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 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 9 and 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.
Claim 9: It is unclear what a “physical tether” is within the scope of the claim. The disclosure does not have any further description.
Claim 12: It is unclear how the catalyst can be an enzyme when Claim 1 recites that the catalyst is for oxidation. The gelatinous extracellular polymeric matrix is not part of the buoyant permeable reactive barrier as it is a material formed when the barrier is placed into a body of liquid comprising appropriate elements; it is a reaction product of the buoyant permeable reactive barrier and the fluid.
Claim Rejections - 35 USC § 102
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.
Claims 1-15, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ingman et al. (US Pub. No. 2002/0073928).
Claims 1, 3-7, and 15: Ingman et al. teach a buoyant reactive barrier elements that sit on the surface of a body of water [0017] that includes a catalyst for oxidation of one or more volatile compounds [0018], titanium oxide]. The structure of Ingman et al. is the same as claimed. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). And, regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Claim 2: Ingman et al. teach that the particulate sits afloat on the top surface of the waste pool forming an interface layer which is interpreted as “substantially planar layers” [0017].
Claim 8: the catalyst includes electrocatalysts [0042].
Claim 9: the plurality of reactive barrier elements are connected via chemical bonding [0035].
Claim 10: the reactive barrier elements are in the form of microparticles [0044].
Claims 11 and 12 are directed to a “biofilm on the plurality of buoyant reactive barrier elements”. This biofilm claimed is not part of the material of the buoyant permeable reactive barrier. Rather, the biofilm claimed results from use of the buoyant reactive barrier; the biofilm forms when the barrier is on the top of a water source having components that react with the reactive barrier to form said biofilm. This water is the material worked upon and not considered part of the permeable reactive barrier. The claim, however, is an apparatus type claim. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Claims 13 and 14: the reactive barrier further comprises an adsorbent including active carbon, or other plant-material residue [0014, 0045].
Claim 17: the plurality of buoyant reactive barriers are hydrophobic [0017].
Claim 18: the particulate size is from nanometer size up to 1mm or more [0044, Claim 20].
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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Ingman et al. in view of Gencer et al (USP 10342189).
Claim 16: Ingman et al. do not teach a cordon of buoyant containment booms surrounding the plurality of buoyant reactive barrier elements.
Gencer et al. teach a floation bioremediation material for an aqueous environment comprising media particles floating on the surface of a water body contained by a barrier surrounding the particles (col. 11, 12-38). Containing the particles allows for control of placement of the particles and also prevents particulate from escaping and spreading too far.
One of ordinary skill in the art at the time of the invention would have found it obvious to include a cordon of buoyant containment booms surrounding Ingman et al.’s particles for the benefit of controlling and containing the particulate.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ingman et al.
Claim 19: the barrier comprises catalyst particles in addition to adsorbent including activated carbon [0014, 0045]. Ingman et al. do not teach the functional limitations of the materials as is recited in Claim 19. However, the functions are presumed inherent in Ingman et al.’s materials as Ingman et al.’s material is the same as claimed. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 20: The particulate size is from nanometer size up to 1mm or more [0044, Claim 20]. The particulates have a variety of sizes [0044] they do not specifically teach two sets of different particle sizes and those specific particle sizes. However, the particle size is clearly a result effective variable that Ingman et al. recognizes to be routinely varied by one of ordinary skill in the art through routine experimentation. “[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). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin 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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/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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