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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 3/24/2026. It is noted that the arguments directed to claim 11 were persuasive and a new rejection for claim 11 have been provided below making this office action non-final.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 10, 13-15, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pratt et al. (WO 02/03499).
Regarding claim 1, Pratt teaches a method for treating wastewater comprising: passing wastewater through a pretreatment component (10 11) to remove at least portions of one or more contaminants from the wastewater and generate a permeate; and passing the permeate through an electro-chemical cell (12) component to remove at least remaining portions of the one or more contaminants and generate an exudate (Figs. 1-3, pages 17-18 and 22-25).
Regarding claim 2, Pratt teaches that the pretreatment unit is a membrane bioreactor that produces a permeate (Figs. 1-3, pages 17-18 and 22-25).
Regarding claim 10, Pratt teaches that the components/contaminants removed include ammonia, which is nitrogen or a derivative thereof (pages 17-18 and 25).
Regarding claims 13-14, Pratt teaches a system comprising a pretreatment component (MBR) and an electro-chemical cell as claimed (Figs. 1-3, pages 17-18 and 22-25).
Regarding claim 15, it is submitted that the type of fluid/material worked upon does not provide patentability to an apparatus claim. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claim 17, Pratt teaches that an oxidizing agent can be added downstream of the filter (permeate) but prior to treating the water with electrodes (pages 7-8) ( and that common disinfecting agents/oxidizing agents would include ozone (page 18). As such, Pratt teaches that ozone, an oxidizing/disinfecting agent, is introduced to the intermediate effluent prior to the electrochemical cell.
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.
Claim(s) 3-4 and 7-8, is/are rejected under 35 U.S.C. 103 as being unpatentable over Pratt et al. (WO 02/03499) in view of Theodore (US 2012/0006742).
Regarding claim 3, Pratt teaches that the method using a bioreactor is used to remove contaminants, such as chemicals, from water to potable water standards but fails to specifically teach the removal of phosphorous. Theodore teaches that in treating water via a membrane bioreactor (MBR) contaminants removed would include phosphorous ([0049]). Thus, one skilled in the art would have found Pratt either implicitly teaches phosphorous as one of the chemicals removed from water, or it obvious for the Pratt method to remove phosphorous as the MBR in Pratt is known to remove phosphorous from a water source.
Regarding claim 4, it is submitted that the electro-chemical cell in Pratt would inherently have an operational/predefined amperage for operation.
Regarding claim 7, Pratt teaches that the exudate/treated water from the electro-chemical cell is passed through a tertiary membrane component (reverse osmosis) to produce an effluent that is capable of being discharged (17) (Figs. 1-3, pages 17-18 and 22-25).
Regarding claim 8, modified Pratt teaches that phosphorous is removed and that a potable water having harmful chemicals is produced. Pratt does not teach the specific concentration of phosphorous in the effluent. It is noted that the claimed method and modified Pratt use the same means to treat water (MBR, electrochemical cell, and reverse osmosis membrane). Thus, one skilled in the art would expect similar contaminant concentrations as claimed as the same method cannot produce different results. Further, one skilled in the art would have found it obvious to optimize the residence times of the various treatment means to control the potable water effluent concentrations to be within the desired range.
Claim(s) 5-6 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pratt et al. (WO 02/03499) in view of Theodore (US 2012/0006742) as applied to claim 3 above, and further in view of Volpe (US 2007/0199868).
Regarding claim 5, Pratt teaches the operation of the electrochemical cell having silver electrodes and the cell would inherently be operated at various amperages. Pratt fails to teach the amperages being within the range claimed. Volpe teaches that common amperages for electrochemical cells having silver electrodes fall within the range of 5-10 amps (claims 14-15). As such, one skilled in the art would have looked to the art to find known amperages for silver electrode electrochemical cells given the silence on amperages by Pratt, and one skilled in the art would have a reasonable expectation of success in using known amperages.
Regarding claims 6 and 18-19, while Pratt teaches the use of electrodes as part of the electrochemical cell operation. Volpe teaches that various materials can be used to make the electrodes, such as silver, titanium, and iron (claim 15). It is noted that Applicant’s disclosure teaches that the electrode materials listed in Volpe and Pratt are capable of providing the electrocoagulation and electro-oxidation effects listed ([0032]) and Volpe explicitly considers the electrocoagulation effects of the electrode material listed (abstract). It is further noted that the oxidation process occurs at the anode. As such, one skilled in the art would have found that the operation of the Pratt electrode (or the equivalent electrode material in Volpe) would result in the effects claimed based on the teachings in the art and Applicant’s own specification, even if not explicitly stated in Pratt.
