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 .
Terminal Disclaimer
The terminal disclaimer filed 4/01/2026 has not been approved for the following reason (see the DISQ document dated 7/01/2026):
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Response to Amendment
The amendment filed 4/01/2026 has been entered. Claims 1-18 are pending in the application. Statutory double patenting rejection of claim 9 has been withdrawn in view of the amendment.
Response to Arguments
Applicant's arguments filed 4/01/2026 have been fully considered but they are not persuasive regarding the art rejections of record.
Regarding the teachings of Franke and removal of competing anions, applicant’s arguments are not commensurate in scope with the rejection of record. The rejection of record cites [Table 1] of Franke, reproduced below for clarity; the remarks traversing the rejection refer instead to Figure 1 of Franke. As set forth clearly in [Table 1] of Franke, the nanofiltration step carried out by Frank separates many competing anions from the feed and passes them through to membrane permeate while in the process of concentrating the PFAS feed for subsequent adsorption. As an example, around half of the chloride and nitrate anions pass through the membrane i.e. are separated from the PFAS concentrate. This satisfies the broadest reasonable interpretation of the claim requirements; even if it is argued that these results are incidental and not the purpose of Franke’s process, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). This does not constitute a teaching away from such behavior because the process explicitly exhibits the behavior at least to an extent, as explained in the [Table 1] data.
Regarding the argument that Franke fails to satisfy the requirements of increasing the treatment capacity of the ion exchange resin, Franke explicitly identifies that the use of nanofiltration in combination with the GAC and AIX “increases the efficiency of the adsorbent materials” relative to equivalent systems that omit nanofiltration [Abs]. As above, whether Franke identifies the same reason for this improvement is not the basis for patentability, because Franke positively teaches the necessary process steps already.
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Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-31 of U.S. Patent No. 12,240,771 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent claims include all of the subject matter of the instant claims, with reference claim 1 being narrower in scope than instant claim 1 (as it is currently understood to represent a combination of the subject matter of instant claims 1 and 9 in combination).
Reference claim 17 corresponds to the subject matter or at minimum renders obvious the subject matter of instant claims 1 and 7-9. Reference claims 18-22 correspond to instant claims 2-6 respectively. Reference claims 23-31 correspond to the subject matter of instant claims 10-18 respectively.
Claim Rejections - 35 USC § 102
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 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, 2, 4, 5, 13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Franke et al (Efficient removal of PFAS in drinking water treatment…, Environ. Sci.: Water Res. Technol., 2019).
With respect to claim 1, Franke teaches methods for treatment of water e.g. to remove PFAS, and teaches removal using adsorbent materials such as active carbon or anion exchange resins, and teaches that the capacity of these resins may be improved by first concentrating the PFAS using nanofiltration [Abs]. Regarding separation of competing anions, Franke teaches that the NF rejects the majority of PFAS (e.g. 99%) including very small species relative to the membrane pores, and further that at least some competing ions are permeated through the membrane [Table 1], such that the process would satisfy the broadest reasonable interpretation of the claim requirements. Further, as above, Franke teaches that the process operates such that the treatment capacity of the anion exchange resin increases, because the act of concentrating is shown to increase the ability of the resin to remove PFAS relative to a given resin volume [Abs].
Separating competing anions can therefore be read on the taught nanofiltration step, and removing PFAS from a flow having a majority of the PFAS therein can be read on the taught adsorbent step, such that the taught method anticipates the broadest reasonable interpretation of the claimed invention.
With respect to claim 2, Franke discusses the use of regenerable adsorbents [pg. 1836, “Water Impact” inset; pg. 1841, right column, 2nd paragraph].
With respect to claims 4 and 5, as above Franke teaches nanofiltration.
With respect to claim 13, Franke teaches streams involving at least nitrate (NO3-), sulfate (SO42-), and bicarbonate (HCO3-), with nitrate in particular permeating the nanofiltration membrane for significant separation [Table 1].
