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 Status
Claims 1-14 are pending (claim set as filed on 02/22/2024).
Priority
The instant application was filed on 02/22/2024. No domestic or foreign priority benefits have been claimed by Applicant.
Information Disclosure Statement
No Information Disclosure Statement (IDS) has been filed in this application. Applicant is reminded that each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the U.S. Patent and Trademark Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability (see 37 C.F.R. 1.56).
Claim Rejections - 35 USC § 112 (b)
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 5-6 and 14 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 5 recites “at least one antiscalant is selected from phosphonate-based antiscalant, polymer-based antiscalant, and biopolymer-based antiscalant” which renders the claim indefinite since it is unclear if the at least one antiscalant is selected from phosphonate-based antiscalant, polymer-based antiscalant, or biopolymer-based antiscalant, or if the at least one antiscalant is selected from a mixture of antiscalants comprising phosphonate-based antiscalant, polymer-based antiscalant, and biopolymer-based antiscalant.
Claim 6 recites “wherein the at least one antiscalant is selected from amino trimethylene phosphonic acid, 1-hydroxyethylidene-(1,1-diphosphonic acid), hexamethylenediamine-tetra(methylenephosphonic acid), polyacrylate-maleic acid copolymer, and carboxy methyl inulin” which renders the claim indefinite since it is unclear if the at least on antiscalant is selected from amino trimethylene phosphonic acid, 1-hydroxyethylidene-(1,1-diphosphonic acid), hexamethylenediamine-tetra(methylenephosphonic acid), polyacrylate-maleic acid copolymer, or carboxy methyl inulin, or if the at least one antiscalant is selected from a mixture comprising amino trimethylene phosphonic acid, 1-hydroxyethylidene-(1,1-diphosphonic acid), hexamethylenediamine-tetra(methylenephosphonic acid), polyacrylate-maleic acid copolymer, and carboxy methyl inulin.
Claim 14 recites “at least one technique selected from 1H, 13C, and 31P NMR spectra”, which renders the claim indefinite since it is unclear if the at least one technique is selected from 1H, 13C, or 31P NMR spectra, or if the at least one technique is selected from a technique that combines 1H, 13C, and 31P NMR spectra”.
One of ordinary skill in the art would not be able to determine the metes and bounds of claims 5-6 and 14, and thus, could not clearly determine how to avoid infringement of the claims.
In the interest of compact prosecution, claim 5-6 and 14 are interpreted to the broadest embodiment claimed.
Claim Rejections - 35 USC § 112(d)
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 7 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 7 recites “wherein, the concentration of the at least one antiscalant in the mixture is in the range of 0.1 to 100 mg/L”, which does not further limit the recited method in claim 1 (“a mixture, wherein the concentration of the at least one antiscalant is in the range of 0.1 to 100 mg/L”; claim 1, lines 6-7).
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.
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.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hasanin (“Bacterial Growth Potential of Antiscalants used in Reverse Osmosis Systems using Seawater Autochthonous Microbial Communities”, published in 2021, KAUST Research Repository, https://doi.org/10.25781/KAUST-347AZ, thesis metadata, pages 1-2), in view of Sieracki et al. (“Sunlight-induced growth delay of planktonic marine bacteria in filtered seawater”, published in 01/01/1986, Marine Ecology Progress Series, Vol. 33, pages 19-27), hereinafter ‘Sieracki’.
Hasanin’s general disclosure relates to the microbial growth potential of eight antiscalants under conditions relevant to desalination plants (see entire document, including abstract).
Regarding claim 1, pertaining to a method, Hasanin teaches a method for determining the microbial growth potential of at least one antiscalant composition in seawater (page 2, paragraph 4) comprising at least the following steps:
obtain seawater comprising bacteria having a predetermined bacterial cell concentration (page 2, paragraph 4, lines 1-2). It is noted that seawater reads on natural seawater and that seawater with a predetermined bacterial cell concentration intrinsically has to be obtained in order to conduct bacterial growth studies with said seawater.
Hasanin teaches wherein the method further comprises
adding at least one antiscalant composition comprising at least one antiscalant to the seawater to obtain a mixture, wherein the concentration of the at least one antiscalant is 50 mg/L (page 2, paragraph 4, lines 1-2); and
incubating the mixture (page 2, paragraph 4, lines 1-2), and determining the bacterial cell concentration of the mixture over time to determine the microbial growth potential of the at least one antiscalant composition in the seawater (page 2, paragraph 4, lines 2-5). It is noted that ‘measuring cell concentrations over time’ reads on determining bacterial cell concentrations at multiple time points.
