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 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.
Claims 1, 3, 11, 12, 18-33 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 claim(s) 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.
All claims recite a method of treating a compound, but do not specify the medium in which the compound is treated, except in claims 12, 24 and 31, in which the medium is a liquid (unspecified.) The specification indicates in several places “the reaction solution.” Since, under the broadest reasonable interpretation in the light of the specification, the claims cover a breadth of “solutions” for which applicant does not have possession of the invention.
Claims 28-33 are directed to a method of treating a compound to degrade the compound. Applicant, however, only uses atrazine (ATZ) in the examples for testing of degradation by PDS, and gives degradation curves of six pharmaceuticals in figures 1A-F. Therefore, it appears that applicant may not have possession of the claimed invention, that is treating of the generic “compound,” and the broader species listed such as a pesticide, herbicide, pharmaceuticals, etc., to degrade.
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.
Claims 1, 3, 11, 12, 18-33 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.
All claims recite a method of treating a compound, but do not specify the medium in which the compound is treated, except in claims 12, 24 and 31, in which the medium is a liquid (unspecified.) The specification indicates in several places “the reaction solution.” Since, under the broadest reasonable interpretation in the light of the specification, the claims cover a breadth of unlimited “solutions” for which no reasonable metes and bounds can be established.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 3, 11, 12, 18-33 are rejected under 35 U.S.C. 102(a1) as being anticipated by, or in the alternative, under 35 USC 103 as being unpatentable over, Wang et al., “ Activation of peroxydisulfate via photothermal synergistic strategy for wastewater treatment: Efficiency and mechanism,” Journal of Hazardous Materials 436 (2022) 129224.
Claims 28-33 are directed to treating a compound (unspecified) using visible light-activated peroxydisulfate in a liquid (claim 31.)
Wang teaches in the introduction that use of PDS in advanced oxidation process (AOP) for oxidative decomposition of contaminants in water is known in the art. Wang teaches, “Generally, PDS can be activated by various methods, which can simply be divided into physical activation (photolysis, thermolysis, sonolysis,) and chemical activation (… catalysis)” [Citations omitted.] Further, wang teaches, “Although the activation of PS with visible light can be achieved by introducing a special catalyst, the potential environmental risk of secondary pollution caused by the catalyst still needs to be addressed,” and “in other words, full utilization of near-infrared light and visible light of sunlight is the key to efficient activation of PDS by sunlight irradiation.” That is, Wang identifies the need for efficient activation of PDS by sunlight alone, without a catalyst or another energy source.
Wang proceeds to show degradation of fulvic acid (FA; a natural compound from the degradation of organic matter in soil) as an example for AOP. Section 3.3.1, and figures 3a-b and 5a-d show FA degradation studies. Wang shows that PDS can be activated using simulated sunlight alone, and FA can be degraded or removed using PDS activated by sunlight. This would anticipate claims 28-33.
The reactive oxygen species is an inherent result of using PDS with light.
For claims 1, 3, 11, 12, 18-27, Wang is silent on the specific compounds listed claims. However, claims are broadly directed to treating the listed compounds with PDS in presence of light. While applicant’s disclosure (working examples) appear to be directed at showing a proof of concept, the intended purpose is water treatment (Background and summary of invention.) Wang teaches using PDS with sunlight for “the removal of refractory organic contaminants from the aquatic environment.”
Refractory organic contaminants are persistent organic pollutants that resist degradation by conventional biological and physical–chemical treatment methods. They originate from industrial processes, agriculture, and household waste, and can include pharmaceuticals, pesticides, industrial solvents, and synthetic chemicals (Google AI search.) Wang teaches fulvic acid as a typical refractory pollutant in water.
Wang teaches or suggests using PDS and sunlight for water treatment with refractory contaminants, and the concept is proven with fulvic acid. Therefore, it would have been obvious to one of ordinary skill in the art, if not anticipated, that PDS with light would degrade any and all the refractory compounds present in water.
Also, carrying out PDS/sun light treatment to contaminated water would inherently degrade all the compounds PDS/light would degrade, irrespective of such is known in the art.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id
That is, PDS in presence of sunlight would degrade any and all compounds it could degrade, irrespective of whether such degradation was known before or not.
For the dependent claims, the oxygen species is inherent, and Wang teaches PDS with light alone in the comparative studies – see the figures.
Response to Arguments
Applicant's arguments filed 7/21/26 have been fully considered but they are not persuasive. They are addressed in the rejection..
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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