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 Amendment filed on 06 July 2026 has been entered; claims 1-5, 9-11, 13-16, and 18-22 remain pending.
Response to Arguments
Applicant’s arguments with respect to claims 1-5, 9-11, 13-16, and 18-22 on Pages 6-7 of the Remarks, filed 06 July 2026, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06 July 2026 has been entered.
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 1-5, 9-11, 13, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al. (U.S. Patent Publication # 2019/0335756), hereinafter “Gupta”.
With respect to claims 1, 9, and 21, Gupta teaches a method for treating a water system, the method comprising: forming a liquid treatment composition by mixing an in situ generated oxidant in aqueous form (Paragraphs [0060, 0069, 0082, 0103, 0177-0179]) with unhalogenated hydantoin stabilizer compound that is effective to stabilize the in situ generated oxidant (see Paragraphs [0112, 0115, 0180]); and then adding the liquid treatment composition to a water stream in the water system in an amount that is sufficient to maintain a dilute concentration ("residual") of the in situ generated oxidant in the water stream (Paragraph [0112]).
Gupta teaches that the hydantoin stabilizer is included in the composition at a preferable range of about 1 to about 25 % by weight (Paragraph [0116]) and oxidizing agent in an amount ranging from a preferable range of 25 to 50 wt% of the composition (Paragraph [0081]), wherein the liquid treatment composition is added to water in an amount ranging from about 0.1 to 1000 ppm at the largest or 0.1 to 100 ppm at the smallest range (Paragraph [0228]). Taking into account these disclosures, the amount of hydantoin stabilizer compound in the liquid treatment composition would range from about 0.025 to about 250 ppm, or 0.025 to 25 ppm, each of which overlaps the recited range "about 0.1 ppm to 100 ppm", and wherein a weight ratio of the in situ generated oxidant to the unhalogenated hydantoin stabilizer compound in the liquid treatment composition is in a range of 1:1 to 50:1 (1:1 when oxidant is present at 25 wt% and hydantoin is present at 25 wt%, and 50:1 when oxidant is present at 50 wt% and hydantoin is present at 1 wt%), wherein 1:1 to 50:1 overlaps the recited ranges "0.01:1 to 20:1" as recited in claim 1 and "0.01:1 to 10:1" as recited in claim 9.
Gupta and the claims differ in that Gupta does not teach the exact same proportions for the concentration of unhalogenated hydantoin in the liquid treatment composition or the ratio of in situ generated oxidant to unhalogenated hydantoin 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 Gupta overlap the instantly claimed proportions and therefore are 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 Gupta, 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).
The Examiner acknowledges that the above ratio calculations are based on weight percentages of oxidant and hydantoin and not on molar ratio; 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.
Regarding the limitations “the liquid treatment composition improving the efficacy of the in situ generated oxidant in the water stream”, the Examiner considers these limitations to be met, as Gupta renders obvious the method of claim 1, with the only differences between instant claim 1 and Gupta being the overlapping ratio of in situ generated oxidant to hydantoin and concentration hydantoin in the liquid treatment composition. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
With respect to claims 2 and 3, Gupta teaches wherein the in situ generated oxidant is formed from bromide which is oxidized to from bromamine ("a haloamine") (Paragraphs [0079, 0080]).
With respect to claims 4 and 5, Gupta teaches that the oxidant can be a mixed oxidant comprising hydrogen peroxide (see Paragraph [0079] for combination halogen source, which is oxidized by hydrogen peroxide or combinations of other oxidants thereof (see Paragraphs [0083, 0084, 0086]).
With respect to claims 10 and 11, Gupta teaches that the concentration of in situ generated oxidant in the liquid treatment composition ranges from 0.025 to 50 ppm (if dosage of the liquid composition is 0.1 to 100 ppm), or 0.025 to 500 ppm (if dosage of the liquid composition is 0.1 to 1000 ppm) (see Paragraphs [0081, 0228]), wherein 0.025 to 50 ppm and 0.025 to 500 ppm overlap both "0.01 to 100 ppm" as recited in claim 10, and "0.1 to 25 ppm" as recited in claim 11.
Gupta and the claims differ in that Gupta does not teach the exact same proportions for the concentration of oxidant in the liquid treatment composition 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 Gupta overlap the instantly claimed proportions and therefore are 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 Gupta, 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).
With respect to claim 13, Gupta teaches dosing 0.1 to 100 ppm of the liquid treatment composition (Paragraph [0228]), which overlaps "0.1 to 25 ppm".