With respect to claim 16, Franke identifies contaminated groundwater as a particularly important source of PFAS contamination relevant to the taught method (i.e. as a source of drinking water) [pg. 1836, right column].
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Franke et al in view of Boodoo et al (Polishing PFAS to Non-Detect Levels with PFAS-Selective Resin – Purolite, 2019).
Franke teaches as above but is silent to a resin that is single-use.
However, Boodoo teaches a case study for PFAS removal from a particular site using adsorbents, including PFAS-selective anion exchange resin [Abs] to meet a “non-detect” level target. The specific resin employed was Purolite PFA694E [pg. 4] and further that the resin was effective even in the absence of other sorbents e.g. GAC [Conclusion].
It would have been obvious to one of ordinary skill in the art to employ a resin known and demonstrated to be useful for PFAS removal such as the PFA694E as in Purolite’s case study, to provide effective PFAS removal in Franke’s taught system. As currently understood, Purolite PFA694E represents a single-use resin, as described by the instant specification [pg. 8].
See also MPEP 2143 I.B; a simple substitution of one known anion exchange resin for another, known to be useful for removal of PFAS or the like, would have been obvious to one of ordinary skill in the art.
Claims 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Franke et al in view of Roelen et al (US PGPub 2014/0048490 A1).
Franke teaches as above but is silent to the use of an ultrafiltration subsystem as part of the separation, or to treatment of industrial wastewaters.
However, Roelen teaches removal of fluoropolymer wastes including e.g. fluoroether carboxylic acids or salts [Abs, 0009] which would be understood to represent a class of PFAS, and teaches that the process may include pretreatment by filtration followed by treatment with a sorbent material such as GAC or anion exchange resin. In embodiments, the pretreatment can include ultrafiltration and/or nanofiltration, e.g. to remove larger debris and substances and then to concentrate the PFAS for sorbent removal [0001, 0060-0061]. Roelen teaches that the sources of water being treated are industrial wastewaters from e.g. coating processes and resin manufacture and the like [0003].
It would have been obvious to one of ordinary skill in the art to employ an ultrafiltration subsystem as part of the separation in Franke’s taught system to allow for removal of larger solids and the like as in Roelen, as part of a larger system involving e.g. anion exchange removal of PFAS or the like.
Similarly, it would have been obvious to apply the process of Franke to industrial wastewaters such as those suggested by Roelen for which fluorosurfactants and similar contaminants may be present.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Franke et al in view of Chen et al (WO 2020/247029 A1).
With respect to claim 7, Franke teaches as above but is silent to foam fractionation as part of the separation.
However, Chen teaches systems for treating water contaminated with PFAS including both separation stages and elimination stages [Abs] and teaches that separation stages may be selected from options including nanofiltration and foam fractionation [pg. 4, lines 20-24]. Chen teaches that foam fractionation acts under injection of gas bubbles to form foam onto which charged groups in PFAS adsorb, forming a surface layer which may be removed, and that any gas may be used but that some oxidizing gases such as ozone may be employed [pg. 13, line 20-page. 14, line 2].
It would have been obvious to one of ordinary skill in the art to provide a foam fractionation unit in Franke’s taught system, either in place of or in combination with the nanofiltration, to provide effective removal of PFAS including e.g. optional oxidation treatment, effective for systems aiming for e.g. 99% removal of PFAS such as those taught by Chen. See further MPEP 2143 I.A and I.B; a combination of known PFAS separation methods, or a simple substitution of one known separation method for another, would have been obvious to one of ordinary skill in the art.
With respect to claim 8, as above Chen teaches that injection of bubbles, and formation of foam onto which PFAS can adsorb, are the desired purpose of foam fractionation. As such, absent clarification of specific requirements, increasing the production of microbubbles and foam represent an obvious operation of the fractionation process i.e. to levels effective to accomplish the intended separation. The instant claim language does not require any particular level of “increase” or any baseline over which the increase occurs.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Franke et al in view of Chen et al, optionally further in view of Criswell (US 3,969,336).
