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 .
Claim Status
The Amendment filed on 19 December 2025 has been entered; claims 1, 2, 4, 6, 8, 9, 11, and 12 remain pending.
Response to Arguments
Applicant’s arguments, see Pages 4-5 of the Remarks and the Declaration submitted under 37 CFR 1.132, filed 19 December 2025, with respect to the Objection to the Drawings and the rejection of claims 1-12 under 35 USC 112(b) have been fully considered and are persuasive. The Objection to the Drawings and the rejection of claims 1-12 under 35 USC 112(b) have been withdrawn.
Applicant's arguments, see Pages 5-9 of the Remarks, filed 19 December 2025, with respect to the 103 rejections of claims 1-12 have been fully considered but they are not persuasive. Applicant argues that the method of Yang merely vaguely discloses the comparison method of benzotriazole with and with using UV, and states that Yang only teaches 5% degradation efficiency without UV. In response, the Examiner submits that claim 1 does not preclude the use of UV in the recited method, and furthermore with respect to Applicant’s assertion that the method of amended claim 1 removes 99.69% of triazole compounds, the Examiner submits that Yang teaches 100% degradation of benzotriazole at pH 5.0 within 10 minutes (see Fig. 4b and second paragraph of Section 3.3.1.), meeting the limitations “treating the triazole compound to a concentration lower than a critical concentration of 0.5 ppm” of claim 1, and consistent with the critical concentration of 0.03 ppm as recited in claim 8.
Applicant’s argument that irradiation intensity of UV use din Yang is greatly affected by the particles and contamination contained in the wastewater, making it difficult to use in industrial applications, is not found to be persuasive as these arguments are based on attorney speculation, and because as claim 1 does not recite industrial applications. Arguments must be considered mere attorney speculation not supported by evidence. In re Scarborough, 500 F.2d 560,566 182 USPQ 298,302 (CCPA 1974).
With respect to Applicant’s arguments regarding Frail on Pages 6-8 of the Remarks, the Examiner submits that Frail was merely cited to show the specific pH adjustment chemicals recited in claim 2 are known in the art of degradation of triazole compounds. To carry out the method of Yang, pH adjustment is required, and the ordinary artisan would have looked to the relevant art to determine the appropriate chemicals to adjust the pH in the same wastewater. The details of Frail’s method were not relied upon, as claim 1 is rendered obvious by Yang alone, including the recited pH that is discussed on Pages 7-8 of the Remarks. The Examiner again notes that Yang teaches 100% degradation of benzotriazole at pH 5.0 within 10 minutes (see Fig. 4b and second paragraph of Section 3.3.1.), which even meets the limitations of claim 8. For at least the foregoing reasons, the rejections below are maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 4, 6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. With respect to claim 1, the removal of the pH adjusting step is not supported by Applicant’s Specification according to the embodiment claimed. In order to overcome the rejection, the Examiner suggests amending to recite the adjusting of the pH value step as was originally recited.
Regarding claims 2, 4, 6, 8, 9, 11, and 12, they are rejected for being dependent on a rejected base claim.
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.
Claims 1, 4, 6, 8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (Science of the Total Environment, 2021, 760, 144304), hereinafter “Yang”.
With respect to claims 1, 4, 6, and 8, Yang teaches a method of treating wastewater comprising benzotriazole (“triazole compound”), the method comprising: adjusting the pH of the wastewater comprising benzotriazole to 5.0 or 7.0 via addition of phosphate buffer, and adding sodium hypochlorite (NaOCl) to the wastewater (see Sections 2.1, 2.2), which dissociates to Na+ and OCl- ions in water.
Hypochlorite (OCl-) is in equilibrium with HOCl in aqueous solution (see Abstract; Section 3.3.1); therefore, addition of sodium hypochlorite is considered to inherently meet the limitations “hypochlorous acid”, especially since the pKa of hypochlorous acid is 7.5 and the pH of the treatment step is 5.0, indicating that the equilibrium shifts towards the presence of a significant amount of hypochlorous acid. Although NaOCl is added to the wastewater instead of HOCl, the end result is the same; namely, that HOCl is present in the wastewater to react with the benzotriazole in the presence of UV light to form halogenated triazole compounds, which are further degraded via oxidation (Abstract; Fig. 6).
