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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Response to Amendment
The amendment filed 10/07/2025 has been entered. Claims 1, 4-6, 8, and 10 remain pending in the application. Applicant’s amendments to the Specification and Claims have
addressed every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed 07/10/2025.
Response to Arguments
Applicant's arguments filed 10/07/2025 have been fully 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.
Claim Interpretation
Note: As discussed in the August 29, 2025 Examiner Interview summary, “Examiner asked how raw water contact differentiated from the filtering process of the reference art, given that filtration must also initiate contact with the membrane” (Summary p 2 ¶1) and “suggested clarifying the distinguishing features of the parallel process over such processes in the cited prior art.” (Summary p 2 ¶3)
Amended Claim 1 describes a method requiring:
Adjusting pH of target water with ≥ 9.5 pH to pH of 4-8
Passing pH-adjusted water through an RO membrane
Bringing target water with ≥ 9.5 pH into contact with a raw side of the same RO membrane
Duration: 2-24 hours
Frequency once every 12-60 hours.
Examiner interprets a continuous filtering process to fall within the broadest reasonable interpretation of “bringing…into contact with a raw side of the reverse osmosis membrane”.
Examiner suggests, if there is support in the original disclosure, that concepts such as arresting, maintaining in place, stopping flow, holding stagnant a portion of water against a raw side and maintaining the portion of water against the raw side for 2-24 hours would better indicate that that the water is arrested before the membrane and does not flow through in contact for a duration but rather remains unmoving in contact for a duration.
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(s) 10 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.
Claim 10 recites “using permeated water of the reverse osmosis membrane device, raw water adjusted to have a pH of 4 to 8, or other clean water”
It is unclear what is meant by other clean water, given other suggests that raw water adjusted to have a pH of 4 to 8 is also considered clean water.
In light of the specification [0023], “an RO membrane is cleaned using high-pH processing-target water or wastewater”.
Claim 1 recites “the processing-target water is wastewater”
Examiner suggests clarifying what “clean water” means.
Examiner interprets “other clean water” as “water”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites “The reverse osmosis membrane processing method according to claim 1,
wherein the plurality of the reverse osmosis membrane devices is installed in parallel and while the processing-target water having the pH of 9.5 or higher is brought into contact with at least the reverse osmosis membrane of the reverse osmosis membrane device of the plurality of reverse osmosis membrane devices, the reverse osmosis membrane processing is performed by causing
the pH-adjusted water to pass through a different reverse osmosis membrane device of the plurality of reverse osmosis membrane devices.”
Amended Claim 1 recites “passing the pH-adjusted water through a reverse osmosis membrane of a reverse osmosis membrane device of a plurality of reverse osmosis membrane devices…bringing processing-target water having a pH of 9.5 or higher into contact with a raw water side of the reverse osmosis membrane of the reverse osmosis membrane device”.
Claim 4 fails to further limit the limitations of the claim upon which it depends because:
“the reverse osmosis membrane processing is performed by” suggests a different method than “a reverse osmosis membrane processing method” of claim 1.
“the reverse osmosis membrane device” of claim 1 has the antecedent basis of “passing the pH-adjusted water through a reverse osmosis membrane of a reverse osmosis membrane device of a plurality of reverse osmosis membrane devices”. Claim 4 currently describes a process performed where the pH-adjusted water does not go through the reverse osmosis membrane of claim 1 but specifically through a different reverse osmosis membrane device.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-5 and 7-10 is/are rejected under 35 U.S.C. 103 as being obvious over US-20190169057-A1, hereinafter Heimel in view of Y.-C. Liang et al. / Journal of the Taiwan Institute of Chemical Engineers 63 (2016) 236–242, hereinafter Liang, further in view of Nitto. Technical Service Bulletin. October 2017, hereinafter Nitto.
Regarding claim 1, Examiner notes that continuous flow, such as the operation of a purification system, falls within the broadest reasonable interpretation of bringing target water into contact and maintaining contact with the raw water side of a membrane.
