DETAILED ACTION
Status of Claims:
Claims 1-16 are pending.
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 .
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 1-4 and 6-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,649,676. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1:
The Claims of the Patent disclose the bioreactor system comprising: a housing having an inlet and an outlet; at least one adsorbent layer disposed in the housing comprising a biofilm comprising microbes for metabolizing at least one target contaminant (1,4-dioxane); and at least one screen (first screen) positioned downstream in relation to the at least one adsorbent layer, wherein: the bioreactor system is configured to retain within the housing the biofilm that becomes detached from the at least one adsorbent layer, the housing is configured to receive through the inlet a flow of an influent comprising water contaminated with the at least one target contaminant, and the bioreactor system is configured to discharge an effluent from the outlet, which comprises water with a lower concentration of the contaminant compared to the influent (see claim 1).
Regarding Claim 11:
The claims of the Patent disclose the method of reducing a concentration of a target contaminant in a water source, the method comprising: flowing water from the water source as an influent into the bioreactor system of claim 1, wherein the influent has a first concentration of the target contaminant; and collecting treated water discharged as an effluent from the bioreactor system, wherein the bioreactor system is operated such that the effluent has a second concentration of the target contaminant that is lower than the first concentration of the target contaminant (see claim 1).
Regarding Claims 2-4, 6-10 and 12-16:
The limitations of the remaining claims are disclosed by claims 2-17 of the patent.
Claim 1-4 and 6-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/661,889 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations are disclosed by the claims of the copending application. The additional limitations claimed by the copending application are not excluded by the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 3 and 16 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.
Regarding Claims 3 and 16:
Regarding claims 3 and 16, the phrases "such as" and “e.g.” render the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
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.
Claim(s) 1-4, 6 and 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young et al (US 2013/0153493) in view of Nonet et al (US 2022/0411298).
Regarding Claim 1:
Young teaches the bioreactor system comprising: a housing (bioreactor tank) having an inlet and an outlet (influent port and effluent port) (see para. 0047); at least one layer disposed in the housing comprising a biofilm comprising microbes for metabolizing at least one target contaminant (biofilm carriers) (see para. 0031, fig, 2); and at least one screen (membrane module) (see para. 0031, 0040, fig. 2) positioned downstream in relation to the at least one adsorbent layer, wherein: the bioreactor system is configured to retain within the housing the biofilm that becomes detached from the at least one adsorbent layer (see para. 0040), the housing is configured to receive through the inlet a flow of an influent comprising water contaminated with the at least one target contaminant, and the bioreactor system is configured to discharge an effluent from the outlet, which comprises water with a lower concentration of the contaminant compared to the influent (wastewater is treated to water that can be reused) (see para. 0047, 0048).
Young does not teach that the layer is an adsorbent layer.
Nonet teaches an adsorbent layer (biologically activated carbon) disposed in the housing comprising a biofilm comprising microbes for metabolizing at least one target contaminant (see para. 0084).
Young and Nonet are analogous inventions in the art of moving bed bioreactors. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the carriers of Young with the activated carbon (adsorbent) of Nonet because activated carbon improves the degradation of micropollutants (see Nonet para. 0066) and because it is the simple substitution of one known carrier material for a biofilm, with another known carrier material for a biofilm, obviously resulting in the adsorption of pollutants, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 2:
Young, as modified, teaches the bioreactor system of claim 1, wherein the detached biofilm is retained in the space between the adsorbent layer and the at least one screen located downstream in relation to the adsorbent layer (see Young para. 0040).
Regarding Claim 3:
Young, as modified, teaches the bioreactor system of claim 1.
Young does not explicitly teach wherein the at least one target contaminant comprises at least one of a pharmaceutical and personal care product (PPCP) (e.g., Triclosan, Ibuprofen), an endocrine-disrupting chemical (EDC) and hormone (e.g., Bisphenol A (BPA), Estrone, Polybrominated diphenyl ethers (PBDEs) such as pentabromodiphenyl ether (PentaBDE)), a persistent organic pollutant (POP), a per- and polyfluoroalkyl substance (PFAS) (e.g., 6:2 fluorotelomer alcohol (6:2 FTOH), Perfluorooctane sulfonic acid (PFOS)), a chlorinated organic compound (e.g., 1,2,3-Trichloropropane (TCP)), an explosive substance (e.g., Trinitrotoluene (TNT)), an industrial by-product (e.g., N-nitroso-dimethylamine (NDMA)), and Metolachlor.
