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 7/16/2026.
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) 1-12 and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daniels et al. (US 3,617,569 in IDS) in view of Misra et al. (US 6,197,201).
Regarding claim 1, Daniels teaches a method of treating water containing phosphate in an amount of 2 ppm to 1,000 ppm to remove the phosphate, the method comprising: determining the pH and/or alkalinity of the water; adding to the water at least one rare earth metal salt and at least one coagulant in a weight ratio, wherein a sufficient amount of the rare earth metal salt and the coagulant are added so that at least 50 wt.% of the phosphate is removed from the water (claims 1-2 and C4/L1-3-C6/L3).
It is noted that Daniels teaches the pH of the stream being treated is known and therefore Daniels either teaches the pH of the water to be determined, or it would have been obvious to do so in order to know the pH of the water to be treated.
Daniels teaches that coagulants/precipitants used have optimal pH ranges (C2/L38-55). Daniels fails to teach controlling the pH of the water to be within a range of 5 to 7.5. Misra teaches controlling the pH of the water to be within a target range of 5-7.5 (adjusted to a pH of 3-10 C6/L10-14, and most efficient for arsenic at a pH of 6-9 C11/L38-44). Therefore, it would have been obvious to provide a pH controlling step to be within the optimal treatment range of the compounds used to treat the water as claimed.
It is noted that Daniels teaches that a certain amount of coagulant and rare earth salt are added but fails to teach the broad ratio claimed. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." 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%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). As such, absent a showing of criticality, it would have been obvious to optimize the dosage to be somewhere within the broad ratio claimed as it is merely finding workable ranges.
Regarding claims 2 and 18-20, tables 2-3 of Daniels teaches that over 99% pf the phosphate is expected to be removed by their process.
Regarding claim 3, Daniels teaches that the coagulant as claimed is added at a ratio up to 4 times the amount of phosphate and the rare earth salt is added up to 2 times of the residual phosphate (claim 2). Based on an initial concentration of 13.7 mg/l of phosphate in example 1, that would amount to over 50 mg/l (50 ppm) of the chemicals being added based on the taught ratios.
Regarding claims 4-5, Misra teaches the pH is adjusted via an acid or base (C9/L10-13). It is inherent that the amount added be based on the determined amount or the pH would not reach the desired pH upon addition of the acid/base.
Regarding claim 6, Daniels teaches that the chemicals are added in a specific sequence and fails to teach the chemicals being added as a blend. Misra teaches that that treatment chemicals can be added together. One skilled in the art would have found it obvious to add the treatment chemicals together as part of a blend as it is merely changing the order of addition of treatment chemicals (Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Regarding claim 7, as discussed above, finding the optimal range of concentrations would have been an obvious matter to one skilled in the art.
Regarding claim 8, Daniels teaches that the coagulant/precipitant can be either the aluminum or iron salts claimed.
Regarding claim 9-11, Daniels teaches that some of the optimal pH ranges for the chemicals are within the ranges claimed.
Regarding claim 12, while Daniels teaches the use of lanthanum, it would have been obvious to use other rare earth salts with a reasonable expectation of success due to their similar properties especially as Misra teaches that cerium and lanthanum are used as equivalent treatment rare earth salts for wastewater stream (C5/L9-47).
Regarding claim 15, it is submitted that higher phosphate streams could be treated by the modified Daniels method leading to the concentration of the chemicals to overlap the claimed range. Further, as discussed above, optimization of concentrations would be an obvious matter to one skilled in the art.
Regarding claim 16, see claim 8 and 15 above.
Regarding claim 17, Daniels teaches that the water being treated has a concentration of 13.7 mg/l (13.7ppm).
Allowable Subject Matter
Claims 13-14 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.
Response to Arguments
Applicant's arguments filed 7/16/2026 have been fully considered but they are not persuasive. Applicant argues that the Djukanovic declaration submitted in the parent application provides a basis that the claimed ranges are critical and not obvious over the applied prior art. First, it should be noted that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). Further, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). In this case, the Djukanovic declaration in paragraph 5 explicitly states the evidence and his declaration is directed to specific ranges for pH (5-7) and rare earth metal salt/coagulant ratio (0.6-0.9). Later paragraphs and figures highlight that specific ratio and pH as well (paragraphs 5-8). As such, the argued criticality is directed to the ranges stated in the Djukanovic declaration and not extend beyond that to the pH ranges that are taught in the prior art and other ratio ranges (0.4-0.6) that are close to the ranges already taught in prior art. Thus, Applicant’s arguments that the claimed ranges are critical are not commensurate with the evidence provided ("objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support."). No evidence is provided that the criticality is provided over the entirety of the ranges claimed, only a portion of the ranges claimed and considered in the Djukanovic declaration.
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 1776
