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 .
Response to Amendment
The amendment filed on 25 MARCH 2026 has been entered.
In view of the amendment to the claims, the cancellation of claims 1-15 and the addition of new claims 16-28 have been acknowledged.
In view of the amendment to the drawings, the objections to the drawings have been withdrawn.
In view of the amendment to the specification, the objections to the specification have been withdrawn.
In view of the cancellation of claims 1-6, 8, 11, and 15, the previous objections to the claims have been withdrawn.
In view of the cancellation of claims 1, 3, 6, 11-12, and 15, the previous rejections under 35 U.S.C. 112(b) have been withdrawn.
In view of the cancellation of claims 1-15, the previous rejections under 35 U.S.C. 102 and 35 U.S.C. 103 have been withdrawn.
Response to Arguments
Applicant’s arguments filed on 25 MARCH 2026 have been fully considered.
Applicant argues that the newly added claims are patentable over the previously cited prior art.
Applicant’s arguments with respect to the newly added claims 16-28 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.
Claim Interpretation
In Claim 1, there are references to an emulsion oil, the emulsion oil, and the oil. It is unclear if the emulsion oil and the oil are referring to different oils. However, to advance prosecution, the claims will be both rejected under 35 U.S.C 112(b) for being indefinite and the rejections under 35 U.S.C. 112(d) and 35 U.S.C. 103 will read the claims with the interpretation that “the emulsion oil” and “the oil” are referring to the same emulsion oil. The Examiner requests that Applicant amend the claims to improve clarity of these references to emulsion oil and the oil.
Claim Objections
Claims 16-18, 20-24, and 26-28 are objected to because of the following informalities:
In Claim 16, “PFAS molecules” in lines 4-5 of the claim should read “the PFAS molecules”.
In Claim 16, “the treated water” in line 7 of the claim should read “the treated water part”.
In Claim 16, “the formed oil-water interface” in line 18 of the claim should read “the oil-water interface”.
In Claim 16, “emulsion” in line 20 of the claim should read “the emulsion”.
In Claim 17, “physico-chemical parameters” in line 2 of the claim should read “the physico-chemical parameters”.
In Claim 18, “physico-chemical parameters” in line 2 of the claim should read “the physico-chemical parameters”.
In Claim 18, “the water part” in line 4 of the claim should read “the treated water part”.
In Claim 20, “type of the oil, composition of the oil, and concentration of the oil” in lines 1-2 of the claim should read “the type of the oil, the composition of the oil, and the concentration of the oil”.
In Claim 20, “physico-chemical parameters” in lines 2-3 of the claim should read “the physico-chemical parameters”.
In Claim 21, “injection” in line 3 of the claim should read “injecting”.
In Claim 22, “selecting a combination of :selecting at least one of : a molecular composition of the emulsion oil, a viscosity of the emulsion oil, a density of the emulsion oil and an interfacial tension of the emulsion oil, in combination with mixing a shearing speed and mixing time, in relation to physico-chemical parameters” in lines 1-4 of the claim should read “selecting at least one of: the molecular composition of the emulsion oil, the viscosity of the emulsion oil, the density of the emulsion oil and the interfacial tension of the emulsion oil, in combination with the mixing shearing speed and the mixing time, in relation to the physico-chemical parameters”.
In Claim 23, “a molecular composition of the emulsion oil, a viscosity of the emulsion oil, a density of the emulsion oil and interfacial tension of the emulsion oil, in combination with mixing a shearing speed and mixing time, to achieve a target size of oil droplets” in lines 1-4 of the claim should read “the molecular composition of the emulsion oil, the viscosity of the emulsion oil, the density of the emulsion oil and the interfacial tension of the emulsion oil, in combination with the mixing shearing speed and the mixing time, to achieve the target size of oil droplets”.
In Claim 24, “a selected oil absorption medium” in lines 1-2 of the claim should read “the selected oil absorption medium”.
In Claim 26, “the absorbing medium” in line 2 of the claim should read “the selected oil absorption medium”.
In Claim 26, “the water part” in line 2 of the claim should read “the treated water part”.
In Claim 27, “an oleophilic and hydrophobic medium” in lines 1-2 of the claim should read “the oleophilic and hydrophobic medium”.
In Claim 28, “an oleophilic and hydrophobic medium” in line 2 of the claim should read “the oleophilic and hydrophobic medium”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 16-28 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 16 recites the limitation "the contaminated water" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 16, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The specific phrase is “parameters having an impact on oil solubility, such as pH and temperature” in lines 15-16 of the claim.
