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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 18, 2025 has been entered.
Response to Amendment
The Amendment filed November 18th, 2025 has been entered. Examiner acknowledges the addition of new claim 10. Claims 1 and 6-10 remain pending in the application.
Response to Arguments
Applicant's arguments filed November 18, 2025 have been fully considered but they are not persuasive.
Applicant contends that Fukui does not teach or fairly suggest arranging the anion exchangers upstream of the platinum group catalyst carriers, nor does Fukui provide motivation to modify the system in the manner recited in the amended claims. However, Fukui expressly teaches that, in order to prevent poisoning of the platinum catalyst and to improve catalyst performance, it is preferable to remove anion components before passing the water to the hydrogen peroxide removal device. Specifically, Fukui states: “In order to prevent the organic acid in the effluent from the ultraviolet oxidizer 2 from poisoning the catalyst, it is preferable to pass the effluent from the ultraviolet oxidizer 2 through the anion exchange means 3 to remove the organic acid. The effluent water from the anion exchange means 3 is passed through the hydrogen peroxide removing device 4 to remove hydrogen peroxide.” Thus Fukui clearly teaches the sequential arrangement of: anion exchange to platinum group catalyst (hydrogen peroxide removal) and provides the express technical rationale for doing so. With respect to the placement of the cation exchangers downstream of the platinum group catalyst carriers, regenerative dual-bed ion exchanger towers are conventional systems in which different functional materials are loaded in discrete zones and arranged according to the intended treatment sequence. Once Fukui establishes that anion removal should precede catalyst contact, incorporating the catalyst zone within a regenerative tower and arranging the remaining cation exchangers downstream represents a routine engineering selection within a known dual-bed configuration. No evidence has been provided that positioning the cation exchangers downstream yields a result different in kind from the other conventional dual-bed arrangements. The recited loading order reflects a predictable arrangement of known treatment stages performing their established functions.
To the extent Applicant relies on alleged “unexpected results”, the specification itself demonstrates that improved hydrogen peroxide removal is achieved when anion components are removed prior to contact with the platinum group catalyst carriers. However, this is precisely the functional relationship expressly described and motivated in Fukui. Therefore, any improved hydrogen peroxide removal achieved by arranging anion exchangers upstream of the platinum group catalyst carriers would have been expected in view of Fukui’s teachings.
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 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fukui (WO2015068635A1: An English machine translation is provided with this office action and is used for claim mapping in the prior art rejection below) in view of Miyazaki (JP-2014233698-A: An English machine translation is provided with this office action and is used for claim mapping in the prior art rejection below).
Regarding claim 1, Fukui discloses a water treatment apparatus comprising: anion exchangers (Fukui Fig. 2 #8) that remove anions from water to be treated that contains hydrogen peroxide (Fukui par. 2 of p. 4 "hydrogen peroxide is generated") and the anions (Fukui par. 2 of p. 4 "OH radicals"); platinum group catalyst carriers that are positioned downstream of the anion exchangers (Fukui p. 5 and Fig. 2 Pt catalyst tower 9 is downstream of anion exchange resin tower 8).; and an ion exchanger tower in which cation exchangers, the anion exchangers and the platinum group catalyst carriers are loaded (Fukui p. 2 “mixed bed type or 4-bed 5-tower type” where anion exchange resin and cation exchange resin is loaded “may be used in a mixed state” but does not state that they must be mix so beds can be loaded separately or together (Fukui p. 4 par. 4), providing the platinum group catalyst carriers are downstream of anion exchange to prevent poisoning Fukui p. 4 par. 4); in which the cation exchangers, the anion exchangers, and the platinum group catalyst carriers are loaded separately, with the proviso that the anion exchangers and the platinum group catalyst carriers are loaded adjacent to each other (Fukui p. 5 “arranged in this order…it is preferable to install them in series” teaches adjacent loading) in that the anion exchangers, the cation exchangers, and the platinum group catalyst carriers are loaded in the regenerative ion exchanger tower in the following order: anion exchangers/platinum group catalyst carriers/cation exchangers (Fukui page 4 teaches effluent should pass through anion exchange prior to catalyst to prevent poisoning the catalyst. Fukui does not attribute any role to cation exchangers in preventing catalyst poisoning or improving hydrogen peroxide removal. Once Fukui establishes anion removal must precede catalyst the positioning of the cation exchangers becomes a routine placement and because these cation exchangers do not function to protect the catalyst, positioning them downstream is an obvious configuration consistent with known dual-bed architectures).
Fukui does not explicitly disclose wherein the ion exchanger tower is a regenerative ion exchanger tower. However Fukui discloses the use of ion exchange devices including “mixed bed type or 4-bed 5-tower type” systems in ultrapure water production (Fukui p. 2). Such systems, particularly in semiconductor ultrapure water production, are conventionally implemented as regenerative multi-tower ion exchange systems to permit periodic regeneration and continuous operation. Therefore, the limitation of a regenerative tower is considered inherent in Fukui’s disclosure. Fukui also does not explicitly disclose the position of the cation exchangers in relation to the anion exchangers and platinum group catalyst carriers.
