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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/30/2025 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bettinger et al (US Patent No. 4278548 A) hereinafter Bettinger in view of Pohland et al. ("Successful Operation of a Permasep.RTM. Permeator Reverse-Osmosis System on Biologically Active Feed Water", American Chemical Society Symposium Series 153, Synthetic Membranes, (1981), pp. 399-406 (Year: 1981)) hereinafter Pohland in view of Shippey et al (US Patent No. 3992301 A) hereinafter Shippey.
Regarding Claim 1, Bettinger teaches the addition of iodine (i.e., an iodine-based oxidizing agent) to a process stream (i.e., the water to be treated; Col. 1, Lines 65-68 to Col. 2, Lines 1-7) where the additive is introduced into the process stream for about 30 minutes to 3 hours for each 24 hours of operation (i.e., the adding of the iodine-based oxidizing agent to the water to be treated being an intermittent addition; Col. 2, Lines 56-65) and the iodine can be added as a variety of convenient forms including elemental iodine and as potassium iodide if chlorine is present where the quantity of additive is adjusted based upon the chlorine present (i.e., wherein the iodine-based oxidizing agent comprises iodine and an iodide; Col. 2, Lines 8-45) and gives an example of aqueous addition of potassium iodide in Example 1 (i.e., the iodine-based oxidizing agent comprises water; Col 3, Lines 45-50) with the iodine added in quantities to provide 1 to 25 ppm (or 1 to 25 mg/L) in the process stream (i.e., the intermittent addition of iodine-based oxidizing agent to the water to be treated occurs such that a total iodine concentration in the water to be treated is not more than 5.4 mg/L, and a total iodine value (mg/L*h) represented by (total iodine within the water to be treated (mg/L))*(addition time (h) for the iodine-based oxidizing agent) is not more than 1.25 (mg/L*h); Col. 2, Lines 25-45) before entering a reverse osmosis device (i.e., subjecting the water to be treated obtained by the intermittent addition of the iodine-based oxidizing agent addition to a filtration treatment using a separation membrane, the separation membrane being a polyamide-based reverse osmosis membrane; Col. 1, Lines 65-68 to Col. 2, Lines 1-7) where the liquid process stream passes through a reverse osmosis module to produce a permeate and concentrate (i.e., separating a filtration treated water obtained by the filtration treatment into a permeate and a concentrate using a reverse osmosis membrane; Col. 1, Lines 38-53) for the purpose of inhibiting microorganism growth while also not degrading the structural integrity of the membrane polymer (Col. 1, Lines 65-68 to Col. 2, Lines 1-7).
Furthermore, Bettinger teaches where the additive is introduced into the process stream for about 30 minutes (or 0.5 hours) to 3 hours (Col. 2, Lines 56-65). Bettinger does not teach the explicit range of wherein the addition period is of at least 10 seconds but not longer than 0.5 hours during which the iodine-based oxidizing agent is continuously added to the water to be treated in the instant claim. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have selected an addition time that corresponds to the claimed range of addition time while experimenting with the range taught by Bettinger.
Furthermore, Bettinger teaches the iodine added in quantities to provide 1 to 25 ppm (or 1 to 25 mg/L) in the process stream (Col. 2, Lines 25-45). Bettinger does not teach the explicit range of less than 5.4 mg/L of total iodine concentration in the instant claim. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have selected a total iodine concentration that corresponds to the claimed range of total iodine concentration while experimenting with the range taught by Bettinger.
Furthermore, Bettinger teaches that the preferred treatment time for the additive is about 30 minutes to 1 hour in every 24 hours of operation (Col. 2, Lines 56-65), which, when multiplied, demonstrates, 1 ppm (mg/L) X 0.5 hours = 0.5 (mg/L)*hour, at the low end of the ranges taught by Bettinger. Bettinger does not teach the explicit range of less than 1.25 mg/L*h of total iodine value in the instant claim. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have selected a total iodine value that corresponds to the claimed range of total iodine value while experimenting with the range taught by Bettinger.
