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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-15 in the reply filed on June 29, 2026 is acknowledged.
Claims 16-21 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 29, 2026.
Priority
Applicant’s claim for the benefit of a prior-filed application (has PRO 63/443239, filed on February 03, 2023) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Objections
Claim 5 objected to because of the following informalities:
The phrase “wherein the contaminant comprises an ion of rhodium, palladium, platinum, iron, copper, mercury, or mixtures thereof ” should be corrected to read “wherein the contaminant comprises an ion or complex of rhodium, palladium, platinum, iron, copper, or mercury, or a mixture thereof” for proper grammatical construction.
Suggestion: Claim 5 would be more appropriately drafted as depending from Claim 4, since Claim 5 further limits the metal ions or complexes thereof recited in Claim 4 to the listed metals.
Appropriate correction is required.
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.
Claim 7 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.
Claim 7 recites the limitations “the plurality of the porous filter elements” and “the cartridge.” There is insufficient antecedent basis for these limitations in the claim. A plurality of porous filter elements and a cartridge are introduced in Claim 6.
Claim Rejections - 35 USC § 102 / § 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3–5, 8–11, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KUMAR et al. (Evaluation of polybenzimidazole-based polymers for the removal of uranium, thorium and palladium from aqueous medium, 2018, hereinafter KUMAR).
KUMAR discloses polybenzimidazole-based (PBI) polymeric resins for recovering uranium, thorium, and palladium ions from dilute nitric acid media. The study evaluates m-PBI, p-PBI, pyridine-based m-PBI, and alkylated m-PBI for metal sorption using batch extraction, sorption kinetics, column chromatography, and elution experiments (Introduction, Pg. 3).
In column studies with solutions of U(VI), Th(IV), and Pd(II), m-PBI and p-PBI polymeric resins were packed into columns and contacted with metal-ion feed solutions at a flow rate of 0.5 mL/min. Uranium and thorium were eluted with carbonate solutions, and palladium was eluted with thiourea after the columns reached 100% breakthrough (Section 2.6, Pg. 6). Table 1 shows that the PBI resins have average pore diameters of 60 to 109 nm (Pg. 7). The disclosed porous PBI resin packed in the column constitutes the claimed porous filter element, since the PBI resin forms the porous structure and functions as the chemical scavenger.
In the palladium-binding mechanism, palladium sorption at lower acidity occurs through anion-exchange and cation-exchange mechanisms. The anion-exchange mechanism involves protonation of tertiary nitrogen and exchange of [Pd(NO₃)₄]²⁻ species with NO₃⁻ ions on the PBI resin. At higher acidity, palladium binds through coordination with the lone pair of electrons on tertiary nitrogen atoms, with p-PBI exhibiting higher palladium extraction than m-PBI (Section 3.2, Pg. 10).
Regarding Claim 3, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. In Preparation of m-polybenzimidazole (4) and p-polybenzimidazole (5) polymers, pure PBI polymer powder was obtained in an amount of 4.42 g (Section 2.2.1, Pg. 4). It is reasonable to interpret “pure” as at least 99 wt% PBI, which falls within the claimed “at least about 60% by weight.”
Regarding Claims 4 and 5, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. The PBI resin sorbs palladium ions and [Pd(NO₃)₄]²⁻ complexes (Section 3.2, Pg. 10).
Regarding Claim 8, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. In Column studies with Pd(II), the entire amount of sorbed Pd(II), 732 mg, was removed from the PBI resin and recovered in a small volume during stripping experiments (Section 3.3.3, Pg. 13).
Regarding Claim 9, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. In Conclusion, the PBI resins recover heavy metal ions from mine water samples and other environmental waste matrices (Conclusion, Pg. 15).
Regarding Claim 10, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. Table 1 shows that the PBI resins have average pore diameters of 60 to 109 nm (Pg. 7), which falls within the claimed “greater than about 4.5 nm.”
Regarding Claim 11, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. The PBI polymeric resin was packed directly into a column (Section 2.6, Pg. 6). Based on the disclosed setup, the PBI resin does not need to be immobilized on a solid carrier.