Claim 16 recites the limitation "the oil" in line 19 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the shearing parameters" in lines 19-20 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the mixing time" in line 20 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the water to be treated" in line 22 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "its" in line 23 of the claim. It is unclear to which prior reference in the claim that the word “its” is referring to.
Claims 17-28 are rejected because of their dependence upon claim 16.
Claim 19 recites the limitation "the hydrophobic and lipophilic molecules" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation "the emulsion" in line 3 of the claim. A new instance of “an emulsion” is introduced in claim 21 that is clearly different from the previous instance of an emulsion in claim 16. It is unclear which emulsion is being referred to by “the emulsion” in line 3 of the claim.
Claim Rejections - 35 USC § 112(d)
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 17 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 17 adds the limitation “comprising selecting the oil in relation to [the] physico-chemical parameters of the contaminated water and to a target captured amount of PFAS molecules”. If “the oil” is referring to “the emulsion oil” then the oil is already selected with respect to the physico-chemical parameters of the contaminated water and to a target captured amount of PFAS molecules in claim 16. Therefore, claim 17 simply repeats limitations of claim 16 and does not further limit claim 16.
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.
Claims 16-28 are rejected under 35 U.S.C. 103 as being unpatentable over Bergbreiter et al International Patent Application No. WO 2020027682 A2 (hereinafter Bergbreiter) in view of Bonkhoff et al US Patent No. US 6063281 A (hereinafter Bonkhoff) in view of Darling et al US Patent Application No. US 20180010248 A1 (hereinafter Darling).
Regarding Claim 16, Bergbreiter teaches a solvent system for effectively sequestering trace amounts of polar organics, with an example of perfluorooctanoic acid, from water (i.e., a method for treating water contaminated with PFAS molecules comprising; Abstract)
wherein the contaminated water phase (i.e., the contaminated water phase) is extracted with a hydrocarbon oligomer phase (i.e., a selected emulsion oil) to sequester the trace organic compounds in the hydrocarbon oligomer phase forming a clean water phase (i.e., forming an emulsion of the contaminated water with a selected emulsion oil to generate an oil-water interface in the emulsion which capture the PFAS molecules of the contaminated water; Paragraph 0004) ,
wherein the hydrocarbon oligomer phase is separated from the clean water phase (i.e., separating from the emulsion an oil part charged with a captured amount of PFAS molecules and a treated water part, the treated water part having an amount of PFAS molecules reduced by the captured amount of PFAS molecules than an initial amount of the PFAS molecules in the contaminated water, wherein the separation is a liquid-liquid separation; Paragraph 0004),
wherein concentration of contaminant before adding the poly(α-olefin) for the extraction (i.e., determining the physico-chemical parameters of the contaminated water, including PFAS concentration; Paragraph 0054) and cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (Paragraph 0005) for organic impurities that have specific molecular weights (i.e., and signature in terms of distribution of PFAS chain lengths; Paragraph 0051) while also considering the temperature of the process (Paragraph 0014) and the solubility of the hydrocarbon oligomer phase and the cosolvent in water (i.e., parameters having an impact on oil solubility, such as temperature; Paragraph 0038),
wherein cosolvents enhance the extraction process (i.e., controlling formation of the oil-water interface in the emulsion; Paragraph 0016),
wherein cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (i.e., controlling PFAS-capturing chemical interactions at the oil-water interface by selecting; Paragraph 0005) with an exemplary list of poly(α-olefin)s (i.e., the type; Paragraph 0025) and compositions of hydrocarbon oligomers and cosolvents (i.e., composition, and concentration of the oil in the emulsion; Paragraphs 0024 and 0035), with different extraction times considered (i.e., the mixing time for the emulsion; Paragraph 0014), with sequestration of perfluorooctanoic acid (Abstract) taught, and enhancement of sequestration occurring due to selection of cosolvent (i.e., according to a target PFAS capture from the contaminated water by the emulsion oil in the emulsion; Paragraph 0016), wherein the hydrocarbon oligomer phase can contain a cosolvent anchored within to enhance sequestration of a more polar organic (Paragraph 0017) with a range of optimizable concentrations of cosolvent (i.e., wherein the emulsion oil is selected according to the physico-chemical characteristics of the contaminated water on the basis of at least one of its molecular composition; Paragraph 0035), viscosity of the hydrocarbon oligomer phase is considered (i.e., viscosity; Paragraph 0015), density is considered to facilitate separation post-extraction (i.e., density; Paragraph 0053), where time of extraction is considered (i.e., in combination with mixing time; Paragraph 0014).
