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 Preliminary Amendment filed on 24 October 2023; claims 16-30 remain pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 29 and 30 are rejected under 35 U.S.C. 101 because the claimed recitation of a use for the copolymer as a filter aid for the stabilization of beverages, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131,149 USPQ 475 (D.D.C. 1966)
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 16-30 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.
With respect to claim 16, the limitation “subsequently” renders the claims indefinite, as is unclear as to what event steps i) through v) are carried out after. The Merriam-Webster definition of subsequently is “at a later time”, which implies that steps i) through v) are carried out after, for example, use of the recited copolymer to adsorb an entity, wherein the copolymer then is subjected to regeneration. The Examiner believes that Applicant might mean “sequentially”, which would require that steps i) through v) are carried out in sequence. Clarification is respectfully requested. For the purposes of examination, the Examiner will interpret the limitation “subsequently” as being met so long as steps i) through v) are carried out in any order; however, in the art rejection below, the Examiner notes that WO (‘395) teaches carrying out steps i) through v) sequentially (i.e., in order).
With respect to claims 29 and 30, they are rendered indefinite because they provide for a process, but, since the claim does not set forth any steps involved in the method/process of use, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. For the purposes of examination, the Examiner will consider these use limitations as being met by a teaching of the regenerated copolymer, which would be capable of the recited use as a filter aid.
Regarding claims 17-28, they are rejected for being dependent on a rejected base claim.
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 16, 18, 19, 21, 26, and 28-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2008/125395 (machine translation provided and relied upon), hereinafter “WO (‘395)”.
With respect to claims 16, 18, 21, 26, and 28, WO (‘395) teaches a method of regenerating crosslinked copolymers comprising N-vinylimidazole and N-vinylpyrrolidone as monomeric units (see Page 2, Paragraphs 7, 8, 11; Page 6: Example 11 and see paragraph 6 highlighted on Page 5 for details of the copolymer used in Example 11), wherein the copolymer is:
mixed with water to form a suspension (“rinsed with water”);
brought into contact with an aqueous solution of IM HCl (“at least one acid”);
copolymer is resuspended with water (“rinsed with water to neutralize the copolymer”);
brought into contact with an aqueous solution of NaOH (“at least one base”); and
rinsed with water until the wash water had a pH of 7 (“to neutralize the copolymer”) (see highlighted paragraph on Page 6 within Example 11) to produce a regenerated crosslinked copolymer comprising N-vinylimidazole and N-vinylpyrrolidone as monomeric units.
With respect to claim 19, WO (‘395) teaches that the acid can be phosphoric acid (see Page 4, paragraph 3).
With respect to claims 29 and 30, the regenerated crosslinked copolymer comprising N-vinylimidazole and N-vinylpyrrolidone of claim 28 is capable of being used as a filter aid for the stabilization of beverages using the dosages recited in claim 30.
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 17, 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2008/125395 (machine translation provided and relied upon), hereinafter “WO (‘395)”.
With respect to claim 17, WO (‘395) teaches a weight ratio of vinylimidazole: vinylpyrrolidone monomer from 2.4:1 to 12.9:1 (calculated from 70/29.5 and 90/7 imidazole/vinylpyrrolidone.
The Examiner acknowledges that these are monomer weight ratios instead of molar ratios; 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 20, although WO (‘395) is silent with respect to concentration of the acid, WO (‘395) does teach using dilute acids (see Page 4, paragraph 3). 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).
With respect to claim 22, WO (‘395) teaches that the aqueous base solution has a concentration of preferably 0.5 to 3.5 wt % (see Page 4, paragraph 2), which overlaps the recited range “0.8 to 2.5 wt %”.
WO (‘395) and the claims differ in that WO (‘395) does not teach the exact same proportions for the percentage range base solution as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the compositional proportions taught by WO (‘395) overlaps the instantly claimed proportion and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in WO (‘395), particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2008/125395 (machine translation provided and relied upon) in view of EP 1961705 A2 (machine translation provided and relied upon), hereinafter “WO (‘395)” and “EP (‘705)”.
With respect to claims 23 and 24, WO (‘395) teaches that the regeneration can comprise at least one treatment step with an acid (see Page 4, paragraph 1), but does not specifically teach treatment with acid after treatment with base solution to neutralize the copolymer as claimed.
EP (‘705) teaches neutralizing a base-solution regenerated sorbent with an acidic solution of hydrochloric or sulfuric acid (see Abstract; Page 2, paragraph 4 steps 2 and 5).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the at least one acid treatment step of WO (‘395) with an acid treatment step following regeneration with a base as taught by EP (‘705) in order to control the protonation and therefore the sorbing capacity and predisposition to particular charged contaminants.
Although EP (‘705) is silent with respect to concentration of the acid, 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). Although EP (‘705) does not teach nitric acid, WO (‘395) teaches that nitric acid is an equivalent acid in the at least one acidic copolymer treatment (see Page 4, paragraph 3).
Regarding claim 25, following regeneration and treatment with acidic solution in step (v), the copolymer is again used in the adsorption of metals from aqueous solutions (see Page 6, Examples 10 and 11), considered to be consistent with a first portion of the water acting as a rinse solution.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2008/125395 (machine translation provided and relied upon) in view of US 20090223894, hereinafter “WO (‘395)” and “US (‘894)”.
With respect to claim 27, WO (‘395) teaches rinsing the copolymer with water, but does not specifically teach backwashing the copolymer with water into a dosing vessel.
US (‘894) teaches backwashing a sorbent with water and returning backwashed adsorbent with at least some backwashing water (i.e., “a suspension”) to the adsorption step following solid liquid separation in a membrane vessel, wherein either the membrane or the adsorbent adding section 30 can be considered as a “dosing vessels” (see Fig. 6; Paragraphs [0162-0169, 0206, 0207, 0220-0225]).
It would have been obvious to one of ordinary skill in the art to modify the water rinsing step of WO (‘395) with the water backwashing step with liquid solid separation as taught by US (‘894), in order to control the amount of water within the returned adsorbent and in order to repeatedly use the regenerated adsorbent, which is economically and safely regenerated in a closed system (see Paragraph [0169] of US (‘894) and EP (‘705): Example 11).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bob Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/ Primary Examiner, Art Unit 1779 06 January 2026