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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-13, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is amended to recite that the “composite filtration material includes a multifunctional composite material”. This is new matter as it is not described in the original disclosure.
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 1, 3-13, and 21 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 1 is amended to recite that the “composite filtration material includes a multifunctional composite material”. It is unclear what structure and form is required to be a “multifunctional” composite material. It is interpreted that the filtration material is a composite material.
Claim 21 recites a “one-step thermal decomposition process”. The Claim is an open-type claim. It is unclear if the recitation of a “one-step thermal decomposition process” means that there is only one step in the method of preparing the composite filtration material OR if there is only one thermal step and there can be additional other steps.
It is also unclear what is meant by “thermal decomposition” and what that process step requires to result in “decomposition” and to what extent it requires to meet the claim.
Because the claim is open, it is interpreted that there is one thermal step.
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, 4, 6, 7, 8, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kuraray (JP4929508) in view of Xiamen (CN103480332, provided in record by Applicant).
Claims 1, 2, 6, and 21: Kuraray teaches a method of preparing a composite filtration material comprising: dissolving one or more precursors in a liquid, thereby forming a mixture solution (Page 4, Example 1); spraying the mixture solution on activated carbon such that the activated carbon is saturated with the mixture solution (Page 4, Example 1); and heating the saturated activated carbon for a predetermined amount of time, thereby forming the composite water filtration material (Page 4, Example 1; heating results in dehydration and a chemical change binding the silver to the carbon). The solution comprises silver (Claims).
Kuraray teaches that the goal is to reduce bacteria in water. They do not teach that the activated carbon is also treated with iron nitrate hydrate.
Xiamen teaches the combination of iron and silver on a carbon substrate (abstract) wherein iron nitrate hydrate is included in order to remove arsenic from treated water (page, 2 around para. 3 and Example 2).
One of ordinary skill in the art at the time of the invention would have found it obvious to include iron nitrate hydrate in Kuraray’s solution for the benefit of creating a product that is both treats water for bacteria and for the removal of arsenic.
Claim 4: the precursor is silver nitrate hydrate (Page 4, Example 1, silver nitrate in water).
Claims 7 and 8: Kuraray teaches that the amount of silver percentage by weight with respect to the activated carbon (page 2, para. 8). They teach that he amount of silver compound aqueous solution is 10-50% by weight of the activated carbon. But they do not teach the ratio of iron nitrate hydrate to activated carbon by weight. Xiamen does not teach the amount by weight of either the iron or silver nitrate.
The amount of silver nitrate compound with respect to the amount of activated carbon is a well-known routinely optimized result effective variable wherein Kuraray clearly teaches that the amount of silver must be sufficient for proper activity and function (page. 1, para. 3; page 2, para. 1) and also that the amount of silver compound solution is optimized with respect to the activated carbon in order to ensure proper stirring (page 3, para. 7). The amount of iron, which complexes with the arsenic, is also a result effective variable which is controlled in order to have a sufficient amount of iron available for complexing and ultimately arsenic removal. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claims 3, 5, 9, 10, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kuraray.
Claims 3 and 5: Kuraray teaches that the amount of silver percentage by weight with respect to the activated carbon (page 2, para. 8). They teach that he amount of silver compound aqueous solution is 10-50% by weight of the activated carbon. But they do not teach the ratio of iron nitrate hydrate to activated carbon by weight.
The amount of silver nitrate compound with respect to the amount of activated carbon is a well-known routinely optimized result effective variable wherein Kuraray clearly teaches that the amount of silver must be sufficient for proper activity and function (page. 1, para. 3; page 2, para. 1) and also that the amount of silver compound solution is optimized with respect to the activated carbon in order to ensure proper stirring (page 3, para. 7). “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 9: Kuraray teaches that the temperature of heating is 150C (Example 1). They do not teach that the heating temperature is 450C. However, one of ordinary skill in the art at the time of the invention would have appreciated that the temperature of heating is a variable optimized through routine experimentation to determine the effective temperature for drying under the conditions and for a desired amount of time. The temperature is not a critical to the invention. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claims 10 and 11: Kuraray does not teach that the heating time is less than 2 hours or 1 hour.
However, Kuraray does teach that the heating must be sufficient to dry the product (Example 1). The amount of time does not appear to be critical to the invention. It was within the routine skill of one of ordinary skill in the art at the time of the invention to determine the appropriate amount of time needed to dry the material. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 12: Kuraray does not teach that the heating environment is explicitly air.
Kuraray teaches that the heating is carried out (Example 1). Given that there are no specific conditions recited, one of ordinary skill in the art at the time of the invention would reasonably conclude that their method is being performed at STP in which air would be the standard condition.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kuraray in view of Nanjing (Provided by Applicant).
Claim 13: Kuraray does not teach the specific type of heating device used to heat the substrate.
Nanjing teaches that it is known in the art to use a muffle furnace to heat and dry activated carbon loaded with iron nitrate [0026, 0034].
It would have been obvious to one of ordinary skill in the art at the time of the invention to use said muffle furnace because the of known technique to improve similar methods in the same way is obvious.
Response to Arguments
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
Applicant argues that Xiamen only teaches “iron ions” and not the iron compound claimed.
Xiamen teaches in Example 2, dissolving “ferric nitrate” into water. Ferric nitrate is also known as iron(III) nitrate which is a series of compounds having the formula Fe(NO3)3 (H2O)n, with n most commonly being 9, in the form of nonahydrate. This is the hydrated form of ferric nitrate that makes the compound stable in dry form. One of ordinary skill in the art would have understood that dissolving a solid ferric nitrate into water, the ferric nitrate was likely in the nonahydrate form.
Applicant argues that Kurary does not teach the claimed material because they allegedly do not teach “thermal decomposition” in a single step.
“Thermal decomposition” is indefinite as it is unclear what this step requires. The specification states thermal decomposition but does not define it in any specific way. While [0047] of the disclosure discuss temperatures, it does not describe these temperatures as specifically related to “thermal decomposition”.
The prior art discusses heating and dehydrating. This is considered thermal decomposition from the hydrated state to the dry state wherein a chemical change occurs to bind the silver to the carbon.
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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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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