In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Yang teaches that benzotriazole in the wastewater is converted into transformation products, wherein benzotriazole degradation efficiency achieved 100% at pH 5.0 within 10 minutes (see Fig. 4b and second paragraph of Section 3.3.1.), meeting the limitations “treating the triazole compound to a concentration lower than a critical concentration of 0.5 ppm” of claim 1, and consistent with the critical concentration of 0.03 ppm as recited in claim 8; therefore, it is submitted that the end result of the addition of NaOCl to wastewater and forming HOCl as taught by Yang is patentably indistinguishable from the recited addition of HOCl to the wastewater.
With respect to the limitations “wherein the pH value of the hypochlorous acid solution is 5-7” as recited in claim 1, the pH is held at 5.0 by the phosphate buffer; therefore, the hypochlorous acid solution is at pH 5.0 when it forms in the wastewater.
Yang provides the concentration of HOCl/OCl- as chlorine in the wastewater comprising benzotriazole at a concentration of 2 µM (Figs. 1, 4: [chlorine] ranging from 2-300 µM), and therefore does not specifically teach that the ratio of hypochlorous acid to benzotriazole is 800-120,000: 5-1000 as recited in claim 1, that the concentration of hypochlorous acid HOCl is 800-120,000 ppm as recited in claim 4, or that the volume ratio of hypochlorous acid to water is 0.001-1:1 as recited in claim 6; however, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
With respect to claim 11, Yang teaches that the UV system temperature is kept at 25 ± 1°C (see Section 2.2), and the wastewater solutions are also at ambient temperature, according to Section 3.3.1. of Yang.
With respect to claim 12, the pressure of the hypochlorous acid solution within the wastewater is presumed to be atmospheric pressure, as no pressurization or depressurization steps are taught (see Section 2.2).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (Science of the Total Environment, 2021, 760, 144304) as applied to claim 1, and further in view of Frail et al. (U.S. Patent Publication # 2020/0377392), hereinafter “Yang” and “Frail”.
With respect to claim 2, Yang does not specifically teach adjusting the pH as recited.
Frail teaches adjusting wastewater via addition of sulfuric acid, hydrochloric acid, and sodium hydroxide (Paragraph [0076]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to adjust the pH of the wastewater of Yang with sodium hydroxide, sulfuric acid, or hydrochloric acid as taught by Frail because Frail also teaches aqueous systems comprising azole compounds which are removed in the presence of oxidizing biocides including OCl- (see Paragraphs [0034, 0036]), and can also employ buffers as taught by Yang (see Frail: Paragraphs [0046, 0047]). Additionally, it is submitted that one of skill in the art would have found it obvious to use conventional acids and bases to adjust the pH of the wastewater of Yang, in view of their use in the aqueous systems of Frail for pH adjustment, which comprise the same contaminating species (azole compounds).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (Science of the Total Environment, 2021, 760, 144304) as applied to claim 1, and further in view of Nika et al. (Journal of Hazardous Materials, 2017, 323, 400-413), hereinafter “Yang” and “Nika”.
With respect to claim 9, Yang teaches a concentration of 2 µM benzotriazole, equivalent to about 0.01 ppm, and therefore does not specifically teach a range of 10 ppm to 20 ppm.
Nika teaches wastewater comprising up to 1000 ug/L or 1 mg/L or 1ppm benzotriazole (see Abstract; Section 2.2.1.).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed that the range in benzotriazole content in wastewater could vary up to 1 ppm in view of Nika, which is an order of magnitude less than 10 ppm; however, there is no evidence indicating such concentrations are critical. Where 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 combination of Yang and Nika exhibit a range in wastewater benzotriazole content (0.01 to 1 ppm), which would encourage the ordinary artisan to determine the a broader benzotriazole concentration range to which the method of Yang could be applied.
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.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 26 March 2026