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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/721,662 application filed on June 19, 2024. Claims 1, 2, 4 and 6 are pending and have been fully considered. All claims are directed toward a method.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 6/19/2024, 04/09/2025, 10/09/2025, 01/12/2026, 03/11/2025 and 06/22/2026. Please refer to the signed copy of the PTO-1449 form attached herewith.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 1, 2, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Endo (JP2014176799) in view of Suzuki et al. (JP2019122943; Suzuki) (IDS of 06-19-2024)( English Machine Translation is referenced below).
Regarding claims 1, 2, 4 and 6, Endo discloses a method for suppressing microorganism fouling in a water system (Abstract, [0001]-[0067]), comprising:
adding a reducing agent (
¶
¶
11, 12, 14, 40); and
adding a stabilized chlorine-based oxidizing agent composed of a chlorine-based oxidizing agent and a sulfamic acid compound (
¶
¶
17-22) and/or a stabilized bromine-based oxidizing agent composed of a bromine-based oxidizing agent and a sulfamic acid compound, with a ratio of the sulfamic acid compound to 1 mole of effective chlorine conversion amount of the bromine-based oxidizing agent being 1 to 1.5 moles to the water system that contains the reducing agent (this portion is interpreted as optional), to the water system that contains the reducing agent ([0040]),
characterized in that
a concentration of the reducing agent in the water system is 0.01 mg/L-Cl2 or more to 5 mg/L-Cl2 or less ([0061]), and
an addition concentration of the stabilized chlorine-based oxidizing agent and/or the stabilized bromine-based oxidizing agent relative to a concentration of the reducing agent in the water system is 0.2 - 1 in molar ratio ([0043]).
Therefore, Endo discloses the claimed invention, except wherein
a ratio of the sulfamic acid compound to 1 mole of effective chlorine of the chlorine-based oxidizing agent is 1 to 1.5 moles ([0024]); and
the ratio of oxidizing agent to the reducing agent is 2.5 times to 10 times in molar ratio.
Suzuki discloses a water treatment method capable of improving the bactericidal performance of a bactericide in a pH range of 4 or more and 7 or less in water treatment for treating treated water using a separation membrane (Abstract). A water treatment method for treating water to be treated using a separation membrane, in which a bactericidal agent containing a chlorine-based oxidizing agent and a sulfamic acid compound is present in the water supply of the separation membrane, and the molar ratio between the chlorine-based oxidizing agent and the sulfamic acid compound is 1 :1 to 1 :1.5 (Id.). Suzuki notes that disinfecting performance is improved if the disinfectant used has a molar ratio of chlorine-based oxidant to sulfamic acid compound ranging from 1: 1 to 1: 1.5 (Examples 1-3, tables 1 and 2, [0060], etc.).
Regarding item i), Endo discloses that the use of 0.5-2.0 moles of a sulfamic acid compound to 1 mole of available chlorine is preferred with a chlorine oxidant ([0024]). Examiner notes that Endo’s range of 0.5 to 2 overlaps the claimed range of 1–1.5. Since the Endo range overlaps the claimed range with sufficient specificity, a prima facie case of obviousness exists.
Moreover, given Suzuki’s disclosure, at the time of the effective filing of the claimed invention, one of ordinary skill in the art would have found it obvious to routinely experiment with alternate ranges and to adopt a range of ratio of 1-1.5 moles of a sulfamic acid compound to 1 mole of available chlorine when using a chlorine oxidant.
Regarding item ii), the ratio of oxidizing agent to reducing agent and their relative concentrations are known to be important factors that one can optimize during routine experimentation. Endo’s Example 2 shows that a chlorosulfamate oxidant is added such that the concentration thereof is 20 mg/L, and that 2.4 mg/L of NaHSO3 are added as a reducing agent.
Therefore, to the extent that Endo’s ratio of oxidizing agent to reducing agent is not already within the claimed range, when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to routinely experiment to achieve a suitable range such as the recited range.
Additional Disclosures Included: Claim 2: The water system is a reverse osmosis membrane water supply system (Endo, Abstract); Claims 4 and 6: The reducing agent is sodium bisulfite (Endo, [0005], [0061]).
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAYDEN BREWSTER/Examiner, AU 1779
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