Miyazaki discloses a 4 bed-5 tower (Miyazaki par. [0021]) ultrapure water production apparatus for semiconductors (Miyazaki par. [0001]) in which alternating cation exchange resin and anion exchange resin are loaded and explicitly disclosing that the second OH column “as a regenerative ion exchange resin apparatus filled with a basic anion exchange resin” (Miyazaki par. [0021]). This explicitly teaches regenerative ion exchange towers with cation and anion exchangers loaded separately.
It would have been obvious to one of ordinary skill in the art at the time of filing to implement the anion exchange resin tower and platinum catalyst tower arrangement of Fukui within the regenerative ion exchanger tower framework disclosed by Miyazaki. A person of ordinary skill in the art would recognize that ultrapure water plants for semiconductors universally employ regenerative multi-tower ion exchange systems (Miyazaki 4B5T). Combining Fukui’s adjacency teaching with the regenerative tower architecture of Miyazaki would have been a straightforward substitution of known structures, motivated by the desire to ensure long-term stability and catalyst lifetime while maintaining continuous operation with periodic regeneration while yielding the predictable results of decomposition of hydrogen peroxide with extended catalyst life (per Fukui) within a regenerative, multi-tower UPW system. Further, as Fukui teaches that anion exchange prior to hydrogen peroxide removal by the catalyst is critical to preserve the catalyst and improve performance, while making no mention of the cation exchange playing any role in catalyst protection or the improvement of hydrogen peroxide removal, the claimed loading order reflects the predictable arrangement of known functional zones within a regenerative ion exchange tower in accordance with the known treatment sequence taught by Fukui, and does not produce a new or unexpected functional relationship among the recited components.
Regarding claim 6, Fukui in view of Miyazaki discloses the water treatment apparatus of
claim 1, wherein the water treatment apparatus produces pure water from the water to be treated (Fukui claim 7).
Regarding claim 7, Fukui in view of Miyazaki discloses an apparatus for producing ultrapure water (Fukui claim 10) comprising; the water treatment apparatus according to claim 6; a pretreatment system that is provided upstream of the water treatment apparatus; and a subsystem that is provided downstream of the water treatment apparatus (Fukui claim 10 and illustrated in Fig. 4).
Regarding claim 8, Fukui in view of Miyazaki discloses a water treatment method comprising; removing anions from water (Fukui Fig. 2 #8) to be treated that contains hydrogen peroxide (Fukui par. 2 of p. 4 "hydrogen peroxide is generated") and the anions (Fukui par. 2 of p. 4 "OH radicals"); and after the anions are removed from the water to be treated, removing the hydrogen peroxide from the water to be treated via contact with platinum group catalyst carriers (Fukui p. 4 par. 5 describes effluent from anion exchange means “is passed through the hydrogen peroxide removing device 4 to remove hydrogen peroxide. As this hydrogen peroxide removing device 4, a device using a platinum catalyst is employed”); wherein the anions are removed from the water to be treated by contacting the water to be treated with anion exchangers that are loaded in an ion exchanger tower (Fukui disclose the OH radicals in the water and are generated by the UV oxidizer which is prior to contact with the “mixed bed type or a 4-bed 5-tower type” ion exchange tower loaded with anion and cation exchange resin which inherently removes anions), the ion exchanger tower comprising cation exchangers, the anion exchangers and the platinum group catalyst carriers (Fukui p. 2 “mixed bed type or 4-bed 5-tower type” where anion exchange resin and cation exchange resin is loaded “may be used in a mixed state” but does not state that they must be mix so beds can be loaded separately or together (Fukui p. 4 par. 4), providing the platinum group catalyst carriers are downstream of anion exchange to prevent poisoning Fukui p. 4 par. 4, further Miyazaki suggests loading cation exchangers and anion exchangers in this order); and wherein the ion exchanger tower is a regenerative ion exchanger tower (Miyazaki par. [0021]) in which the anion exchangers, the cation exchangers, and the platinum group catalyst carriers are loaded separately, with the proviso that the anion exchangers and the platinum group catalyst carriers are loaded adjacent to each other (Fukui p. 5 discloses anion exchanger and then hydrogen peroxide removal apparatus which comprises the platinum group catalyst carriers “arranged in this order…it is preferable to install them in series” teaches adjacent loading) in that the anion exchangers, the cation exchangers, and the platinum group catalyst carriers are loaded in the regenerative ion exchanger tower in the following order: anion exchangers/platinum group catalyst carriers/cation exchangers (Fukui page 4 teaches effluent should pass through anion exchange prior to catalyst to prevent poisoning the catalyst. Fukui does not attribute any role to cation exchangers in preventing catalyst poisoning or improving hydrogen peroxide removal. Once Fukui establishes anion removal must precede catalyst the positioning of the cation exchangers becomes a routine placement and because these cation exchangers do not function to protect the catalyst, positioning them downstream is an obvious configuration consistent with known dual-bed architectures).
