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 . This is a first action on the merits of the application.
Status of the Application
This action is a first action on the merits in response to the application filed on 01/11/2024. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/23/2024 and 11/20/2025 has been considered by the examiner.
Election/Restrictions
Applicant’s election of Group I in the reply filed on 05/01/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112(b)
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.
Claim 13 is rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention.
In claim 13, the preamble recites “a method for treating brackish desalination brine for a reverse osmosis treatment for recovery of fresh water”, however the body of claim 13 recites only a UV driven persulfate photolysis pretreatment, a pH adjustment, a chemical demineralization process, and a microfiltration process. It does not positively recite a reverse osmosis step.
This creates ambiguity as to the claim scope: It is unclear whether the recited reverse osmosis treatment for recovery of fresh water is – (a) a required step of the claimed method that has simply been omitted from the body through a drafting error, or (b) merely a statement of intended use of the microfiltration output that is not itself a positively recited, required step. Therefore, the metes and bounds of claim 13 differ substantially depending on the reader’s interpretation. Under reading (a), performance of the claim would require an RO step not actually recited. Under reading (b), a method ending at microfiltration, with no RO step performed, would still fall within the claim language despite the preamble’s express recitation of RO treatment as the method’s purpose. A person of ordinary skill in the art cannot determine, with reasonable certainty, which of these two processes is correct, and therefore cannot determine the scope of the claimed invention.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 1-8, 11-15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Gabelich et al (Process evaluation of intermediate chemical demineralization for water recovery enhancement in production-scale brackish water desalting. Desalination 272 (2011) 36–45; hereinafter Gabelich) in view of Wang et al (Degradation of Nitrilotris-Methylenephosphonic Acid (NTMP) Antiscalant via Persulfate Photolysis: Implications on Desalination Concentrate Treatment; Water Research 159 (2019) 30-37; hereinafter Wang).
As for claim 1, Gabelich teaches treating desalination reverse osmosis (RO) concentrate, (equivalent to brackish desalination brine) comprising:
Chemical demineralization (CD) of RO concentrate comprising dosing alkaline chemical (e.g. NaOH and NaHCO3) to precipitate scale forming minerals such as Ca2+, Ba2+, Sr2+ and SiO2 (introduction; lines 6-10);
Filtering, using microfiltration (MF), to separate the precipitated solids from the demineralized liquid; and
Treating the MF filtered stream with a secondary reverse osmosis unit (SRO) to recover additional fresh water (abstract; lines 9-10).
Gabelich does not expressly disclose treating the source of RO desalination concentrate with a UV driven persulfate oxidation pretreatment to degrade the anti-scaling agent present in the concentrate.
Wang is directed to a method of treating reverse osmosis concentrate (brine) generated during a desalination operation by applying a UV/persulfate treatment to degrade phosphonate-based anti-scaling agents present in the RO concentrate (abstract; lines 18-19). Wang expressly teaches that removing anti-scaling from RO concentrate helps the precipitation of over-saturated scale-forming substances (introduction; lines 16-18)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Gabelich by pretreating the RO concentrate with a UV/persulfate pretreatment to degrade residual anti-scaling, as taught by Wang (Experimental setup and analysis; lines 1-18), before subjecting the brine to Gabelich’s chemical demineralization step because the presence of anti-scaling in brine inhibits mineral precipitation from the concentrate and negatively affect the recovery (Wang; introduction; lines 14-16).
As for claim 2, as discussed above, Wang teaches that the ultraviolet driven persulfate photolysis pretreatment degrades antiscalant present in the desalination brine, thereby meeting the limitation that the UV/persulfate pretreatment degrades the antiscalant (abstract; lines 6-7).
As for claim 13, Gabelich teaches treating desalination reverse osmosis (RO) concentrate, (equivalent to brackish desalination brine) comprising:
Adjusting the pH of the brine with alkaline chemicals (NaOH and NaHCO3) prior to and as a condition for the chemical demineralization step (intermediate chemical demineralization paragraph; page 38; lines 5-8).
Chemical demineralization (CD) of RO concentrate to precipitate scale forming minerals such as Ca2+, Ba2+, Sr2+ and SiO2 (introduction; lines 6-10);
Filtering, using microfiltration (MF), to separate the precipitated solids from the demineralized liquid; and
Treating the MF filtered stream with a secondary reverse osmosis unit (SRO) to recover additional fresh water (abstract; lines 9-10).
Gabelich does not expressly disclose treating the source of RO desalination concentrate with a UV driven persulfate oxidation pretreatment to degrade the anti-scaling agent present in the concentrate (Gabelich does not teach the UV-persulfate pretreatment two steps recited in claim 13).
