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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 12/2/2025.
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.
Claim(s) 1, 3-7, 10-11, and 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ren et al. Reductive degradation of perfluorooctanoic acid in complex water matrices by using the UV/sulfite process, Water Research Volume 205, 12 October 2021, 117676 in view of Shih et al. (US 2020/0189940).
Regarding claim 1, 3-7, and 11, Ren teaches removing nitrate from water containing PFAS (“In the presence of 1 mM nitrate, the degradation of PFOA was greatly inhibited in the first 2 h, as only 13% of PFOA was degraded and achieved 4% defluorination efficiency. Then, 99% of PFOA was degraded and achieved 52% defluorination efficiency in the 4 h reaction. This could be attributed to the fact that first all nitrate anions were consumed by hydrated electrons after which the degradation of PFOA started.” Pg. 13), combining water with a sensitizer/sulfite and a sufficient quantity of base/NaOH to increase the pH to up to 12, and irradiating mixture with UV light in a photo reactor to destroy a portion of the PFAS (pages 5-14).
Ren teaches that nitrate above a certain level prevents the desired degradation of PFAS. As such, one skilled in the art would have found it obvious to provide a nitrate removal step in order to reduce the nitrate to the desired concentrations. Shih teaches that nitrate removal means known in the art would include electrolytically removing nitrate via copper cathode and an anode that allows for generation of oxygen/oxidizes thereby promoting degradation of nitrate to nitrogen, wherein the electrolyte is sodium sulfate solution ([0052]-[0064]). One skilled in the art would have found it obvious to provide known nitrate removal steps/means as taught in Shih in order to remove the nitrate from the water stream before the desired PFAS destruction step. It is noted that nothing of record would indicate that sodium sulfate would be a salt that interferes with UV photolysis of PFAS.
Regarding claim 10, one skilled in the art would have found it obvious to provide the nitrate removal step prior to the UV step thereby allowing for the removing of nitrate to the most desirable amount for the UV/sulfite step consistent with Ren.
Regarding claim 21, Shih teaches that the electrolyte comprises sodium sulfate ([0054]).
Regarding claims 22-24, Shih teaches that the process is carried out in basic conditions with a pH of 9-12 ([0012]).
Claim(s) 12-14, 26, and 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ren et al. Reductive degradation of perfluorooctanoic acid in complex water matrices by using the UV/sulfite process, Water Research Volume 205, 12 October 2021, 117676 in view of Velin et al. (US 2004/0173471) and Xiong et al. (US 2022/0371920 in IDS).
Regarding claim 12, Ren teaches removing nitrate from water containing PFAS (“In the presence of 1 mM nitrate, the degradation of PFOA was greatly inhibited in the first 2 h, as only 13% of PFOA was degraded and achieved 4% defluorination efficiency. Then, 99% of PFOA was degraded and achieved 52% defluorination efficiency in the 4 h reaction. This could be attributed to the fact that first all nitrate anions were consumed by hydrated electrons after which the degradation of PFOA started.” Pg. 13), combining water with a sensitizer/sulfite and a sufficient quantity of base/NaOH to increase the pH to up to 12, and irradiating mixture with UV light in a photo reactor to destroy a portion of the PFAS (pages 5-14).
Ren teaches that nitrate above a certain level prevents the desired degradation of PFAS. As such, one skilled in the art would have found it obvious to provide a nitrate removal step in order to reduce the nitrate to the desired concentrations. Velin teaches that nitrate removal means known in the art would include electrolytically removing nitrate via copper cathode and an anode in a divided cell that allows for generation of oxygen/oxidizes thereby promoting degradation of nitrate to nitrogen, wherein the electrolyte is NaOH solution ([0010], [0037]-[0048]). One skilled in the art would have found it obvious to provide known nitrate removal steps/means as taught in Velin in order to remove the nitrate from the water stream before the desired PFAS destruction step. It is noted that nothing of record would indicate that NaOH would be a salt that interferes with UV photolysis of PFAS.
Ren teaches that the UV process is known to be carried out with UV/sulfite or UV/iodide (halide salt) but fails to teach the water containing PFAS is combined with both sulfide and iodide. Xiong teaches that for a UV process that removes PFAS, it is known to use both sulfite and iodide ([0018]). Therefore, one skilled in the art would have found it obvious to include both sulfite and iodide during the UV degradation process as such a combination is known and used in the art for the same purpose.