Bettinger does not teach a total iodine concentration in the iodine-based oxidizing agent is within a range from at least 10% by mass to not more than 25% by mass of the iodine-based oxidizing agent, though Bettinger does teach that the reagent concentration is flexible as long as it produces the desired process stream concentrations (Col. 2, Lines 25-45) and also does not teach a total residual chlorine concentration within the concentrate from the reverse osmosis membrane is 0.05 mg/L or higher.
However, Pohland teaches an excess concentration of 10% potassium iodide added to chlorinated feed water (i.e., a total iodine concentration in the iodine-based oxidizing agent is within a range from at least 10% by mass to not more than 25% by mass of the iodine-based oxidizing agent; Page 402, Paragraph 3) and residual chlorine provided at 5 ppm (or 5 mg/L) that drops to 2.5 ppm (or 2 mg/L), with the purpose of the residual chlorine being to convert the iodide form into active iodine (i.e., a total residual chlorine concentration within the concentrate from the reverse osmosis membrane is 0.05 mg/L or higher; Page 403, Paragraph 1).
Pohland is analogous to the claimed invention because it pertains to the prevention of slime deposits by bacteria on a reverse osmosis installation using iodine (Page 406, Paragraph 2). It would have been obvious to one of ordinary skill in the art to modify the method taught by Bettinger to have the 10% total iodine concentration and the residual chlorine taught by Pohland because the concentrations would cause the iodide to be in the active form in appropriate concentrations for effective action in the feed water.
Bettinger in view of Pohland does not explicitly teach wherein the addition period is of at least 10 seconds but not longer than 0.33 hours during which the iodine-based oxidizing agent is continuously added to the water to be treated and a non-addition period during which the iodine-based oxidizing agent is not added to the water to be treated, the non-addition period being a continuous period of at least 5 seconds but less than 1440 minutes.
However, Shippey teaches a flushing sequence for a reverse osmosis membrane involving a 24-hour clock switch and a parallel switch, such as a pressure differential switch, which may activate the flushing prior to the 24-hour clock switch (i.e., a non-addition period during which the iodine-based oxidizing agent is not added to the water to be treated, the non-addition period being a continuous period of at least 5 seconds but less than 1440 minutes) where the sequence involves adding iodine via a chemical additive pump for about 1-12 ½ minutes (i.e., wherein the addition period is of at least 10 seconds but not longer than 0.33 hours during which the iodine-based oxidizing agent is continuously added to the water to be treated) for the purpose of cleaning the reverse osmosis membrane when a reduction of quality of permeate is indicated (Col. 8, Line 5 to Col. 9, Line 50) due to bacterial growth from deposition of contaminants on the membrane (Col. 1, Lines 45-68).
Shippey is analogous to the claimed invention because it pertains to an automatic cleaning system for membranes separation machines such as reverse osmosis machines via the injection of chemical cleaning additives in the form of a flushing liquid (Abstract). It would have been obvious to one of ordinary skill in the art to modify the method made obvious by Bettinger in view of Pohland with the timings as taught by Shippey because the shorter flushing cycles would improve permeate quality by removing contaminants from the reverse osmosis membranes.
Regarding Claim 14, Bettinger in view of Pohland in view of Shippey makes obvious the water treatment method of claim 1. Pohland further teaches residual chlorine provided at 5 ppm (or 5 mg/L) that drops to 2.5 ppm (or 2 mg/L) (i.e., wherein the total residual chlorine concentration within the concentrate from the reverse osmosis membrane is 0.2 mg/L or higher; Page 403, Paragraph 1).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bettinger in view of Pohland in view of Shippey as applied to claim 1 above, and further in view of Nakano et al (US Patent Application No. 20170044029 A1) hereinafter Nakano.
Regarding Claim 6, Bettinger in view of Pohland in view of Shippey makes obvious the water treatment method of claim 1. Bettinger in view of Pohland in view of Shippey does not teach wherein a membrane pore size of the separation membrane is 0.01 µm or greater.
