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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/29/2026 has been entered.
Status of the Claims
This is a non-final Office action in response to Applicant’s amendments and remarks filed on 06/29/2026. Claims 1-9, 19, and 21-27 are pending in the current Office action. Of these, claims 1-9 are withdrawn from consideration. Claim 20 was cancelled by Applicant. Claim 19 was amended by applicant. Claims 27 is a new claim.
Status of the Rejection
The rejections of claims 23-24 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejection of claim 19 under 35 U.S.C. § 103 is withdrawn in view of Applicant’s amendments.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).
The term “thickness” as used in claim 27 has been defined by Applicant as the direction along which voltage would be applied between the anode and cathode (see para. 80 of the instant specification).
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) and filled with a first ion exchanger (“deionization compartment 24 is filled with an ion exchanger” para. 60), 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” para. 27 and Fig. 2A) and being partitioned by a second ion exchange membrane on a side facing the cathode (“cation exchange membranes 21” Id.),
wherein the EDI 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), and
wherein a concentration of total carbonic acid of the water to be processed supplied from the ultraviolet oxidation device to the hydrogen peroxide removing apparatus is 0.01 mg/L as CO2 or more (see below).
The limitation “a concentration of total carbonic acid of the water to be processed supplied from the ultraviolet oxidation device to the hydrogen peroxide removing apparatus is 0.01 mg/L as CO2 or more”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, as recognized by Applicant, UV oxidation treatment necessarily generates both carbonic acid and hydrogen peroxide (“… both carbonic acid components and hydrogen peroxide, which are inevitably generated in the ultraviolet oxidation treatment on water containing TOC …” Remarks filed 06/29/2026, p. 11 para. 1), and that the carbonic acid concentration produced by this process is typically at least 0.01 mg/L as CO2 (para. 78 of the specification).
Therefore, as Iiyama teaches a UV oxidation device, it is considered based on the available evidence that the UV oxidation device of Iiyama is necessarily capable of generating carbonic acid concentrations of 0.01 mg/L as CO2 or more in the output to the EDI system.
Alternatively, because Iiyama teaches a UV oxidation device, it is considered that a person having ordinary skill in the art would find it obvious that the system of Iiyama would be capable of generating carbonic acid concentrations of 0.01 mg/L as CO2 or more in the output to the EDI system.
Iiyama therefore reads on the limitation “a concentration of total carbonic acid of the water to be processed supplied from the ultraviolet oxidation device to the hydrogen peroxide removing apparatus is 0.01 mg/L as CO2 or more”.
Iiyama does not teach a metal catalyst with hydrogen peroxide decomposition ability is supported on at least a portion of the first ion exchanger, such that the electrodeionization system is a hydrogen peroxide removing apparatus, the at least one deionization chamber is a hydrogen peroxide removal chamber, and the first ion exchanger on which the metal catalyst is supported is configured to participate in both hydrogen peroxide decomposition and ion exchange processes.
However, Fukui teaches that depositing 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) on the anion exchange resin of a deionization chamber 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 coating at least a portion of the anion exchange resin with a metal catalyst having hydrogen peroxide decomposition ability, as taught by Fukui. I.e., such that the deionization chambers are hydrogen peroxide removal chambers, the EDI system is a hydrogen peroxide removing apparatus for removing hydrogen peroxide, and the first ion exchanger on which the metal catalyst is supported is configured to participate in both hydrogen peroxide decomposition and ion exchange processes. 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 results (i.e., coating an anion exchange resin with a catalyst having hydrogen peroxide decomposition ability to inhibit degradation of said anion exchange resin by hydrogen peroxide produced by an upstream UV oxidation device) establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
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, Modified Iiyama renders the limitations of claim 19 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 claim 19, above, and further in view of Shibazaki (JP 2018/134600 A).
Regarding claim 22, Modified Iiyama renders the limitations of claim 19 obvious, 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, as defined in the claim, greater than 100% (“the total volume of the anion exchanger-packed sections is Va … volume of the anion exchanger-packed sections when the dilution compartments are not packed with anion exchangers and cation exchangers is Va0, the anion exchanger packing rate Ra is Va/Va0, … Ra > Rk ≥ 1” para. 6), a range overlapping the claimed range, because packing ratios greater than 100% provide 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)).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Iiyama in view of Fukui as applied to claim 19 above, and further in view of Riviello (US Pat. Pub. 2006/0231403 A1).