Regarding claim 2, pertaining to the bacteria, Hasanin teaches wherein the bacteria are autochthonous seawater bacteria (page 2, paragraph 2, line 2).
Regarding claim 3, pertaining to the predetermined cell concentration, Hasanin teaches wherein the predetermined bacterial cell concentration is 20000 bacterial cells mL-1 (page 2, paragraph 4, lines 1-2).
Regarding claim 5, please note the rejection under Claim Rejections - 35 USC § 112 (b) above.
Pertaining to the antiscalant, Hasanin teaches wherein the at least one antiscalant is a phosphonate-based antiscalant , polymer-based antiscalant, and a biopolymer-based antiscalant (“phosphonate-based, natural inulin-based and polyacrylate-based antiscalants”; page 2, paragraph 3, line 3). It is noted that Hasanin’s “inulin” and “polyacrylate” read on biopolymer and polymer, respectively.
Regarding claim 7, please note the rejection under Claim Rejections - 35 USC § 112(d).
Pertaining to the antiscalant, Hasanin teaches wherein the concentration of the at least one antiscalant in the mixture is 50 mg/L (page 2, paragraph 4, line 1).
Regarding claim 8, pertaining to the incubation temperature, Hasanin teaches wherein the mixture is incubated at 30°C (page 2, paragraph 4, line 2).
Regarding claim 12, pertaining to the bacterial cell concentration, Hasanin teaches wherein the bacterial cell concentration of the mixture is determined by flow cytometry (page 2, paragraph 4, line 3).
Regarding claim 13, pertaining to the antiscalant, Hasanin teaches the method further comprising a step of determining the chemical structure of the at least one antiscalant present in the at least one antiscalant composition (page 2, paragraph 3). It is noted that the phrase “Fourier transform infrared and nuclear magnetic resonance spectroscopy allowed us to classify the eight tested antiscalants into three types based on their chemical structure” (page 2, paragraph 3) indicates that Fourier transform infrared and nuclear magnetic resonance spectroscopy were used to determine the chemical structure of the at least one antiscalant.
In addition, Hasanin teaches that antiscalants are chemicals used in membrane-based water desalination processes to prevent the scaling of salts on the membrane (page 1, last paragraph, line 1), that antiscalants can potentially lead to biofouling of the membrane (page 1, last paragraph, line 2), and that the microbial growth potential of antiscalants was determined under conditions relevant to desalination plants (page 2, paragraph 2, line 1).
Hasanin does not teach
filtering natural seawater (instant claim 1),
determining the bacterial cell concentration of the mixture at regular intervals (instant claim 1),
wherein the mixture is incubated in dark (instant claim 9),
wherein the mixture is incubated for 2 to 10 days (instant claim 10),
wherein the bacterial cell concentration of the mixture is determined at 24-hour intervals (instant claim 11).
Sieracki’s general disclosure relates to the growth of natural populations of planktonic marine bacteria upon exposure to natural sunlight.
Regarding claim 1, pertaining to natural seawater and filtering natural seawater, Sieracki teaches filtering natural seawater for bacterial growth experiments (page 20, left column, paragraph 4 - page 20, right column, paragraph 1; see Fig. 1). In addition, Sieracki teaches that filtering resulted in seawater with essentially the bacterial population, but with greatly reduced populations of protists (page 20, right column, paragraph 1), and that protists are bacterivorous (page 20, left column, paragraph 2).
Pertaining to determining the bacterial cell concentration at regular intervals, Sieracki teaches determining the bacterial cell concentration at about 0 hours, at about 24 hours, at about 48 hours, at about 72 hours, and at about 96 hours of incubation (see Fig. 1A), said timepoints corresponding to 24-hour intervals.
Regarding claim 9, pertaining to incubating the mixture in dark, Sieracki teaches incubating seawater comprising bacteria in the dark (page 20, right column, paragraph 1; see dark control in Fig. 1A). In addition, Sieracki teaches wherein sunlight induced a growth delay of the incubated bacteria (page 21, right column, paragraph 1; see abstract and Fig. 1A).
