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 Rejections - 35 USC § 112
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 8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 8 depends from claim 1 and recites that “the at least one filtration device comprises an anion exchange media.” The specification does not provide adequate written descriptive support for the claimed anion exchange media embodiment. Although the specification contains passing language that each chemical filtration cartridge may contain “cation exchange media or anion exchange media,” the disclosure does not describe an anion-exchange implementation in sufficient detail to reasonably convey to one of ordinary skill in the art that the applicant had possession of the presently claimed subject matter at the time of filing. Instead the developed disclosure is directed to a cation-based system. For example the specification describes the chemical filtration cartridges as containing weak acid cation chelating resin, and further explains that the cation exchange media may comprise a combination of beads and fibers having iminodiacetic acid functional side groups. The specification also emphasizes selective recovery of palladium, platinum, and/or rhodium using that cation-based media system. Thus, while the application mentions anion exchange media it does not provide a commensurate descriptive teaching of an anion-exchange cartridge embodiment comparable to the cation-exchange embodiment actually described. The disclosure does not identify a particular anion exchange composition, functional groups, operating arrangement, target species, or a representative working embodiment for such an anion-exchange implementation. Thus the application does not teach one of ordinary skill in the art how to make use of the claimed anion-exchange embodiment with the same level of detail provided for the disclosed cation-exchange embodiment. Therefore, claim 8 also lacks enabling disclosure commensurate with its scope.
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 14-18 and 20 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 claims 14-18 and 20: Claims 14, 15 and 20 contain the trademark/trade name Badger Meter. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe badger flow meter and control system and, accordingly, the identification/description is indefinite. Applicant may overcome this rejection by amending the claims to recite the flow meter and control system in non-proprietary structural terms, for example by specifying the particular meter, pump, controller, or control arrangement intended, rather than reciting a trademark or trade name. Claims 16-18 are rejected due to their dependency upon claim 15.
Regarding claim 16, recitation, in relevant part, that the prefiltration stage comprises a mechanical turbo disc filtration subsystem followed by an ultrafiltration hollow tube membrane filter, “and wherein the blow-molded nonwoven polypropylene removes all sedimentary particles above 1.0 micron in size.” The phrase “the blow-molded nonwoven polypropylene” lacks proper antecedent basis in the claim. Claim 16 does not first introduce any structure by that term before subsequently referring to “the” blow-molded nonwoven polypropylene.
Further regarding claim 20: Claim 20 recites, in relevant part, “A method of chemical capture for removing metals from a contaminated waste stream” and further recites “prefiltering the contaminated waste stream to produce a first contaminated effluent; (ii) filtering the first contaminated effluent via a dual lead-lag system comprising a plurality of filtration devices, wherein at least one of the plurality of filtration devices comprises cation exchange media; and (iii) controlling the flow rate of the contaminated waste stream or the contaminated effluent through the chemical capture system via a badger flow meter and control system; (iv) removing the at least one of the plurality of filtration devices; and (v) wholly incinerating the at least one of the plurality of filtration devices for recovery of at least some of the metals removed from the contaminated waste stream.”
First, the phrase “the chemical capture system” lacks proper antecedent basis. Claim 20 is drafted as a method claim and does not previously introduce a chemical capture system as a claim element before later referring to “the” chemical capture system. As written it is unclear what previously recited structure this phrase refers to.
Second, the phrase “the contaminated effluent” is indefinite because claim 20 previously introduces “ a first contaminated effluent” but later refers more generally to “the contaminated effluent.” It is unclear whether “the contaminated effluent” refers to the first contaminated effluent produced in step (i), to a different effluent produced later in the method, or to some other stream. Therefore, the scope of this limitation is uncertain.
Third, the phrases “removing the at least one of the plurality of filtration devices” and “wholly incinerating the at least one of the plurality of filtration devices” are grammatically improper and render the scope of the claim unclear. It is not clear whether the claim intends to recite removing at least one of the plurality of filtrations devices, removing the at least one filtration device, or some other relationship among the recited devices.
Fourth, although claim 20 is drawn to a method for removing metals from a contaminated waste stream, the claim does not clearly recite the step by which the metals are removed from the contaminated waste stream. The recitation of filtering via a dual lead-lag system in which at least one filtration device comprises cation exchange media may suggest that metal removal occurs during that step, but the claim does not expressly state that the cation exchange media captures, binds, exchanges, or otherwise removes the metals from the contaminated waste stream, Instead, the final clause refers to recovery of metals already “removed from the contaminated waste stream” leaving the actual removal step to implication rather than distinctly reciting it. As such, the claim fails to inform, with reasonable certainty, how the claimed method accomplishes the stated removal of metals.
