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 .
Status of the Claims
This is a final Office action in response to Applicant’s amendments and remarks filed on 02/12/2026. Claims 1-9 and 19-26 are pending in the current Office action. Of these, claims 1-9 are withdrawn from consideration. Claims 10-18 were cancelled by Applicant. Claim 19 was amended by applicant in independent form and to include the limitations of claims 10 and 15, now cancelled. Claims 20-26 are new claims.
Status of the Rejection
The rejection of claim 19 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendments.
New rejections are necessitated by Applicant’s amendments.
Claim Interpretation
The term “ion exchanger”, as used in the instant application, is a term of art understood by a person having ordinary skill in the art to refer to an “ion exchange resin”.
The term “a free state of the first ion exchanger”, as used in claim 22, has been defined by Applicant as a state of the first ion exchanger prior to use in the hydrogen peroxide removal system. See Remarks p. 8, filed 02/12/2026, and para. 21 of the instant specification.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 23 and 24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 23, claim 23 recites “the apparatus according to claim 10” in line 1, but claim 10 has been cancelled. It is therefore unclear which claim claim 23 is intended to depend from.
Claim 23 is therefore indefinite.
Examiner recommends amending claim 23 to depend from a non-cancelled claim.
Regarding claim 24, claim 24 depends from claim 23, and therefore incorporates the indefinite language of claim 23.
Claim 24 is therefore indefinite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 19-21 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Iiyama (WO 2020/045061 A1) in view of Fukui (US Pat. Pub. 2016/0221841 A1).
Regarding claim 19, Iiyama teaches a pure water producing apparatus (title), comprising:
an electrodeionization (EDI) system for removing contaminants from water to be processed (“electrodeionization device (EDI) 12” para. 21 and Figs. 1-2);
an ultraviolet oxidation device provided upstream of the EDI system (“the permeate water … is treated in the ultraviolet oxidation device 11 and then supplied to at least the deionization chamber 24 of the electrodeionization device 12” para. 31 and Figs. 1 and 2A),
wherein the EDI system comprises:
an anode chamber (“anode chamber 25a” para. 27 and Fig. 2A) in which an anode is provided (“anode 26a” Id.);
a cathode chamber (“cathode chamber 25b” para. 27 and Fig. 2A) in which a cathode is provided (“cathode 26b” Id.); and
at least one deionization chamber provided between the anode chamber and the cathode chamber (“deionization compartments 24” para. 27 and Fig. 2A), each of the at least one deionization chambers being partitioned by a first ion exchange membrane on a side facing the anode (“anion exchange membranes 22” Id.) and being partitioned by a second ion exchange membrane on a side facing the cathode (“cation exchange membranes 21” Id.), and
wherein the electrodeionization system is configured to apply a DC voltage between the anode and the cathode (“a power source 27 that applies a DC voltage.” para. 27 and Fig. 2A).
Iiyama does not teach the at least one deionization chamber is at least partially filled with a metal catalyst with hydrogen peroxide decomposition activity, such that the electrodeionization system is a hydrogen peroxide removing apparatus and the at least one deionization chamber is a hydrogen peroxide removal chamber.
However, Fukui teaches that addition of a metal catalyst having hydrogen peroxide decomposition ability (“The nanocolloidal platinum-group metal particles supported on an anion-exchange resin have high catalytic activity in the decomposition and removal of hydrogen peroxide.” para. 40) to a water treatment apparatus comprising a removal chamber containing anion exchange resin located downstream from a UV oxidation device (“a Pt-catalyst column 9 filled with an anion-exchange resin on which Pt particles were supported” para. 48, “The same treatment as in Examples 1 to 3 was performed, except … water discharged from the low-pressure ultraviolet oxidation device 7 was directly passed through the Pt-catalyst column 9 as illustrated in FIG. 3” para. 49, and Fig. 3) provides the predictable benefit of inhibiting contamination of the produced water with organic carbon formed by degradation of the anion exchange resin due to hydrogen peroxide formed in the UV oxidation device (“Even in the case where the catalyst includes an anion-exchange resin and nanocolloidal platinum-group metal particles supported on the anion-exchange resin … there is no risk that elution of organic carbon (TOC) occurs due to the anion-exchange resin being attacked by hydrogen peroxide” para. 44).
As Iiyama and Fukui each teach apparatuses for removing contaminants contained in water using ion exchange resins, Iiyama and Fukui are analogous art to the instant invention.
Each of the at least one deionization chambers of Iiyama is located downstream from the UV oxidation device (“the permeate water … is treated in the ultraviolet oxidation device 11 and then supplied to at least the deionization chamber 24 of the electrodeionization device 12” para. 31 and Figs. 1 and 2A), and contains an anion exchange resin (“The ion exchanger packed in the deionization compartment 24 may be a mixture of a cation exchange resin and an anion exchange resin.” para. 64).