Nonet teaches treating wastewater wherein the at least one target contaminant comprises at least one of a pharmaceutical and personal care product (PPCP) (see para. 0002).
Through routine experimentation, ones skilled in the art would have found appropriate sources of wastewater to treat with the known system. It would have been obvious to one skilled in the art to replace the wastewater of Young with the pharmaceutical containing wastewater of Nonet because it is the simple substitution of one known wastewater source with another known wastewater source, obviously resulting in a contaminant that can be treated by the system. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550
U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 4:
Young, as modified, teaches the bioreactor system of claim 1, operated in a down-flow mode, up-flow mode, side-flow mode, or moving-bed mode (see para. 0008), wherein: an additional screen (top retentive screen) (see Young para. 0064) is placed between the at least one adsorbent layer and the at least one screen to contain the at least one layer of adsorbent, the additional screen has openings that are larger than openings of the at least one screen, the detached biofilm passes through openings of the additional screen and is retained between the additional screen and the at least one screen (see para. 0064, fig. 2).
Regarding Claim 6:
Young, as modified, teaches the bioreactor system of claim 1. Young further teaches that the flow rate through the bioreactor can be controlled (see Young para. 0080).
Young does not teach the bioreactor system configured to be operated to produce an empty bed contact time from about 3 minutes to about 1440 minutes.
Nonet teaches the bioreactor system configured to have an empty bed contact time from about 3 minutes to about 1440 minutes (18.8 minutes) (see Nonet para. 0202).
It would have been obvious to one skilled in the art before the effective filing date of the invention to operate the bioreactor of Young, as modified by Nonet, at an empty bed contact time between 3 and 1440 minutes because it is a time range known to be effective at removing pollutants (see Nonet para. 0202). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05 II).
Regarding Claim 9:
Young, as modified, teaches the bioreactor system of claim 1, wherein the at least one adsorbent layer comprises a bed of adsorbent particles (activated carbon) (see Nonet para. 0084).
Regarding Claim 10:
Young, as modified, teaches the bioreactor system of claim 1, further comprising a pump in fluid communication with the inlet (feed pump) (see Young para. 0080).
Regarding Claim 11:
Young, as modified, teaches the method of reducing a concentration of a target contaminant in a water source (wastewater), the method comprising: flowing water from the water source as an influent into the bioreactor system of claim 1 (see Young para. 0036), wherein the influent has a first concentration of the target contaminant; and collecting treated water discharged as an effluent from the bioreactor system, wherein the bioreactor system is operated such that the effluent has a second concentration of the target contaminant that is lower than the first concentration of the target contaminant influent (wastewater is treated to water that can be reused therefore the concentration of contaminates is reduced) (see Young para. 0047, 0048).
Regarding Claim 12:
Young, as modified, teaches the method of claim 11, wherein the at least one adsorbent layer of the bioreactor system comprises a bed (moving bed) (see Young para. 0001) of adsorbent particles (activated carbon) (see Nonet para. 0084).
Regarding Claim 13:
Young, as modified, teaches the method of claim 12, wherein the bed of absorbent particles comprises granular activated carbon (see Nonet para. 0084).
Regarding Claim 14:
Young, as modified, teaches the method of claim 11, wherein the bioreactor system is operated at conditions to selectively enrich target contaminant metabolizing microbes that are able to degrade the target contaminant (increasing biomass concentration) (see Young para. 0061).
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young et al (US 2013/0153493) in view of Nonet et al (US 2022/0411298) as applied to claim 1 above, and further in view of Chaudhuri et al (WO 2015/071833).
Regarding Claim 7:
Young, as modified, teaches the system of claim 1.
Young does not teach at least one micronutrient disposed in the housing.
Chaudhuri teaches a bioreactor system comprising at least one micronutrient (yeast extract) disposed (added to) the housing (see para. 00032).
