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 .
Response to Amendment
Applicant's arguments filed January 9, 2026, have been fully considered but they are not persuasive. Based on applicant’s amendments the rejection below has been updated to address the amendments.
Applicant’s remarks that Jensen does not disclose the step of regenerating until the resin no longer removes perchlorates. The examiner agrees that perchlorates are bound to the resin in Jensen and some are not completely removed during regeneration. It would logically follow that at some point in time, if perchlorates are not being completely removed, and the device is in continual use, perchlorates will build up and the filter would eventually no longer be able to accept additional perchlorates even after regeneration (which is specific for nitrates in Jensen) at which time their concentration in the effluent would increase. Additionally, Haskett was utilized to show in the field of resin filtering, it is well known that filtration devices have a useful life at which point they become exhausted and need to be taken offline and either additional regeneration is needed or the filter becomes exhausted and must be removed from service.
Thus, the limitation that regeneration is repeated until the filter no longer performs does not appear novel. See Chapter 8 – Ion Exchange, Water Demineralization & Resin Testing of the Handbook of Industrial Water Treatment (found at Ion Exchange & Water Demineralization Handbook | Veolia).
Applicant also provides remarks about the Perchlorate and Nitrate fact sheets. It is noted that these were provided as evidence references to show safe levels as determined by the EPA, not to teach the above step. Applicant also remarks that Jensen discloses a countercurrent is favorable. Note that the claim utilizes open language “comprising” and does not preclude additional or other flow options. In fact, the claim only recites “contacting” which could be a variety of options.
Comments
The specification appears to provide a specific definition for the claim language “up to about” at PG Pub [0048]. The definition is as follows:
“As used herein, the term “about” means plus or minus 10% of the numerical value of the number with which it is being used. Therefore, “about 50” means in the range of 45-55.
It is also noted that many of applicant’s claims appear to be result effective variables. As noted in prior art such as Guter (US 4479877), Morgan et al. (US 9169136), Guter (US20050274927), Water Quality Association (‘WQA’) Fact sheet for perchlorates (2013), and Jensen (US 20080116123), the separation potential of a resin which removes contaminants is dependent on items such as the flow rate (WQA page 4, last two paragraphs), timing of regenerations (Jensen [0127]), other contaminants present in the feed such as sulfates and temperature (see Morgan col. 6, lines 55-65), specific type of resin (Guter ‘927 [0027-69]), specific type of brine, direction of regeneration flow (see Jensen [0136-137]), etc. Applicant’s specification does not appear to provide specific details to the parameters noted above or other parameters utilized to arrive at the claimed invention. Thus, absent examples of specific operational conditions in the present specification, the precise amount of residual nitrates and perchlorates, the amount of salt usage, the number of regeneration steps, etc., all appear to be variables that would have an effect on the amount of contaminants removed by one having ordinary skill in the art at the time the invention was made. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation the above in order to obtain the desired balance and 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).
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.
Claims 1-3, 8 and 12 are rejected under 35 U.S.C. 103 as being obvious over Jensen et al (US 20080116123) in view of Heskett (US 5415770).
Regarding claims 1-3, 8 and 12, Jensen teaches a nitrate and perchlorate removal method for feed water (claim 2, which can be groundwater claim 3 [0125]) wherein an ion exchange resin #14 (strong base type resin [0127], claim 8) that is specific for nitrates is utilized [0125-139]. The nitrates and perchlorates adhere to the resin. The resin is regenerated with brine [0135] which was shown to be more effective/specific for nitrates. As noted, the perchlorates are more strongly bonded to the resin and not entirely removed. As such, it would logically follow that at some point in time, if perchlorates are not being completely removed, and the device is in use, the perchlorates will build up and the filter would eventually no longer be able to accept additional perchlorates at which time their concentration in the effluent would increase.
Jensen teaches a resin to remove nitrates and perchlorates from wastewater, but does not specifically teach that the cycle repeats until the resin is no longer able to function.
