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 .
Election/Restrictions
Claims 9-14 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups II-IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7 January 2026.
Response to Amendment
The Amendment filed 20 March 2026 has been entered. Claims 1, 4, 6, and 8 are amended; claim 5 is cancelled. Accordingly, claims 1-4 and 6-14 remain pending in the application with claims 1-4 and 6-8 considered in this Office Action. Applicant’s amendments to the claims have NOT overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 6 February 2026.
Claim Rejections - 35 USC § 112
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 1-4 and 6-8 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, lines 13-14, recite “wherein the alkaline hydroxide is lithium hydroxide, and wherein the alkaline alcoholate is lithium alcoholate”. It is unclear if the presence of both the alkaline hydroxide and the alkaline alcoholate is required. This limitation is interpreted as requiring the presence of both the alkaline hydroxide and the alkaline alcoholate.
Claim 8, lines 2-3, recite "adsorbent (a) is powdery or granulated material, or a material in a form of beads or pellets with a diameter from 10 micrometer to 10 mm". It is unclear if the diameter limitation applies to the beads or pellets only, or to any particle of adsorbent (a), including powdery or granulated materials. This limitation is interpreted as requiring the solid phase adsorbent (a) have a diameter from 10 micrometer to 10 mm. It is further unclear if this limitation requires the use of an (a) type adsorbent, as the solid phase adsorbent may be type (a) or (b) according to claim 1.
Claims 2-4 and 6-7 are indefinite as they depend from an indefinite base and fail to cure the deficiencies of the base claim.
Claim Rejections - 35 USC § 103
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 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang ("Wide pH range for fluoride removal from water by MHS-MgO/MgCO3 adsorbent: Kinetic, thermodynamic and mechanism studies") in view of Ikeda (JP 2018094517) and Boukari (US 2023/0006225).
Regarding Claim 1, Zhang discloses a process for removing fluoride from water (Abstract) comprising: contacting a fluoride solution with a MHS-MgO/MgCO₃ adsorbent (MgO/MgCO₃ is an alkaline earth salt comprising carbonate and oxo anions; pg. 195, Col. 2, par. 4-5), wherein the MHS- MgO/MgCO₃ adsorbent is a solid phase adsorbent (pg. 195, Col. 2, par. 2). Zhang further discloses the adsorbent adsorbs fluoride from the solution during the contacting the solution with the adsorbent (pg. 195, Col. 2, par. 5-pg. 196, Col. 1, par. 2). Zhang further discloses adjusting the pH of the fluoride solution, which comprises water, using 0.1 mol/L NaOH (pg. 195, Col. 2, par. 4), wherein the pH is adjusted to 13 (pg. 198, Fig. 6). Based on the concentration of hydroxide ions necessarily present in a solution adjusted to a pH of 13 with NaOH, the solution comprises at least 0.1 mol of NaOH (NaOH meets the limitation of an alkaline hydroxide) per liter of water, and therefore overlaps or, in the alternative, is close to the claimed range of more than 0.1 mol per liter such that the range taught by Zhang obviates the claimed range. See MPEP 2144.05 (I).
The limitation of a solid phase adsorbent chosen from a) alkaline earth salts comprising sulphate anions, or phosphate anions, and a mixture of such anions with hydroxyl anions, and b) cation binding resins loaded with one or more 3-valent cations, chosen from 3-valent cations of Al, Ga, In, Fe, Cr, Sc, Y, La, and lanthanoides was not addressed because this limitation is considered optional.
Zhang is silent to the alkaline hydroxide being lithium hydroxide.
Zhang, however discloses adjusting the pH of the fluoride solution, which comprises water, using 0.1 mol/L NaOH (pg. 195, Col. 2, par. 4), such that the solution of Zhang comprises an alkaline hydroxide.
Ikeda discloses a process for removing fluoride ions from a solution using an adsorbent [0011], [0015]. Ikeda further discloses in a first step, add an alkali metal hydroxide to adjust the pH [0026], wherein the alkali metal hydroxide may be lithium hydroxide (LiOH), sodium hydroxide (NaOH), etc., and these may be used alone or in combination of two or more [0025].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Ikeda wherein the solution comprises lithium hydroxide, because Zhang teaches the claimed invention except that NaOH is used instead of LiOH. Ikeda teaches that the NaOH and LiOH are equivalent products known in the art. Therefore, because the two products were art recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the NaOH for the LiOH.
Zhang is further silent to the presence of an alkaline alcoholate.