Bergbreiter does not teach the determination of a concentration and nature of elements, contaminants or metals that may interfere with PFAS capture by the emulsion oil in the emulsion and controlling PFAS-capturing chemical interactions by selecting the shearing parameters wherein the emulsion oil is selected according to interfacial tension in combination with mixing shearing speed, to achieve a target size of oil droplets of at most 100 micrometers.
However, Bonkhoff teaches the removal of organic compounds from aqueous solutions containing non-ionic surfactants (Col 1, Line 64 to Col. 2, Line 6) wherein the surfactants are known to interfere with liquid-liquid extractions (Col. 1, Lines 23-31) and examples demonstrate that the concentration of surfactants impacts the extraction yields (i.e., determining concentration and nature of elements, contaminants or metals that may interfere with PFAS capture by the emulsion oil in the emulsion; Col. 3, Line 35 to Col. 4, Line 28) and the selection of interfacial tension between the aqueous solution and the organic phase being at least 1.5 mn (i.e., controlling PFAS-capturing chemical interactions by selecting the shearing parameters wherein the emulsion oil is selected according to interfacial tension; Col. 2, Lines 50-54) such that the two liquids can be mixed intensely to form particles sizes of the disperse phases in the range of 0.1 to 10 µm (i.e., in combination with mixing shearing speed, to achieve a target size of oil droplets of at most 100 micrometers; Col. 2, Lines 16-21) for the purpose of generating a large area of interface between the two liquids which will make the organic compounds pass at a high transfer rate from the aqueous solution to the organic phase (Col 2, Lines 26-30).
Bonkhoff is analogous to the claimed invention because it pertains to the extraction of organic compounds contained in an aqueous solution by the mixing of a liquid which is not miscible with water into which the organic compounds will transfer (Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the selection and mixing as taught by Bergbreiter to use the interfacial tension and mixing speed to produce small particle sizes of the phases as taught by Bonkhoff because these factors would enable a large interfacial area which would make the organic compounds pass from the aqueous phase to the organic phase at a high transfer rate.
Bergbreiter in view of Bonkhoff does not explicitly teach wherein the separation is in a selected oil absorption medium.
However, Darling teaches an open-cell foam tailored to have a desired affinity for oil, hydrocarbons, and organics, among other materials (i.e., a selected oil absorption medium; Paragraph 0019) where the oleophilic foam can be used as a filter for removing oils from water (i.e., wherein the separation is in a selected oil absorption medium; Paragraph 0049) with the benefits of being reusable and having high selectivity of oil rather than water (Paragraph 0021).
Darling is analogous to the claimed invention because it pertains to foams that have an affinity for organics (Paragraph 0019). It would have been obvious to one of ordinary skill in the art to modify the process made obvious by Bergbreiter in view of Bonkhoff with the open-cell foam as taught by Darling because the open-cell foam would be reusable and highly selective for the separation of oils from water.
Regarding Claim 17, Bergbreiter further teaches wherein cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (Paragraph 0005) with an exemplary list of poly(α-olefin)s (Paragraph 0025) and compositions of hydrocarbon oligomers and cosolvents (Paragraphs 0024 and 0035), with different extraction times considered (Paragraph 0014), with sequestration of perfluorooctanoic acid (Abstract) taught and enhancement of sequestration occurring due to selection of cosolvent (Paragraph 0016), wherein the hydrocarbon oligomer phase can contain a cosolvent anchored within to enhance sequestration of a more polar organic (Paragraph 0017) with a range of optimizable concentrations of cosolvent (i.e., comprising selecting the oil in relation to the physico-chemical parameters of the contaminated water and to a target captured amount of PFAS molecules; Paragraph 0035).
Regarding Claim 18, Bergbreiter further teaches wherein cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (Paragraph 0005) with an exemplary list of poly(α-olefin)s (Paragraph 0025) and compositions of hydrocarbon oligomers and cosolvents (Paragraphs 0024 and 0035), with different extraction times considered (Paragraph 0014), with sequestration of perfluorooctanoic acid (Abstract) taught and enhancement of sequestration occurring due to selection of cosolvent (Paragraph 0016), wherein the hydrocarbon oligomer phase can contain a cosolvent anchored within to enhance sequestration of a more polar organic (Paragraph 0017) with a range of optimizable concentrations of cosolvent (i.e., comprising selecting the oil in relation to the physico-chemical parameters of the contaminated water and to a target captured amount of PFAS molecules; Paragraph 0035) and teaches that one advantage of using the oils is that they can be recycled or regenerated by processes such as distillation after separating the hydrocarbon oligomer phase from clean water phase (i.e., the method further comprising recycling the oil after said separating the oil part and the treated water part from the emulsion; Paragraph 0019).
