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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 37-43, drawn to a method of destroying PFAS contaminants in an aqueous mixture by reacting in an SCWO reactor, while supplying an electron flood, classified in 210/760 (CPC subgroup C02F1/72).
II. Claims 44-48, drawn to a method of handling effluent from a process of destroying PFAS contaminants by filtering and/or centrifuging effluent precipitates and/or treating the effluent by flashing, evaporating and/or spray drying , classified in 210/767 (CPC subgroup C02F1/001).
III. Claim 49, drawn to a method of destroying PFAS contaminants by passing through a plurality of electrodes, followed by reacting formed HF with an alkali or alkaline earth element, classified in 210/748.01 (CPC subgroup C02F1/46109).
The inventions are independent or distinct, each from the other because:
Inventions I, II and III are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as in an effluent treatment process, not employing any of the separation steps of filtering and/or centrifuging effluent precipitates and/or treating the effluent by flashing, evaporating and/or spray drying as required by subcombination II or reacting formed HF with an alkali or alkaline earth element as required by subcombination III.
In addition, subcombination II has separate utility by not reciting effluent treatment with a SCWO reactor as in subcombination I or reacting formed HF with an alkali or alkaline earth element as required by subcombination III.
In addition, subcombination III has separate utility by not reciting effluent treatment with a SCWO reactor as in subcombination I and by not employing any of the separation steps of filtering and/or centrifuging effluent precipitates and/or treating the effluent by flashing, evaporating and/or spray drying as required by subcombination II. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
In the instant case, a serious and examination burden exists because the respective inventions require substantial searching not required by either of the other two respective inventions, and the three distinct inventions would require consideration and applying of distinct, different combinations of prior art references.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Frank Rosenberg on 12/12/2025, a provisional election was made without traverse to prosecute the invention of Group II, claims 44-48. Affirmation of this election must be made by applicant in replying to this Office action. Claims 37-43 and 49 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Double Patenting
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 44, 45 and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 12, 14 and 15 of U.S. Patent No. 12,371,358, the claims being commonly owned by the same assignee and having overlapping co-inventorship with there being a plurality of common inventors with respect to each of the present application and patent ‘358.
Although the claims at issue are not identical, they are not patentably distinct from each other because they commonly, substantially recite the same method step limitations as presented in the following side-by-side comparison of the instant claims and the claims of ‘358, taken in combination:
44. A method of handling effluent from a process of destroying treating effluent containing PFAS (‘358, claim 11 preamble and claim 12 preamble), comprising:
the effluent comprising the decomposition products of PFAS (inherent from ‘358, claim 11 and 12 preambles reciting “destroying PFAS”, necessarily producing “decomposition products”); and
filtering and/or centrifuging precipitates from the effluent (‘358, claim 14); or
flashing and/or evaporating the effluent (‘358, claim 11 and 12 clauses concerning “the effluent comprises a vapor stream…separating the vapor stream from a liquid stream”, thus “evaporating the effluent”);
or spray drying the effluent (‘358, claim 11 “treating the effluent…by spray drying”); or
any combination of these (claims 14 and 15 reciting combinations of effluent separation steps).
45. The method of claim 44, further comprising subjecting the effluent to reverse osmosis (‘358, claims 14 and 15 clauses reciting “treating by reverse osmosis”).
48. The method of claim 44, further comprising passing the effluent through a sorbent (‘358, claims 14 and 15 clauses reciting “passing…effluent through activated carbon or ion exchange resin”, thus inherently passing the effluent through a sorbent).
The instant claims substantially differ from the claims of ‘358, only by reciting the effluent as having “decomposition products of PFAS”. However, presence of such decomposition products is an inherent result of “destroying PFAS”.
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.
Claims 44-48 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 44, “the decomposition products of PFAS” lacks antecedent basis and it is unclear if such products are from the same PFAS material which are recited as destroyed in the claim preamble; and
it is unclear whether “combination of these” refers to all of the preceding optional effluent treatment steps of filtering, centrifuging, flashing, evaporating and spray drying.
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 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.
Claims 44-46 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over McWayne et al PGPUBS Document US 2019/0352192 (McWayne) in view of Strathmann et al PGPUBS Document US 2020/0155885 (Strathmann). Referenced paragraph numbers of the Specification or Description of the applied PGPUBS Documents are identified by “[ ]” symbols.