An embodiment of Heimel teaches a reverse osmosis membrane processing method (“The clarified water is passed through one of the first or second reverse osmosis membrane modules”, [0009]) comprising: adjusting processing-target water to a pH range of 4 to 8 to form pH-adjusted water (either of at least “the sufficient acid is added to the clarified water prior to the RO membrane treatment to a pH in the range of 5 to 7.9”, [0058-0059]); the processing-target water has a pH overlapping 9.5 or higher and an ammonia concentration of 1 to 10,000mg/L (“The feedstream 316 contains at least ammonia and boron and has a pH in a range from 8 to 11.5. In one embodiment , the clarified water contains greater than 10 mg / L ammonia; in another embodiment , greater than 25 mg / L ammonia.”, [0104]); and passing the pH-adjusted water through a reverse osmosis membrane device of a plurality of reverse osmosis membrane devices (“The clarified water is passed through one of the first or second reverse osmosis membrane modules”, [0009]; “the sufficient acid is added to the clarified water prior to the RO membrane treatment to a pH in the range of 5 to 7.9”, [0058-0059]).
While the source of the processing-target water of Heimel is not explicitly taught to be a semiconductor producing process or a liquid crystal producing process, the characteristics of the ammonia concentration and pH of Heimel overlap those water sources.
However, Liang teaches “Semiconductor industrial wastewater stream was characterized as highly alkaline (pH 10) and contained high concentration of H2O2 of 311 ± 505 mg/L, ammonium nitrogen of 318 ± 122 NH4 +-N mg/L” (Abstract)
MPEP 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination”.
Heimel is analogous because Heimel is in the same field of pH-adjusted reverse osmosis treatment for alkaline waters containing ammonia.
Liang is analogous because Liang the alkaline and ammonia content of semiconductor wastewater.
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to that Heimel would be capable of intended use for other wastewaters with similar characteristics, including wastewaters from semiconductor manufacturing, as taught by Liang, given that Heimel is suitable for RO treatment of waters with higher pH and containing ammonia.
Another embodiment of Heimel teaches bringing the processing-target water having a pH of 9.5 or higher into contact with a raw water side of the reverse osmosis membrane of the reverse osmosis membrane device (“the membrane purification system is operated at conditions to remove both ammonia and boron from the clarified water”, [0066]; “Boron is removed from the second permeate stream at a pH in a range from 8 to 11.5 in one embodiment; and from 9 to 11.5 in a second embodiment”, [0068]).
While Heimel does not explicitly teach periodic dosing, Heimel does teach monitoring for scaling and acting upon that data to reduce scaling tendency ([0069] entirety, including : “method for purifying the clarified water from a pretreatment process includes managing the potential for scale formation … When an undesirable operation is detected within one or more membrane elements, the feed to the element is treated to reduce turbidity and scaling tendency of the feed … feed to the element is treated in - situ by one or more of filtering , pH adjustment…”), providing motivation for pH adjusted water to manage potential for scale formation.
Heimel further teaches hydraulic retention times of 2-4 hours for the target water “In one embodiment with a produced water having a pH of greater than 9 , the removal efficiency ranges from 70 - 90 % for BTEX , phenol , and phosphorous for hydraulic retention time ( HRT ) of at least 2 hours . The removal efficiency is at least 85% for HRT of at least 4 hours” [0042], and embodiments of Heimel include reversal of pH adjustment order: (“the order of boron and ammonia separation from clarified water is reversed…Boron is removed from the second permeate stream at a pH in a range from 8 to 11.5 in one embodiment; and from 9 to 11.5 in a second embodiment”, [0068]).
It would have been obvious to use the scale monitoring motivation of Hiemel to maintain continuous operation of the system for at least the hydraulic retention time of Hiemel and with a frequency conducive to a profitable.
While Hiemel does not explicitly teach regular oscillations between suggests in Figs. 1-2 that in
However, Nitto suggests intermittent combination of high pH and low pH cleaning over a similar pH range to Heimel, in the same flow direction, and for similar durations:
“Typically, a high pH cleaning is used first to remove foulants like oil or biological matter, followed by a low pH cleaning to remove foulants like mineral scale or metal oxides/hydroxides fouling. There are times that order of high and low pH cleaning solutions is reversed or one solution only is required to clean the membranes” (p. 6 ¶3);
“Be prudent in the adjustment of pH at the low and high pH range to extend the useful life of the membrane. A “gentle” pH range is 4 to 10,”; (p. 7 bullet 1)
“Cleaning and flushing flows should usually be in the same direction as the normal feed flow to avoid potential telescoping and element damage” (p 7 bullet 3)
“The time required to clean a stage can take from 4 to 8 hours” (p. 14 ¶3)
“RO cleaning frequency due to fouling will vary by site” (p. 2 ¶5)
Nitto is analogous because Nitto is in the same field of pH-adjusted reverse osmosis cleaning.
