DETAILED ACTION
Status of Claims:
Claims 1 and 4-16 are pending.
Claims 2 and 3 are canceled.
Claims 1, 6, 9, and 10 are amended.
Claims 6-13 are withdrawn from consideration.
Claims 14-16 are new.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/16/2026 has been entered.
Response to Arguments
Applicant’s arguments, see Remarks, filed 7/16/2026, with respect to the rejection(s) of claim(s) 1, 4 and 5 under 35 USC 112(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35USC 112(a), 35 USC 112(b), and the previously cited prior art.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support for “iron-modified liquid activated carbon” that “consists” of carbon, iron, and oxygen. The specification states “iron-modified liquid activated carbon which includes a plurality of particles of liquid activated carbon, iron disposed on each surface of the plurality of particles of liquid activated carbon, and an aqueous fluid” (emphasis added).
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, 5, and 14-16 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.
Regarding Claim 1:
The claim refers to “a plurality of particles of liquid activated carbon”. It is not clear what the applicant intends a “particle” of a liquid to be limited to. Activated carbon does not have a liquid state. It is not clear if “liquid” is referring to the means by which the carbon is activated or the state of matter that the activated carbon is in.
The claim states “the plurality of particles of liquid activated carbon range in size from about 0.1 microns to about 1 micron”. It is not clear how the particle size of a liquid material is being determined. For the purposes of examination, the particle size will be interpreted as referring to particles of activated carbon within the liquid activated carbon material.
The claim refers to “the plurality of particles of liquid activated carbon modified with oxygen groups”. There is insufficient antecedent basis for this limitation within the claims.
Regarding Claim 14:
The claim refers to “the plurality of nanoparticles of iron oxide”. There is insufficient antecedent basis for this limitation within the claim.
The claim states “the plurality of nanoparticles of iron oxide has a size range sufficiently smaller than the size range of the plurality of particles that surfaces of…” This limitation appears to be missing words. It is not clear what the size range of the iron oxide particles are being compared to.
Regarding Claim 15:
The claim states “the iron-modified liquid activated carbon consists of carbon, iron, and oxygen”. It is not clear how an iron-modified liquid activated carbon consisting only of carbon, iron, and oxygen can be a liquid.
The remaining claims are indefinite because they depend form indefinite claims.
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.
Claim(s) 1, 4, 5, and 14-16 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Kopinke et al (DE 102005054666) in view of Awadh (US 2021/0139348).
Regarding Claim 1:
Kopinke teaches the composition for groundwater remediation, comprising: an iron-modified liquid activated carbon, comprising: a plurality of particles of liquid activated carbon, wherein the plurality of particles of liquid activated carbon range in size from about 0.5 to 3 microns (see pg. 4, 6th paragraph);and iron disposed on a surface of each of the plurality of particles of liquid activated carbon; Given that the prior art range of 0.5 to 3µm overlaps the claimed range of 0.1 µm to about 1 µm a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use activated carbon particles within the claimed range of 0.1 to about 1 µm (see MPEP 2144.05).
Kopinke does not teach oxygen in addition to the iron disposed on the surface or wherein the iron-modified liquid activated carbon is derived from: the plurality of particles of liquid activated carbon modified with oxygen groups and suspended in a liquid comprising water, an alcohol, and an organic solvent a in an amount having a ratio of from 15:10:1 to 10:10:6; a ferrous sulphate solution having a concentration of 30 g/L to 40 g/L; a ferric chloride solution having a concentration of 90 g/L to 100 g/L; and a base, and wherein the iron-modified liquid activated carbon is active for arsenic removal.
Awadh teaches activated carbon with iron oxide (iron oxide comprises oxygen and iron ) on the surface (see para. 0001, 0020, 0099).
Kopinke and Awadh are analogous inventions in the art of iron modified activated carbon adsorbents. It would have been obvious to one skilled in the art to replace the zero valent iron of Kopinke with the iron oxide of Awadh because iron oxide modified activated carbon has a high adsorption capacity (see Awadh para. 0094, Table 3 Activated Carbon-Fe2O3). And because it is the simple substitution of one iron material with another known iron material, obviously resulting in the ability to adsorb contaminates, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). The remaining limitations are interpreted as product by process limitations and only add patentable weight to the extent that the prior art product must be the same. As the prior art renders liquid activated carbon with iron oxide on the surface the same product as claimed is rendered obvious by the prior art.
Regarding Claim 4:
Kopinke, as modified by Awadh, teaches the composition of claim 1, wherein the iron-modified liquid activated carbon comprises the iron and the oxygen as iron oxide disposed on each surface of the plurality of particles of liquid activated carbon (see Awadh para. 0001, 0020, 0099).
Regarding Claim 5:
Kopinke, as modified by Awadh, teaches the composition of claim 4, wherein the iron-modified liquid activated carbon comprises the iron oxide as a plurality of iron oxide.
Regarding Claim 14:
Kopinke, as modified, teaches the composition of claim 1, wherein the plurality of nanoparticles of iron oxide has a size range sufficiently smaller than the size range of the plurality of particles (activated carbon is in the micron size range and iron oxide is in the nanometer size range) (see Kopinke pg. 4, 6th paragraph, Awadh para. 0030) that surfaces of the particles of iron-modified liquid activated carbon are rougher than the surfaces of the particles of liquid activated carbons (the same material is produced, therefore the same difference in surface roughness will be achieved.
Regarding Claim 15:
Kopinke, as modified, teaches the composition of claim 1, wherein the iron-modified liquid activated carbon consists of carbon, iron, and oxygen (the particles consist of carbon, iron, and oxygen as no other materials are included).
Regarding Claim 16:
Kopinke, as modified, teaches the composition of claim 5, wherein the iron oxide particles consist of iron oxide. Kopinke, as modified by Awadh does not disclose adding additional materials to the iron oxide, therefore it consists of iron oxide. The originally filed specification does not disclose iron oxide particles consisting of iron oxide, therefore this limitation is interpreted as consisting of essentially iron oxide.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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, Ramdhanie Bobby 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.
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.
/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 9/18/2026
