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
Applicant’s election without traverse of Group I and species A1, B1 and C1 in the reply filed on 10/2/25 is acknowledged.
Therefore, claims 32, 33, 39, 40, 46, 47, 48, 49, 50, 52, 53, 54, 55 are withdrawn.
Additionally, claims 41, 42, 43, 44 and 45 depend on Claim 40, which is withdrawn and therefore these claims are also withdrawn.
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.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 are of U.S. Patent No.: 11679293. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of ‘293 describes most of the features of Claim 1 of the current application. Claim 9 of ‘293 disclose the rest of the features.
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.
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(s) 27, 28, 29, 30, 31, 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borodavko (SU 1096201).
The Examiner has provided a machine translation of SU 1096201.The citation of the prior art in this rejection refers to the machine translation.
As to Claims 27 and 34, Borodavko describes a method of extracting bromine by absorption using an aqueous solution of quaternary ammonium salt (abstract), which can be an ammonium bromide (see page 3, #1-#5). The bromine interacts with the liquid stream to form a liquid polybromide (page 2, para. 2). Borodavoko describes this as a “complex” (page 2, last 13th line). This meets the feature “complexed bromine in the form of a liquid” of Claim 27.
Although Borodavko does not specifically state use of a container, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that use of a liquid to contact another liquid would be used in a type of container.
Furthermore, use of a container can be considered a type of “collecting” because the bromine is gaseous and is transformed through use of this absorption solution. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the adsorption solution used is in a container and sorption of the bromine in the container is a kind of “collection”.
As to the bromine being from an emergency spill or leak, this feature is in the preamble. Therefore, it has been held that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
As to the bromine being elemental, Borodavko describes treating bromine from air by blowing bromine with air (see “description”, para. 1). Since Borodavoko describes the contaminant as just bromine, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that at least some of the bromine is elemental bromine.
As to Claim 28, 29, 30 and 31, Borodavko describes the aqueous quaternary ammonium salt used (Claim 1), where the compound can be a symmetric fatty ammonium salt (abstract) and the R group can include ethyl, methyl, phenyl or quaternary salt (abstract).
Claim(s) 27, 28, 34, 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shropshire (US Pat.: 4124693).
As to Claims 27 and 35, Shropshire describes a method of recovering, manipulating and storage of bromine (title). The bromine is in a fluid stream (abstract), such as seawater (col. 2, lines 8-10). Bromine is recovered using an aqueous solution containing q quaternary ammonium halide which forms a liquid polybromide complex with bromine (col. 1, lines 53-57).
As to the “collecting” feature, Shropshire explains that the solution is passed through a tower (col. 2, lines 35-40). This can be considered to meet the collecting step of Claim 27. The complex is a liquid (col. 1, lines 55-58).
As to the bromine being from an emergency spill or leak, these are intended use features. Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
As to Claim 28, Shropshire describe sa cyclic quaternary ammonium bromide (col. 3, lines 50-65 to col. 4, lines 1-40).
As to Claim 34, Shropshire teaches that the bromine removed can be elemental bromine (Claim 14).
Allowable Subject Matter
Claims 36, 37, 38 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: Borodavko (SU 1096201) and Shropshire (US Pat.: 4124693) do not teach inclusion of a foaming agent that is either a foam on top of the liquid bromine (Claim 36) or that the foaming agent is an aqueous film forming foam agent (Claim 37).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 February 2, 2026