Regarding claim 10, pertaining to the incubation period, Sieracki teaches wherein the seawater comprising bacteria is incubated for about 4 days (see Fig. 1A).
Regarding claim 11, pertaining to determining the bacterial cell concentration at 24-hour intervals, Sieracki teaches determining the bacterial cell concentration at about 0 hours, at about 24 hours, at about 48 hours, at about 72 hours, and at about 96 hours of incubation (see Fig. 1A), said timepoints corresponding to 24-hour intervals.
While modified Hasanin does not teach filtering natural seawater (instant claim 1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Hasanin’s method with Sieracki’s teachings on using bacterial growth studies using seawater, to have filtered the seawater in Hasanin’s method. It would have been obvious to filter the seawater to remove potentially bacterivorous protists from the bacterial population in the seawater, in order to prevent grazing on bacteria during incubation with antiscalants, which would affect bacterial growth in the mixture (Sieracki, page 20, left column, paragraph 2; page 20, right column, paragraph 1).
While modified Hasanin does not teach determining the bacterial cell concentration of the mixture at regular intervals (instant claim 1), wherein the mixture is incubated for 2 to 10 days (instant claim 10), and wherein the bacterial cell concentration of the mixture is determined at 24-hour intervals (instant claim 11), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Hasanin’s method with Sieracki’s teachings on bacterial growth studies (see Fig. 1A), to have determined the bacterial cell concentration of the mixture at regular intervals, to have incubated the mixture for 4 days, and to have determined the bacterial cell concentration of the mixture at 24-hour intervals. It would have been obvious to a skilled artisan to manipulate the incubation time of the mixture and the timepoints when the bacterial cell concentration is determined, to provide sufficient incubation time for the bacteria to grow.
While modified Hasanin does not teach wherein the mixture is incubated in dark (instant claim 9), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined modified Hasanin’s method with Sieracki’s teachings on bacterial growth studies performed in the dark, and incubate the mixture in the dark. One would have been motivated to do so to prevent any bacterial growth delay due to light exposure since Sieracki teaches wherein sunlight induces a growth delay in bacteria (page 21, right column, paragraph 1; see abstract and Fig. 1A).
A skilled artisan would have reasonably expected success in combining Hasanin’s and Sieracki’s teachings since both references are directed to bacterial growth in seawater (Hasanin, page 2, paragraph 4; Sieracki, see abstract).
Claims 1, 4, 6, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hasanin (“Bacterial Growth Potential of Antiscalants used in Reverse Osmosis Systems using Seawater Autochthonous Microbial Communities”, published in 2021, KAUST Research Repository, https://doi.org/10.25781/KAUST-347AZ, thesis metadata, pages 1-2), in view of Sieracki et al. (“Sunlight-induced growth delay of planktonic marine bacteria in filtered seawater”, published in 01/01/1986, Marine Ecology Progress Series, Vol. 33, pages 19-27), hereinafter ‘Sieracki’, and in view of Pervov et al. (“A comparative study of some novel “green” and traditional antiscalants efficiency for the reverse osmotic Black Sea water desalination”, published in April 2017, Desalination and Water Treatment, Vol. 73, pages 11-21), hereinafter ‘Pervov’.
Modified Hasanin’s teachings have been set forth above.
Regarding claim 14, please note the rejection under Claim Rejections - 35 USC § 112 (b) above.
Pertaining to the antiscalant, Hasanin teaches wherein the chemical structure of the at least one antiscalant is determined based on NMR spectra (page 2, paragraph 3). It is noted that the phrase “Fourier transform infrared and nuclear magnetic resonance spectroscopy allowed us to classify the eight tested antiscalants into three types based on their chemical structure” (page 2, paragraph 3) indicates that nuclear magnetic resonance spectroscopy was used to determine the chemical structure of the at least one antiscalant.
Modified Hasanin does not teach
wherein the weight of at least one antiscalant is in the range of 50.0 to 99.0 wt.% based on the weight of the at least one antiscalant composition (instant claim 4),
wherein the at least one antiscalant is selected from amino trimethylene phosphonic acid, 1-hydroxyethylidene-(1,1-diphosphonic acid), hexamethylenediamine-tetra(methylenephosphonic acid), polyacrylate-maleic acid copolymer, and carboxy methyl inulin (instant claim 6),
wherein the chemical structure of the at least one antiscalant is determined based on at least one technique selected from 1H, 13C, and 31P NMR spectra (instant claim 14).