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify each of the at least one deionization chambers of Iiyama, by at least partially filling them with a metal catalyst with hydrogen peroxide decomposition ability, as taught by Fukui. I.e., such that the deionization chambers are hydrogen peroxide removal chambers, and the EDI system is a hydrogen peroxide removing apparatus for removing hydrogen peroxide. A person having ordinary skill in the art would have been motivated to make this modification to provide the predictable benefit of preventing degradation of the anion exchange resin in the deionization chambers of Iiyama, as taught by Fukui. Furthermore, combining prior art elements according to known methods to yield predictable (i.e., using a catalyst with hydrogen peroxide decomposition ability to inhibit degradation of an anion exchange resin by hydrogen peroxide formed from a UV oxidation device) results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 20, Iiyama further teaches a first ion exchanger is filled in the hydrogen peroxide removal chamber (“deionization compartment 24 is filled with an ion exchanger” para. 60 and Fig. 2A).
Modified Iiyama further teaches, via Fukui, the metal catalyst is supported on at least a portion of the first ion exchanger (“The nanocolloidal platinum-group metal particles supported on an anion-exchange resin” para. 40).
Regarding claim 21, Iiyama further teaches the first ion exchanger is an anion exchanger (“The ion exchanger packed in the deionization compartment 24 may be a mixture of a cation exchange resin and an anion exchange resin.” para. 64).
Regarding claim 23, claim 23 has been interpreted as depending from claim 20.
Modified Iiyama renders the limitations of claim 20 obvious, as described above.
Modified Iiyama further teaches, via Fukui, the metal catalyst is a platinum group metal catalyst (“nanocolloidal platinum-group metal particles” para. 40).
Regarding claim 24, Iiyama further teaches the first ion exchange membrane is an anion exchange membrane (“anion exchange membranes 22” para. 27 and Fig. 2A) and the second ion exchange membrane is a cation exchange membrane (“cation exchange membranes 21” Id.).
Regarding claim 25, modified Iiyama teaches the limitations of claim 19, as described above.
Iiyama further teaches a first concentration chamber disposed between the anode and the first ion exchange membrane, and a second concentration chamber disposed between the cathode and the second ion exchange membrane (“concentration compartments 23 … alternately formed between the cation exchange membranes 21 and the anion exchange membranes 22.” para. 27 and Fig. 2A).
Claims 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Iiyama in view of Fukui as applied to claims 19 or 20, above, and further in view of Shibazaki (JP 2018/134600 A).
Regarding claim 22, Modified Iiyama teaches the limitations of claim 20, as described above.
Modified Iiyama does not teach a packing ratio, as defined in the claim, is 95 % or more and 125 % or less.
However, Shibazaki teaches that electrodeionization apparatuses (title and abstract) preferably have packing ratios greater than 100% i.e., packing ratios such that a free volume of the ion exchange resin is greater than the volume of the deionization chamber (para. 6), a range overlapping the claimed range, because this range of packing ratios provides the predictable benefit of improving contact between the ion exchange resin and ion exchange membrane, thereby enhancing ion transport (“it is preferable that both Ra and Rk are 1 or more, which ensures close contact between the ion exchanger and the ion exchange membrane, allowing ions to be efficiently transported to the concentration compartments” para. 20 and Fig. 2b, see also abstract and paras. 16-17).
As Shibazaki teaches an apparatus for purifying water via electrodeionization, Shibazaki is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the apparatus of Iiyama, such that a packing ratio is greater than 100%, a range overlapping the claimed range, as taught by Shibazaki. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of improving contact between the ion exchange resin and the ion exchange membranes, as taught by Shibazaki. A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05). Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 26, modified Iiyama teaches the limitations of claim 19, as described above.
Iiyama further teaches either one of the first ion exchange membrane and the second ion exchange membrane is an intermediate ion exchange membrane (any of the “anion exchange membranes 22” or “cation exchange membranes 21” may be considered “an intermediate ion exchange membrane”).
Modified Iiyama does not teach the pure water producing apparatus comprises a deionization chamber which is adjacent to the hydrogen peroxide removal chamber via the intermediate ion exchange membrane and is filled with a second ion exchanger.
However, Shibazaki teaches an electrodeionization apparatus (title and abstract), comprising a removal chamber (“distillation compartment D1” para. 23 and Fig. 4) filled with an ion exchanger (“deionization chamber D1 is filled with an anion exchanger” para. 25) and partitioned by a first ion exchange membrane on a side facing the anode (“first anion exchange membrane a1” para. 23 and Fig. 4) and an intermediate ion exchange membrane on a side facing the cathode (“intermediate ion exchange membrane x” Id.) and
a deionization chamber which is adjacent to the removal chamber via the intermediate ion exchange membrane (“distillation compartment D2” paras. 23 and Fig. 4) and filled with a second ion exchanger (“deionization chamber D2 is filled with a cation exchanger” para. 25 and Fig. 4), which provides the predictable benefit of “improving deionization performance” and reducing “power consumption” and “operating costs” (para. 24).
