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Claims 12-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/15/25.
Applicant’s election without traverse of claims 1-11 in the reply filed on 10/15/25 is acknowledged.
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 1-11 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.
The term “heavy ends” in claim 1 is a relative term which renders the claim indefinite. The term “heavy ends” does not appear to the Examiner to be explicitly defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Specifically, while it is noted that heavy ends are discussed in the specification (see Specification at ¶5-¶6 and ¶31); however, there is no explicit definition and in discussing the heavy ends the specification mentions that it “can be” generated from a waste stream during acetoxylation process (see Specification at ¶5) and can include acetic acid, ethylene glycol, vinyl acetate, ethylene, and acetate compounds (see Specification at ¶31). Consequently, because of the lack of an explicit definition and the optional nature of the discussion, the scope of the claim term would appear to be unclear to one of ordinary skill in the art.
Please note, for purposes of claim interpretation the Examiner will be treating the claim term “heavy ends” as referring to any waste stream having ions which is to be treated by the electrodialysis device.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-6, 8-11 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by US Pub. No. 2020/0324249 to Li et al., (hereinafter referred to as “LI”).
Regarding claim 1, LI teaches an electrodialysis system capable of removing ions from heavy ends (see LI at Abstract and Fig. 3 depicting an electrodialysis system which is for removing ions from a water stream; see also LI at ¶3 and ¶ 21 teaching the removal of ions from a water source in which the ions could be arsenic, fluoride, perchlorate or other ions), comprising:
an electrodialysis device comprising a brine inlet stream, a heavy ends inlet stream, a brine outlet stream, and a product outlet stream (see LI at Fig. 3 depicting stream 372 as the brine inlet stream, stream 360 as the brine outlet stream, stream 346a or stream 370 as the heavy ends inlet stream, and stream 346b or stream 352 as the product outlet stream),
wherein the electrodialysis device could be operated so that the brine outlet stream comprises more acetic acid than the brine inlet stream, and that the product outlet stream comprises no more than 15% the amount of ions relative to an amount of ions in the heavy ends inlet stream (see LI at Fig. 3 teaching an electrolysis device which is capable of being operated in the manner as claimed).
With respect to the wherein clause it is noted that the limitation is being treated by the examiner as statements directed towards the manner of operating the electrodialysis device which appear to fail to recite any further structure of the claimed system. As such, since the electrodialysis system of LI would appear structurally capable of operating as claimed, the claim would appear to be anticipated by the prior art system.
Regarding claims 3-5, 10 and 11, each also appear directed towards the manner of operating the device and so are also found to not further limit the electrodialysis system structurally. As such, the electrodialysis system of LI would anticipate the system as claimed.
Regarding claim 6, LI teaches the electrodialysis system wherein the brine inlet stream comprises no chromium ions (see LI at Fig. 3 depicting brine tank 344 which at startup would be a solution of various NaCl or KCl salts without any impurity metal ions).
Regarding claim 8, LI teaches the electrodialysis system the heavy ends inlet stream comprises a composition that it different from the brine inlet solution (see LI at Fig. 3 and ¶68-¶69 teaching the product stream 346a or feed stream 370 having impure water with the brine inlet stream comprising a salt solution which would have a different concentration and types of ions and so different as claimed).
Regarding claim 9, LI teaches the electrodialysis system comprising two or three electrodialysis devices (see LI at Fig. 3 depicting two ED devices 342).
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI in view of US Pat. No. 5,961,803 to Landfors et al., (hereinafter referred to as “LANDFORS”).
Regarding claim 2, while LI teaches the electrodialysis system for use to produce a product stream usable in various industries including pulp and paper (see LI at ¶3), LI fails to explicitly teach the electrodialysis system wherein each of the heavy ends inlet stream, the brine inlet stream, the brine outlet stream, and the product outlet stream comprise one or more of chromium or potassium ions.
However, LANDFORS teaches the use of electrodialysis for desalination of a solution comprising potassium chloride (see LANDFORS at Fig. 1 and Fig. 2; see also col. 7 lines 7-16 teaching the electrodialysis treatment resulting in a chloride and potassium enriched solution and a depleted solution).
As such, one of ordinary skill in the art would have recognized that the electrodialysis system of LI could be used to separate the potassium and chloride from the solution to be treated in LANDFORS. Moreover, in doing so, the treating of solution of LANDFORS in the electrodialysis system of LI would result in the potassium ions being transferred from the product stream into the brine stream and which would therefore result in potassium ions being present in all of the streams as claimed since 100% of the potassium would not be removed.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have treated the solution of LANDFORS with the electrodialysis system of LI so as to result in the solutions as claimed having potassium ions as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pub. No. 2020/0155967 to McDonald et al., teaching spacers for an ion-exchange device
US Pub. No. 2020/0001251 to Demeter et al., teaching an ion-selective membrane with ionophores
US Pub. No. 2014/0318969 to Medoff et al., teaching upgrading process streams
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794