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.
Claims 1, 2, 7, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Filson (US6346195) in view of Porshnev (WO2008008711A2).
Regarding claim 1, Filson discloses a chemical capture system for removing metals from a contaminated waste stream (Filson claim 1 “A process for removing metal ions from wastewater”), comprising: (i) a prefiltration stage (Filson claim 1 “passing a wastewater feed containing hydrogen peroxide and metal ions in solution through a carbon bed”).
Filson, however, does not explicitly disclose a lead-lag system comprising a filtration device in either the lead of the lag position, nor does Filson explicitly disclose a means for controlling the flow rate of the contaminated waste stream through the chemical capture system.
Porshnev is in the same field of treating metal-containing CMP slurry by ion exchange. Porshnev expressly discloses that slurry 108 from a CMP polisher is passed through a first ion exchange column 102a for treatment while the second ion exchange column 102b is being regenerated and vice versa (Porshnev par. [0047]) and that by having two different ion exchange columns 102a, 102b, each comprising a main tank 104a, 104c and a polisher tank 104b, 104d, when ion exchange column 102a needs to be regenerated, ion exchange column 102b is used for ion exchange and vice versa (Porshnev par. [0050]), which teaches the claimed lead-lag arrangement with a filtration device in either the lead or lag position. Porshnev also discloses that the CMP slurry treatment apparatus 100 further comprises a controller (Porshnev par. [0048] #144) and that during an ion exchange cycle, the controller 144 operates either one of the pumps 146a, 146b to pass an upflow of slurry 108 through either one of the ion exchange columns a, b (Porshnev par. [0049]) thereby teaching a means for controlling the flow rate of the waste stream through the treatment apparatus.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Filson’s metal-removal wastewater treatment apparatus to employ the lead-lag ion exchange arrangement and controller/pump-based flow-rate control taught by Porshnev. Filson already teaches a two-stage treatment architecture in which a contaminated wastewater stream is subjected to upstream pretreatment by a carbon bed and then to ion exchange removal of metal ions, while Porshnev teaches that using plural ion exchange columns in a lead-lag arrangement permits continued treatment while one column is regenerated, and further teaches controller-operated pumps to regulate slurry flow through the ion exchange columns. A person of ordinary skill in the art would have found it obvious to incorporate Porshnev’s lead-lag arrangement and flow-control features into Filson’s system in order to improve continuity of operation, facilitate regeneration without interrupting treatment, and provide controlled flow through the ion exchange stage for effective metal removal, which are recognized operational benefits drawn from the references themselves.
Regarding claim 2, Filson in view of Porshnev discloses the chemical capture system of claim 1, wherein the prefiltration stage is positioned upstream of the lead-lag system (Filson claim teaches passing the wastewater feed through a carbon bed and then passing the product stream to ion exchange, while Porshnev suggests the lead-lag system).
Regarding claim 7, Filson in view of Porshnev discloses the chemical capture system of claim 1, wherein the lead-lag system is at least a dual lead-lag system (Porshnev par. [0050] teaches two columns alternately operating in lead and lag/regeneration roles).
Regarding claim 9, Filson in view of Porshnev discloses the chemical capture system of claim 1, wherein the filtration device of the lead-lag system comprises a cation exchange media (Porshnev par. [0040] discloses an embodiment with “strong acid cation functional groups”).
Regarding claim 10, Filson in view of Porshnev discloses the chemical capture system of claim 9, wherein the cation exchange media is a weak acid cation chelating resin with iminodiacetic-acid functional side groups (Filson col. 19, lines 57-60 “iminodiacetic function group to attach the copper ions”).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Filson (US6346195) in view of Porshnev (WO2008008711A2) as applied to claim 1 above, and further in view of Musale (US20080060999).
Regarding claim 3, Filson in view of Porshnev discloses the chemical capture system of claim 1.
Filson in view of Porshnev, however, does not explicitly disclose the added limitation of claim 3 requiring that the prefiltration stage filters particles and particulates greater than 1.0 micron in size to greater than about 0.1 microns in size.
