DETAILED ACTION
Status of Claims:
Claims 19 and 21-37 are pending.
Claims 1-18 and 20 are canceled.
Claim 19 is amended.
Claims 21-37 are new.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive. The applicant argues that the double patenting rejection should be withdrawn because claim 19 has been amended to incorporate the limitations of claim 20. This argument is not persuasive because claim 19, as amended is obvious in over of the claims of the copending in view of Locke and Kobayashi.
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 19, 21-35, and 37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of copending Application No. 18/671,245 in view of Locke et al (US 2018/0215639) and Kobayashi, (WO 2019163424, English Machine translation provided).
Regarding Claim 19:
The claims of copending application disclose the method of reducing 1,4-dioxane content in water, the method comprising: providing a bioreactor system comprising: a housing having an inlet and an outlet; at least one adsorbent layer which (i) comprises a biofilm comprising microbes capable of metabolizing 1,4-dioxane and (ii) is contained with the housing; and a first screen positioned downstream from the at least one adsorbent layer, wherein the first screen is configured to retain within the bioreactor any of the biofilm and microbial inoculum that becomes detached from the at least one adsorbent layer, and wherein the housing is configured to receive through the inlet a flow of an influent comprising water (see claim 1); enriching, via the influent, the biofilm within the bioreactor system, which biofilm comprises 1,4-dioxane-metabolizing microbes; removing the biofilm from the bioreactor system; and then injecting the biofilm into a contaminated site, wherein injecting the biofilm into the contaminated site results in in-situ remediation of the contaminated site through bioaugmentation (see claim 15).
The claims of the copending application do not explicitly teach water contaminated with 1,4-dioxane and the bioreactor is configured to be operated in a manner effective to discharge an effluent from the outlet, which effluent comprises water contaminated with 1,4-dioxane in an amount of less than 0.5 µg/L.
Locke teaches treating water contaminated with dioxane in a bioreactor system comprising an adsorbent layer which comprises a biofilm (see para. 0051). Locke further teaches that dioxane should be below 0.3 µg/L (see para. 0010)
The copending application and Locke are analogous inventions in the art of bioreactor systems. It would have been obvious to one skilled in the art treat the water of Locke, containing dioxane, with the system of the copending application because through routine experimentation one skilled in the art would have found appropriate sources of waste to treat with a known method. It would have further have been obvious to operate the system in a manner effective to reach a dioxane concentration of less than 0.5µg/L in order to be within drinking water guidelines (see Locke para. 0010).
The combination does not teach that the largest dimension is about 0.001 mm. Magnusson further teaches that the mesh size should be less than the size of the carriers (see pg. 10, 9th paragraph).
Kobayashi teaches a bioreactor comprising biological activated carbon (see pg. 4, 8th paragraph). Kobayashi further teaches that the optimum particle size is dependent on the concentration of the waste water (see pg. 4, 9th paragraph).
Locke, as modified, and Kobayashi are analogous inventions in the art of biological wastewater treatment. It would have been obvious to one skilled in the art before the effective filing date of the invention to adjust the carrier size of Locke, in view of Kobayashi, dependent on the concentration of the wastewater (see Kobayashi pg. 4, 9th paragraph). It would have further been obvious to use a screen with the largest dimension of about 0.001 mm in order to ensure that opening size is less than the size of the particles (see Magnusson pg. 10, 9th paragraph). “[W]here the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine experimentation.” See
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an
optimum value of a known result effective variable, without producing any new or
unexpected results, is within the ambit of a person of ordinary skill in the art. See In re
Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). It is noted that no unexpected results or significance is disclosed by the instant invention related to the opening size.
Regarding Claim 21:
The limitations of claim 21 of the instant invention correspond to claim 2 of the copending application.
Regarding Claims 22-24:
The limitations of claims 22-24 are disclosed by claim 4 of the copending application. There is inherently a bed of adsorbent particles and the “layer” is between two screens.
Regarding Claim 25:
Claim 25 of the instant invention corresponds to claim 10 of the copending application.
Regarding Claim 26:
The claims of the copending application discloses an bioreactor system of claim 19, which is configured to be operated to produce an empty bed contact time from about 3 minutes to about 1440 minutes (see claim 6). Given that the disclosed range fully encompass the claimed range of about 30 to about 720 minutes a prima facie case of obviousness exists and it would have been obvious to one skilled in the art to select an empty bed contact time within the claimed range (see MPEP 2144.05).
Regarding Claim 27:
The claims of the copending application, in view of Locke disclose the method of reducing 1,4-dioxane content in water from a water source, the method comprising: flowing water from a water source as an influent into the bioreactor system of claim 1,9 wherein the influent has a first concentration of 1,4-dioxane; and collecting treated water discharged as an effluent from the bioreactor system, wherein the bioreactor system is operated such that the effluent has a second concentration of 1,4-dioxane that is lower than the first concentration of 1,4-dioxane (see claim 11, rejection of claim 19 above).
Regarding Claims 28-30, 32, 33, and 37:
The claims of the copending application do not teach the first or second concentrations. However it would have been obvious to one skilled in the art to use the method disclosed by the copending application, as modified by Locke, to treat any known dioxane containing wastewater, and it would have further been obvious to treat the dioxane containing wastewater to a second concentration of less than 0.5µg/L in order to be within drinking water guidelines (see Locke para. 0010).
Regarding Claims 31 and 34:
The claims of the copending application discloses or render obvious the methods of claims 30 and 27, which is configured to be operated to produce an empty bed contact time from about 3 minutes to about 1440 minutes (see claim 6). Given that the disclosed range fully encompass the claimed range of about 30 to about 720 minutes a prima facie case of obviousness exists and it would have been obvious to one skilled in the art to select an empty bed contact time within the claimed range (see MPEP 2144.05).
Regarding Claim 35:
The claims of the copending application disclose the method of claim 27, wherein the at least one adsorbent layer of the bioreactor system comprises a bed of adsorbent particles (granular activated carbon) (see claim 13).
Claim 36 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of copending Application No. 18/671,245 in view of Locke et al (US 2018/0215639) and Kobayashi, (WO 2019163424, English Machine translation provided) and further in view of Woodward et al (CA 3049886).
Regarding Claim 36:
The claims of the copending application disclose the method of claim 16.
The claims of the copending application do not disclose the absorbent particles comprise a carbonaceous adsorbent, an inorganic silicone-aluminum oxide adsorbent, Zeolite HSZ-Alumina, and/or Zeolite HSZ-Clay.
Woodward teaches the use of Ambersorb 560 (a carbonaceous adsorbent ) in place of GAC for an adsorbent bed (see pg. 3, 3rd paragraph).
It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the activated carbon of the copending application with the carbonaceous adsorbent of Woodward because it is the simple substitution of one known adsorbent with another known adsorbent, obviously resulting in the adsorption of contaminants. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 4/8/2026