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/Restriction
Applicant’s election without traverse of the invention of Group II, claims 4-5, 10-12, 16, 18, 20, 23, 26, and 33, in the reply filed on 11/04/2025 is acknowledged.
Claims 1-2 and 34-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/04/2025.
Claim Rejections – 35 U.S.C. 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 23, 26 and 33 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.
Regarding Claims 23 and 26, the claims contain a broad recitation of a concentration range (for amount of crosslinking agent) and temperature range, respectively, followed by the linking terms "preferably," and "more preferably," which respectively introduce successively narrower recitations of the corresponding range. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP§ 2173.05(d). More specifically, it is unclear whether the features introduced by such linking term(s) are intended to be restrictive to the corresponding broader recitation(s), or merely exemplary of the remainder of the claims, and therefore not required. For purposes of substantive examination, the ranges introduced by the aforementioned linking terms are being treated as merely exemplary of the corresponding broader ranges, in accordance with the principal of giving the broadest reasonable interpretation to pending claims. See MPEP § 2173.01(1). However, clarification and appropriate correction are required.
Regarding Claim 33, the claim recites “adding 50g of 20% w/w sodium hydroxide solution slowly” (see lines 18-19), wherein “slowly” is a relative term which renders the claims indefinite. The term is not defined by the claim, the specification is nowhere found to provide a definition or standard for ascertaining the requisite addition rate(s) intended to qualify as “slowly,” and, thus, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Clarification and appropriate correction are required.
Common Ownership Notice
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections – 35 U.S.C. 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 4-5, 10, 12, 16, 18, 20, 23, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over CN 105037601 A (‘CN ‘601’; citing infra to corresponding English language translation, of record) in combination with Wu et al (Chemosphere 69 (2007) 289-294) or Sowmya et al (Environmental Progress & Sustainable Energy, vol. 34, no. 1, 4 April 2014, 146-154).
Regarding Claim 4/1: CN ‘601 discloses a method for preparing a chelating resin based on styrene as monomer and divinylbenzene as cross-linking agent, the method comprising the steps of:
step (1): preparing an oil phase using a monofunctional monomer, a cross-linking agent, a pore-forming agent and an initiator, preparing an aqueous phase using a dispersant and water, preparing a resin via suspension polymerization reaction, and removing the pore-forming agent from the resin after polymerization reaction is completed, obtaining a resin-based sphere;
step (2): carrying out a chlorination reaction and an amination reaction of the resin-based sphere, and carrying out a hydrolysis reaction by adding an alkali to the resin after the amination reaction, obtaining an amine sphere;
step (3): reacting the amine sphere with an organic weak acid, obtaining a weak acid cation resin (CN ‘601: ¶¶ [0003]-[0010], claims 1-10).
CN ‘601 further characterizes the resin prepared as exhibiting a water content of 45- 55%, a wet volume density of 0.73-0.80 g/ml, a wet true density of 1.15 -1.21 g/ml (¶ [0012]), and the particle size of the resin is expressed as diameter of the spherical particles between 0,5 -1 mm (¶ [0011]). Although the specific surface area and the pore size distribution are not explicitly disclosed therein, the fact that the resin of CN ‘601 was prepared by the same procedural steps (1) – (3) as per claim 4 herein supports an inference that it will possess a specific surface area and a pore size distribution within the respective ranges as recited in claim 1. Indeed, when there is sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. See MPEP § 2112 and In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The burden here is therefore shifted to the Applicant to prove that the properties used to define the resin prepared according to the claimed method would not be present in the chelating resin disclosed by CN ‘601.
The teachings of CN ‘601 differ from the claimed invention only in that claimed step (4) of loading a lanthanum compound onto the surface of the weak acid cation resin (obtained according to step (3)), obtaining a resin for removing phosphorus, is not disclosed therein.
However, the suitability of chelating resins to undergo modification with a lanthanum (La) compound to obtain a La-modified resin utile in phosphate sorption is well-known in the prior art as confirmed by Wu et al and Sowmya et al.
In particular, Wu et al detail the removal of phosphate with a chelating resin Chelex-100 modified with La(III) (see, Abstract). The La(III) has very high affinity to the iminodiacetate functional group of the resin due to the donor atoms N and O. The Chelex-100 resin is a copolymer of styrene and divinylbenzene which contains iminodiacetate groups (see page 290, left-hand column, 1. Introduction). The La(III)-modified resin has been obtained by contacting the sodium-form of the Chelex-100 resin with LaCl₃ (see page 290, 2.2. Preparation of La(III)-chelex resin for phosphate sorption). The removal of phosphate has been carried out in a column at a certain flow rate. After stopping the adsorption, the phosphate has been recovered with either NaOH or HCI and the resin has been regenerated by washing with NaOH, followed by contacting the resin again with LaCl₃ to replace the possible La ions lost during the adsorption (see page 290, right-hand column, 2.3. Phosphate sorption by La(III)-chelex resin under different conditions and 2.4. Phosphate recovery and column regeneration). Wu et al further disclose the proposed chemical structure of Chelex-100, La(III)-Chelex and La(II)-Chelex-Phosphate (see Fig. 1).