Regarding claim 27, modified Iiyama renders the limitations of claim 19 obvious, as described above.
Iiyama does not teach the thickness of the at least one hydrogen peroxide removal chamber is 9 mm or more and 30 mm or less.
However, Riviello teaches that having a thickness of between 12 and 100 mm, a range overlapping the claimed range, (“The distance between the membrane pair in the homogeneous anion depletion chamber or the homogeneous cation depletion chamber (w 1 and w2) ranges from about 12 mm to about 100 mm, depending on the volume of fluid being purified.” para. 69) for the deionization chambers of an EDI system (abstract) provides the predictable benefit of reducing the total amount of ion exchange membrane material required by the EDI system, thereby reducing the cost of the system (“an improved apparatus and method for CEDI that achieves the advantages of layered and doped EDI devices without the complexity of layering and doping” para. 66, “One of the main advantages of using an EDI apparatus with a thicker chamber is that it can greatly reduce the amount of ion exchange membrane used to construct the device, which significantly reduces the assembly cost” para. 19, see also para. 37).
Riviello further teaches that “conventional” EDI apparatus have a deionization chamber thickness between 1.5 and 10 mm (para. 19), a range overlapping the claimed range.
As Riviello teaches an EDI system, Riviello 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, such that the thickness of the at least one hydrogen peroxide removal chamber is between 12 and 100 mm, a range overlapping the claimed range, as taught by Riviello. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of reducing the total amount of ion exchange membrane required, as taught by Riviello. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)). A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Furthermore, a person having ordinary skill in the art would have found it obvious to use a thickness of between 1.5 and 10 mm, a range overlapping the claimed range, as the thickness of the at least one hydrogen peroxide removal chamber in the system of Iiyama. A person having ordinary skill in the art would have found this obvious because this range is the conventional range, as evidenced by Riviello, and Iiyama does not specify any particular thickness for the deionization chambers. A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Response to Arguments
Applicant’s arguments, see Remarks p. 8, filed 06/29/2026, with respect to the rejections of claims 23 and 24 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejections of claims 23 and 24 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant's arguments, see Remarks p. 8-14, filed 06/29/2026, with respect to the rejection of claims 19 and 21-26 under 35 U.S.C. § 103, have been fully considered but they are not persuasive.
Applicant’s Argument #1
Applicant argues on p. 10-11 that Iiyama (or Iiyama in view of Fukui) does not reasonably teach or render obvious the limitation “wherein a concentration of total carbonic acid of the water to be processed supplied from the ultraviolet oxidation device to the hydrogen peroxide removing apparatus is 0.01 mg/L as CO2 or more” as recited in amended claim 19.
Specifically, Applicant argues that as Iiyama is silent as to the presence of carbonic acid produced by the UV oxidation device, Iiyama cannot reasonably teach or render this limitation obvious.
Examiner’s Response #1
Examiner respectfully disagrees. Examiner acknowledges that Iiyama is silent as to carbonic acid production by the UV oxidation system. However, as acknowledged by Applicant (see Remarks p. 11), the UV oxidation system of Iiyama must necessarily produce carbonic acid during its intended and usual operation. Furthermore, as the limitation is drawn to a function of the claimed apparatus, the system of Iiyama need merely be capable of producing carbonic acid within the recited concentration range. Based on the available evidence, it is considered that the system of Iiyama is so capable. Therefore, Applicant’s argument is not persuasive.
Applicant’s Argument #2
Applicant argues on p. 11 that, even if Iiyama (or Iiyama in view of Fukui) could be considered to render the limitation “wherein a concentration of total carbonic acid of the water to be processed supplied from the ultraviolet oxidation device to the hydrogen peroxide removing apparatus is 0.01 mg/L as CO2 or more” prima facie obvious, such prima facie case of obviousness is rebutted by secondary considerations.
Specifically, Applicant argues that the claimed features result in the “easy removal of both carbonic acid components and hydrogen peroxide from the outlet water from the ultraviolet oxidation device”.
Examiner’s Response #2
Examiner respectfully disagrees. At issue is whether or not Applicant’s asserted benefit of “easy removal of both carbonic acid components and hydrogen peroxide from the outlet water from the ultraviolet oxidation device” is sufficient to overcome the prima facie obviousness of claim 19.
