remove PFAS from the fluid when contacting with the catalyst film because they are known to be harmful to the environment (see Liu pg. 1: introduction).
Jia teaches a metal catalyst comprising nanoparticle of 1 to 100 nm (see col. 1 lines 35-39). Given that the prior art range of 1-100 nm overlaps the claimed range of less than 10 nm a prima facie case of obviousness exists and it would have been obvious to one skilled in the art to use a nanoparticle with a diameter of less than 10 nm. (See MEPE 2144.05).
Rittmann (as modified) and Jia are analogous inventions in the art of nanoparticle catalysts. It would have been obvious to one skilled in the art to use a nanoparticle of less than 10 nm, as disclosed by Jia, in the invention of Rittmann because it is within a range known to be effective for metal catalysts and Rittmann teaches that the particle size is a result effective variable effecting the reaction rate. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re
Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Regarding Claim 18:
Rittmann, as modified, teaches the method of claim 17, further comprising: providing a second nonporous membrane, wherein the second nonporous membrane comprises a gas-phase side and a liquid-phase side (second membrane is the same as the first) (see Rittmann pg. 59 section 4.3); submerging the second nonporous membrane with a microorganism-enrichment medium comprising an organic carbon source (acetate) (see Rittmann pg. 59 section 4.3); contacting an inoculant with the liquid-phase side of the second nonporous membrane, wherein the inoculant comprises heterotrophs (wetland sediment) wherein the inoculant comprises heterotrophs capable of oxidizing partially fluorinated or non-fluorinated alkyl acids (same inoculants as disclosed by the applicant are used by Rittmann, therefore they would be capable of the same oxidation) (see Rittmann pg. 37 section 4.2); and pressurizing the gas-phase side of the second nonporous membrane with oxygen (02) gas at desired partial pressure thereby forming a biofilm on the liquid-phase side of the second nonporous membrane (pressurized with O2) (see Rittmann pg. 59 section 4.3), wherein the catalyst film reduces PFAS to produce less fluorinated counterparts of PFAS and the biofilm metabolizes the less fluorinated counterparts of PFAS (flow is from one reactor to the next) (see Rittmann pg. 49 figure 5.1).
Regarding Claim 19:
Rittmann teaches the method of claim 18, wherein: the first nonporous membrane is in a first reactor; the second nonporous membrane is in a second reactor; and the first reactor and the second reactor are in fluid connection (see Rittmann pg. 49 figure 5.1).
Claim(s) 3 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rittmann, the Article “Synergistic Reductive Dechlorination of 1,1,1-Trichloroethane and Trichloroethene and Aerobic Biodegradation of 1,4-Dioxane” in view of Liu et al, the article, “Direct and efficient reduction of perfluorooctanoic acid using bimetallic catalyst supported on carbon” and Jia et al (USPN 9,527,068) as applied to claims 1 and 17 above, and further in view of Ciebien et al the article, “Membrane catalysts for partial hydrogenation of 1,3-butadiene: catalytic properties of palladium nanoclusters synthesized within deblock copolymer films”.
Regarding Claim 3:
Rittmann, as modified, teaches the system of claim 1.
Rittmann does not teach wherein the monometallic catalyst film comprises nanoclusters of the nanoparticles, wherein the nanoparticles have diameters of less than 0.1 nm and the nanoclusters have diameters of 2-3 nm.
Ciebien teaches a monometallic catalyst that comprises nanoclusters of the nanoparticles, wherein nanoclusters have diameters of 2-3 nm (30 Angstrom) (see pg. 48 section 3.1). Ciebien is silent as to the nanoparticles have diameters of less than 0.1 nm, however the nanoparticle size is inherently less than 1 nm as the cluster size can be 2 nm and the particles that make up the cluster necessarily have a diameter less than the cluster they form (see pg. 48 section 3.1) (nanocluster inherently has at least 2 nanoparticles, therefore the particle diameter can be no more than half the cluster diameter). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore it would have been obvious to one skilled in the art to use nanoparticles with a diameter less than 0.1 nm to form the nanoclusters.
Rittmann, as modified, and Ciebien are analogous inventions in the art of nanoparticle catalyst. It would have been obvious to one skilled in the art to replace the nanoparticles of Rittmann with the nanocluster of Ciebien because it is the simple substitution of one nanoparticle palladium catalyst with another nanoparticle palladium catalyst, obviously resulting in the degradation of contaminants with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 20:
Rittmann, as modified, teaches the method of claim 17, wherein: the catalyst-precursor medium consists of a palladium salt (Na2PdCl4) and a solvent (material is soluble and added in mg/l therefore there is inherently a solvent of some kind) (see Rittmann pg. 40 section 3.2, 3rd paragraph); the concentration of palladium in the catalyst-precursor medium is 0.1-100 mM (0.1 mmol/ L) (see Rittmann pg. 42, Table 3.1); the pH of the catalyst-precursor medium is 6-8 (pH 7) (see Rittmann pg. 40, section 3.2, 1st paragraph); and the catalyst film comprises palladium nanoparticles with a diameter of less than 0.1 nm and nanoclusters of palladium nanoparticles with diameters of less than 5 nm.
Rittmann does not teach wherein the monometallic catalyst film comprises nanoclusters of the nanoparticles, wherein the nanoparticles have diameters of less than 0.1 nm and the nanoclusters have diameters less than nm.
Ciebien teaches a monometallic catalyst that comprises nanoclusters of the nanoparticles, wherein nanoclusters have diameters of less than 5 nm (30 Angstrom) (see pg. 48 section 3.1). Ciebien is silent as to the nanoparticles have diameters of less than 0.1 nm, however the nanoparticle size is inherently less than 1 nm as the cluster size can be 2 nm and the particles that make up the cluster necessarily have a diameter less than the cluster they form (see pg. 48 section 3.1) (nanocluster inherently has at least 2 nanoparticles, therefore the particle diameter can be no more than half the cluster diameter). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore it would have been obvious to one skilled in the art to use nanoparticles with a diameter less than 0.1 nm to form the nanoclusters.
Rittmann, as modified, and Ciebien are analogous inventions in the art of nanoparticle catalyst. It would have been obvious to one skilled in the art to replace the nanoparticles of Rittmann with the nanocluster of Ciebien because it is the simple substitution of one nanoparticle palladium catalyst with another nanoparticle palladium catalyst, obviously resulting in the degradation of contaminants with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dionydiou et al (US 2020/0179909) which teaches complete removal of PFAO with a catalyst (see para. 0058).
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 4/8/2026