Heskett also teaches a resin removal systems that selectively remove specific impurities from the water. The active medium of the ion-exchanger is an ion-exchange resin which is designed to remove undesirable constituents from the fluid and replace those undesirable constituents with a less undesirable constituent. For instance, a cation exchange resin employed to remove the hardness-producing elements of calcium and magnesium may be designed to simultaneously give up sodium in exchange for the calcium and magnesium contained in the water which has passed through the ion-exchanger. Regardless of the specific ion-exchange resin used, eventually the bed of resin becomes exhausted and the unit must be removed from service and be regenerated to become useful again. The resin is also susceptible to chemical degradation and must be carefully maintained and monitored to assure continued acceptable performance (col. 1, line 60 to col. 2)
Thus, it would have been obvious to one skilled in the art before the effective file date of the present invention to repeat the cleaning cycles and replace the resin when it because no longer able to filter nitrates or perchlorates in Jensen as taught by Heskett in order to arrive at optimal contaminant removal.
Claims 4-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Jensen et al (US 20080116123) and Heskett (US 5415770), as applied to claim 1 above with evidence from the Water Quality Association Fact Sheets for Perchlorates (2013) and Water Quality Association Fact Sheet for Nitrates (2013).
Regarding claims 4-7 and 9, Jensen teaches in examples 1-2 that typical nitrates in groundwater can be 45-200 mg/L (45-200 ppm, claim 4) and after removal 6mg/L falling within the claimed ranges. Additionally, perchlorates can be present in the range of 10-1000 micrograms/L (claim 6). Jensen teaches the use of about 8% salt solution (claim 9).
Official notice is taken as to a safe level of nitrates and perchlorates after filtration. As evidenced by the fact sheets, the EPA standard for nitrates is 10 ppm after filtration and the fact sheet on perchlorates notes a state of about 2-6 ppb of perchlorate. Thus, any method of separation for these components would seek to arrive at safe industry/governmental mandated levels (claims 5 and 7).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05 II B.
As noted above in the Comments section, Applicant’s specification does not appear to provide specific details to the parameters noted above. Thus, absent examples of specific operational conditions in the present specification, the precise amount of residual nitrates and perchlorates, the amount of salt usage, and the number of regeneration steps all appear to be result effective variables by one having ordinary skill in the art at the time the invention was made.
Accordingly, one of ordinary skill in the art before the effective file date of the present invention would have optimized, by routine experimentation, the concentrations of contaminants, amount of salt and number of regeneration steps in the control solution, etc. to obtain the desired balance and operation efficiency (In re Boesch, 617 F.2d. 272,205 USPQ 215 (CCPA 1980)).
Claims 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jensen et al (US 20080116123) and Heskett (US 5415770), as applied to claim 1 above, in further view of Campbell (US 20100213134).
Regarding claim 13, Jensen teaches that typically it is known that perchlorate is bound very tightly to the resin [0135]. Jensen does not specifically teach that the perchlorate when regenerated does not cause the bonded perchlorate on the single resin to bond to a different portion of the single resin.
However, Campbell also teaches ion resins used for nitrate and perchlorate removal from water. Campbell notes that perchlorates bind so tightly to certain types of resins and cannot be removed via standard regeneration methods and the resin has to be incinerated [0061]. Thus, perchlorates would not be “unbound” from their location on the resin absent certain removal techniques.
As noted above in the Comments section, Applicant’s specification does not appear to provide specific details to the parameters noted above. Thus, absent examples of specific operational conditions in the present specification, the precise amount of residual nitrates and perchlorates, the amount of salt usage, and the number of regeneration steps all appear to be result effective variables by one having ordinary skill in the art at the time the invention was made.
Accordingly, one of ordinary skill in the art before the effective file date of the present invention would have optimized, by routine experimentation, the resin and the regeneration components to obtain the desired balance and operation efficiency. (In re Boesch, 617 F.2d. 272,205 USPQ 215 (CCPA 1980)). It would have been obvious to one skilled in the art before the effective file date of the present invention to select a resin to bond with nitrates and perchlorates and to select a regeneration wash selective for nitrates in Jensen as Campbell notes that under certain operational conditions, perchlorates can bind tightly and cannot be removed to other areas of the resin.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed in the attached PTO-892.
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 JENNIFER M DIETERLE whose telephone number is (571)270-7872. The examiner can normally be reached M-Th 9:30-5:30 EST.
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, Patricia Mallari can be reached at 571-272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
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