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 .
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.
Claims 1, 3, 8, 9, 10, 12, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,614,077 to Wittle et al. (Wittle).
As to claim 1, Wittle teaches a system (10) for removal of a targeted pollutant, including heavy metals from a water containing waste, comprising an electrochemical cell comprising a first fluid chamber (15’) including a cathode (16’), a second fluid chamber (11’) including an anode (12’), a sorbent (porous matrix material capable of absorbing the heavy metal pollutant) (59/60) located in a fluid bridge between the first and second chambers (15’/16’), the porous matrix material allowing for the passage of electrical current between the first and second fluid chamber (Column 5, Line 46 to Column 6, Line 23; Column 7, Line 60 to Column 9, Line 13; Figure 5). The system of Wittle is configured, through electrolysis and use of the porous matrix, to produce dissolution, ionization, and sorption of the target pollutants, i.e. the generation of cationic species containing heavy metals which are adsorbed by the matrix material (Column 3, Lines 28-63).
As to claim 3, Wittle teaches the apparatus of claim 1. As discussed above, Wittle teaches that the target pollutant is in water (Column 8, Lines 10-44).
As to claim 8, as discussed above, Wittle teaches the system of claim 1. Wittle further teaches that the system is utilized in a method for removing a targeted pollutant form a fluid by adding fluids containing the target pollutants to the first and second chambers (via inlets (57/43a’/43b’) and porous separators (36’)) (i.e. at least a portion of the fluid would flow through the porous separators into the first and second chambers under operation) and applying an externally applied voltage to the electrochemical cell (Column 5, Line 46 to Column 6, Line 23; Column 7, Line 60 to Column 9, Line 13).
As to claims 9 and 10, Wittle teaches the apparatus of claim 1. Wittle further teaches that the targeted pollutant comprises heavy metals trapped in the matrix (Column 3, Lines 39-47).
As to claim 12, Wittle teaches the method of claim 8. As discussed above, Wittle teaches that the target pollutant is in water (Column 8, Lines 10-44).
As to claims 17 and 18, Wittle teaches the method of claim 8. Wittle further teaches that the targeted pollutant comprises heavy metals trapped in the matrix (Column 3, Lines 39-47).
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.
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.
Claims 4, 5, 7, 13, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wittle as applied to claim 3 above, and further in view of CA 2671140 A1 to Malavasi (Malavasi).
As to claims 4, 5 and 7, Wittle teaches the apparatus of claim 1. Wittle teaches that the target pollutant comprises heavy metals, but fails to discuss a particulate size of the heavy metals. However, Malavasi also discusses the treatment of heavy metal containing wastes and teaches that the particulate size of heavy metals in wastes for treatment typically comprise particles with nanometer and micrometer scale sizes (Page 2, Last Paragraph). Therefore, it would have been obvious to one of ordinary skill in the art to utilize the apparatus of Wittle with a treatment fluid requiring heavy metal removal with particles in the nanometer and micrometer scale size as a known fluid requiring heavy metal removal as taught by Malavasi.
As to claims 13, 14 and 16, Wittle teaches the method of claim 8. Wittle teaches that the target pollutant comprises heavy metals, but fails to discuss a particulate size of the heavy metals. However, Malavasi also discusses the treatment of heavy metal containing wastes and teaches that the particulate size of heavy metals in wastes for treatment typically comprise particles with nanometer and micrometer scale sizes (Page 2, Last Paragraph). Therefore, it would have been obvious to one of ordinary skill in the art to utilize the method of Wittle with a treatment fluid requiring heavy metal removal with particles in the nanometer and micrometer scale size as a known fluid requiring heavy metal removal as taught by Malavasi.
Claims 6, 11, 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wittle as applied to claim 3 above, and further in view of US 2014/0083933 A1 to Choi (Choi).
As to claims 6 and 11, Wittle teaches the apparatus of claim 3. As discussed above, Wittle teaches that the target pollutant comprises heavy metals, but fails to discuss all applicable heavy metals. However, Choi also discusses fluids requiring treatment for removing heavy metal and that a heavy metal that requires removal is mercury such as in the form of an amalgam (Paragraph 0003). Therefore, it would have been obvious to one of ordinary skill in the art to utilize the apparatus of Wittle with a treatment fluid requiring mercury amalgam removal as a known fluid requiring heavy metal removal as taught by Choi.
Response to Arguments
Applicant's arguments filed 16 December 2025 have been fully considered but they are not persuasive. Applicants argue that Wittle does not comprise a step of ionization of the target material. However, the Examiner disagrees, Wittle specifically teaches that a voltage gradient is applied such that an electrical current flow from the cathode to the anode through the sample, thus inherently species within this sample would undergo electrochemical reactions and become ionized, Wittle specifically teaching the presence of cationic species containing heavy metals (Column 3, Lines 39-47). Thus absent narrowing limitations, for example narrowing the feed location of the sample, the Examiner maintains that the claim limitations are taught by Wittle. It may further be important to note that claim 1 and its dependents are directed to apparatus claims, apparatus must be distinguished from the prior art in terms of structure rather than function. Functional limitations do not serve to further limit apparatus claims beyond imparting the limitation that the apparatus be capable of performing the claimed function (MPEP 2114).
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.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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