In order for unexpected results to overcome a prima facie case of obviousness, Applicant must provide evidence that has a nexus to the claimed invention (MPEP § 716.01(b)), such evidence must be commensurate in scope with the claims (MPEP § 716.02(d)), the evidence must demonstrate a benefit over the closest prior art (MPEP § 716.02(e)), and Applicant must demonstrate that any such benefit demonstrated is, in fact, unexpected (MPEP § 716.02(b)(I) and 716.02(c)).
In the instant case, Applicant has asserted that the removal of both carbonic acid components and hydrogen peroxide is the result of the presence of the metal catalyst deposited on the first ion exchanger, as well as the presence of both carbonic acid and hydrogen peroxide in the effluent from the UV oxidation system provided to the hydrogen peroxide removing apparatus. Evidence to this effect is provided in the specification (paras. 89-124), and it is considered that this evidence has a nexus to the claimed invention.
However, all evidence provided requires that the ion exchange resin be an anion exchange resin e.g., “a Pd catalyst-supported anion exchange resin” (para. 93). Such a limitation is found only in claim 21, and therefore the provided evidence is not considered commensurate in scope with the limitations of claim 19.
Furthermore, Applicant has not provided evidence that these results: i) demonstrate a benefit over the closest prior art and ii) are unexpected. In fact, Fukui teaches that anion exchange resin particles coated with a hydrogen peroxide decomposition catalyst disposed thereon provide the predictable benefit of both decomposing hydrogen peroxide (para. 40) and removing carbonic acid (para. 34). As this benefit is art-recognized, it is not clear what basis Applicant has for asserting the results are “unexpected”.
Applicant’s argument is therefore not persuasive.
Applicant’s Argument #3
Applicant argues on p. 12 that Shibazaki cannot reasonably be considered to teach a packing ration for a volume of ion exchange resin coated in a hydrogen peroxide removal catalyst. Specifically, Applicant argues that because Shibazaki does not teach ion exchange resins that are specifically coated in a hydrogen peroxide removal catalyst, the packing ratios of Shibazaki cannot reasonably be applied to the system of Iiyama.
Examiner’s Response #3
Examiner respectfully disagrees. At issue is whether the cumulative limitations of claim 22, taken as a whole, are reasonably rendered obvious by Iiyama in combination with Fukui and Shibazaki, taken as a whole (MPEP § 2141).
In the instant case, Applicant has argued that the teachings of Shibazaki would not have motivated a person having ordinary skill in the art to use a packing ratio of greater than 100% in a system comprising an anion exchange resin coated in a hydrogen peroxide removal catalyst. However, Shibazaki teaches that using a packing ratio of greater than 100% in an EDI system provides art recognized advantages i.e., enhancing ion transport, that are generally applicable to ion exchange resins. Therefore, a person having ordinary skill in the art would have had a strong motivation to modify the system of Iiyama such that the packing ratio is greater than 100%, because Iiyama uses ion exchange resins.
Similarly, a person having ordinary skill in the art would have had a strong motivation to coat at least a portion of the anion exchange resin in the system of Iiyama with a hydrogen peroxide decomposition catalyst, because Fukui teaches that this protects the anion exchange resin from decomposition by hydrogen peroxide produced by an upstream UV oxidation system.
While a person having ordinary skill in the art would not necessarily have had any additional motivation to combine both of these features, Applicant has not asserted or provided evidence that the combination of these features provides any benefits beyond their individual, art-recognized, benefits. It is therefore considered that, due to the strong motivations in the art to make each of the two individual modifications, a person having ordinary skill in the art would have found the claimed invention as a whole obvious over the prior art.
Applicant’s argument is therefore not persuasive. However, this determination may be reconsidered in light of additional evidence provided by Applicant.
Applicant’s Argument #4
Applicant argues on p. 13-14 that the prior art previously cited does not reasonably teach or disclose the limitation “wherein a thickness of the at least one hydrogen peroxide removal chamber is 9 mm or more and 30 mm or less” as recited in new claim 27, and that this limitation is therefore patentably distinguished over the prior art.
Examiner’s Response #4
Examiner respectfully disagrees. Examiner acknowledges the prior art previously cited does not teach this limitation. However, e.g., Riviello teaches that the recited range overlaps with that which is conventional, and further provides a motivation for other values that overlap with this range.
This limitation is therefore not considered to patentably distinguish the claims over the prior art.
Conclusion
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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