Regarding Claim 19, Bergbreiter further teaches wherein cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (Paragraph 0005) with an exemplary list of poly(α-olefin)s (Paragraph 0025) and compositions of hydrocarbon oligomers and cosolvents (Paragraphs 0024 and 0035), with sequestration of perfluorooctanoic acid (Abstract) taught, and enhancement of sequestration occurring due to selection of cosolvent (Paragraph 0016), wherein the hydrocarbon oligomer phase can contain a cosolvent anchored within to enhance sequestration of a more polar organic (i.e., comprising selecting the emulsion oil in relation to at least one of to a target captured amount of PFAS molecules; Paragraph 0017) while also considering the temperature of the process (i.e., temperature of the contaminated water; Paragraph 0014).
Regarding Claim 20, Bergbreiter further teaches wherein cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (i.e., comprising selecting at least one of; Paragraph 0005) with an exemplary list of poly(α-olefin)s (i.e., the type of the oil; Paragraph 0025) and compositions of hydrocarbon oligomers and cosolvents (i.e., the composition of the oil, and the concentration of the oil in the emulsion; Paragraphs 0024 and 0035), with sequestration of perfluorooctanoic acid (Abstract) taught, and enhancement of sequestration occurring due to selection of cosolvent (i.e., and to a target captured amount of PFAS molecules; Paragraph 0016), wherein the hydrocarbon oligomer phase can contain a cosolvent anchored within to enhance sequestration of a more polar organic (Paragraph 0017) with a range of optimizable concentrations of cosolvent (i.e., in relation to the physico-chemical characteristics of the contaminated water; Paragraph 0035).
Regarding Claim 21, Bonkhoff further teaches that an oil-in-water micro emulsion can be used to recover valuable materials from surfactant containing solutions, after which the noxious material is removed from the micro-emulsion such that it can be used again for either recovering valuable materials as well as for removing noxious materials (i.e., wherein said forming the emulsion of the contaminated water with the oil comprises forming an emulsion of the oil in clean water and injection the emulsion into the contaminated water; Col. 3, Lines 8-30).
Regarding Claim 22, Bergbreiter further teaches wherein cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (Paragraph 0005) with an exemplary list of poly(α-olefin)s (Paragraph 0025) and compositions of hydrocarbon oligomers and cosolvents (Paragraphs 0024 and 0035), with sequestration of perfluorooctanoic acid (Abstract) taught, and enhancement of sequestration occurring due to selection of cosolvent (i.e., and to a target captured amount of PFAS molecules; Paragraph 0016), wherein the hydrocarbon oligomer phase can contain a cosolvent anchored within to enhance sequestration of a more polar organic (Paragraph 0017) with a range of optimizable concentrations of cosolvent (i.e., selecting at least one of a molecular composition of the emulsion oil in relation to the physico-chemical characteristics of the contaminated water; Paragraph 0035), viscosity of the hydrocarbon oligomer phase is considered (i.e., the viscosity of the emulsion oil; Paragraph 0015), density is considered to facilitate separation post-extraction (i.e., the density of the emulsion oil; Paragraph 0053), where time of extraction is considered (i.e., in combination with the mixing time for the emulsion; Paragraph 0014).
Bonkhoff further teaches the selection of interfacial tension between the aqueous solution and the organic phase being at least 1.5 mn (i.e., the interfacial tension of the emulsion oil; Col. 2, Lines 50-54) such that the two liquids can be mixed intensely to form particles sizes of the disperse phases in the range of 0.1 to 10 µm (i.e., in combination with the mixing shearing speed; Col. 2, Lines 16-21) for the purpose of generating a large area of interface between the two liquids which will make the organic compounds pass at a high transfer rate from the aqueous solution to the organic phase (Col 2, Lines 26-30).
Regarding Claim 23, Bergbreiter further teaches wherein cosolvents enhance the extraction process (Paragraph 0016) and can tune the properties of the hydrocarbon oligomer phase (Paragraph 0005) with an exemplary list of poly(α-olefin)s (Paragraph 0025) and compositions of hydrocarbon oligomers and cosolvents (Paragraphs 0024 and 0035), with sequestration of perfluorooctanoic acid (Abstract) taught, and enhancement of sequestration occurring due to selection of cosolvent (Paragraph 0016), wherein the hydrocarbon oligomer phase can contain a cosolvent anchored within to enhance sequestration of a more polar organic (Paragraph 0017) with a range of optimizable concentrations of cosolvent (Paragraph 0035), viscosity of the hydrocarbon oligomer phase is considered (i.e., the viscosity of the emulsion oil; Paragraph 0015), density is considered to facilitate separation post-extraction (i.e., the density of the emulsion oil; Paragraph 0053), where time of extraction is considered (i.e., in combination with the mixing time for the emulsion; Paragraph 0014).
