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 .
Election/Restriction
Applicant's election with traverse of Group I (claims 1-9) in the 10/21/25 reply is acknowledged. The traversal is on the ground(s) that independent claim 10 referred back to claim 1 and thus included claim 1’s method steps, and that as-amended claim 10 now explicitly recites claim 1’s method steps. This is not found persuasive because “apparatus claims cover what a device is, not what a device does.” MPEP 2114 II, citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (emphasis in original). As such, the asserted and now claimed method steps within claim 10 are of no import/patentable weight. The 8/22/25 Restriction Requirement (“R/R”) is still deemed proper and is therefore made FINAL. Claims 10-13 are withdrawn from further consideration per 37 CFR 1.142(b) as drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the R/R in the 10/21/25 reply.
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.
Claims 1-4 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by You et al., US 2007/0110652 (2007) (“You”), or You as illustrated by1 the 2016 Hill Brothers Chemical Co. Safety Data Sheet for Sodium Bisulfite (“HBCC”) and the 2015 Integra Chemical Co. Safety Data Sheet for Sodium Bisulfate (“Integra”).
Regarding claims 1-4 and 8, You discloses a method comprising contacting an O3-comprising feed gas with a Fe+2 ion-comprising solution (a reducing liquid as claimed) in a contactor, and scrubbing O3 by a reduction reaction with the reducing liquid; acidic pH conditions are employed. See You at, e.g., par. 10-11, 23, and 25; clms. 12 and 23; Fig. 1. The reducing liquid’s solvent is reasonably presumed to be water (i.e. aq. solution) since pH is quoted without any additional details (i.e. quoting pH within other solvents would reasonably require the non-water solvent be named, as those in the art would reasonably presume the solvent to be water absent any other details); Examiner takes official notice that pH is a measure of the acidity or basicity of aqueous solutions absent further details as to the solvent type. You also discloses that it is known in the art to reduce O3 with (aq.) NaHSO3 (which is acidic, see HBCC at, e.g., p. 6), i.e. by contacting an O3-comprising gas (as O3 is a gas at STP) with aq. NaHSO3 to reduce the O3 and thereby oxidize the NaHSO3 to NaHSO4 (which is also acidic per claim 2, see Integra at, e.g., p. 2). See You at, e.g., par. 5.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 5-7 are rejected under AIA 35 U.S.C. 103 as being unpatentable over You as illustrated by2 HBCC and Integra. Regarding claim 5, You’s teachings are as above. While You appears silent as to recirculating at least part of its reducing liquid throughout its contactor during its contacting/O3-scrubbing step, it nevertheless would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to do so, as doing so would desirably achieve a greater extent of O3 reduction. MPEP 2143 I.(G). It is also noted that the repetition of prior art steps is, without more, prima facie obvious, as it is “well within the expected skill of the technician to operate a process continuously [or thus, repeatedly]." See, e.g., In re Dilnot, 319 F.2d 188, 138 USPQ 248, 252 (CCPA 1963) (internal citations omitted) and In re Citron, 140 USPQ 220, 222 (CCPA 1964) (affirming BPAI’s upholding of Examiner’s rejection of claims repeating prior-taught steps as obvious); MPEP 2144.04 V.E.
Regarding claims 6-7, You’s contacting employs a reducing liquid of pH ~0.5-3.0. See You at, e.g., par. 23; clm. 23. As such, based upon the consumption rate/extent thereof by O3, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to maintain You’s desired pH (i.e. maintain a constant pH, per claim 7, within You’s desired range) by any available means, such as controlling/varying the input flow rate of said reducing liquid, given that there are only a small, finite number of ways of maintaining You’s desired pH (other possibilities being employing a pH buffer, varying the input flow rate of the feed gas, etc.). MPEP 2143 I.(E)&(G); See also Pfizer v. Apotex, 480 F.3d 1348 (Fed. Cir. 2007) (holding that selecting from a set of 53 anions known to be acceptable for the given purpose would still give rise to a reasonable expectation of success [despite the size of the set]).
Claim Objection/Potentially Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding claim 9, the most pertinent prior art or record, detailed above, does not appear to teach or suggest performing said claim’s steps, especially the “draining” step, which is understood to mean that the reducing liquid so drained is not further employed in the claimed method, which would appear to run contrary to prior art wisdom, as doing so would appear to undesirably waste the reducing liquid so drained and thus necessitate make-up reducing liquid. MPEP 2145 X.D.3.
Conclusion
Any inquiry concerning this communication or earlier communications from Examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. Examiner can normally be reached M-F 8:30-5:00 (Central). 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 Examiner by telephone are unsuccessful, Examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ January 23, 2026
Primary Examiner
Art Unit 1736
1 NOTE: a rejection under sec. 102 is proper even if an illustrative reference is cited in addition to the primary prior art reference, so long as the illustrative reference is cited merely to show that certain facts were known to be inherent by the primary reference, even though the primary reference may be silent on such facts. See MPEP 2131.01 III.
2 HBCC and Integra are not meant to be combined with You, but rather are cited merely to illustrate certain inherent facts upon which You is silent. See also fn. 1, above.