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 .
Priority
Applicant’s claim of priority under 35 U.S.C §120 as a divisional application of US Serial No. 17/446,532 that was filed August 31, 2021 (now issued as US 11,872,539 B2), which claims priority to 63/072,531 filed August 31, 2020, is hereby acknowledged.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp
Claims 1-8 are rejected on the ground of non-statutory double patenting (‘ODP’) as unpatentable over claims 1-8 and 21-23 of U.S. Patent No. 12,059,668 B2 (‘668 patent), which issued on August 13, 2024.
Present independent claim 5 is not identical to independent claim 1 of the ‘668 patent in that the sorbent material recited in the ‘668 patent further contains iron, whereas the method of removing chlorine/chloramine of present independent 1 is also different from that recited in method claim 21 of the ‘668 patent in that these two sets of claims recite overlapping weight percent ratios for the dopant materials (i.e., nitrogen and copper).
However, the two sets of claims are not patentably distinct from each other because they are both drawn to a sorbent material formed from a carbonaceous material that is activated to form a precursor activated carbon, wherein the sorbent material comprising nitrogen and copper measured on a dry precursor activated carbon basis, and wherein the sorbent material has a chloramine destruction number (CDN) of at least about 6 (up to 75 in the ‘668 patent). The carbonaceous material can be coconut (claim 8 of the ‘668 patent and present claims 7 and 8).
Thus, the present claims are unpatentable under ODP over claims of the ‘668 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The closest cited prior art aside from the ‘668 patent discussed, supra, is Chao (US 2006/0205592 A1 to Chao et al., published Sept. 14, 2006). This reference discloses a catalytic adsorbent composition comprising doped activated carbon. (See, for example, abstract; paragraphs [0016] to [0018], and claim 1 of Chao). However, Chao discloses the dopant as a halide salt and does not teach or suggest the dopant as nitrogen or copper as recited in present independent claim 5. Further, it does not suggest a method of removing chloring or chloramine as recited in present independent claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J FIGUEROA whose telephone number is (571)272-8916. The examiner can normally be reached on 8:30 am -6:00 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN J FIGUEROA/Primary Examiner, Art Unit 1763
March 31, 2026
Prosecution Insights