Musale is in the same field of heavy-metal removal from industrial wastewater using membrane-based filtration. Musale teaches that the microfiltration membrane has a pore size in the range of 0.1 to 10 μm (Musale par. [0037]) and further teaches use of a submerged microfiltration membrane or ultrafiltration membrane may be further processed by additional membranes and in some embodiments may be either a reverse osmosis membrane or a nanofiltration membrane (Musale par. [0036]) for heavy metal water treatment. Musale also demonstrates in Example 1 a submerged flat-plate microfiltration membrane having a 0.4 μm pore size and explains that such membrane treatment is used for heavy-metal-containing industrial wastewater. Thus Musale teaches filtration spanning particle/particulate removal from the micron-scale range down to about 0.1 micron, which renders obvious the claimed prefiltration range of filtering particles and particulates greater than 1.0 micron in size to greater than about 0.1 microns in size.
It would have been obvious to one of ordinary skill in the art prior to the effective
filing date of the claimed invention to modify the Filson/Porshnev system to employ particle filtration within the range taught by Musale, including filtration from the micron-scale range to about 0.1 micron, because Filson already recognizes the importance of upstream particle control ahead of ion exchange, and Musale teaches membrane filtration for heavy-metal wastewater at pore sizes reaching 0.1 µm. A person of ordinary skill in the art would have had reason to incorporate Musale’s finer particulate filtration teaching into the Filson/Porshnev combination in order to improve particulate removal before downstream ion-exchange treatment, thereby reducing fouling, maintaining treatment efficiency, and predictably improving operation of the overall metal-removal system.
Regarding claim 4, Filson in view of Porshnev and further in view of Musale discloses the chemical capture system of claim 1, wherein the prefiltration stage filters particles and particulates greater than about 0.1 microns in size (Filson claim 1 teaches prefiltration upstream metal removal and Musale par. [0037] teaches filtering particles using membranes with pore sizes which are including and greater than 0.1 microns in size).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Filson (US6346195) in view of Porshnev (WO2008008711A2) as applied to claim 1 above, and further in view of Yavorsky (US20040118765A1).
Regarding claim 5, Filson in view of Porshnev discloses the chemical capture system of claim 1.
Filson in view of Porshnev does not disclose wherein the prefiltration stage comprises a radial-flow blow-molded depth filter or a disc filtration system or both.
Yavorsky is directed to a deep gradient-density filter device having a pre-filtration zone and teaches that the pre-filtration zone comprises polypropylene nonwoven depth-filter materials. Specifically, Yavorsky teaches that the pre-filtration zone comprises Layer 21 polypropylene needlefelt (nominal 25 micron rating) and Layer 22 of the same material (nominal 1 micron rating) (Yavorsky par. [0050]). Yavorsky further teaches that the material is formed as a pad of non-woven synthetic needlefelt and that spunbonded materials are preferably formed from melt-spun filaments of thermoplastics, e.g., polypropylene and cooled in air streams, drawn and then directly laid in pad or mat form (Yavorsky par. [0055-0057]. These teachings show that polypropylene nonwoven depth-filter prefiltration medium formed by melt-based nonwoven processes, which would have suggested use of a blow-molded nonwoven depth-filter medium in the prefiltration stage of the Filson/Porshnev system.
It would have been obvious to one of ordinary skill in the art prior to the effective
filing date of the claimed invention to modify the prefiltration stage of the Filson/Porshnev system to comprise a polypropylene nonwoven depth filter as taught by Yavorsky, including a melt-blown nonwoven filter pad or mat, because Yavorsky teaches that such polypropylene nonwoven pre-filtration materials are desirable for pre-filtration and particle capture ahead of more retentive downstream filtration stages. A person of ordinary skill in the art have found it obvious to employ such a melt-formed nonwoven polypropylene depth-filter configuration in the prefiltration stage of the Filson/Porshnev system in order to improve upstream particulate removal and thereby reduce fouling and extend the useful life of the downstream ion-exchange treatment components. To the extent that claim 5 recites the prefiltration stage as comprising a radial-flow blow-molded doeth filter or a disc filtration system or both, the use of a melt-formed polypropylene nonwoven depth-filter element in a suitable flow geometry would have been an obvious matter of routine design choice for implementing the known prefiltration function taught by the combined references.
Regarding claim 6, Filson in view of Porshnev and further in view of Yavorsky discloses the chemical capture system of claim 5, wherein the radial-flow blow-molded depth filter is made of blow-molded nonwoven polypropylene (Yavorsky par. [0057] suggest spunbonded materials are preferably formed from melt-spun filaments of thermoplastics and list polypropylene among them).
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over Filson (US6346195) in view of Porshnev (WO2008008711A2) as applied to claim 1 above, and further in view of Nebeker (US8658114B2).
