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
Claims 1-19 are pending. Applicant’s election without traverse of Group I, claims 1-13 in the reply filed on 09 October 2025 is acknowledged; claims 14-19 are hereby withdrawn.
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 5, 6, 9, and 10 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 claims 5 and 6, it is unclear to the Examiner whether Applicant intends to claim that the media includes a sulfur reactant, or if the synthesis includes a sulfur reactant. Since the Examiner can find no evidence that the media comprises the sulfur reactant in Applicant’s disclosure, the latter interpretation will be taken, especially in view of Paragraph [0049], which teaches that sodium sulfate is washed away from the metal titanosilicate product.
Regarding claims 6, 9, and 10, they are rejected for being dependent on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-10 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. With respect to claims 5-10, the limitations pertain to synthesis details including reagents used to obtain the media, without further defining the media components, while claim 13 recites an optimization method step associated with a particular method of using the media. As such, claims 5-10 and 13 fail to further limit the components of the media recited in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maglio et al. (U.S. Patent Publication # 2014/0190892), hereinafter “Maglio”.
With respect to claims 1, 3, and 4, Maglio teaches a crystalline titanosilicate material comprising sodium or potassium as M (see formula in Paragraph [0017]) and having a preferred SiO2/Ti ratio ranging from 2-3 (see Table 2), which corresponds to a molar ratio of 1:1 for titanium to silicon in the situation where SiO2/Ti = 3, so 3 parts SiO2 per 1 part Ti, wherein Si is 1 of three molar ratio parts of SiO2, so 3/3 = 1 Si; 1Ti, so 1/1 Ti to Si, or 1, which is a discrete value within “0.5 to 2”. When SiO2/Ti = 2, the titanium to silicon molar ratio becomes 0.67, also a discrete value within “0.5 to 2”. In this instance, the Group I metal embodiment is selected, and the Group II metal as calcium according to claim 4 is rejected with claim 1 as being directed to a non-selected embodiment; however it is noted that the media is picking up at least some of the calcium (see Tables 5 and 6).
Maglio also teaches amorphous titanium silicates which are used to remove cesium (Group I metal) and strontium (Group II metal) (Paragraph [0011], “a metal titanosilicate wherein the metals are cesium and strontium), wherein the amorphous titanium silicates have a silicon to titanium ratio ranging from 1.5:1 to 1.2:1 (titanium to silicon molar ratio ranging from 0.66 to 0.8 (Paragraph [0013]), a discrete range within “0.5 to 2”. Upon adsorption of at least some cesium and strontium, the amorphous titanosilicates comprise a Group I and/or Group II metal, which can then be used to adsorb the rest of the cesium and strontium during the removal timeframe.
Maglio teaches that the above described titanium silicate materials have pore volumes ranging from about 0.03 to about 0.25 (Paragraph [0027]), a discrete range within “less than or equal to 0.25 cc/g”.
Regarding the limitations “a lead capacity of at least 280mg/ dry g at 500 ppm of Pb”, the Examiner submits that this is an inherent property of the titanium silicates disclosed by Maglio, and is associated with a particular intended use of the metal titanosilicate compound. It has been held that “Where…the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).” In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
The Examiner acknowledges Paragraph [0041] and Fig. 3 of the Specification, where Applicant discloses that the lead capacity of the titanium silicates of the prior art (Dodwell et al. U.S. Patent # 5053139) differs from the lead capacity of the instantly claimed metal titanosilicate; however, Dodwell discloses an amorphous titanium silicate that does not have the same form as the crystalline titanosilicate material comprising sodium or potassium as Maglio (see Paragraph [0017]), and there does not appear to be evidence that the titanosilicates of Dodwell are structurally the same as the amorphous titanosilicates of Maglio.
With respect to claim 2, regarding the limitations “a mercury capacity of at least 25mg/ dry g at 50 ppm of Hg”, the Examiner submits that this is an inherent property of the titanium silicates disclosed by Maglio, and is associated with a particular intended use of the metal titanosilicate compound. It has been held that “Where…the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).” In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
With respect to claims 5-10, they recite limitations pertaining to the synthesis of the media, including specific reagents, which are not assigned patentable weight, as these claims do not recite that the media comprises any additional components as a result of any recited specific reagents used.
With respect to claim 12, Maglio teaches that the crystalline titanosilicates comprise manganese (see Table II).
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 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Maglio et al. (U.S. Patent Publication # 2014/0190892) in view of Provonost et al. (U.S. Patent Publication # 2014/0056976), hereinafter “Maglio” and “Provonost”.
With respect to claim 11, Maglio does not specifically teach that the media comprises a Group I or Group II metal salt.
Provonost teaches a media comprising calcium salt (“Group II metal salt”).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the calcium salt of Provonost to the media of Maglio because the media of Maglio is directed to removal of metals, and because Provonost teaches that the combination of calcium salt and titanosilicate media allows for removal of all metals, with lead capacity being the highest. The ordinary artisan would have recognized that inclusion of calcium salt in the media would have enhanced metal adsorption.
With respect to claim 13, the limitations refer to a method step associated with an intended use, and are not assigned patentable weight; however, it is noted that inclusion of a mixed salt of calcium in a mixture with titanium silicate as a mixed media in specific amounts allows or reduction of all metals present with the highest capacity for lead, considered to be consistent with heavy metal removal optimization as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Noh et al., cited by Applicant on the 17 November 2023 IDS, teaches preparation of a sodium/potassium titanosilicate utilizing TiOSO4. Although not given patentable weight in the rejections above, utilizing a sulfate titanium source was known in the art at the time the invention was effectively filed.
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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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779
21 October 2025