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 Status
Claims 1-6 and 8-11 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 and 8-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regard to claim 1, the limitation “consisting of a porous body of a titanium-containing compound and optionally one or more of an additional heavy metal adsorbing substance or an activated carbon” renders the claim indefinite. The transitional phrase “consisting of” is a closed transitional phrase which excludes any element, step, or ingredient not specified in the claim. See MPEP 2111.03. The examiner interprets the adsorbent to include a titanium containing compound in addition to other components (as supported by “optionally one or more of an additional heavy metal adsorbing substance or an activated carbon” (claim 1) and “wherein the titanium content of the porous body is 5% by mass or more” (claim 4)).
Dependent claims 2-6 and 8-11 are rejected as well since they depend on claim 1 and do not overcome the deficiencies of the parent claim.
In regard to claim 5, the limitation “wherein the titanium content of the porous body is 5% by mass or more” renders the claim indefinite. A claim which depends from a claim which “consist of” the recited elements or steps cannot add an element or step. See MPEP 2111.03. This limitation creates the presumption that there are other components present (the titanium content is 5% corresponding to 95% or less other components).
In regard to claim 8, the limitation “wherein the additional heavy metal adsorbing substance is a zeolite or an amorphous titanosilicate” renders the claim indefinite. A claim which depends from a claim which “consist of” the recited elements or steps cannot add an element or step. See MPEP 2111.03.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 11224854 by Omori (Omori).
Regarding limitations recited in the claims which are directed to a manner of operating disclosed adsorbent, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Claim analysis is highly fact-dependent. 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). This applies to the following limitations: “heavy metal” (claim 1); “heavy metal adsorbing” (claim 1); “lead adsorbent” (claim 6); “an adsorbent for water with a pH of 8 or more” (claim 9).
In regard to claim 1, Omori teaches an adsorbent (abstract; C3/L29-40); capable of adsorbing a heavy metal. Omori teaches a porous body of a titanium-containing compound (abstract; C3/L18-40). Omori teaches the porous body has a bulk specific gravity of 0.4 g/cm3 or less (Table 1; Example 8; Table 2, Comparative Example 2). Omori teaches an additional heavy metal adsorbing substance (C7/L62-64; C15/L31-42).
It would be readily apparent to one of ordinary skill in the art that features from Examples 8 and Comparative Example 2 can be incorporated into Formula 2 because they are both directed towards porous articles and Omori discusses incorporating desired properties by tuning articles composition. See also Boston Scientific v. Cordis, 89 USPQ.2d 1704, 1712 (Fed. Cir. 2009). Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.
In regard to claim 2, Omori teaches specific gravity and surface area are related to pore size (C16/L1-52). Omori does not explicitly teach the volume of pores having a pore size of 2 to 10 nm (0.002 to 0.01 micrometer) is 0.05 cm3/g or more in the porous body; however, as the adsorbent cost of construction and efficiency of operation are variables that can be modified, among others, by adjusting said pore size in related to pore volume, the precise pore size in related to pore volume would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed pore size in related to pore volume cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the pore size in related to pore volume in the adsorbent of Omori to obtain the desired balance between the construction cost and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
In regard to claim 3, Omori teaches the porous body has a BET specific surface area of 50 m2/g or more (C3/L5-7). It would have been obvious for one ordinary skilled in the art before the effective filing date to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
In regard to claim 4, Omori does not explicitly teach the titanium content of the porous body is 5% by mass or more. Omori teaches throughout the examples different amounts of metal (C17/L10 to C20/L56). As the adsorbent cost of construction and efficiency of operation are variables that can be modified, among others, by adjusting said mass of titanium, the mass of titanium would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed mass of titanium cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the mass of the titanium in the adsorbent of Omori to obtain the desired balance between the construction cost and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding limitations recited in claim 5, which are directed to method of making said adsorbent (e.g. “a reaction product of a silicate of an alkali earth metal and a water-soluble titanium salt”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the adsorbent as recited in claim 5 is the same as the adsorbent disclosed by Omori, as set forth above, the claim is unpatentable. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In regard to claim 8, Omori teaches the additional heavy metal adsorbing substance is a zeolite or an amorphous titanosilcate (C7/L62-64; C15/L31-42).
In regard to claim 10, Omori teaches an adsorbent for water purifier (abstract; C1/L14-21; C2/L48-51).
In regard to claim 11, Omori teaches a water purifier comprising the adsorbent of claim 1 (abstract; C1/L14-21; C2/L48-51).
Response to Arguments
Applicant's arguments filed 2/24/2026 have been fully considered but they are not persuasive.
In regard to the Applicant’s argument the heavy metal adsorbent of the presently claimed invention does not contain an organic polymer resin which is an essential component in Omori, the Examiner does not find this persuasive.
As noted above in the 112b rejection: In regard to claim 1, the limitation “consisting of a porous body of a titanium-containing compound and optionally one or more of an additional heavy metal adsorbing substance or an activated carbon” renders the claim indefinite. The transitional phrase “consisting of” is a closed transitional phrase which excludes any element, step, or ingredient not specified in the claim. See MPEP 2111.03. The examiner interprets the adsorbent to include a titanium containing compound in addition to other components (as supported by “optionally one or more of an additional heavy metal adsorbing substance or an activated carbon” (claim 1) and “wherein the titanium content of the porous body is 5% by mass or more” (claim 4)).
Dependent claims 2-6 and 8-11 are rejected as well since they depend on claim 1 and do not overcome the deficiencies of the parent claim.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARA M PEO whose telephone number is (571)272-9958. The examiner can normally be reached 9 to 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARA M PEO/Primary Examiner, Art Unit 1777
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