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
Applicant’s election without traverse of group I in the reply filed on 12/01/2025 is acknowledged. Claim 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/13/2023, 04/03/2024, 08/08/2024 and 05/13/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claims Status
Claims 1-7 and 22 and 38-49 are pending with claims 1-7 and 38-49 being examined. Claims 8-21, 23-27 are canceled.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the housing, wall or walls must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-5, 39-41 and 47-49 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (Sorption of short-and long- chain perfluoroalkyl surfactants on sewage sludges; hereinafter “Zhang”).
Regarding claim 1, Zhang teaches a PFAS sorbent (Zhang; Title) having hydrophilic and hydrophobic regions (Zhang; 3.3.2 “Proteins and carbohydrates of extracellular polymeric substances (EPS), the major component of sludge).
Examiner notes that carbohydrates are known in the art to be hydrophilic while proteins are known in the art to be amphiphilic, such that it exhibits a log Kd of at least 2.5 for each of PFOA and PFOS and PFHxS (Zhang; Table 2. S13).
Examiner notes that Kf in Zhang is a constant representing the distribution coefficient (Zhang. Fig. 3 Legend, and Applicant discloses [0037] kd=distribution coefficient; and a reversibility for PFHxA such that when exposed to one liter of deionized water per 20 pg PFHxA for 3 weeks at 20 °C and ambient pressure) exhibits at least a 20% reduction of adsorbed PFHxA.
Zhang does not explicitly teach reversibility for PFHxA such that when exposed to one liter of deionized water per 20 pg PFHxA for 3 weeks at 20 °C and ambient pressure) exhibits at least a 20% reduction of adsorbed PFHxA.
However, it would have been obvious that adding one liter of deionized water per 20 pg PFHxA at STP would reverse the Kd for PFHxA as the PFHxA in the sample becomes more mobile and less likely to stay adsorbed to the sediment or sample.
Without some statement of criticality or showing of unexpected results, to one of ordinary skill in the art before the effective filing data of the invention it would have been obvious to determine through routine mathematical experimentation an optimal mixing ratio of deionized water to PFHxA to determine the mobility of PFHxA and how much binds to soil vs staying dissolved.
Regarding claim 2, Zhang teaches the PFAS sorbent of claim 1 (see above) having a log Kd of at least 3 for each of PFOS and PFHxS (Zhang; Table 2. S13).
Regarding claim 3, Zhang teaches the PFAS sorbent of claim 1 (see above) wherein the material has a log Kd of 10 or less for each of PFOA and PFOS and PFBS (Zhang; Table 2. S13).
Regarding claim 4, Zhang teaches the PFAS sorbent of claim 1 (see above) wherein the sorbent is a single material (Zhang; Table 2. “Sludge”).
Regarding claim 5, Zhang teaches a method of measuring PFAS (Zhang; Table 2, sludges 1-13), comprising:
placing the sorbent of claim 1 in water for at least 24 hours (Zhang; Fig. 1 “sorption uptake of PFAS onto sludge 1” (Time (h)));
removing the sorbent from the water;
optionally removing excess water from the sorbent;
extracting PFAS from the sorbent using a solvent that does not dissolve the sorbent;
and analyzing the extracted PFAS for the amount of at least one component of PFAS (Zhang; 2.3 (PASs Analysis “supernatant was removed, centrifuged, extracted with methanol and analyzed via LC/MS/MS).
Regarding claim 39, Zhang teaches the PFAS sorbent of claim 1 (see above) wherein the material has a log Kd of 7 or less for each of PFOA and PFOS and PFBS (Zhang; Table 2. S13).
Regarding claim 40, Zhang teaches the PFAS sorbent of claim 1 (see above) wherein the material has a log Kd of 5 or less for each of PFOA and PFOS and PFBS (Zhang; Table 2. S13).
Regarding claim 41, Zhang teaches a method of measuring PFAS, comprising: placing the sorbent of claim 1 (Zhang; Table 2, sludges 1-13) in water for at least 5 days (Zhang; Fig. 1 “sorption uptake of PFAS onto sludge 1” (Time (h)));
removing the sorbent from the water;
optionally removing excess water from the sorbent;
extracting PFAS from the sorbent using a solvent that does not dissolve the sorbent; and
analyzing the extracted PFAS for the amount of at least one component of PFAS (Zhang; 2.3 (PASs Analysis “supernatant was removed, centrifuged, extracted with methanol and analyzed via LC/MS/MS).
Regarding claim 47, Zhang teaches the method of claim 5 (see above) to include water (see above).
Zhang does not teach the water is porewater.
It would have been obvious to include porewater in Zhang’s method as it is known in the art that sewage sludge’s behavior is heavily influenced by the pore water trapped within it.
Regarding claim 48, Zhang teaches the method of claim 5 (see above) wherein the water is surface water (Zhang; “Graphical Abstract”).
Regarding claim 49, Zhang teaches the method of claim 5 (see above) to include water (see above).