As Shibazaki teaches an apparatus for purifying water via electrodeionization, Shibazaki is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Iiyama, by adding a deionization chamber is adjacent to the hydrogen peroxide removal chamber via the intermediate ion exchange membrane and is filled with a second ion exchanger, as taught by Shibazaki. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefits of “improving deionization performance” and reducing “power consumption” and “operating costs”, as taught by Shibazaki. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Response to Arguments
Applicant's arguments, see Remarks p. 9-15, filed 02/12/2026, with respect to the rejection of claim 19 under 35 U.S.C. § 103, now amended to incorporate the limitations of claims 10 and 15, have been fully considered but they are not persuasive.
Applicant’s Argument #1
Applicant argues on p. 10-13 that Iiyama in view of Fukui does not reasonably render the limitation(s) “the hydrogen peroxide removing apparatus comprises: an anode chamber in which an anode is provided; a cathode chamber in which a cathode is provided; and at least one hydrogen peroxide removal chamber provided between the anode chamber and the cathode chamber and at least partially filled with a metal catalyst with hydrogen peroxide decomposition ability, each of the at least one hydrogen peroxide removal chamber being partitioned by a first ion exchange membrane on a side facing the anode and being partitioned by a second ion exchange membrane on a side facing the cathode, and wherein the hydrogen peroxide removing apparatus is configured to apply a DC voltage between the anode and the cathode” as recited in amended claim 19.
Specifically, Applicant argues that as the hydrogen peroxide removal chamber of Fukui is not positioned between electrodes, Iiyama in view of Fukui cannot render obvious the use of a hydrogen peroxide removal chamber arranged between electrodes.
Examiner’s Response #1
Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the instant case, while Applicant argues Fukui does not teach many of the features required by the claim, as described in the rejection of claim 19, such features are taught by Iiyama. Specifically, Fukui is relied upon only for the teaching of including a metal catalyst with hydrogen peroxide decomposition ability disposed on an anion exchange resin to inhibit degradation of said anion exchange resin when it is located downstream from an ultraviolet oxidation device.
While Applicant asserts “as generally acknowledged by the Examiner, Iiyama fails to cure these deficiencies of Fukui”, it is unclear what particular limitations Applicant is asserting Iiyama fails to disclose, or what statements by Examiner are believed to indicate any such limitations are not taught by Iiyama.
As Applicant’s argument is directed toward Fukui without considering the teachings of Iiyama, Applicant’s argument is not persuasive.
Applicant’s Argument #2
Applicant argues on p. 13 that Fukui is not analogous art to the instant invention. Specifically, Applicant argues that because the system of Fukui does not comprise electrodes and ion exchange membranes, Fukui is non-analogous to the instant invention.
Examiner’s Response #2
Examiner respectfully disagrees. In response to applicant's argument that Fukui is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In the instant case, Fukui teaches a multi-stage water purification system. The instant invention is drawn to a multi-stage water purification system. Fukui is therefore considered to be in the same field as the inventor’s endeavor.
Furthermore, Fukui teaches means for removing hydrogen peroxide generated an upstream stage in a multi-stage water purification system. The instant invention addresses the problem of removing hydrogen peroxide introduced by an upstream stage in a multi-stage water purification system. Fukui is therefore considered to be reasonably pertinent to the particular problem with which the inventor was concerned.
As Fukui is both in the same field of endeavor and pertinent to the problem addressed by the instant invention, Fukui is analogous art to the instant invention.
Applicant’s argument is therefore not persuasive.
Applicant’s Argument #3
Applicant argues on p. 14 that Applicant’s invention as claimed provides the benefit of removing both hydrogen peroxide and carbonic acid from a water stream, and therefore is patentable over the prior art of record.
Examiner’s Response #3
Examiner respectfully disagrees. In response to applicant's argument that the invention as claimed beneficially removes both hydrogen peroxide and carbonic acid, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the instant case, it is considered that a person having ordinary skill in the art would have had a strong motivation to combine the metal hydrogen peroxide decomposition catalyst of Fukui with the electrodeionization (EDI) system of Iiyama. Specifically, as described above, the EDI system of Iiyama is located downstream from a UV oxidation system, and relies on an anion exchange resin in the deionization chambers. Fukui teaches that peroxide formed in a UV oxidation system predictably degrades anion exchange resins located downstream in a water purification system, and that this degradation can be inhibited by coating at least a portion of the anion exchange resin with a metal hydrogen peroxide decomposition catalyst. A person having ordinary skill in the art would therefore have found it obvious to apply Fukui’s solution to this problem in the system of Iiyama (MPEP § 2143(I)(G)).
Expectation of an advantage is the strongest rationale for combining references (MPEP § 2144(II)). Applicant’s argument is therefore not persuasive.
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 ALEXANDER R PARENT whose telephone number is (571)270-0948. The examiner can normally be reached M-F 11:00 AM - 6 PM EST.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795