Regarding claim 13 and 29, Ren teaches that UV light is used and Xiong teaches that known usable wavelengths can include 200, 225, and 250 ([0014]). While Ren and Xiong do not teach the exact wavelength claimed, it would have been obvious to choose wavelengths near or within the Xiong values with reasonable expectation of success in doing so (Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Regarding claim 14, Ren fails to teach including an oxidizing step prior to the UV/sulfite step. Xiong teaches that it is beneficial to include an oxidizing step/persulfate before the UV/sulfite treatment in order to oxidize and degrade contaminants ([0044]). As such, one skilled in the art would have found it obvious to include an oxidizing step in order to oxidize and degrade contaminants prior to the UV/sulfite treatment.
Regarding claim 26, Velin teaches that the cathode is copper.
Regarding claim 30, Xiong teaches that UV lamps that could be used would include low pressure and medium pressure mercury UV lamps ([0043]).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ren et al. Reductive degradation of perfluorooctanoic acid in complex water matrices by using the UV/sulfite process, Water Research Volume 205, 12 October 2021, 117676 in view of Velin et al. (US 2004/0173471) and Xiong et al. (US 2022/0371920 in IDS) as applied to claim 14 above, and further in view of Scheitlin et al. (US 2023/0373824).
Regarding claim 15, as discussed in claim 14 above, Xiong teaches the inclusion of persulfates and Ren teaches the inclusion of acids or bases to achieve the desired pH levels. Xiong also teaches that increasing the temperature during the oxidizing step can help with the desired degradation of contaminants. It is noted that an increase in temperature usually accompanies an increase in pressure but such an effect would not be inherent. Scheitlin teaches that in degrading PFAS, an oxidizing step accompanied with an increase in temperature and pressure in order to better break down contaminants (claim 1). As such, one skilled in the art would have found it obvious to modify the oxidation step to explicitly include an increase in both temperature and pressure thereby improving degradation of the desired contaminants.
Claim(s) 27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ren et al. Reductive degradation of perfluorooctanoic acid in complex water matrices by using the UV/sulfite process, Water Research Volume 205, 12 October 2021, 117676 in view of Velin et al. (US 2004/0173471) and Xiong et al. (US 2022/0371920 in IDS) as applied to claim 12 above, and further in view of Ikematsu et al. (US 2004/0251212).
Regarding claims 27-28, Ren in view of Velin teaches copper cathodes but fails to teach a bimetallic or copper/iron cathode. Ikematsu teaches that nitrate removal means known in the art would include electrolytically removing nitrate via iron electrodes and an anode that allows for generation of oxygen thereby promoting degradation of nitrate to ammonia or nitrogen ([0183]-[0188]). As Velin and Ikematsu teaches similar electrolytic means to remove nitrate albeit different cathode materials, it would have been obvious to combine known equivalents for the same purpose to make the copper/iron cathode as claimed ("It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious); and In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (That the two claimed types of active agents, GABA-a agonists and ARBs, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine).
Allowable Subject Matter
Claim 25 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.
Response to Arguments
Applicant's arguments filed 12/2/2025 have been fully considered but they are not persuasive. It is noted that the Hilbrands declaration and Applicant arguments are based on the same basis so Examiner will address both at the same time. The declaration states that nitrate reduction is a complex matter and that Shih teaches that nitrate is formed so there is no basis for Shih reducing the nitrate concentrations. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the nitrate in Shih is formed from a reaction destroying ammonia nitrogen in water (abstract). There is no mention of ammonia nitrogen being present in the Ren reference, only a desire to reduce the nitrate levels so that the nitrate will not interfere with the UV PFAS degradation process. Shih clearly teaches in [0054] that the nitrate can be reduced at the cathode ([0054]). Shih further teaches that nitrate is removed at the cathode in [0044] and [0054]. Therefore, Shih teaches a clear solution to reducing the amount of nitrate in a solution is by reducing the nitrate at the cathode/copper cathode. Further, the Shis solution is the same solution provided by Applicant (claims 4-5, 12, and 26-27). Therefore, evidence would need to be provided on why the reduction would happen for Applicant but the same nitrate reduction method steps in Shih when applied to the Ren solution would yield different results. Lastly, Examiner notes the comparison of Fig. 8C to 9C providing a sufficient showing that the cathodes in Shih are capable of reducing or removing nitrate from a solution as the nitrate concentration in 9C is much higher than the ones for the Shih invention (Fig. 8c).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777