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/Restrictions
Applicant's election with traverse of group I, reading on claims 1-9, in the reply filed on 12/8/2025 is acknowledged. The traversal is on the ground(s) that ‘033 does not teach the specifical technical feature which is a mixed metal oxide rather than a single metal oxide. This is not found persuasive because ‘033 states in the Objective section:
Another objective of the present invention is to develop a process for synthesis of organic-inorganic composite composed of metal oxide and other elements namely carbon, nitrogen, oxygen etc. which shows high arsenic and fluoride removal efficiency, comprising chitin or by replacing chitin with different low cost carbon sources namely chitosan, leaf, onion, banana peals, citrus fruits waste, etc. and metal ions namely aluminium, iron, titanium, lanthanum, magnesium, calcium etc. individually or in all possible combinations, having the ability to sequester anions, in specific arsenic and/or fluoride.
This indicated that metal oxide can be combined with additional metal ions.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected groups II and III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/8/2025.
Applicant’s election of species A1 in the reply filed on 12/8/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/8/2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objection
Claim 7 is objected to because of the following informalities: “characteristic properties – Surface area…100 to 180 Å” is not grammatically correct. Appropriate correction is required.
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 1-4 and 6-9 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 “said beads comprising…remaining being oxygen and hydrogen” renders the claim indefinite. The claim uses the open transitional phrase “comprising” interpreted in light of MPEP 2111.03 as being inclusive or open ended and not excluding additional, unrecited element. However, the limitation “remaining being oxygen and hydrogen” is unclear as it appears to limit the clam as the transitional phrase “consisting of” does by excluding other ingredients; thus the scope of the claim is not clear. The claim is interpreted with the “comprising” transitional phrase. Dependent claims 2-4 and 6-9 are rejected as well because they depend on claim 1 and do not overcome the deficiencies of their parent claim.
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.
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO2012/077033 by Rayalu et al. (Rayalu).
Regarding limitations recited in the claims which are directed to a manner of operating disclosed mixed metal oxyhydroxide biopolymer, 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: “for fluoride removal from drinking water” (claim 1); “wherein the beads exhibit fluoride and arsenic removal efficiencies to the extent of >90% from contaminated groundwater at pH range of 5 to 8, and at temperature ranging from 10 to 35 degrees” (claim 8); “the beads show fluoride adsorption capacities of 5 to 20 mg/g and arsenic adsorption capacities of 500 to 1000 µg/g, and 100 to 200 µg/g for arsenate and aresenite, respectively” (claim 9).
In regard to claim 1, Rayalu teaches a metal oxyhydroxide biopolymer composite beads (abstract; metal oxide incorporated with nitrogen, carbon and other elements/groups; biogenic material; P13/L3-12; P17/L1-6, coarse and fine particles; ); capable of fluoride removal from drinking water (abstract). Rayalu teaches 55 (w/w)% of a metal content (P13/L26-28, 55% metal salt). Rayalu teaches 4-15 (w/w) % of a biopolymer (P13/L26-28, 4-15% biogenic template). It would have been obvious to one of ordinary skill in the art at the time of invention 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. Rayalu teaches the remaining being oxygen and hydrogen (P13/L26-28).
Rayalu does not explicitly teach the metal oxyhydroxide biopolymer composite is a mixed metal in the embodiments cited above. However, Rayalu teaches it is known in the art to utilize a mixture of earth oxides for the absorption of fluoride rapidly and effectively, based on concentration, contact time, pH, and dosage (P5/L3-11; P7/L8-18; ). It would be obvious to one of ordinary skill in the art at the time the invention was filed to incorporate a mixed metal, as taught by background of Rayalu, in the specific embodiment of Rayalu in order to achieve desired system parameters including fluoride absorption, concentration, contact time, pH, and dosage.
In regard to claim 2, Rayalu teaches the metal is in the form of binary or ternary mixed metal oxide hydroxide nanoparticles (P5/L3-11).
In regard to claim 3, Rayalu teaches the metal is selected from the group consisting of Fe, Al, Cu, Mn, La, Zr, Ce, and Mg (P14/L1-2)).
In regard to claim 6, Rayalu teaches the biopolymer is sodium alginate (P14/L3-5).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over WO2012/077033 by Rayalu et al. (Rayalu), as noted above, in view of Chitosan-Fe-Al-Mn metal oxyhydroxides composite as highly efficient fluoride scavenger for aqueous medium” by Chaudhary (Chaudhary).
In regard to claim 4, Rayalu teaches a mixed metal as noted above. Rayalu does not explicitly teach the mixed metal content comprises Fe and Al in the range of 6:1 to 1:6. However, Chaudhary teaches a mixed metal biopolymer for fluoride removal with a 30:70 mass ratio for iron and aluminum (P141, section 2.1.1. Preparation of adsorbent; a ratio of 30/70=0.43 which falls within the range of 6 and 0.167). It would be obvious to one of ordinary skill in the art to incorporate iron and aluminum in the required range, as taught by Chaudhary, in the composition of modified Rayalu as Chaudhary teaches a known composition ratio for fluoride removal.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over WO2012/077033 by Rayalu et al. (Rayalu), as noted above, in view of U.S. Patent No. 10780431 by Hsu et al. (Hsu).
In regard to claim 7, modified Rayalu teaches the limitations as noted above. Further, Rayalu teaches the beads exhibit the characteristic properties of surface areas 40-100 m2/g (P14/L25, 50-350 m2/g; P14/L29 50-150 m2/g). Rayalu teaches pore size 100 to 180 Å (P14/L31, 80-150 Å). It would have been obvious to one of ordinary skill in the art at the time of invention 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.
Rayalu does not teach pore volume 0.25 to 0.45 cm3/g.
Hsu teaches a metal oxide biopolymer (abstract). Hsu teaches a pore volume of more than 0.2 cm3/g (abstract). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to incorporate a pore volume of greater than 0.2 cm3/g, as taught by Hsu, in the composition of modified Rayalu in order to achieve desired composition properties for separation.
Conclusion
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.
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/KARA M PEO/Primary Examiner, Art Unit 1777
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