DETAILED ACTION
For this Office action, Claims 21-23, 25-33 and 35-40 are pending. Claims 1-20, 24, 34 and 41 are canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 June 2026 has been entered.
Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 10 June 2026, with respect to the rejections of claims 21-23, 25-33 and 35-40 (Claim 41 is canceled and all grounds of rejection considered moot and hereby withdrawn—including that under 35 U.S.C. 112(a)) under 35 U.S.C. 112(b) have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made in view of 35 U.S.C. 112(a) and 35 U.S.C. 112(b), which are detailed below. Applicant has amended the claims in a manner that addresses and overcomes the issues of indefiniteness that required the grounds of rejection under 35 U.S.C. 112(b) in the previous Office action; therefore, after further search and consideration, said grounds of rejection are withdrawn. However, further consideration of the claims renders new grounds of rejection under 35 U.S.C. 112(a) and 35 U.S.C. 112(b), which are detailed below.
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.
Claims 21-23, 25-33 and 35-40 are 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 claims 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. Independent Claims 21 and 31 have been amended to further recite “repeating the testing/treating until the PFAS is lower than a threshold level or fluoride/fluorine levels stabilize” (underlined being the amendment/limitation of interest). However, the limitation regarding the repetition of testing until fluoride levels stabilize is not disclosed in the originally filed specification, drawings or claims and is considered new matter. Fluoride is only mentioned once in the specification (Paragraph [0096]) and fluorine is not mentioned at all. Furthermore, there is no disclosure of ending the repeating of testing/treating when the detected level of fluoride or fluorine has stabilized. The examples, such as that mentioned in the arguments (See Page 6, last paragraph), also do not mention fluoride of fluorine; therefore, no realistic assumption can be made that said repeating would end after any stabilization of said fluoride or fluorine. For these reasons, the claims are considered to have new matter and are rejected under 35 U.S.C. 112(a).
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 21-23, 25-33 and 35-40 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. As discussed above, independent Claims 21 and 31 have been amended in a manner that introduces new matter to the claims—in particular with respect to ending the claimed repeating when fluoride/fluorine levels stabilize. Since this issue is not addressed in the specification, drawings or originally filed claims, the claims as amended are unclear to what extent detected fluoride/fluorine levels should stabilize before the end of testing (for instance, to what extent should the fluoride/fluorine stabilize, and how many tests showing stability must be achieved before ending the repetition?). The claims are considered indefinite for this reason. For purposes of this examination, the examiner will assume the levels must be roughly the same after at least two tests in order to read on the limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD C GURTOWSKI whose telephone number is (571)272-3189. The examiner can normally be reached 9:00 am-5:30pm MT.
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/RICHARD C GURTOWSKI/Primary Examiner, Art Unit 1773 06/23/2026
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