Franke and Chen teach as above. Because the purpose of treatment in Chen is to separate and then eliminate e.g. 99% of PFAS, at minimum conversion of the separated foam into liquid which may then be processed in a PFAS elimination stage is implicit to the suggested system.
Additionally or alternatively, see Criswell, which teaches separation and recovery of materials using foam fractionation [Abs, Fig. 1] and teaches that foam may be recovered in troughs or weirs which are connected to suitable tubing, as well as liquid traps connected to vacuum, which allow for recovery of liquid waste [Col. 4 lines 8-37]. As such, even if conversion back to liquid is not considered implicit to Chen’s suggested design, at minimum such conversion would have been obvious in view of Criswell, which teaches how foam may be removed from a foam fractionation device, and suitable tubing and traps to recover waste liquid.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Franke et al in view of Chen et al (or Franke et al in view of Chen et al and Criswell), further in view of Yu (CN 205287573 U).
Franke and Chen (and Criswell) teach as above but are silent to the heating of the foam.
However, Yu teaches foam fractionation units [0002, 0004] for broad applications and teaches improving the system through integration of a heater which overcomes prior art issues related to subsequent defoaming after separation [0005, 0007-0008]. Yu teaches generally that the control of heat and jacket overall increase the control and efficiency of the system, improving the cost [0014].
It would have been obvious to one of ordinary skill in the art to integrate a heater into the combined system of Franke and Chen because, as in Yu, such a heater can improve the efficiency of a foam fractionation unit and reduce costs. Whether such heater is specifically used to enhance the transformation of foam into liquid after separation is drawn to the intended use of the claimed device but, regardless, Yu already suggests that the improvements, in part, are aimed at overcoming difficulties in the prior art of defoaming.
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Franke et al in view of Duckworth et al (WO 2021/042175 A1).
Franke teaches PFAS removal from e.g. groundwater as above but is silent specifically to landfill leachate as a source, or to the use of a supplemental surfactant to enhance removal.
However, Duckworth teaches a low energy method of treating contaminated waste including removal of PFAS [Abs] and teaches that leachate from landfills or the like is a particularly difficult class of water to treat [pg. 1, lines 16-29; pg. 2 lines 5-14] and in which PFAS may accumulate. Part of the treatment may include an aeration e.g. a foam fractionation treatment, and Duckworth teaches adding a co-surfactant to the stream during aeration to enhance bubble stability and therefore PFAS adsorption [pg. 14, lines 15-19].
It would have been obvious to one of ordinary skill in the art to employ the process of Franke to treat landfill leachate because, as in Duckworth, such leachate is an important, difficult-to-treat source of contaminated water including that with PFAS contamination. Further, as in Duckworth, it would have been obvious to employ additional treatment including surfactants and aeration to assist in separations involving heavily contaminated streams.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Franke et al in (Or Franke et al view of Chen et al) in view of Li et al (PFOA removal by flotation with cationic surfactants, Chemosphere, 2021).
Franke teaches as above but is silent to the use of surfactants such as cationic surfactants to enhance removal. As above, Chen teaches foam fractionation to enhance separation of PFAS before separation but is also silent to surfactants.
However, Li teaches separation of PFAS (specifically, PFOA) via a foam fractionation process, and teaches enhancing the process with the use of cationic surfactants, examining various species, teaching that cationic surfactants are specifically useful because PFOA are themselves anionic [Abs, pg. 2, left column, pg. 7, Conclusions].
It would have been obvious to one of ordinary skill in the art to employ cationic surfactants and foam fractionation or similar in the process taught by Franke to enhance separation of PFAS from the source streams as suggested by Li.
Allowable Subject Matter
No claims may be allowed until the double patenting rejections above are overcome. However, as understood, claims 9 and 10 are free from the prior art. The closest prior art regarding foam fractionation is discussed by Chen, Criswell, and Yu, as above. The prior art alone or in combination does not teach the specific flow details required by claim 9, receiving two-phase flow and inducing rotational movement. As such, claims 9 and 10 are free from the prior art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
Examiner interviews are available via telephone, in-person, and 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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (571)270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1777
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