Regarding claim 8, Filson in view of Porshnev discloses the chemical capture system of claim 1.
Filson in view of Porshnev, however, does not explicitly disclose that the filtration device of the lead-lag system comprises an anion exchange media.
Nebeker is directed to ion-exchange recovery of metals from raffinate and expressly teaches use of anion-exchange resin for removal of metal species from a metal-containing waste stream. Specifically, Nebeker teaches removing cobalt, Zinc and nickel from the copper extracted raffinate using anion exchange resin selective for cobalt, Zinc and nickel, the ion exchange resin attaching to the cobalt, Zinc and nickel (Nebeker claim 9). Nebeker also teaches additional ion-exchange treatment configurations in which metal-containing raffinate is subjected to pretreatment and then passed through ion-exchange media for selective metal capture and recovery.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use anion exchange media as the filtration device media in the Filson/Porshnev lead-lag system in view of Nebeker’s teaching that anion exchange resin is suitable for selectively attaching and removing metal species from a contaminated metal-bearing stream. Filson already teaches removal of metal ions from wastewater using upstream pretreatment and downstream ion exchange, and Porshnev teaches a lead-lag ion-exchange column arrangement with controlled flow-through the treatment columns. Nebeker teaches that anion exchange resin is a known ion-exchange medium for selective removal of metals from a contaminated process stream. A person of ordinary skill in the art would have found it obvious to substitute Nebeker’s known anion-exchange metal capture medium in to the already-applied Filson/Porshnev lead-lag treatment architecture to provide selective removal of target metals in a predictable manner.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Filson (US6346195) in view of Porshnev (WO2008008711A2) as applied to claim 9 above, and further in view of Ionex (Ionex A/B manual).
Regarding claim 11, Filson in view of Porshnev discloses the chemical capture system of claim 9.
Filson in view of Porshnev, however, does not explicitly disclose wherein the filtration device has an internal structure configured to channel the contaminated waste stream such that the contaminated waste stream flows longitudinally, through the cation exchange media, and not radially from outside in or inside out.
The Ionex A/B manual is directed to a commercial waste water treatment unit employing filter and ion-exchange treatment stages for rinse-water treatment. The manual explains that the plant includes a filter element, two ion exchanger columns, and a neutralisation chamber and states that the waste water is fed by the peristaltic pump into the filter and then through the two ion exchanger columns into the neutralisation tank (Ionex p. 6 “Description of the Process”). More specifically, the manual states that “the waste water passes through the ion exchangers from top to bottom. The two columns containing the ion exchanger resin are connected in series.” (Ionex p. 7). This teaches a filtration device having an internal structure that channels the waste water longitudinally through the ion-exchange media from top to bottom i.e., along the length of the ion-exchange column rather than radially from outside in or inside out.
It would have been obvious to one of ordinary skill in the art prior to the effective
filing date of the claimed invention to configure the cation-exchange filtration device of the Filson/Porshnev system to provide longitudinal flow through the cation exchange media as taught by the Ionex A/B manual. Filson already teaches upstream filtration followed by ion-exchange removal of metal ions from wastewater, and Porshnev teaches use of cation-exchange media in a series/lead-lag ion-exchange arrangement with controlled pumping through the columns. The Ionex A/B manual teaches that, in commercial wastewater-treatment systems using ion-exchange columns, the waste water is passed from top to bottom through ion-exchange resin columns connected in series. A person of ordinary skill in the art would have found it obvious to employ that known longitudinal flow arrangement in the Filson/Porshnev system in order to direct the contaminated waste stream through the cation-exchange media in a predictable, efficient manner and thereby provide adequate contact of the stream with the resin bed during treatment.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Filson (US6346195) in view of Porshnev (WO2008008711A2), and further in view of Ionex (Ionex A/B manual) as applied to claim 11 above, and further in view of Ecolab ("Cane Sugar Refining with Ion Exchange Resins").
Regarding claim 12, Filson in view of Porshnev and further in view of Ionex discloses the chemical capture system of claim 11.
However, Filson in view of Porshnev and further in view of Ionex does not explicitly disclose verbatim, that wherein the cation exchange media is configured as beads and fibers and made with a chemical structure having exposed iminodiacetic-acid functional side groups.
Filson is directed to removal of metal ions from wastewater using ion exchange media and expressly teaches a chelating ion exchange resin having iminodiacetic functionality, namely that “In one aspect, the chelating ion exchange resin includes a macroporous iminodiacetic functional group.” (Filson col. 5 lines 57-58) Thus Filson teaches the claimed chemical structure having exposed iminodiacetic-acid functional side groups in the cation exchange media.