Boukari discloses adjusting pH using basic substances such as NaOH, lithium methanolate, etc., or any type of inorganic or organic base [0046].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Boukari wherein the solution comprises lithium methanolate, because Zhang teaches the claimed invention except that NaOH is used instead of lithium methanolate. Boukari teaches that the NaOH and lithium methanolate are equivalent products known in the art. Therefore, because the two products were art recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the NaOH for the lithium methanolate.
It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Ikeda and Boukari to provide a solution comprising lithium hydroxide an lithium methanolate, because using a combination of basic substances to adjust the pH of a solution is a process parameter well-known in the art of removing fluoride ions from a solution using an adsorbent, as recognized by Ikeda [0025].
Regarding Claim 2, Zhang discloses adjusting the pH of the fluoride solution, which comprises water, using 0.1 mol/L NaOH (pg. 195, Col. 2, par. 4), wherein the pH is adjusted up to 13 (solution containing water and NaOH at a pH above 7 meets the limitation of an aqueous alkaline solution; pg. 198, Fig. 6).
Regarding Claim 3, Zhang discloses a MHS-MgO/MgCO₃ adsorbent (pg. 195, Col. 2, par. 4-5), which meets the limitation of a solid phase adsorbent of magnesium carbonate and magnesium oxide.
Regarding Claim 4, Zhang discloses adjusting the pH of the fluoride solution, which comprises water, using 0.1 mol/L NaOH (pg. 195, Col. 2, par. 4), wherein the pH is adjusted up to 13 (solution containing water and NaOH at a pH above 7 meets the limitation of an aqueous alkaline solution; pg. 198, Fig. 6). Based on the concentration of hydroxide ions necessarily present in a solution adjusted to a pH of 13 with NaOH, the solution comprises at least 0.1 mol of NaOH per liter of water, and therefore overlaps or, in the alternative, is close to the claimed range of more than 0.1 mol per liter such that the range taught by Zhang obviates the claimed range. See MPEP 2144.05 (I).
The solution of Zhang comprises NaOH solution from adjusting the pH (pg. 195, Col. 2, par. 4), fluorine at concentrations of 10, 20, or 30 mg/L, and 1 g/L adsorbent (pg. 195, Col. 2, par. 4-5), such that the solution of Zhang comprises 50% or more by weight of water.
Regarding Claim 7, Zhang teaches adsorption at 25°C (25°C meets the limitation of above the melting point of the solution and below the boiling point of the solution, and from 0°C to 150°C; pg. 199, Col. 1, par. 1).
Zhang is silent to the pressure of the contacting the solution and the adsorbent.
Zhang, however, discloses adsorption takes place in a shaker at 25°C for 24 hours (pg. 195, Col. 2, par. 5). Zhang is silent to the shaker being under vacuum or pressurized, such that the pressure of the contacting of Zhang is near atmospheric pressure, which is approximately 1 bar, and therefore, the pressure of Zhang meets the broad limitation of a pressure between 0.1 bar and 100 bar.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang ("Wide pH range for fluoride removal from water by MHS-MgO/MgCO3 adsorbent: Kinetic, thermodynamic and mechanism studies") in view of Ikeda (JP 2018094517) and Boukari (US 2023/0006225) and Kim (JP 2003170003).
Regarding Claim 6, Zhang, Ikeda, and Boukari teach the elements as described above with regards to claim 1.
Zhang is silent to the solution comprising 0.2 mol or more, or 0.35 mol or more, alkaline hydroxide per liter in dissolved state.
Kim discloses an adsorbent for removing fluorine from fluorine-containing wastewater [0011]. Kim further discloses the adsorbent contains calcium hydroxyapatite and calcium phosphate (calcium hydroxyapatite and calcium phosphate meets the limitation of an alkaline earth salt comprising phosphate anions; [0016]). Kim further discloses the adsorbent is powdery (powdery meets the limitation of solid; [0024]). Kim further discloses in order to confirm the fluorine adsorption ability of the adsorbent as a function of the pH of the fluorine-containing wastewater, experiments were conducted using fluorine-containing wastewater with pH values ranging from 3 to 14 [0066]. Kim further discloses an alkali can be added to adjust the pH range [0070], wherein the alkali may be NaOH [0049]. Kim further discloses the fluorine removal rate of the fluorine-containing wastewater at a pH of 7 or higher was almost 100% [0070].