However, Nakano teaches in test conditions for the examples the use of an ultrafiltration membrane with a pore size of 0.01 µm as the prefiltration treatment device (i.e., wherein a membrane pore size of the separation membrane is 0.01 µm or greater; Paragraphs 0090-0103). Ultrafiltration membranes are an art recognized alternative for reverse osmosis membranes in water purification systems. Nakano is analogous to the claimed invention because it pertains to a chemical agent addition to pretreat a feed water to a reverse osmosis membrane treatment device (Abstract). It would have been obvious to one of ordinary skill in the art to utilize an ultrafiltration membrane with a pore size of 0.01 µm as the prefiltration treatment device to filter the water if the water did not need the smaller pore sizes of reverse osmosis membranes for filtration because reverse osmosis membranes require more energy (pressure) to operate. See MPEP 2144.06(II).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bettinger in view of Pohland in view of Shippey as applied to claim 1 above, and further in view of von Medlin (US Patent No. 5269919 A) hereinafter von Medlin.
Regarding Claim 7, Bettinger in view of Pohland in view of Shippey makes obvious the water treatment method of claim 1. Bettinger in view of Pohland in view of Shippey does not teach removing iodine components from within the permeate.
However, von Medlin teaches an arrangement of passing filtered water through a reverse osmosis filter and then through a granular activated carbon filter to remove iodide released into the water by a pretreatment from a biocidal resin (i.e., removing iodine components from within the permeate; Col. 3, Lines 28-42) for the purpose of not producing unacceptable levels of iodides in the treated water stream to reduce harmful effects on consumers (Col. 2, Lines 31-64).
Von Medlin is analogous to the claimed invention because it pertains to a water purifying system including two or more stages which include a biocidal resin and an activated carbon filter to remove the iodides released into the water by the biocidal resin (Abstract). It would have been obvious to one of ordinary skill in the art to modify the method made obvious by Bettinger in view of Pohland in view of Shippey with the activated carbon filter after the reverse osmosis filter as taught by von Medlin because the activated carbon filter would remove the iodide and reduce harmful effects on consumers of the treated water.
Regarding Claim 8, Bettinger in view of Pohland in view of Shippey in view of von Medlin makes obvious the water treatment method of claim 7. Von Medlin further teaches an arrangement of passing filtered water through a reverse osmosis filter and then through a granular activated carbon filter to remove iodide released into the water by a pretreatment from a biocidal resin (i.e., during the iodine removal step activated carbon is used; Col. 3, Lines 28-42).
Response to Amendment
The amendment filed on 05/30/2025 has been entered.
In view of the amendment to the claims, the amendment of claim 1 has been acknowledged.
In view of the amendment of claim 1, the rejection under 35 U.S.C. 103 has had the grounds for rejection changed.
Response to Arguments
Applicant’s arguments filed on 05/30/2025 have been fully considered.
Applicant argues, regarding claim 1, that the newly amended limitations “wherein the addition period is of at least 10 seconds but not longer than 0.33 hours during which the iodine-based oxidizing agent is continuously added to the water to be treated and a non-addition period during which the iodine-based oxidizing agent is not added to the water to be treated, the non-addition period being a continuous period of at least 5 seconds but less than 1440 minutes” are not taught by Bettinger in view of Pohland because Bettinger teaches about 0.5 hours to 3 hours of addition of iodine for every 24-72 hours of operation and there would be no reason to modify the timings to both be shorter than those described in Bettinger (Arguments filed 05/30/2025, Pages 6-10).
The Examiner respectfully disagrees.
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Furthermore, Bettinger teaches that the additive is introduced for an average of about 30 minutes to 3 hours per 72 hours with a 30 minute addition time preferable for a single addition every 24 hours and a longer addition time preferable for additions made every 48 to 72 hours (Col. 2, Lines 56-65). This teaching shows that the iodine addition length needs to be shortened if the non-addition period is shortened and the addition time needs to be lengthened if the non-addition time is lengthened. Therefore the general conditions are known in the art and it is expected that a reduced addition time requires a reduced non-addition time. Where 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 (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955))(See MPEP 2144.05(II)(A)). It would be obvious to one of ordinary skill in the art to adjust the addition time and non-addition time of iodine to be shorter if one desired to more frequently treat the reverse osmosis membrane.
Applicant’s arguments have been fully considered but are not persuasive. All other arguments have been indirectly addressed.
Conclusion
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/A.A.G./Examiner, Art Unit 1777
/Ryan B Huang/Primary Examiner, Art Unit 1777