Wang is directed to a method of treating reverse osmosis concentrate (brine) generated during a desalination operation by applying a UV/persulfate treatment to degrade phosphonate-based anti-scaling agents present in the RO concentrate (abstract; lines 18-19). Wang teaches that the UV/persulfate pretreatment comprises two steps: adding persulfate to the source of brine, and exposing the persulfate dosed brine to UV radiation (Experimental setup and analysis, page 31; lines 1-18), which corresponds to claim 13 recitation of the pretreatment as “including adding persulfate to the source of brackish desalination brine, and exposing the source of brackish desalinization brine with persulfate to ultraviolet irradiation”. Wang further teaches that removing anti-scaling from RO concentrate helps the precipitation of over-saturated scale-forming substances (introduction; lines 16-18).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Gabelich by pretreating the RO concentrate with a UV/persulfate pretreatment – comprising adding persulfate to the brine and exposing the persulfate-dosed brine to ultraviolet irradiation – to degrade residual anti-scaling, as taught by Wang, before adjusting the pH of, and subjecting the brine to Gabelich’s chemical demineralization and microfiltration steps. This will allow the degradation of residual anti-scaling, as taught by Wang (Experimental setup and analysis; lines 1-18), before subjecting the brine to Gabelich’s chemical demineralization step because the presence of anti-scaling in brine inhibits mineral precipitation from the concentrate and negatively affect the recovery (Wang; introduction; lines 14-16).
As for claims 3, 4, 11, and 18, Gabelich teaches that the chemical demineralization process precipitates and removes scale forming minerals, including calcium, magnesium, barium, and strontium, etc. thereby reducing scaling potential prior to downstream treatment. (The strategy entails the removal of mineral scale cations (e.g., barium [Ba2+], calcium [Ca2+], strontium [Sr2+], etc.) as solid precipitates from the concentrate of a primary RO step (PRO), thus allowing subsequent product water recovery in a secondary RO (SRO) step (introduction; page 36; lines 6-9), Therefore, Gabelich demineralization process removes one or more scale forming ions from the brine as recited.
As for claims 5, 7 and 14, as discussed above, Wang teaches performing the UV driven persulfate oxidation by adding persulfate to the brine prior to UV irradiation. Wang further teaches using a persulfate concentration of 0.2-2 mM during the UV persulfate treatment (experimental setup and analysis; page 31; lines 1-2). Therefore, Wang teaches a concentration range overlapping the claimed range (0.5-4 mM) and selecting a concentration within or overlapping the disclosed range would have been an obvious matter of routine optimization of a result-effective variable.
As for claim 6, Wang discloses irradiation time as a variable controlling the extent of anti-scaling and degradation. Selecting a practical irradiation time is a matter of routine optimization of a result effective variable, well within the level of ordinary skill in the art, particularly given the absence of any disclosed criticality for the specific 60 minutes limit.
As for claims 8 and 15, Gabelich discloses dosing NaOH (figure 1) to raise the brine pH to a target pH prior to and as a condition for the chemical demineralization CD process.
Claims 9, 10,16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Gabelich in view of Wang and further in view of Hussain et al (US7198722 B2; hereinafter Hussain)
As for claims 9 and 16, Gabelich discloses adjusting the pH of the brine with a combination of alkaline chemicals- specifically sodium hydroxide (NaOH) and sodium bicarbonate (NaHCO3) - dosed prior to the chemical demineralization process.
Hussain is directed to a process for pretreating and desalinating seawater, comprising adding a chemical selected from a group consisting of sodium hydroxide, sodium carbonate, calcium oxide, calcium hydroxide, and other alkaline chemicals (claim 1; lines 45-53), whereby a precipitate of a calcium compound forms and is separated from the water prior to desalinating the water. Hussain thereby discloses calcium hydroxide as a known alternative to sodium hydroxide within the same class of alkaline precipitation/pH adjustment reagent, used for the same purpose- precipitating scale forming minerals ahead of membrane desalination- in the analogous field of saline water pretreatment.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to substitute Hussain’s calcium hydroxide for the sodium hydroxide component of Gabelich in NaOH/NaHCO3 pH adjustment combination, arriving at a Ca(OH)2/NaHCO3 dosing scheme as claimed. This is the simple substitution of one known alkaline reagent for another within an already disclosed dosing scheme to achieve the same predictable pH adjustment and precipitation function.
As for claims 10 and 17, Gabelich discloses NaOH and NaHCO3 as alkaline pH adjustment agents dozed prior to chemical demineralization as set forth above. Hussain discloses a Markush group of alkaline compounds including sodium hydroxide (NaOH), sodium carbonate (Na2CO3), calcium oxide (CaO), and calcium hydroxide (Ca(OH)2) among others, used interchangeably to precipitate scale forming minerals from a saline water source ahead of downstream membrane desalination.
Between Gabelich and Hussain, each of the 5 alkaline chemicals recited in claims 10 and 17- sodium hydroxide (NaOH), sodium bicarbonate (NaHCO3), calcium oxide (CaO), calcium hydroxide Ca(OH)2, and sodium carbonate (Na2CO3) - is disclosed as a functionally interchangeable member of the same class of alkaline pH adjustment/precipitation reagents, each performing the identical function of raising brine pH to drive precipitation of scale-forming cations ahead of membrane-based desalination.
Therefore it would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to select any one or more of sodium hydroxide, sodium bicarbonate, calcium oxide, calcium hydroxide, or sodium carbonate for pH adjustment in Gabelich process, in view of Hussain’s teaching that these are recognized, alkaline agents performing the same precipitation/pH adjustment function in the analogous field of saline water pretreatment ahead of membrane-based desalination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bachar EL Haj Hassan whose telephone number is (571)270-0121. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/BACHAR EL HAJ HASSAN/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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