DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/649,910 application filed 29 April 2024, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-7 are pending and have been fully considered.
Claim Interpretation
Applicant is reminded that “‘apparatus claims cover what a device is, not what a device does.’ Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647.” In the instant case, the recitations of gold absorption and to absorb gold ions in water is concerned with what the PAN fiber material does or how it is intended to be employed, not what it is. Therefore, the recitations do not differentiate the claimed PAN fiber material from a prior art PAN fiber material.
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.
Claim 4 is 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 4 recites “a molarity…is less than 1 mmol/g…” Molarity is a unit relating moles of a substance (element or compound) to a volume of solution, not mass (specifically, grams or g) of a solution. Perhaps, the claim should recite “a [[molarity]] molality…is less than 1 mmol/g…” Since it is not clear whether the concentration of grafted molecules is in units of molarity or molality, the metes and bounds of the claimed invention cannot be determined.
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 2 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 2 is concerned with the absorption capacity of gold and does not appear to further limit the structure of the PAN fiber-based material of claim 1. In other words, claim 2 is a recitation as to the extent of what the PAN fiber-based material does or how it is intended to be used rather than what the PAN fiber-based material is. 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
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 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 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al in Green Chemistry (2012, vol 14, pp 2234-2242).
Li et al discloses “[d]ried PANF [i.e., polyacrylonitrile fiber—Examiner’s insertion—see paragraph under the heading “2.1 Reagents” on page 2234] (1.000 g), the appropriate polyamine (20 mL) and deionized water (10 mL) were added to a three-necked flask and the mixture was stirred under reflux for the appropriate time. Then the fiber was filtered out and repeatedly washed with water (60–70 °C) until the pH was neutral. The fiber was then dried overnight under vacuum at 70 °C to give the fiber catalyst (Scheme 1)” [see paragraph under the heading “2.3 General procedure for the synthesis of the fiber catalysts”]. More specifically, “PANEDF (Table 1, entry 3)
Dried PANF (1.000 g), ethylenediamine (10 mL) and deionized water (20 mL) were added to a three-necked flask and the mixture was stirred at reflux for 4.25 h. Then the fiber was filtered out and repeatedly washed with water (60-70 ◦C) until neutral. The fiber was then dried overnight under vacuum at 70 ◦C to give the fiber catalyst (PANEDF). The weight gain of PANEDF based on PANF was 13%.
PANDTF (Table 1, entry 4)
Dried PANF (1.000 g), diethylenetriamine (10 mL) and deionized water (20 mL) were added to a three-necked flask and the mixture was stirred at 100 ◦C for 9.5 h. Then the fiber was filtered out and repeatedly washed with water (60-70 ◦C) until neutral. The fiber was then dried overnight under vacuum at 70 ◦C to give the fiber catalyst (PANDTF). The weight gain of PANDTF based on PANF was 20%.
PANTTF (Table 1, entry 5)
Dried PANF (1.000 g), triethylenetetramine (20 mL) and deionized water (10 mL) were added to a three-necked flask and the mixture was stirred at 110 ◦C for 4 h. Then the fiber was filtered out and repeatedly washed with water (60-70 ◦C) until neutral. The fiber was then dried overnight under vacuum at 70 ◦C to give the fiber catalyst (PANTTF). The weight gain of PANTTF based on PANF was 26%.
PANTPF (Table 1, entry 6)
Dried PANF (1.000 g), tetraethylenepentamine (20 mL) and deionized water (10 mL) were added to a three-necked flask and the mixture was stirred at reflux for 4 h. Then the fiber was filtered out and repeatedly washed with water (60-70 ◦C) until neutral. The fiber was then dried overnight under vacuum at 70 ◦C to give the fiber catalyst (PANTPF). The weight gain of PANTPF based on PANF was 40%” [see descriptions under the heading “Detailed Procedures for the Synthesis of the Different Fiber Catalysts” in Supporting Information]. Note that Li et al further discloses “[t]he amination was found to be strongly influenced by the concentration of polyamine, reaction time and temperature” [see 2nd paragraph under the heading “3.1. Synthesis of the fiber catalysts”]; compare to the instant specification, which states “[t]here is provided a method of manufacturing a PAN fiber-based gold absorption material, the method may include: manufacturing a PAN fiber-based gold absorption material by adding a PAN fiber to an aqueous solution of an alkylamine compound and immobilizing the alkylamine compound on a PAN fiber surface through an amination reaction…” [paragraph 0023 of the published application]. The aforementioned ethylenediamine, diethylenetriamine, triethylenetetramine, and tetraethylenepentamine correspond to the alkylamine of the instant application. Since the fiber catalyst of the reference is prepared in a same or similar manner as the PAN-fiber based material of the instant application (e.g., amination reaction), it is expected, absent evidence to the contrary, that ethylenediamine, diethylenetriamine, triethylenetetramine, and/or tetraethylenepentamine are immobilized on the PAN fiber surface [see, also, Scheme 1 on page 2235].
Claim(s) 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al in Environmental Science Water Research & Technology (2022, vol 8, pp 607-618).
With respect to claims 1 and 2, Zheng et al discloses “aminated fibers were synthesized by a hydrothermal method. To do so, poured dried PANFs [i.e., polyacrylonitrile fibers—Examiner’s insertion—see last paragraph on left hand side of page 608: “Polyacrylonitrile fibers (PANFs) are…”] (1.0 g), PEI [polyethyleneimine—Examiner’s insertion—see paragraph under the heading “Reagents and materials” on page 608] (3.0 g), and deionized water (20 mL) were reacted in an autoclave (140 °C) for 6 hours. After reaction, the fibers were washed repeatedly with deionized water (60–70 °C), and then dried at 60 °C overnight. The weight gain of PANAF based on PANF was 25%. In addition, the different weight gains of PANAFs were controlled by the PEI content. The addition of 1.0, 2.0, 4.0, and 5.0 g PEI led to 8.7, 18.7, 33.4, and 40.8% PANAFs, respectively” [see step 1 under the heading “Synthesis of ionic liquid functionalized polyacrylonitrile fibers (PANAF–Cl)” on page 609]. Note the teaching of aminated fibers and the further teaching of “the aminated fiber (PANAF) was obtained through the reaction between the polyacrylonitrile fiber and polyethyleneimine” [1st paragraph under the heading “Synthesis of the ionic liquid functionalized fibers” on page 609]. Consequently, since the aminated fiber is prepared in the same or similar method as the PAN fiber-based material of the instant application [e.g., an amination reaction, see discussion concerning such above], it is expected, absent evidence to the contrary, that the polyethyleneimine, an alkylamine, is immobilized on the PAN fiber surface as required in the instant application.
With respect to claim 4, note the teaching that “[t]he addition of 1.0, 2.0, 4.0, and 5.0 g PEI led to 8.7, 18.7, 33.4, and 40.8% PANAFs, respectively.” Thus, 1.0 g PEI results in 0.087 g of PEI immobilized on the PANAF. The molecular weight of the PEI is 10,000 g mol-1 [see, again, paragraph under the heading “Reagents and materials” on page 608], yielding 0.0087 mmol g-1.
With respect to claims 5 and 6, while Zheng et al does not disclose whether the PEI is branched or straight, given the number of possibilities (two), either would have been obvious to one of ordinary skill in the art.
Allowable Subject Matter
Claims 3 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to claim 3, neither of the cited prior art references teaches a molecular weight of the alkylamine compound of 25,000 g mol-1 or more; with respect to claim 7, neither reference is concerned with recovering gold (ions or otherwise).
Conclusion
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
17 September 2026
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