Regarding claim 20, it is submitted that the electrochemical cell in modified Pratt is capable of being an electro-oxidation cell based on analysis of claims 6 and 18-19 above.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pratt et al. (WO 02/03499) in view of Chidambaran et al. (US 20150315055).
Regarding claim 9, Pratt fails to teach the electrochemical cell comprises a sacrificial anode-cathode pair and a non-sacrificial anode-cathode pair. Chidambaran teaches that the providing a combination of a sacrificial anode-cathode pair and a non-sacrificial anode-cathode pair would allow for efficient removal of desired contaminants while minimizing any chemicals and electrode replacement ([0031]). As such, one skilled in the art would have found it obvious to provide a combination of a sacrificial anode-cathode pair and a non-sacrificial anode-cathode pair in order to efficiently remove contaminants while reducing operation costs.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pratt et al. (WO 02/03499) in view of Theodore (US 2012/0006742) and Hu et al. (US 2018/0141836).
Regarding claim 11, see claims 1-3 and 7 above. It is noted that the electrochemical cell in Pratt is never taught to remove phosphorous. However, Hu teaches that similar electrochemical cells that contain copper also aid in the removal of phosphorous species by making a product that is removable from the liquid ([0131] and claim 1). As such, one skilled in the art would expect or find it obvious to apply the Pratt method to streams having phosphorous and thereby remove phosphorous in both the MBR and the electrochemical cell with a reasonable expectation of success.
Regarding claim 12, see claim 8 above.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pratt et al. (WO 02/03499) in view of Huang et al. (US 2019/0185351).
Regarding claim 15, Pratt teaches that zinc electrodes are used but fails to specifically state PFAS are removed in the zinc based electrochemical cell. Huang teaches that when zinc is used as an electrode, the zinc particles/flocs from the electrodes remove PFAS based chemicals ([0061] and [0138]). As such, one skilled in the art would expect the electrochemical cells with zinc electrodes in Pratt to remove PFAS from the water being treated with a reasonable expectation of success even if Pratt fails to explicitly consider PFAS chemicals.
Response to Arguments
Some of Applicant's arguments filed 3/24/2026 have been fully considered but they are not persuasive. As discussed above, arguments directed to claim 11 were persuasive resulting in the updated rejection above.
Applicant argues that Pratt does not remove anything from the water and thus fails to teach the removing one or more contaminants. The term contaminants is very broad Applicant has included bacteria and viruses under possible contaminants ([0040]). Pratt explicitly teaches that the while the electrochemical cell has antimicrobial and antifungal properties, the use of the electrochemical cell “improves the "kill rate" ; that is it reduces the bacteria and other organisms.” As such, the killing or reducing of bacteria and other organisms would read on removal of contaminants/microbes.
Applicant argues that the electrochemical cell does not remove nitrogen. It is noted that this limitation is never claimed. The argued limitation merely states that the one or more contaminants comprises nitrogen. Comprising is an open ended term allowing for other contaminants and as long as nitrogen is removed in one of the steps, it reads on the claim limitation. Examiner has provided a basis that nitrogen is removed in the MBR step and other “one or more” contaminants are removed in the electrochemical step. If Applicant desires for the nitrogen to be removed in the electrochemical step, the claims should include such language.
Similar arguments have been made for claim 3 and phosphorous being one or more of the contaminants. Again, the claim uses comprising terminology allowing for different contaminants to be removed at different stages. It is noted that claim 11 specifically includes a limitation that phosphorous is removed via the electrochemical cell providing a basis that the neither Pratt or Theodore consider this limitation.
Applicant argues that the system should include limitations directed to what is being treated and the effects of operating the device. MPEP sections 2114 and 2115 clearly state that the actual structure is what is being considered and the specific fluid being treated (phosphorous containing liquid) or the effects of operating (removal of a specific type of contaminant) are not given full patentable weight. Further, as discussed in claim 11 above, the Pratt device is capable of removing phosphorous using the same electrochemical cell.
In response to applicant's argument that Volpe and Pratt are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Pratt and Volpe both teach using similar electrochemical cells having similar material electrodes. Pratt and Volpe both teach effects of operating the same electrochemical cell on water while focusing on different contaminants.
Applicant’s analysis of what is missing in Volpe is considered piecemeal analysis of the references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In regards to Pratt and Volpe not explicitly stating oxidation happens in the electrochemical cell, It is noted that the metal ions added would be from the electrodes, more specifically the anode. The anode is where an oxidation process happens (oxidation occurs at the anode while reduction occurs at the cathode). As such, an oxidation process happens at the electrochemical cell. If a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). Applicant has provided no reasoning or factual support that the cell does not provide an oxidation reaction, only that Pratt and Volpe do not explicitly state one is happening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777
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