Regarding claim 9, Fukui in view of Miyazaki discloses the water treatment method according to claim 8, wherein pure water is produced from the water to be treated (Fukui claims 7 and 10).
Regarding claim 10, Fukui in view of Miyazaki discloses a water treatment method comprising; removing anions from water to be treated (Fukui Fig. 2 #8 “anion exchange resin tower”) that contains hydrogen peroxide (Fukui par. 2 of p. 4 "hydrogen peroxide is generated") and the anions (Fukui par. 2 of p. 4 "OH radicals"); and after the anions are removed from the water to be treated, removing the hydrogen peroxide from the water to be treated via contact with platinum group catalyst carriers (Fukui p. 4 par. 5 describes effluent from the anion exchange means “is passed through the hydrogen peroxide removing device 4 to remove hydrogen peroxide. As this hydrogen peroxide removing device 4, a device using a platinum catalyst is employed”); wherein the anions are removed from the water to be treated by contacting the water to be treated with anion exchangers that are loaded in an ion exchanger tower (Fukui p. 2 discloses the water from the UV oxidizer being supplied to a “mixed bed type or 4-bed 5-tower type” ion exchange apparatus loaded with anion and cation exchange resins which inherently removes anions), the ion exchanger tower comprising cation exchangers, the anion exchangers and the platinum group catalyst carriers (Fukui p. 2 “mixed bed type or 4-bed 5-tower type” where anion exchange resin and cation exchange resin are loaded, and Fukui p. 4 par. 4 describing the platinum group catalyst carriers positioned downstream of the anion exchangers to prevent poisoning); and wherein the ion exchanger tower includes a single regenerative ion exchanger tower in which each of the anion exchangers, the cation exchangers, and the platinum group catalyst carriers are loaded separately (Miyazaki par. [0021] explicitly teaches regenerative ion exchange resin apparatuses in ultrapure water systems in which cation and anion exchange resins are loaded separately), with the proviso that the anion exchangers and the platinum group catalyst carriers are loaded adjacent to each other (Fukui p. 5 "it is preferable to install them in series" teaches adjacent loading) in the single regenerative ion exchanger tower such that the anion exchangers, the cation exchangers, and the platinum group catalyst carriers are loaded in the single regenerative ion exchanger tower in the order shown below from upstream to downstream in flow direction of the water to be treated: anion exchangers/platinum group catalyst carriers/cation exchangers (Fukui page 4 teaches effluent should pass through anion exchange prior to catalyst to prevent poisoning the catalyst. Fukui does not attribute any role to cation exchangers in preventing catalyst poisoning or improving hydrogen peroxide removal. Once Fukui establishes anion removal must precede catalyst the positioning of the cation exchangers becomes a routine placement and because these cation exchangers do not function to protect the catalyst, positioning them downstream is an obvious configuration consistent with known dual-bed architectures).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-13, 15 and 19 of copending Application No. 18/011,297 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a water treatment apparatus and method including adding hypohalogenous acid; radiating ultraviolet rays; adding hydrogen peroxide; removing anions from the water; and removing hydrogen peroxide by platinum group catalyst carriers positioned downstream of the anion removing unit (See at least claims 9 and 15). Dependent claims 10-13 further recite embodiments in which the anion exchangers and platinum group catalyst carriers are loaded within ion exchanger towers, including regenerative ion exchanger towers in which anion exchangers, cation exchangers, and platinum group catalysts are separately loaded and positioned adjacent to one another. The presently claimed invention is directed to the same inventive concept, namely, removing hydrogen peroxide by platinum group catalyst carriers after removal of anions, including embodiments in which the exchangers and catalyst carriers are arranged within a regenerative ion exchanger tower in specified loading order. The only material distinction between the presently claimed invention and the copending claims is that the copending claims additionally recite upstream hypohalogenous acid addition and ultraviolet irradiation steps, whereas the present claims isolate the downstream anion-removal and catalyst removal architecture.
The downstream hydrogen peroxide removal structure and sequence recited in the present claims would have been obvious in view of the copending claims, as they represent the same arrangement of known components performing the same functions to achieve the same result of enhanced oxidation stages does not render the presently claimed subject matter patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM ADDISON GEISBERT whose telephone number is (703)756-5497. The examiner can normally be reached Mon-Fri 7:30-5:00 EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby RAMDHANIE can be reached at (571)270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/W.A.G./Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779