Similarly, Sowmya et al disclose a La-modified resin, specifically La(III)-loaded Duolite C 466, for phosphate adsorption from water (see Abstract). Duolite C 466 C is a weak acid cation exchange resin
having styrene divinylbenzene copolymer with iminodiacetic acid groups and being in sodium form. This resin is contacted with a lanthanum salt to load La(III) (see page 147, right-hand column, Materials and methods and Preparation of LDR). The La-modified resin is used to adsorb phosphate from water (see Scheme 1, page 152 and page 153, left-hand column, Mechanisms).
Before the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the method of CN ‘601 by subjecting the weak cation resin obtained from step (3) thereof to La (III)-modification as per Wu et al or Sowmay et al, motivated by a reasonable expectation of obtaining a La-modified resin displaying the same or equivalent phosphate-adsorbing utility.
Regarding Claim 5, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. CN ‘601 further discloses wherein the monofunctional monomer in the step (1) is selected from styrene series (viz., styrene; see ¶ [0010]); or wherein the crosslinking agent in the step (1) is selected from divinylbenzene (¶ [0008]); or wherein the pore-forming agent in the step (1) is selected from liquid paraffin (¶ [0019]); or wherein the initiator in the step (1) is selected from benzoyl peroxide (¶ [0018]); or wherein the dispersant in the step (1) is selected from polyvinyl alcohol (¶ [0017]), as claimed.
Regarding Claim 10, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. Neither CN ‘601, Wu et al nor Sowmya et al directly teach wherein a ratio of the aqueous phase to the oil phase in the step (1) is 10:1-1:1 V/V. However, CN ‘601 does teach that in the polymerization vessel, the oil phase formed in step a is added to the aqueous phase under stirring at a ratio of the aqueous phase to the mass of the styrene monomer of 3:1 to 1:1 for suspension polymerization (¶ [0081]). As the styrene monomer is a component of the disclosed oil phase, CN ‘601 is regarded as implicitly recognizing the ratio of aqueous phase to oil phase as a result-oriented parameter that must optimized in order to achieve the stated ratio of mass of styrene monomer to aqueous phase in the polymerization vessel. Accordingly, an ordinarily skilled practitioner would have been led to further modify the method of CN ‘601 so as to arrive at a ratio of the aqueous phase to the oil phase in the step (1) within the claimed range as a matter of routine experimentation, given the general polymerization conditions and resin properties taught by CN ‘601.
Regarding Claim 12, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. CN ‘601 further discloses wherein the chlorination reaction in the step (2) is carried out using chloromethyl ether (¶ [0033]) which corresponds to the first of four embodiments recited as alternatives in claim 12.
Regarding Claim 16, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. CN ‘601 further discloses wherein the amination reaction in the step (2) is carried out at a temperature of 50-120oC; or wherein the amination reaction in the step (2) is carried out using an agent selected from, inter alia, N-hydroxymethyl phthalimide (¶ [0034]), as claimed.
Regarding Claim 18, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. CN ‘601 further discloses wherein the hydrolysis reaction in the step (2) in the presence of a catalyst selected from, inter alia, sodium hydroxide (¶ [0078] - 25 wt. % sodium hydroxide solution), as claimed.
Regarding Claim 20, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. CN ‘601 further discloses wherein the organic weak acid used in the step (3) for reacting with the amine is selected from, inter alia, chloroacetic acid (¶ [0079]) which corresponds to the first of three embodiments recited as alternatives in claim 20.
Regarding Claim 23, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. CN ‘601 further discloses wherein in the step (1) (step a), the mass ratio of the styrene monomer to the divinylbenzene crosslinking agent is 1:0.18-1:0.22, and the degree of crosslinking agent is 8:1 (¶ [0025]); wherein the latter corresponds to a crosslinking degree of 2-30% W/W, as claimed, and therefore implies the presence of crosslinking agent in an amount within claimed range of 2-30% W/W.
Regarding Claim 26, the combination of CN ‘601, Wu et al or Sowmya et al renders obvious the method of claim 4 as discussed above. Wu et al further disclose wherein the lanthanum compound used in the step (4) is selected from, inter alia, lanthanum chloride (i.e., LaCl₃; see page 290, 2.2. Preparation of La(III)-chelex resin for phosphate sorption), which corresponds to the first of five embodiments recited as alternatives in claim 26.
Potentially Allowable Subject Matter
Claim 11 is objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
Claim 33 would be allowable if amended or rewritten to overcome the rejection under 35 U.S.C. 112 set forth in this Office action and to include all the limitations of the base claim and any intervening claim.
The closest prior art to CN ‘601, Wu et al, and Sowmya et al, discussed above, does not describe the inventions of instant claims 11 and 33, or provide proper rationale to modify any of their respective inventions into the invention of instant claim 11 or 33.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/01-08-26
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