Regarding Claim 15, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. In Preparation of m-polybenzimidazole (4) and p-polybenzimidazole (5) polymers, pure PBI polymer powder was obtained (Section 2.2.1, Pg. 4), and the resulting PBI polymeric resin was packed in a column for contact with the feed solution (Section 2.6, Pg. 6). Table 1 shows that the PBI resin has an average pore diameter of 60 to 109 nm (Pg. 7). The disclosed PBI resin is porous and is made exclusively from PBI.
Claims 2, 6–7, and 12–14 are rejected under 35 U.S.C. 103 as being unpatentable over KUMAR.
Regarding Claim 2, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. In Preparation of m-polybenzimidazole (4) and p-polybenzimidazole (5) polymers, pure PBI polymer powder was obtained (Section 2.2.1, Pg. 4). The resulting PBI polymeric resin was packed in a column for contact with the feed solution (Section 2.6, Pg. 6), and Table 1 shows that the PBI resin is porous (Pg. 7).
Sintering the PBI powder together to form the porous resin would have been a well-known textbook procedure in polymer processing for consolidating polymer particles into a porous solid form. Selecting sintering to form the porous filter element would have been an obvious matter of routine process selection. See MPEP § 2144.
Regarding Claim 6, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. The PBI polymeric resin was packed in a column having a 6.5 cm bed length, and the feed solution was passed through the packed column at a flow rate of 0.5 mL/min (Section 2.6, Pg. 6). The packed PBI resin constitutes a plurality of porous filter elements.
The disclosed column is a container for the packed PBI resin. It is well known that containers for packed media may be formed as columns, cartridges, or other shapes depending on whether the apparatus is used at laboratory or industrial scale. Selecting a cartridge as the container would have been an obvious matter of routine design choice (In re Dailey, 357 F.2d 669; 1966).
Regarding Claim 7, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 4. The PBI polymeric resin was packed in a column having a 6.5 cm bed length, and the feed solution was passed through the packed column at a flow rate of 0.5 mL/min (Section 2.6, Pg. 6). The packed PBI resin constitutes a plurality of porous filter elements forming a fixed bed through which the fluid stream is filtered.
The disclosed column is a container for the packed PBI resin. It is well known that containers for packed media may be formed as columns, cartridges, or other shapes depending on whether the apparatus is used at laboratory or industrial scale. Selecting a cartridge as the container would have been an obvious matter of routine design choice (In re Dailey, 357 F.2d 669; 1966).
Regarding Claim 12, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. The PBI polymeric resin was packed in a column for contact with the feed solution (Section 2.6, Pg. 6), and Table 1 shows that the PBI resin is porous (Pg. 7).
Net shape molding the PBI resin to form the porous filter element would have been a well-known textbook procedure for forming polymer material directly into the desired final shape. Selecting net shape molding to form the porous filter element would have been an obvious matter of routine process selection. See MPEP § 2144.
Regarding Claim 13, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. The PBI polymeric resin was packed in a column for contact with the feed solution (Section 2.6, Pg. 6), and Table 1 shows that the PBI resin is porous (Pg. 7).
It is well known that polymeric resins used as packed media are commonly formed as solid spherical beads to provide uniform packing, predictable fluid flow, and substantial contact between the resin and fluid. Selecting a solid spherical shape for the PBI resin would have been an obvious matter of routine design choice (In re Dailey, 357 F.2d 669; 1966).
Regarding Claim 14, KUMAR discloses the process for removing contaminants from a fluid stream of Claim 1. The pure PBI polymer powder was obtained in an amount of 4.42 g (Section 2.2.1, Pg. 4), and the resulting PBI polymeric resin was packed in a column for contact with the feed solution (Section 2.6, Pg. 6). Table 1 shows that the PBI resin is porous (Pg. 7). A person skilled in the art would understand the packed PBI resin as discrete resin granules forming the porous filter elements.
Sintering would consolidate the PBI powder into a porous solid, and subsequent grinding would produce granules having a suitable particle size for packing in the column while reducing powder compaction and excessive flow resistance. Selecting these well-known textbook procedures to form the porous filter elements would have been an obvious matter of routine process selection. See MPEP § 2144.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAK L. CHIU whose telephone number is (703)756-1059. The examiner can normally be reached M-F: 9:00am - 6:00pm (CST).
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/TAK L. CHIU/Examiner, Art Unit 1771
/KRISHNAN S MENON/Primary Examiner, Art Unit 1771
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