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/Restrictions
Applicant's election with traverse of Group IV (claims 17-19) in the reply filed on 10 February 2026 is acknowledged. The traversal is on the ground(s) that Groups I to IV are linked to a single general inventive concept. This is not found persuasive because the argument does not identify the particular special technical feature common to Groups I to IV which links the groups of inventions as to form a single general inventive concept. Accordingly, the examiner maintains the position that unity of invention is lacking for the reasons set forth in the Office action dated 10 December 2025.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the Pyrolysis Resins in Mobile Electric (PRIME) installation recited in claim 19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 17-19 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. The claims are rejected for the following reasons.
In claim 17 there are two occurrences of “a reaction vessel” and it is unclear from the claim language whether the second occurrence of “a reaction vessel” is referring to the same reaction vessel previously defined in the claim or an additional reaction vessel separate from the previously defined reaction vessel.
Claim 19 recites the limitation “a Pyrolysis Resins in Mobile Electric (PRIME) installation for treating the residual product to reduce its volume.” However, the claim does not specify the structure which goes to make up the recited installation. The specification is also silent as to the particular structure intended to be denoted by the recitation “a Pyrolysis Resins in Mobile Electric (PRIME) installation.” Thus, one of ordinary skill in the art cannot reasonably ascertain the particular structure intended to be included or excluded by the claim language in claim 19.
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.
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.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Strohmer et al. (US 2018/0308597) in view of Brunsell et al. (US 2015/0380117).
Regarding claim 17, the reference Strohmer et al. discloses a system (i.e., an apparatus) suitable for extraction, solidification and degasification of radioactive from spent ion exchange resins, the system (the apparatus) comprising (see Abstract; Fig. 2):
a) a washing vessel (12) suitable for washing the spent resins in an alkaline solution (see paras. [0017]; [0076]; [0077]; [0120]; Fig. 2); and
b) a reaction vessel (24) suitable for treating the washed spent resins with alkaline chemicals of a given concentration, for a given time and at a given temperature to obtain a process solution (see paras. [0061]; [0064]; [0076]; Fig. 2), wherein the process solution is recirculated through the resin washing vessel (12) and the reaction vessel (24) by a first recirculating a means (18, 26, 36, 38), thereby allowing the extraction of carbonate and/or bicarbonate ions containing the radioactive isotope (see para. [0121]), and whereby the extracted carbonate and/or bicarbonate ions containing the radioactive isotope can suitably be reacted with a chemical of a given concentration in the reaction vessel (24) to form a reacted solution (see para. [0025]; [0029]; [0124]), wherein the reacted solution is recirculated by a second recirculating means (26, 36, 38, 40) within the reaction vessel (24) to form a suspended precipitate (see paras. [0033]; [0036]-[0037]; [0124]).
The reference Strohmer et al. is, however, silent with respect to the system including a decantation vessel for receiving the reacted solution and the suspended precipitate, thereby allowing for the removal of a supernatant from the remaining solution to form a solid form of carbonate and/or bicarbonate ions product, or salts thereof, comprising the radioactive isotope. However, the reference Strohmer et al. teaches that at least one radioisotope present in a process solution can be separated from the process solution by a precipitation reaction to form an insoluble salt or complex of the radioisotope followed by a solid-liquid separation for separating the insoluble salt or complex from the process solution (see paras. [0033]; [0036]).
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Strohmer et al. to include a solid-liquid separation means, including a decantation vessel as claimed by applicant, since the reference Strohmer et al. teaches that at least one radioisotope present in the process solution can be separated from the process solution by a precipitation reaction to form an insoluble salt or complex of the radioisotope followed by a solid-liquid separation step for separating the insoluble salt or complex from the process solution (see paras. [0033]; [0036]). Further, as evidenced by the reference Brunsell et al. (see para. [0111]; Figure), it is conventional in the art to employ a decantation vessel (33) for the purpose of carrying out solid-liquid separation. Thus, such a modification would amount to nothing more than a use of a known apparatus for its intended use in a known environment to accomplish an entirely expected result.
Allowable Subject Matter
Claim 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The claim would be allowable because the prior art of record does not disclose or fairly suggest the system further comprising a temperature-controlled chemical reactor for reacting the solid form of carbonate and/or bicarbonate ions product, or salts thereof in an acidic solution of a given concentration in, thereby producing a gas stream and a residual product, and further comprising molecular sieves adapted to capture the radioactive isotope whereby the gas stream is contacted with the molecular sieves, as recited in claim 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lessanework T Seifu whose telephone number is (571)270-3153. The examiner can normally be reached M-T 9:00 am - 6:30 pm; F 9:00 am - 1:00 pm.
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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/LESSANEWORK SEIFU/Primary Examiner, Art Unit 1774
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