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to alternate boron-first and ammonia-first purification methods of Heimel to induce an intermittently combined low and high pH cleaning in the same direction as the normal feed flow, as suggested Nitto. The HRT times of Heimel align with typical periods of the cleanings, and it would be obvious to optimize cleaning frequency due to design needs, given “RO cleaning frequency due to fouling will vary by site” (Nitto p. 2 ¶5). Doing so would allow Heimel to adjust pH to “reduce scaling tendency” (Heimel [0069]).
Regarding claim 4, Examiner interprets “the reverse osmosis membrane processing is performed by…” as “the reverse osmosis membrane processing further comprises the pH-adjusted water through the reverse osmosis membrane device of claim 1 and also causing the pH-adjusted water to pass through a different reverse osmosis membrane device.
Heimel teaches the plurality of the reverse osmosis membrane devices is installed in parallel (Fig. 1 Element 40) and while the processing-target water having the pH of 9.5 or higher is brought into contact with at least the reverse osmosis membrane of the reverse osmosis membrane device of the plurality of reverse osmosis membrane devices (“Boron is removed from the second permeate stream at a pH in a range from 8 to 11.5 in one embodiment; and from 9 to 11.5 in a second embodiment”, [0068]), the reverse osmosis membrane processing further comprises causing pH-adjusted water to pass through a reverse osmosis membrane device of the plurality of reverse osmosis membrane devices (“the ammonia being removed from the first permeate stream at a pH in a range from 3.5 to 7.9 in one embodiment; and from 5 to 7 .9 in a second embodiment.”, [0068]).
While the above embodiment is silent on a different osmosis membrane devices for each permeate stream, a third embodiment teaches parallel trains of modules, wherein each train may have a cascading series (“In a third embodiment, the system may include a plurality of membrane modules in parallel. Each train of modules in the parallel configuration may cascade a permeate stream or a retentate stream from one or more preceding modules in series flow”, [0065]).
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to have parallel cascades of permeates according to an embodiment of Heimel, with at least one including alkaline conditions and at least another including pH 4-8 conditions. Combining series, parallel, and recycling options as taught by Heimel in at least Fig. 1, provides adjustable parameters and flow paths to meet variable design needs as they arise, including changes in raw water composition and separation equipment biofouling or scaling needs.
Regarding claim 5, Heimel teaches a step of preprocessing the processing-target water having the pH of 9.5 or higher (“The produced water is pre-treated … to produce a clarified water”, [0009]; “the order of boron and ammonia separation from clarified water is reversed…Boron is removed from the second permeate stream at a pH in a range from 8 to 11.5 in one embodiment; and from 9 to 11.5 in a second embodiment”, [0068]).
Regarding claim 8, Heimel teaches a TOC concentration of the processing-target water having the pH of 9.5 or higher is 0.5 mg/L or higher (“Organic contaminants may include hydrocarbons that occur naturally in produced water, e.g., organic acids, polycyclic aromatic hydrocarbons (PAHs), phenols, and volatiles… In some produced waters, the concentration of these components is greater than 5,000 ppm”, [0034], equivalent to 5000 mg/L; “The produced water is pre-treated … to produce a clarified water”, [0009]; “Boron is removed from the second permeate stream at a pH in a range from 8 to 11.5 in one embodiment; and from 9 to 11.5 in a second embodiment”, [0068]).
Heimel is silent to whether the produced water of Heimel [0068] is the produced water of Heimel [0034].
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to use the method of Heimel on the process waters described in Heimel, including pre-treatment to clarify produced waters, with the expected result of successful Boron removal. Doing so would allow for “cleaner boiler or drinking quality water” (Heimel [0002]).