Ecolab is directed to ion exchange resin technology and teaches alternative physical configurations of ion exchange media for treatment and polishing operations. Ecolab explains that ion exchange resin can be ground into fine 50–100 micron sized pieces and that the finely ground resin has rapid kinetics and a greater surface area than the same amount of bead resin (Ecolab p. 30). Ecolab further teaches that The powdered resin can be mixed with an inert fiber to assist in achieving high filtration rate with a low pressure drop and that a powdered strong acid cation and strong base anion mix (including fiber) is also used to polish low color syrup (Ecolab p. 30). These teachings show that it was known in the art to use ion exchange resin in bead form for conventional column operation and to combine finer resin material with fiber to improve kinetics, filtration rate, pressure drop, and polishing performance, thereby rendering obvious configuring the cation exchange media as beads and fibers.
It would have been obvious to one of ordinary skill in the art prior to the effective
filing date of the claimed invention to configure the cation exchange media of the Filson/Porshnev/Ionex system as beads and fibers while retaining Filson’s iminodiacetic-acid chelating functionality, in view of Ecolab’s teaching that finer resin forms provide “rapid kinetics and a greater surface area than the same amount of bead resin” and that resin may be “mixed with an inert fiber to assist in achieving high filtration rate with a low pressure drop”. Filson already teaches the desirability of iminodiacetic chelating cation media for removing metal ions from wastewater, Porshnev teaches cation exchange media in the treatment columns, and Ionex teaches longitudinal top-to-bottom flow through ion exchanger columns. A person of ordinary skill in the art would have found it obvious to employ a beads-and-fiber configuration for the cation exchange media in order to obtain the predictable benefits recognized by Ecolab, including improved surface area, faster kinetics, higher filtration rate, and lower pressure drop, while maintaining the known metal-binding chemistry of the iminodiacetic functional groups taught by Filson.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Filson (US6346195) in view of Porshnev (WO2008008711A2) as applied to claim 1 above, and further in view of Brown (US20040102658A1).
Regarding claim 13, Filson in view of Porshnev disclose the chemical capture system of claim 1.
However, Filson in view of Porshnev does not explicitly disclose wherein the filtration device is configured to be wholly incinerated.
Brown is directed to recovery of metals by incineration of metal containing basic ion exchange resin and teaches contacting a metal-containing stream with ion-exchange resin and then incinerating the metal-loaded resin for metal recovery (Brown par. [0014-0017]). Brown states that the process includes contacting the medium with a basic ion exchange resin to load metal values into the resin, incinerating the resin to form an ash containing the metal values and/or oxides thereof, and separating the metal values form the ash. Brown further teaches that the metal containing ion exchange resin is then incinerated to produce an ash containing metal or metal-oxides and that the ash may then be processed to recover the metal. Thus Brown teaches incineration of metal-loaded ion-exchange material as a known recovery technique after the metal values have been captured on the resin, which would have suggested configuring the spent treatment component for incineration after use.
It would have been obvious to one of ordinary skill in the art prior to the effective
filing date of the claimed invention to configure the filtration device of the Filson/Porshnev system so that the metal-loaded treatment component could be wholly incinerated, in view of Brown’s teaching that ion-exchange resin bearing captured metal values is incinerated to form an ash from which the metal values are recovered. Filson already teaches removing metal ions from wastewater using ion-exchange treatment, and Porshnev teaches a controlled lead-lag ion-exchange column arrangement for treating metal-containing process streams. Brown teaches that, once metal values have been captured on ion-exchange material, incineration is a known recovery technique. In view of Brown it would have been a matter of design choice to configure the filtration device used in the Filson/Porshnev system in a form permitting whole-device incineration after use, rather than requiring separate removal of the ion-exchange material before incineration, because such a configuration would have predictably simplified handling of the spent metal-bearing component while still employing Brown’s taught recovery-by-incineration approach.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 as an improper duplicate of claim 12.
Claim 12 recites, “The chemical capture system of claim 11, wherein the cation exchange media is configured as beads and fibers and made with a chemical structure having exposed iminodiacetic-acid functional side groups.”
Claim 19 recites, “The chemical capture system of claim 11, wherein the cation exchange media is configured as beads and fibers and made with a chemical structure having exposed iminodiacetic-acid functional side groups.”
Because claim 19 is identical in scope to claim 12 and is not patentably distinct therefrom, claim 19 is an improper duplicate claim.
Conclusion
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/W.A.G./Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
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