Young, as modified, and Chaudhuri are analogous inventions in the art of biological wastewater treatment. It would have been obvious to one skilled in the art to add the micronutrient, as disclosed by Chaudhuri, to the housing of Young because it provides an energy source for the bacteria (see Chaudhuri para. 0032).
Regarding Claim 8:
Young, as modified, teaches the bioreactor system of claim 7, wherein the at least one micronutrient comprises a yeast extract (see Chaudhuri para. 0032).
The combination does not explicitly teach the yeast extract having a concentration between 10 - 100 µg/L. However, one skilled in the art would have found it obvious to adjust the yeast concentration, and use a concentration within the claimed range. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young et al (US 2013/0153493) in view of Nonet et al (US 2022/0411298) as applied to claim 1 above, and further in view of DeVaull, III et al (USPN 6,796,741).
Regarding Claim 15:
Young, as modified, teaches the method of reducing an amount of a target contaminant content in water, the method comprising: providing the bioreactor system of claim 1; enriching, via an influent, the biofilm within the bioreactor system (increasing biomass concentration and high biomass concentration) (see Young para. 0061, 0041), which biofilm comprises target contaminant metabolizing microbes (microbial consortium) (see Young para. 0061, Nonet para. 0084); removing the biofilm from the bioreactor system (waste sludge is withdrawn) (see Young para. 0039).
Young, as modified, does not disclose injecting the biofilm into a contaminated site, wherein injecting the biofilm into the contaminated site results in in-situ remediation of the contaminated site through bioaugmentation.
DeVaull teaches disclose injecting biofilm (bacterial slurry, microbial cultures) into a contaminated site (see col. 3 lines 1-3, fig. 1), wherein injecting the biofilm into the contaminated site results in in-situ remediation of the contaminated site through bioaugmentation (see col. 4 lines 10-17).
It would have been obvious to one skilled in the art, before the effective filing date of the invention to replace the bacterial slurry source (biofilm) of DeVaull with the waste sludge (biofilm) generated in the method of Young (as modified) because through routine experimentation one skilled in the art would find appropriate uses for a known biofilm and appropriate sources of biomass. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). The use of a known technique to improve similar devices (methods or products)
in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550
U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 16:
Young, as modified, teaches the method of claims 11 and 15.
Young does not explicitly teach wherein the at least one target contaminant comprises at least one of a pharmaceutical and personal care product (PPCP) (e.g., Triclosan, Ibuprofen), an endocrine-disrupting chemical (EDC) and hormone (e.g., Bisphenol A (BPA), Estrone, Polybrominated diphenyl ethers (PBDEs) such as pentabromodiphenyl ether (PentaBDE)), a persistent organic pollutant (POP), a per- and polyfluoroalkyl substance (PFAS) (e.g., 6:2 fluorotelomer alcohol (6:2 FTOH), Perfluorooctane sulfonic acid (PFOS)), a chlorinated organic compound (e.g., 1,2,3-Trichloropropane (TCP)), an explosive substance (e.g., Trinitrotoluene (TNT)), an industrial by-product (e.g., N-nitroso-dimethylamine (NDMA)), and Metolachlor.
Nonet teaches treating wastewater wherein the at least one target contaminant comprises at least one of a pharmaceutical and personal care product (PPCP) (see para. 0002).
Through routine experimentation, ones skilled in the art would have found appropriate sources of wastewater to treat with the known system. It would have been obvious to one skilled in the art to replace the wastewater of Young with the pharmaceutical containing wastewater of Nonet because it is the simple substitution of one known wastewater source with another known wastewater source, obviously resulting in a contaminant that can be treated by the system. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550
U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Allowable Subject Matter
Claim 5 is 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: Claim 5 contains limitations that would not have been obvious in view of the prior art. Specifically “the at least one screen comprises a plurality of apertures that each having an opening size between 40 – 400 µm” would not have been obvious in view of Young. Young teaches that the screen is in the form of a hollow fiber membrane designed to retain biomass (see para. 0040). Hollow fiber membranes with apertures between 40 and 400µm are not known in this or related prior arts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 9/23/2026
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