Based on the concentration of hydroxide ions necessarily present in a solution adjusted to a pH of 14 with an alkaline hydroxide, the solution comprises at least 0.2 mol, or at least 0.35 mol, of alkaline hydroxide per liter, and therefore overlaps the claimed range of 0.2 mol or more, or 0.35 mol or more, per liter such that the range taught by Kim obviates the claimed range. See MPEP 2144.05 (I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Kim to contact the adsorbent with a solution comprising 0.2 mol or more, or 0.35 mol or more, alkaline hydroxide per liter in dissolved state, because adsorbing fluorine from a solution at a pH up to 14 is a process parameter well-known in the art of adsorbing fluorine from waste water as taught by Kim, and the fluorine removal rate of the fluorine-containing wastewater at a pH of 7 or higher was almost 100%, as recognized by Kim [0070].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang ("Wide pH range for fluoride removal from water by MHS-MgO/MgCO3 adsorbent: Kinetic, thermodynamic and mechanism studies") in view of Ikeda (JP 2018094517) and Boukari (US 2023/0006225) and Shibayama (JP 2007222817).
An alternative rejection of claim 7 is provided in case the pressure of Zhang is not between 0.1 bar and 100 bar.
Alternatively, regarding Claim 7, Zhang, Ikeda, and Boukari teach the elements as described above with regards to claim 1.
Zhang is silent to the pressure of the contacting the solution and the adsorbent.
Shibayama discloses bringing a fluoride-containing wastewater into contact with a boron fluoride decomposition material at room temperature and atmospheric pressure (atmospheric pressure is 1 bar, which meets the limitation of between 0.1 bar and 100 bar), thereby removing fluorine ions by adsorption onto the boron fluoride decomposition material [0007].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Shibayama to disclose contacting the solution and the adsorbent at atmospheric pressure, as adsorbing fluorine ions from a solution using an adsorbent at atmospheric pressure is a process parameter well-known in the art of extracting fluoride from a solution by contacting the solution with an adsorbent.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang ("Wide pH range for fluoride removal from water by MHS-MgO/MgCO3 adsorbent: Kinetic, thermodynamic and mechanism studies") in view of Ikeda (JP 2018094517) and Boukari (US 2023/0006225) and Jin (“Efficient removal of fluoride by hierarchical MgO microspheres: Performance and mechanism study”).
Regarding Claim 8, Zhang, Ikeda, and Boukari teach the elements as described above with regards to claim 1.
Zhang discloses the size of the MHS-MgO/MgCO3 nanoflakes ranges from tens of nanometers to hundreds of nanometers (pg. 196, Col. 1, par. 3). Zhang further describes the MHS-MgO/MgCO3 as a powder (pg. 196, Col. 2, par. 1).
Zhang is silent to the adsorbent material having a diameter (D50) from 10 micrometer to 10 mm.
Jin discloses MgO microspheres for fluoride removal (Abstract) with a particle size of approximately 90 µm (90 µm meets the limitation of 10 micrometer to 10 mm; Fig. 2c). Jin further discloses although nanosized MgO materials exhibit excellent defluoridation performance, they also undertook the risk of secondary pollution because it was hard to completely remove them from treated water due to their ultra-small size; whereas micrometer-sized MgO materials are easily separated from water (pg. 1080, Col. 2, par. 2-pg. 1081, Col. 1, par. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhang to incorporate the teachings of Jin to use an adsorbent material having a diameter (D50) from 10 micrometer to 10 mm, because although nanosized MgO materials exhibit excellent defluoridation performance, they also undertook the risk of secondary pollution because it was hard to completely remove them from treated water due to their ultra-small size; whereas micrometer-sized MgO materials are easily separated from water, as recognized by Jin (pg. 1080, Col. 2, par. 2-pg. 1081, Col. 1, par. 1).
Response to Arguments
Applicant's arguments filed 20 March 2026 have been fully considered but they are not persuasive.
Applicant argues Ikeda merely lists lithium hydroxide among several possible alkali metal hydroxides that may be used to adjust pH, and Boukari broadly lists various bases that could be used to adjust pH, including lithium methanolate. Neither reference discloses or suggests the specific combination of lithium hydroxide and lithium alcoholate now recited by claim 1, nor do they relate to the particular fluoride extraction process disclosed by Zhang (“Remarks”, pg. 7, par. 1-2).
However, it would have been obvious to a person having ordinary skill in the art to use one or both of lithium hydroxide and lithium alcoholate for adjusting pH, absent a showing of unexpected results. It does not appear anything unexpected occurs using both lithium hydroxide and lithium alcoholate for adjusting pH, and both lithium hydroxide and lithium alcoholate are known to adjust pH.
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).
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 SLONE ELZABETH SIMKINS whose telephone number is (571)272-3214. The examiner can normally be reached Monday - Friday 8:30AM-4:30PM.
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/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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