Bonkhoff further teaches the selection of interfacial tension between the aqueous solution and the organic phase being at least 1.5 mn (i.e., the interfacial tension of the emulsion oil; Col. 2, Lines 50-54) such that the two liquids can be mixed intensely to form particles sizes of the disperse phases in the range of 0.1 to 10 µm (i.e., in combination with the mixing shearing speed, to achieve a target size of oil droplets of at most 100 micrometers in the emulsion of the contaminated water with the selected emulsion oil; Col. 2, Lines 16-21) for the purpose of generating a large area of interface between the two liquids which will make the organic compounds pass at a high transfer rate from the aqueous solution to the organic phase (Col 2, Lines 26-30).
Regarding Claim 24, Darling further teaches an open-cell foam tailored to have a desired affinity for oil, hydrocarbons, and organics, among other materials (i.e., wherein the separation in a selected oil absorption medium comprises selecting an oleophilic and hydrophobic medium; Paragraph 0019) where the oleophilic foam can be used as a filter for removing oils from water (i.e., and circulating the emulsion through the oleophilic and hydrophobic medium; Paragraph 0049) with the benefits of being reusable and having high selectivity of oil rather than water (Paragraph 0021).
Regarding Claim 25, Bergbreiter further teaches that the sequestered trace organics can be removed from the sequestering phase by extraction of the hydrocarbon sequestering phase of distillation (i.e., further comprising retrieving the captured amount of PFAS from the oil part; Paragraph 0019).
Regarding Claim 26, Bergbreiter further teaches that one advantage of using the oils is that they can be recycled or regenerated by processes such as distillation after separating the hydrocarbon oligomer phase from clean water phase (i.e., further comprising at least one of recycling the oil part; Paragraph 0019).
Darling further teaches an open-cell foam tailored to have a desired affinity for oil, hydrocarbons, and organics, among other materials (Paragraph 0019) where the oleophilic foam can be used as a filter for removing oils from water (Paragraph 0049) where the oil is recovered from the foam by squeezing the foam with the benefits of the foam being reusable (i.e., recycling the selected oil absorption medium) and having high selectivity of oil rather than water (Paragraph 0021).
Regarding Claim 27, Darling further teaches an open-cell foam tailored to have a desired affinity for oil, hydrocarbons, and organics, among other materials (i.e., selecting an oleophilic and hydrophobic medium; Paragraph 0019) with an example set of foams absorbing 9,000, 10,000, and 13,000 grams of oil (i.e., with an oil absorption capacity in a range between 1000% and 2000% of a weight thereof in oil; Fig. 6; Paragraph 0072) where the oleophilic foam can be used as a filter for removing oils from water (i.e., and circulating the emulsion through the oleophilic and hydrophobic medium; Paragraph 0049) with the benefits of being reusable and having high selectivity of oil rather than water (Paragraph 0021).
Bergbreiter in view of Bonkhoff in view of Darling does not teach the explicit oil absorption capacity in a range between 1000% and 2000% of a weight thereof in oil 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 of ordinary skill in the art to have selected the oil absorption capacity that corresponds to the claimed range while experimenting with the range made obvious by Bergbreiter in view of Bonkhoff in view of Darling.
Regarding Claim 28, Bergbreiter further teaches that mineral oils can be used (i.e., comprising selecting one of mineral oils; Paragraph 0064).
Bonkhoff further teaches a suitable immiscible liquid is a vegetable oil or a fatty acid ester (i.e., selecting one of: vegetable oils; Col. 2, Lines 34-45).
Darling further teaches an open-cell foam tailored to have a desired affinity for oil, hydrocarbons, and organics, among other materials (i.e., an oleophilic and hydrophobic medium comprising one of: open cell material; Paragraph 0019) where the oleophilic foam can be used as a filter for removing oils from water (i.e., circulating the emulsion through an oleophilic and hydrophobic medium; Paragraph 0049).
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.
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/A.A.G./ Examiner, Art Unit 1777
/Ryan B Huang/ Primary Examiner, Art Unit 1777
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