Pervov’s general disclosure relates to testing the effects of industrial samples of two novel phosphorus-free biodegradable polymers PASP and PESA, two non-biodegradable phosphorus-free polymers (polyacrylate, PAAS; polymaleate copolymer with polyacrylate, MA-AA) and of two traditional phosphonates (AMTP, PBTC) with respect to their ability to inhibit membrane following during RO Black Sea water treatment (see entire document, including abstract and page 12, left column, paragraph 2).
Regarding claim 4, pertaining to the antiscalant composition, Pervov teaches wherein the weight of an antiscalant is 92.49 wt.% based on the weight of the antiscalant composition (see solid content of 92.49 % of antiscalant PAAS in Table 1; “polyacrylic acid sodium salt (PAAS)”, see abstract).
Regarding claim 6, please note the rejection under Claim Rejections - 35 USC § 112 (b) above.
Pertaining to the antiscalant, Pervov teaches the antiscalants amino trimethylene phosphonic acid and 1-hydroxyethylidene-(1,1-diphosphonic acid) (“aminotris (methylenephosphonic acid), ATMP and 1-hydroxyethane-1,1-bis(-phosphonic acid), HEDP”; page 13, right column, paragraph 2), and polyacrylate-maleic acid copolymer (“copolymer of maleic and acrylic acid (MA/AA)”; page 13, left column, paragraph 3; see abstract).
Regarding claim 14, please note the rejection under Claim Rejections - 35 USC § 112 (b) above.
Pertaining to NMR, Pervov teaches analysis of antiscalant compositions using 1H, 31P and 13C NMR analysis (page 13, right column, paragraph 2).
In addition, Pervov discloses the need for suitable antiscalants in seawater desalination facilities (page 12, right column, paragraphs 5 - 7), and teaches testing of multiple antiscalants to inhibit carbonate membrane fouling in the simulated Black Sea water under reverse osmosis (RO) conditions (see abstract).
While modified Hasanin does not teach wherein the weight of at least one antiscalant is in the range of 50.0 to 99.0 wt.% based on the weight of the at least one antiscalant composition (instant claim 4), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Hasanin’s method with Pervov’s teachings on antiscalants, in order to have used an antiscalant composition in Hasanin’s method wherein the weight of the at least one antiscalant is at 92.49 wt% based on the weight of at least one antiscalant composition. It would have been obvious to manipulate the concentration of antiscalant in the antiscalant composition in order to minimize the impact of other substances present in the antiscalant composition on bacterial growth.
While modified Hasanin does not teach the claimed antiscalants recited in instant claim 6, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Hasanin’s method with Pervov’s teachings on antiscalants, in order to have created a method wherein the at least one antiscalant is selected from polyacrylate-maleic acid copolymer, amino trimethylene phosphonic acid and 1-hydroxyethylidene-(1,1-diphosphonic acid). It would have been obvious to have used any known antiscalant in modified Hasanin’s method in order to determine their microbial growth potential, and therefore their suitability for desalination of seawater (Hasanin, page 1, last paragraph).
While modified Hasanin does not expressly teach wherein the chemical structure of the at least one antiscalant is determined based on at least one technique selected from 1H, 13C, and 31P NMR spectra (instant claim 14), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Hasanin’s teachings with Pervov’s teachings on NMR spectra, to have created a method wherein the chemical structure of the at least one antiscalant is determined based on at least one technique selected from 1H, 13C, and 31P NMR spectra. It would have been obvious to use Pervov’s NMR spectra in modified Hasanin’s method to determine the chemical structure of the antiscalant .
A skilled artisan would have reasonably expected success in combining modified Hasanin’s and Pervov’s teachings since both are directed to the use of antiscalants in seawater desalination facilities (Hasanin, page 1, last paragraph, line 1; page 2, paragraph 2; Pervov, page 12, right column, paragraphs 5 - 7).
Conclusion
No claims are allowed.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANDRA ZINGARELLI whose telephone number is (703)756-1799. The examiner can normally be reached M-F 9-5.
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/SANDRA ZINGARELLI/Examiner, Art Unit 1653
/SHARMILA G LANDAU/ Supervisory Patent Examiner, Art Unit 1653