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 .
Status of Claims
Claims 1-13 are currently pending
Claims 14-18 are currently withdrawn from consideration
Claims 3-13 are currently amendedClaims 1-13 are currently rejected
Information Disclosure Statement
The Information Disclosure Statements filed on 12/15/2023 and 06/16/2025 are in compliance with the provisions of 37 CFR 1.97 and have been considered. An initialed copy of the Form 1449 is enclosed herewith.
Election/Restrictions
Applicant's election with traverse of Group I claims 1-13 in the reply filed on 03/09/2026 is acknowledged. The traversal is on the ground(s) that the restricted inventions are not independent inventions and that examination of both claimed invention together would not present a serious burden on the U.S. Patent and Trademark Office. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41 has been adequately addressed in MPEP §802.01. Therein, it is stated that the legislative intent was to maintain the substantive law on the subject of restriction practice prior to enactment of 35 USC 121. Such practice permitted restriction between distinct, albeit dependent inventions. If the intent had been otherwise, then only the term “independent” would have been used. Thus, restriction between the distinct inventions set forth in this application is proper even though these inventions are clearly related.
With regard to applicants allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. However, the issues raised in the examination of apparatus claims are divergent from those raised in the examination of process claims. Further, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities: Line 6 states “wherein each of the n Xs” and instead should state “wherein each of n Xs” to avoid any antecedent issues. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: Line 2 states “as an amine compound” and instead should state “as the amine compound” for further clarity. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: Line 2 states “as an amine compound” and instead should state “as the amine compound” for further clarity. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: Line 2 states “as amine compounds” and instead should recite “as the amine compounds” for further clarity. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: Line 2 states “as an amine compound” and instead should state “as the amine compound” for further clarity. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: Line 2 states “as amine compounds” and instead should recite “an amine compound” for further clarity. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Line 2 states “wherein the dithiocarbamate is” and instead should state “wherein the at least one dithiocarbamate is” for further clarity. 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.
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 1-13 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.
Claim 1 recites the limitation "the total number” on line 7, and “the sum” on line 10. There is insufficient antecedent basis for these limitations in the claim. Claims 2-13 are also rejected since these claims depend on claim 1.
Claim 4 recites the limitation "as amine compounds represented by the formula (III),” on lines 2-3. It is unclear and confusing how there are plural amine compounds by a singular formula? Examiner suggests to amend the limitation to instead recite “as the amine compound represented by the formula (III),” for further clarity. Claim 5 is also rejected since this claim depends on claim 4.
Claim 10 recites the limitation "the total amount” on line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the periodic table” on line 3. There is insufficient antecedent basis for this limitation in the claim.
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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over HATTORI MASANORI (JP 2019076840 A) (see attached English description) (hereinafter “Hattori”).
Regarding Claim 1:
Hattori teaches a heavy metal treatment agent (see paragraphs 1, 10-11, 15-16, 24, 37 and 57) comprising at least one dithiocarbamate of one or more amine compounds represented by any of formulae (I) to (III) (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77):
wherein m represents an integer of 3 to 6 (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77);
wherein each of n Xs independently represents a hydrogen atom or a 2-aminoethyl group, at least one X is a 2-aminoethyl group, n is an integer of 1 to 3 and a total number of nitrogen atoms is 4 to 8 (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77); and
wherein o is an integer of 0 to 2, p is 0 or 1, q is 0 or 1, r is an integer of 0 to 3, a sum of o, p and r is greater than or equal to 1, and the total number of nitrogen atoms is 3 to 7 (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach any of formulae (I) to (III) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 2:
Hattori teaches the heavy metal treatment agent according to claim 1, wherein the one or more amine compounds comprise an amine compound represented by the formula (III) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (III) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 3:
Hattori teaches the heavy metal treatment agent according to claim 2, wherein the one or more amine compounds comprise, as the amine compound represented by the formula (III), at least one species selected from amine compounds represented by the following formulae (IIIa), (IIIb) and (IIIc) (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (III) along with at least one species from formulae (IIIa), (IIIb) and (IIIc) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 4:
Hattori teaches the heavy metal treatment agent according to claim 2, wherein the one or more amine compounds comprise, as the amine compound represented by the formula (III), both of the amine compounds represented by the following formulae (IIIa) and (IIIb) (see current claim set for formulas) (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (III) along with species from formulae (IIIa) and (IIIb) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 5:
Hattori teaches the heavy metal treatment agent according to claim 4, wherein the one or more amine compounds further comprise, as the amine compound represented by the formula (III), an amine compound represented by the following formula (IIIc) (see current claim set for formula) (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (III) along with species from formulae (IIIc) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 6:
Hattori teaches the heavy metal treatment agent according to claim 1, wherein the one or more amine compounds comprise all of the amine compounds represented by the formulae (I) to (III) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach all of formulae (I) to (III) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 7:
Hattori teaches the heavy metal treatment agent according to claim 6, wherein the one or more amine compounds comprise, as the amine compounds represented by any of formulae (I) to (III), all of the amine compounds represented by the following formulae (la), (Ila), (IIIa) and (IIIb) (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach any of formulae (I) to (III) along with all of the species from formulae (Ia), (IIa), (IIIa) and (IIIb) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 8:
Hattori teaches the heavy metal treatment agent according to claim 7, wherein the one or more amine compounds further comprise, as the amine compound represented by the formula (III), an amine compound represented by the following formula (IIIc) (see current claim set for formula) (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (III) along with species from formulae (IIIc) for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 9:
Hattori teaches the heavy metal treatment agent according to claim 1, wherein the one or more amine compounds comprise an amine compound represented by the formula (III) in an amount of 10.0% or more and 80.0% or less (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see paragraphs 18-19, 22-23, 31-34, 37-38, 40, 49, 51, 54-55 and 58 regarding concentrations and weights) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (III) in an amount of 10.0% or more and 80.0% or less for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see paragraphs 18-19, 22-23, 31-34, 37-38, 40, 49, 51, 54-55 and 58 regarding concentrations and weights) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 10:
Hattori teaches the heavy metal treatment agent according to claim 1, wherein the one or more amine compounds comprise, an amine compound represented by the formula (III), both of the amine compounds represented by the following formulae (IIIa) and (IIIb) (see current claim set for formulas) (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77):
wherein a total amount of the amine compounds represented by the formulae (IIIa) and (IIIb) is 10.0% or more and 50.0% or less (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see paragraphs 18-19, 22-23, 31-34, 37-38, 40, 49, 51, 54-55 and 58 regarding concentrations and weights) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (III) along with both of the amine compounds in formulae (IIIa) and (IIIb) in a total amount of 10.0% or more and 50.0% or less for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see paragraphs 18-19, 22-23, 31-34, 37-38, 40, 49, 51, 54-55 and 58 regarding concentrations and weights) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 11:
Hattori teaches the heavy metal treatment agent according to claim 1, wherein the one or more amine compounds comprise an amine compound represented by the formula (II) in an amount of 5.0% or more and 30.0% or less (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see paragraphs 18-19, 22-23, 31-34, 37-38, 40, 49, 51, 54-55 and 58 regarding concentrations and weights) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Hattori teaches and illustrates numerous formulas/drawings (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) and it would have been obvious before the effective filing date of the claimed invention to one of ordinary skilled in the art to modify FIGS. 1-6 of Hattori to further teach formulae (II) in an amount of 5.0% or more and 30.0% or less for optimization purposes and to effective and efficiently treat a liquid/fluid source (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see paragraphs 18-19, 22-23, 31-34, 37-38, 40, 49, 51, 54-55 and 58 regarding concentrations and weights) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 12:
Hattori teaches the heavy metal treatment agent according to claim 1, wherein the at least one dithiocarbamate is a sodium salt of dithiocarbamate (see paragraphs 9, 10-11, 18-19, 37-42, 50-51 and 73-74) (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77).
Regarding Claim 13:
Hattori teaches the heavy metal treatment agent according to claim 1, wherein the heavy metal treatment agent is for treating elements of groups 6 to 16 of a periodic table or compounds thereof (see original JP reference FIGS. 1-4 in paragraphs 44-47 and FIGS. 5-6 in paragraphs 75 and 77) (see paragraphs 1, 10-11, 15-16, 24, 37 and 57).
Other Reference Considered
King et al. (U.S. 5,225,600) (hereinafter “King”) teaches amines catalysis using group VIB metal-containing condensation catalysts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AKASH K. VARMA whose telephone number is (571)272-9627. The examiner can normally be reached Monday-Friday 9-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L. Lebron can be reached at (571)-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AKASH K VARMA/Primary Examiner, Art Unit 1773
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