Gupta and the claims differ in that Gupta does not teach the exact same proportions for the addition amount of the liquid treatment composition to water 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 Gupta overlap the instantly claimed proportions and therefore are 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 Gupta, 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).
With respect to claim 20, Gupta teaches that the water systems to which the disclosed liquid treatment composition is added include industrial cooling water systems, brewing liquids, and reverse osmosis (RO) membrane systems (see Paragraphs [0015, 0017, 0221]).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta as applied to claim 1, and further in view of Carey et al. (U.S. Patent Publication # 2021/0337801), hereinafter "Carey".
With respect to claims 14 and 15, Gupta does not specifically teach that the composition is dosed according to flow rate or oxidant demand.
Carey teaches addition of haloamine oxidant controlled by a PLC with respect to "oxidant demand" and flow rate.
It would have been obvious to one of ordinary skill in the art to add the haloamine oxidant of Carey according to flow rate and/or oxidant demand of a water system according to Carey to the method of Gupta because the ordinary artisan would have recognized the advantage of Carey's dosing, which is optimized according to flow and amount of oxidant already present, automated via a PLC to add oxidant to the same water systems (Abstract; Paragraphs [0014, 0015, 0045]), wherein the haloamine oxidant can be generated from hypochlorite (Paragraph [0029]) and used with other oxidants (see Paragraph [0031]), achieving improved biological control (Paragraph [0045]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Gupta as applied to claim 1, and further in view of Boudreaux et al. (U.S. Patent Publication # 2019/0116787), hereinafter "Boudreaux".
With respect to claim 16, Gupta does not specifically teach a biodispersant.
Boudreaux teaches a biodispersant surfactant (Paragraph [0017]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the biodispersant surfactant as taught by Boudreaux to the stabilizer composition of Gupta because both references are directed to addition of stabilizing biocide to cooling water systems (see paragraph [0026] of Boudreaux) and Gupta teaches that surfactants can be added to the liquid treatment composition (see Paragraph [0122]), and because Boudreaux teaches that the disclosed biodispersant surfactant is stable rendering the liquid oxidant composition stable for transport and safe to handle (Paragraph [0011]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Gupta as applied to claim 1, and further in view of Peters et al. (U.S. Patent # 8617403), hereinafter "Peters".
With respect to claim 18, Gupta teaches on-site in-situ generation of oxidant as well as addition to water within water systems (Paragraphs [0060, 0069, 0103, 0177-0179, 0183]), but does not specifically teach injection as claimed.
Peters teaches injection of a liquid biocide composition to a water stream of a water system (Column 6, line 65 through Column 7, line 12; Column 15, lines 6-12).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to inject the liquid composition of Gupta as taught by Peters because both references are directed to addition of stabilizing biocide to water streams of cooling water systems and beverage/brewing systems (see Column 6, line 65 through Column 7, line 12 of Peters), and therefore the ordinary artisan would have had a reasonable expectation that injection would work with Gupta's method, which adds a similar stabilized oxidant to the same water systems.
Claims 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta as applied to claims 1 and 21, and further in view of Schwartzel et al. (U.S. Patent Publication # 2008/0181815 A1), hereinafter "Schwartzel".
With respect to claims 19 and 22, Gupta does not specifically teach that the in situ oxidant is generated by UV or electrochemical methods, or that the unhalogenated hydantoin is embodied as recited in claim 19.
Cheng teaches a haloamine oxidant composition generated in an electrochemical cell from a halogen donor embodied as bromine salt or acid and combined with an amine-containing reagent which can be embodied as dialkylhydantoin with alkyl groups ranging from 1 to 10 (Abstract; Paragraphs [0033, 0035, 0038, 0040]), thereby forming BrHDMH or Br2DMH.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the method of obtaining the oxidant of Gupta with the electrochemical process of Cheng because both references are directed to addition of stabilizing biocide to industrial water systems (see Paragraphs [0004, 0093] of Cheng), and because Cheng teaches that oxidant generated by electrochemical cell produces a haloamine (like the bromamine of Gupta) which is further stabilized by dimethyl hydantoin allows for disinfection with the following advantages: degradation, handling, transportation and safety problems are minimized, and the disclosed electrochemical generation of oxidant allows for a wide range of compositional diversity, process flexibility, enhanced process control, and generation and shut-off of haloamine upon demand (Paragraph [0004] of Cheng).
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 10 July 2026
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