DETAILED ACTION
Claims 1-3, 5, 7-13, 17, 19, 21-22, 28, and 30-37 are pending, with claims 3, 7, 12-13, 17, 19, 21-22, 28, and 30-37 being withdrawn.
Claims 1-2, 5, and 8-11 are rejected.
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 without traverse of Group I, claims 1-2, 5, and 8-11 in the reply filed on 09/02/2025 is acknowledged.
Claims 3, 7, 12-13, 17, 19, 21-22, 28, and 30-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/02/2025.
Claim Objections
Claims 2, 9, and 11 are objected to because of the following informalities:
Claim 2, line 3, it is suggested to amend “the a total” to “a total”.
Claim 9, line 3, it is suggested to amend “sapponite” to “saponite”.
Claim 11, line 2, it is suggested to amend “mono-functional quaternary amine” to “one or more mono-quaternary amine compounds”.
Appropriate correction is required.
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 1-2, 5, and 8-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kaplan et al. (US 2015/0129504A1) (Kaplan), as provided in the IDS filed 11/14/2022.
Regarding claims 1, 8, and 11, Kaplan discloses organo-modified clays (i.e., a modified clay sorbent) for removal of aqueous radioactive anions (Kaplan, Title and Abstract).
Kaplan further discloses an organoclay, i.e., a clay with an intercalated cationic quaternary amine provided from quaternary amine compounds, being used as a sorbent (i.e., a modified clay sorbent) for radioactive anions that are present within an aqueous solution, e.g., aqueous waste at a nuclear power facility, a groundwater contamination site, or a soil or sediment contaminated site (i.e., from a contaminated sample) (Kaplan, Abstract; [0024]).
Kaplan further discloses the quaternary amine compounds including benzyl(hydrogenated tallow alkyl)dimethyl ammonium chloride (Arquad™ DMHTB); trihexadecylmethyl ammonium chloride (Arquad™ 316); tallowalkyl trimethyl ammonium chloride (Arquad™ T-27W and Arquad™ T-50); hexadecyl trimethyl ammonium chloride (Arquad™ 16-29W and Arquad™ 16-50); octadecyl trimethyl ammonium chloride (Arquad™ 18-50(m)); cocoalkylmethylbis(2-hydroxyethyl) ammonium chloride (Ethoquad™ C12); octadecylmethyl[polyoxyethylene(15)] ammonium chloride (Ethoquad™ 8/25); octadecylmethyl (2-hydroxyethyl) ammonium chloride (Ethoquad™ 18/12) (i.e., one or more mono-quaternary amine compounds); bis(hydrogenated tallow alkyl)dimethyl ammonium chloride (Arquad™ 2HT) (i.e., dimethyl di(C14-C18 alkyl) ammonium chloride); N-tallowalkyl dipropylene triamine (Triameen™ T); and N-tallowalkyl tripropylene tetramine (Tetrameen™ T) (i.e., one or more multifunctional-quaternary amine compounds having a functionality of 3 or more; the one or more multifunctional-quaternary amine compounds have 18 or more carbons) (Kaplan, [0025]; Originally filed specification, [0028]).
Given that Kaplan discloses the quaternary amine compounds that overlap the presently claimed quaternary amine compounds, including one or more multifunctional-quaternary amine compounds having a functionality of 3 or more and one or more mono-quaternary amine compounds, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the multifunctional-quaternary amine compounds having a functionality of 3 or more and mono-quaternary amine compounds, which are both disclosed by Kaplan and encompassed within the scope of the present claims.
Kaplan does not explicitly disclose the modified clay sorbent is for sorbing PFAS compounds from the contaminated sample, as presently claimed.
However, the recitation in the claims that the modified clay sorbent is “for sorbing PFAS compounds” from the contaminated sample is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kaplan disclose the modified clay sorbent as presently claimed, it is clear that the modified clay sorbent of Kaplan would be capable of performing the intended use, i.e. for sorbing PFAS compounds from a contaminated sample, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 2, Kaplan discloses the quaternary amine compound being provided in an amount to provide the desired cation exchange during the intercalation, with a molar ratio of quaternary amine ions to exchangeable interlayer cations of about 0.5:1 or greater, e.g., the cationic quaternary amine can be intercalated within the clay in an amount of greater than about 1:1 (Kaplan, [0030]).
Although there are no disclosures on the amount of the total cationic exchange capacity of the clay as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of quaternary amine compounds to be intercatated with the organoclay to achieve a desirable total cationic exchange capacity of the organoclay, including over the amounts presently claimed, in order to provide a desired cation exchange during the intercalation and such that the organoclay has a positively charged surface, and thereby arrive at the claimed invention.
Regarding claim 5, Kaplan further discloses that the quaternary amine compound (e.g., a chloride salt of the cationic quaternary amine) provided in an amount for the desired cation exchange during the intercalation (Kaplan, [0030]).
Although there are no disclosures on the mole percent of the multifunctional-quaternary amine compounds based on the total moles of quaternary amine compound present in the modified clay sorbent as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the mole percent of the multifunctional-quaternary amine compounds based on the total moles of quaternary amine compound present in the modified clay sorbent, including over the amounts presently claimed, in order to achieve desired cation exchange during the intercalation.
Regarding claim 9, Kaplan further discloses the clay being montmorillonite, paligorskite, attapulgite, sepiolite, saponite, hectorite, beidellite, nontronite, volkonskoite, sauconite, stevensite, bentonite (Kaplan, [0019]-[0020]), which overlaps the presently claimed clay, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the montmorillonite, paligorskite, attapulgite, sepiolite, saponite, hectorite, beidellite, nontronite, volkonskoite, sauconite, stevensite, bentonite, which is both disclosed by Kaplan and encompassed within the scope of the present claims.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kaplan et al. (US 2015/0129504A1) (Kaplan), as provided in the IDS filed 11/14/2022, as applied to claim 1 above, and further in view of Hamel et al. "Set a sound strategy for spill containment - Switching absorbents can save time and money, and reduce waste" (Hamel).
Regarding claim 10, as applied to claim 1, Kaplan does not explicitly disclose the modified clay sorbent is present in a mat, as presently claimed.
With respect to the difference, Hamel teaches using adsorbents for spill containment (Hamel, Title; page 55, first paragraph).
Hamel further teaches using engineered absorbent mat to soak up spills quickly and help facilities to minimize both downtime and waste volume (Hamel, page 56, first full paragraph).
As Hamel expressly teaches, mat rolls can be used in walkways and entrances to help absorb overspray and other forms of liquid leaks while increasing traction to improve floor safety and help reduce slip and fall hazards. Mats also eliminate the dust and mess associated with using clay-based loose absorbents (Hamel, page 56, first full paragraph).
Hamel and Kaplan are analogous art as they are both drawn to using sorbent for sorbing contaminants.
In light of the motivation of using engineered absorbent mat disclosed by Hamel as described above, it would therefore have been obvious to one of ordinary skill in the art to engineer the sorbent of Kaplan in a mat, in order to soak up spills quickly and help facilities to minimize both downtime and waste volume, increase traction to improve floor safety and help reduce slip and fall hazards, and eliminate the dust and mess associated with using clay-based loose absorbents, and thereby arrive at the claimed invention.
Conclusion
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/J.Z./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732