Zhang fails to teach the water is groundwater.
It would have been obvious to include groundwater in Zhang’s method as sewage sludge applied as land fertilizer is known to leach and contaminate groundwater with pollutants like PFAS.
Claims 6-7 and 42-46 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (Translation of CN 205749004 U; hereinafter “Zhou”).
Regarding claim 6, Zhou teaches a PFAS groundwater sampler (Zhou; [0001]), comprising:
a housing comprising a wall or walls that define an internal cross-sectional area (Zhou; Fig. 2. 1 “filter membrane or tub”);
a PFAS sorbent material disposed within the housing (Zhou; [0008] “polyurethane adsorption plug tank”).
Zhou does not teach the sampler has a mass of at least 0.05 grams and a ratio of sorbent mass to housing internal cross-sectional area of no more than 3g/10cm2.
It would have been obvious to modify Zhou’s surface and sampling area to have a mass of at least 0.05 grams and a ratio of sorbent mass to housing internal cross-sectional area of no more than 3g/10cm2 as the modification would provide optimal surface for the sampling application desired.
Regarding claim 7, Zhou teaches the sampler of claim 6 (see above) wherein the sorbent is a polymer (Zhou; [0008] “polyurethane”).
Regarding claim 42, modified Zhou teaches the sampler of claim 6 (see above) wherein the sorbent is a polymeric foam (Zhou; [0008]).
Regarding claim 43, modified Zhou teaches the sampler of claim 42 (see above) wherein the sorbent comprises a polyurethane foam (Zhou; [0008]).
Regarding claim 44, modified Zhou teaches the sampler of claim 43 (see above) to include a polyurethane foam (see above).
Modified Zhou does not teach the foam comprises an ether based polyurethane foam.
It would have been obvious to include an ether based polyurethane foam as ether-based polyurethanes are known in the art to show resistance to moisture and microbial attack which would make this material ideal for water applications.
Regarding claim 45, modified Zhou teaches the sampler of claim 43 (see above) to include a polyurethane foam (see above).
Modified Zhou does not teach the foam comprises an ester based polyurethane foam.
It would have been obvious to include an ester based polyurethane foam as ester based polyurethanes are known in the art to be resistant to oil and solvents which makes the material ideal for the manufacture of foam and sponges.
Regarding claim 46, modified Zhou teaches the sampler of claim 43 (see above) wherein the foam comprises two types of polyurethane. Zhou teaches placing two polyurethane adsorption plugs (Zhou; [0048]). Zhou also teaches changes can be done to the material composition (Zhou; [0039]).
It would have been obvious to comprise two types of polyurethane in order to compare extraction results.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (Sorption of short-and long- chain perfluoroalkyl surfactants on sewage sludges; hereinafter “Zhang”) in view of Zhou et al. (Translation of CN 205749004 U; hereinafter “Zhou”).
Regarding claim 38, Zhang teaches the PFAS sorbent of claim 1 wherein the sorbent comprises a polyurethane foam.
Zhang fails to teach the sorbent comprises a polyurethane foam.
However, Zhou teaches a PFAS groundwater sampler (Zhou; [0001]), comprising a sorbent that is a polyurethane foam (Zhou; [0008]).
To one of ordinary skill in the art before the effective filing date of the invention it would have been obvious to modify Zhang’s sorbent to be a polyurethane foam as taught by Zhou because Zhou teaches a PFAS groundwater sampler (Zhou; [0001]), comprising a sorbent that is a polyurethane foam (Zhou; [0008]).
This would allow for a cost effective alternative material that does not contain PFAS that could interfere with the results.
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 6 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 7 of U.S. Patent No 11,579,134 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the combination of instant claims 6 and 7 recite:
a PFAS sorbent and a PFAS groundwater sampler, comprising
a housing comprising a wall or walls that define an internal cross sectional area,
a PFAS sorbent material disposed within the housing;
wherein the sorbent is a polymeric foam, wherein the sorbent is a single material, wherein the sampler has a mass of at least 0.05 grams and a ratio of sorbent mass to housing internal cross-sectional area of no more than 3g/10cm2 (claim 6), wherein the sorbent is a polymer (claim 7).
Claim 7 of USP 11,579,134 B2 claim recites:
a PFAS sampler comprising
a housing comprising a wall or walls that define an internal cross sectional area,
a PFAS sorbent material disposed within the housing,
wherein the sampler has a mass of at least 0.05 grams and a ratio of sorbent mass to housing internal cross-sectional area of no more than 3g/10cm2 , wherein the sorbent is a polymeric foam and wherein the foam comprises two types of polyurethane.
The combination of instant claims 6 and 7 are different from claim 7 of USP ‘134 in that instant claim 7 is broader and recites that the sorbent is a polymer, and claim 7 of USP ‘134 is narrower and recites the sorbent is a polymeric foam and wherein the foam comprises two types of polyurethane.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX RAMIREZ whose telephone number is (571)272-9756. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
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/A.R./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798