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 Amendment
The Amendment filed October 31st, 2025 has been entered. Claims 2-4, 6-14, 18-20 and 23-32 remain pending in the application. Applicant’s amendments to the Claims have overcome each and every objection, 102(a)(1) and 103 rejections previously set forth in the Non-Final Office Action mailed May 2nd, 2025. Therefore, these objections and rejections have been withdrawn.
Response to Arguments
Applicant's arguments filed October 31st, 2025 traversing the non-statutory double patenting rejections have been fully considered but they are not persuasive. The amendments do not render the claims patentably distinct from the claims of U.S. Patent No. 11,512,012 (Chiang et al.). The instant claims continue to recite electro-oxidative destruction of PFAS within a filtration or sorbent-based water treatment system including reuse or recirculation of treated liquid, which constitutes the same inventive concept claimed in Chiang. Differences in flow configuration or system arrangement represent obvious variations and do not establish patentable distinctness. In the absence of a terminal disclaimer, the non-statutory double patenting rejections are maintained.
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 6 and 8 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 6 is dependent upon claim 2 and indicates that the liquid stream flowing through the electrolytic cell is electro-oxidized to destroy concentrated perfluoroalkyl and/or polyfluoroalkyl substances in the liquid stream. However, it is unclear how claim 6 further limits claim 2.
Claim 8 recites, “…at least some perfluorooctanoic acid (PFOA)…”. However, it is unclear to which perfluorooctanoic acid (PFOA) is being addressed as there is no basis for this claim limitation in Claim 2.
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 2-4, 6-14 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,512,012 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of ‘2012 is dependent upon claim 1 and discloses a process for destroying perfluoroalkyl and/or polyfluoroalkyl substances in a liquid stream (‘2012 claim 1 lines 1-2 “aqueous effluent” is a liquid stream), the process comprising: providing a water treatment system including an electro-oxidative (EO) reactor comprising an electrolytic cell with an anode electrode and a cathode electrode (‘2012 claim 1 lines 9-10), wherein at least one of the anode electrode and the cathode electrode comprises titanium suboxide (‘2012 claim 2 lines 1-2); flowing the liquid stream including perfluoroalkyl and/or polyfluoroalkyl substances through the EO reactor (‘2012 claim 1 lines 10-11 “regenerant” is a liquid stream); and contacting the liquid stream including perfluoroalkyl and/or polyfluoroalkyl substances with the anode electrode and the cathode electrode while a current flows between said electrodes (‘2012 claim 1 lines 10 through 17 “still bottoms” are flowed through EO reactor), thereby destroying at least some of the perfluoroalkyl and/or polyfluoroalkyl substances by electro-oxidation (‘2012 p. 3 rt. column lines 1-2); flowing an influent liquid through a filter or sorbent of the water treatment system before flowing the liquid stream through the EO reactor (‘2012 claim 1 lines 5-6); and recirculating at least a portion of the liquid treated by the EO reactor through the filter or sorbent (‘2012 claim 1 lines 25-26 where “reclaimed regenerant” is the portion of the liquid treated by the EO reactor). Claims 3-4, 6-14 and 18-19 are rejected due to their dependency upon claim 2.
Claims 20 and 23-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,512,012 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of ‘2012 discloses a water treatment system for destroying at least one of perfluoroalkyl and polyfluoroalkyl substances (PF AS) in a liquid stream by electro-oxidation (‘2012 claim 9 lines 1-3), the water treatment system comprising: a reactor comprising an electrolytic cell with an anode electrode and a cathode electrode (‘2012 claim 9 lines 14-16), wherein the anode electrode and the cathode electrode are configured to contact the liquid stream including at least one of perfluoroalkyl and polyfluoroalkyl substances while a current flows between the electrodes (‘2012 claim 9 lines 16-19 “still bottoms”), thereby destroying the at least one of the perfluoroalkyl and polyfluoroalkyl substances in the liquid stream by electro-oxidation (‘2012 claim 9 lines 19-21); and a filter or sorbent (‘2012 claim 9 line 5); wherein, during operation, the filter or sorbent are configured to treat the liquid stream prior to treatment of the liquid stream in the reactor (‘2012 claim 9 lines 5-13 describes treating by concentration which occurs prior to treatment by EO); wherein, during operation, at least a portion of the liquid treated by the reactor is recirculated through the filter or sorbent (‘2012 claim 9 lines 14-end “reclaimed regenerant” is the portion of liquid treated by the reactor and reused to wash the filter or sorbent). Claims 23-32 are rejected due to their dependency upon claim 20.
Conclusion
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 WILLIAM ADDISON GEISBERT whose telephone number is (703)756-5497. The examiner can normally be reached Mon-Fri 7:30-5:00 EDT.
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/W.A.G./ Examiner, Art Unit 1779
/Bobby Ramdhanie/ Supervisory Patent Examiner, Art Unit 1779