For independent claim 44, McWayne discloses: A method of handling effluent from a process of treating effluent containing PFAS and varied other contaminants ([0004 concerning treatment of water containing PFOA and PFAS-type PFAS contaminants, among other types of diverse organic and inorganic contaminants], the treatment including supercritical water oxidization or wet oxidation ([0005], [0036]) comprising:
additional treatment of the effluent; and
filtering and/or centrifuging precipitates from the effluent; or
flashing and/or evaporating the effluent;
or spray drying the effluent; or
any combination of these ([0005 and 0036 concerning the additional treatment encompassing one or more of filtering, centrifuging, and evaporating] and [0005, 0022 and 0036 concerning there being any of selected flow paths between treatment equipment units, depending on placement of inlet/outlet ports and conduits]).
McWayne lacks any disclosure of the effluent as comprising the decomposition products of PFAS. McWayne however, does disclose treating effluent containing PFAS by supercritical oxidation or wet oxidation [0004].
Strathmann teaches treating effluent containing PFAS by subcritical, or near-critical oxidation so that the kinetics of the oxidation promote destruction and decomposition of PFOS constituents of the PFAS and transformation of the PFAS, as well as byproducts ([0043, 0044 and 0047 regarding the treatment including such oxidation] and [0044-0046 regarding producing of decomposition products from the treatment, and by chemical conversion], and [0075 regarding destruction and defluorination of PFASs]).
Strathmann in [0041] teaches motivation for such oxidation of the PFAS, as concerning enabling of safe, on-site disposal of the PFAS waste, not requiring high energy-consuming processes such as high temperature incineration and thermal treatment options.
Thus, it would have been obvious to one of ordinary skill in the art of treating effluent from water which is contaminated with PFAS, or specifically with PFOS, to have conducted the oxidation of the PFAS-containing effluent disclosed by McWayne, in such manner as to generate decomposition products, as taught by Strathmann, in order to facilitate safe on-site disposal of PFAS-containing waste, not requiring high energy-consuming processes such as high temperature incineration and thermal treatment options.
For claim 45, McWayne further discloses: further subjecting the effluent to reverse osmosis [0036 “water treatment equipment…may include a reverse osmosis filter”].
For claim 46, Strathmann further teaches passing effluent through a heat exchanger, wherein heat from the effluent is transferred to an aqueous PFAS mixture entering a SCWO reactor or system [0047 re reactors including or being in fluid communication with filters, heat exchangers and temperature and pressure controllers].
For claim 48, McWayne further discloses passing the effluent through a sorbent [0029 re treatment including by filter media such as activated carbon or zeolite, thus absorbing or adsorbing water treatment.
Claim 47 is rejected under 35 U.S.C. 103 as being unpatentable over McWayne et al PGPUBS Document US 2019/0352192 (McWayne) in view of Strathmann et al PGPUBS Document US 2020/0155885 (Strathmann), as applied to claims 44-46 and 48 above, and further in view of Haase PGPUBS Document US 2003/0132167 (Haase). Referenced paragraph numbers of the Specification or Description of the applied PGPUBS Documents are identified by “[ ]” symbols.
Claim 47 further differs from McWayne by requiring the method comprising adding chelating agents to the effluent. McWayne discloses the effluent treated to including widely varied organic, biological and inorganic type contaminants, and including agricultural run-off and heavy metals [0004] by treatment including electrocoagulation, gravity separation, or a plate separator [0036].
Haase teaches treatment of water having varied organic and inorganic contaminants [0003], the treatment including addition of chelants for complexing many cations including hardness and heavy metal contaminants in the water, preventing their deposition on water treatment-handling system components [0070].
It would have thus been further obvious to the skilled artisan to have modified the McWayne water treatment method to have included addition of chelants, as taught by Haase, so as to complex cations including heavy metal contaminants in the water, preventing their deposition on water-treatment handling system components, thus better assuring continuous water flow and continuous water operation through the water treatment system of McWayne.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nickelsen et al PGPUBS Document US 2017/0297926 teaches water treatment to remove PFAS contaminants including treatment with anion exchange vessels, in combination with membrane, filtration, evaporation and distillation separation. Additional somewhat related recently issued patents by the co-inventors are also made of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner Joseph Drodge at his direct government telephone number of 571-272-1140. The examiner can normally be reached on Monday-Friday from approximately 8:00 AM to 1:00PM and 2:30 PM to 5:30 PM.
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 are unsuccessful, the examiner' s supervisor, Benjamin Lebron, of Technology Center Unit 1773, can reached at 571-272-0475.
The formal facsimile phone number, for official, formal communications, for the examining group where this application is assigned is 571-273-8300.
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JWD
12/17/2025
/JOSEPH W DRODGE/ Primary Examiner, Art Unit 1773