Regarding claim 10, an embodiment of Heimel teaches a step of cleaning the reverse osmosis membrane device (“An antiscalant may be added to the water prior to going through the membrane filtering system to prevent fouling of the membrane ...Clarified water may be treated with an acid prior to the membrane to further reduce scaling tendencies of the clarified water ...In one embodiment , the sufficient acid is added to the clarified water prior to the RO membrane treatment to a pH in the range of 5 to 7.9”, [0058-0059]) using permeated water of the reverse osmosis membrane device, raw water adjusted to have a pH of 4 to 8, or other clean water (“The feed to the membrane element may be treated in-situ, including adding fresh or purified water to the retentate fraction in contact with the select membrane element; adjusting the pH of the retentate fraction in contact with the select membrane element”, [0074]).
Another embodiment of Heimel teaches passing through the pH-adjusted water through the reverse osmosis membrane device ( “the ammonia being removed from the first permeate stream at a pH in a range from 3.5 to 7.9 in one embodiment; and from 5 to 7 .9 in a second embodiment.”, [0068]).
Hiemel is silent on whether these embodiments are combined.
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to combine the clean in place protocols of pH adjusted feed water prior to RO membrane treatment with the pH-adjusted RO membrane treatment for ammonia removal, particularly of Heimel [0068], given that both Heimel purposes are achieved at similar pH ranges of 5 to 7.9. Doing so would expectedly result in both antifouling mitigation and water purification.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being obvious over Heimel in view of Liang, further in view of Nitto, further in view of Ahmedna et al. (Water Research 38 (2004) 1062-1068) , hereinafter Ahmedna.
Regarding claim 6, modified Heimel teaches all the limitations in the claims as set forth above. While Heimel is silent on active carbon, Heimel supports the preprocessing is active carbon processing (“A media filter is a type of filter that uses a bed of one or more of nutshell filter media, oyster shell filter media, sand, peat, shredded tires, foam, crushed glass, geo-textile fabric, crushed granite or other material to filter water as at least a part of the pretreatment process”, [0028]; “A pre-treatment filtering step may be employed to remove a large proportion of oil, particulates and other contaminants from the produced water, e.g., particulates that are more than 2 µm in size. Any filter media suitable for removal of the target contaminant or contaminants may be used so long as it is also suitable for use in a filter bed, e.g., nutshell filter media, such as media made from English walnut shells and black walnut shells. Nutshell filter media is … a desirable filter media that is typically used for the removal of oil from water and wastewater”, [0040]).
Heimel also teaches “In one embodiment, the produced water feed may comprise metals such as zinc, lead, manganese, iron, and barium” [0035].
However, Ahmedna teaches “The objectives of this study were to create ‘‘Envirofilters’’ from phosphoric acid-activated almond and pecan shells and steam-activated pecan and English walnut shell” (p. 1063 Col 2 ¶2).
Ahmedna also provides motivation: “Drinking water is filtered to remove both organic and inorganic contaminants. The objective of this study was to evaluate the use of granular activated carbon from nutshells (almond, English walnut, pecan)” (Abstract).
Ahmedna is analogous because Ahmedna is in the same field of using adsorbent media filtration for treatment.
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to use at least the activated English walnut shell media of Ahmedna in the media filters of Heimel, which support using English walnut shell media. Doing so would also reduce zinc and lead concentrations (Ahmedna Abstract) that may be present in Heimel waters (Heimel [0035]), furthering Heimel’s goal “to result in cleaner boiler or drinking quality water” (Heimel [0002]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-6120689-A teaches multistage treatment including softening and activated carbon, prior to a multiple pH- adjusted RO treatments
US-7514001-B2 teaches pH-adjusted RO treatment of water containing silica.
US-8753513-B2 teaches a pH-modifying treatment for the high pH ammonia laden wastewater produced in semiconductor manufacturing.
US-20110297614-A1 teaches the relevance of pH adjustment for TOC removal using RO treatment.
US-20140069821-A1 teaches the relevance of pH adjustment for TOC removal
Wenten, I.G. “Reverse osmosis applications: Prospect and challenges”. Desalination 391 (2016) 112–125 teaches reverse osmosis treatment for semiconductor wastewater.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARRIAH ELLINGTON whose telephone number is (703)756-1061. The examiner can normally be reached Monday - Friday, 9:00 am - 4:00 pm EST.
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MARRIAH ELLINGTON
Examiner
Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773