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 .
Election/Restrictions
Applicant's election with traverse of claims 1-12 in the reply filed on 7/2/26 is acknowledged. The traversal is on the ground(s) that the restriction does not state why claim 13 and claim 10 lack unity. This is not found persuasive because claim 13 was found unpatentable by the PCT written opinion. Also please see the art rejection below.
Applicant Also elected activated carbon as the species.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-12 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.
At the outset, the use of terms “preferably” and “more preferably” in the claims is indefinite.
Claims 1: the term BVT or bed volume treated is not clearly defined in the specification. The examiner assumes this as the ratio of the total volume of liquid treated by the bed until it is exhausted / volume of the bed material. This BVT would also depend on the degree of contamination of the liquid being treated. That is, the treatment volume in terms of BVT would reduce when the contamination is higher, because the bed would be exhausted faster.
The “a fresh adsorbent medium” makes the claims unclear. The term “fresh” connotates new, unused medium, whereas “regeneration” is applied to used and exhausted medium.
Claim 3: “the activated carbon bed” lacks antecedent basis.
Claim 5: “or even consisting of” is indefinite – range within range situation.
Claim 8: the Markush groups for fluid to be treated and adsorbent medium are both improper. See MPEP 2117. The Markush group for the adsorbent medium is also indefinite because it lists disparate materials. Also, “biomaterials” and “mineral materials” are unlimited and have no metes and bounds. Applicant fails to disclose what are included in these groups. The “fluid to be treated” in claim 8 also may have antecedent issues because claim 1 does not have a fluid to be treated, and does not treat a fluid.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 removes the regeneration step which broadens claims 1 and 10 or changes their scope. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim 7 is 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. Claim 7 recites an electrochemical process to regenerate adsorbents in combination with the chemical regeneration – before, after or during. The disclosure also only makes the same statement, and provides no further details as to how this is accomplished, which shows applicant may not have possession of this invention.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1, 2 and 4-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/575,145 (reference application.) Although the claims at issue are not identical, they are not patentably distinct from each other because: see the table below..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim no.
Reference
claim
Remarks
1, 2
1
The reduction rates are inherent – same GAC material
4
3
5-7
4,5
8
8
9
10
10
12
11
4, 5
Not regenerating is not inventive
12
10
Ref: regen. based on freshness means measuring implied
Claim Rejections - 35 USC § 102 and 103
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.
Claim(s) 1-6 and 8-12 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kumfer et al (US 10,053,375.).
Kumfer teaches regenerating spent activated carbon using caustic soda (NaOH). The water to be treated is industrial effluent containing spent caustic soda and organic contaminants (col. 5 lines 53-67.) Fig. 3 copied herein is highlighted to show the recirculation of NaOH solution in the regeneration mode – lines 103-115-180, and through beds 160 A and B, and col. 16, lines 17-20. Example 1 teaches using both fresh and spent NaOH for regeneration. The bed is rinsed after regeneration (example 1.) Since the reference does not state the temperature, room temperature is implied. Example 1 (col. 21, lines 22-25) and fig. 3 (col. 15, lines 31-35) also teach cycles of using the activated carbon and then regenerating it.
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515
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The capacity of the activated carbon (reduction rate or BVT or iodine number) would be inherent material property because applicant uses same activated carbon as in the reference (example, coconut shell, etc.)
The freshness of the activated carbon is determined after regeneration because in column 19, lines 6-22, Kumfer teaches capacity recovery up to 95% upon regeneration. This requires determining capacities before and after regeneration. These teachings anticipate claims 1-5, 8, 10 and 12, or make them at the least obvious.
"[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 express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983)
Claim 9: the periodic regeneration comprising next regeneration step: see example 1, col. 21, lines 8-36, and figs. 6 and 5.
Claim 11: not performing a regeneration is not patentable over the teachings in example 1, last paragraph, wherein repeated washing is done without regeneration.
Claim 6: dewatering before rinsing: applicant’s disclosure states this as a draining step, which is unpatentable over Kumfer. While Kumfer is silent about draining the caustic soda solution before rinsing, it would have been obvious to one of ordinary skill in the Art to drain the reagent completely before rinsing so that the rinsing water volume can be reduced. This is also common sense. See for evidence, Kopinke, et.al., US 2017/0232421.
MPEP 2143: rationales: Use of known technique to improve similar devices (methods, or products) in the same way; Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claim(s) 1, 2, 7 and 8 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhou et al, “ Electrochemical regeneration of carbon-based adsorbents: a review of regeneration mechanisms, reactors, and future prospects,” Chemical Engineering Journal Advances 5 (2021) 100083.
Zhou teaches electrochemical regeneration of activated carbon in which the electrolyte is NaOH. See table 1 and also section 2, cathodic regeneration. This meets the limitations of claims 1 and 2 – GAC is brought in contact with aqueous NaOH solution. It meets claim 7 because it simultaneously contacts NaOH solution with GAC and also treats it electrochemically. GAC as in claim 8. The fluid to be treated is not a patentable limitation since there is no active treatment step. Regarding the bed capacity, this would be an inherent material property of GAC, unless otherwise shown.
Conclusion
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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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1771
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