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 .
Response to Arguments
Applicant's arguments filed 07/08/2026 regarding the Obviousness Double Patenting Rejection of claims 1, 3-10 and 13-26 over U.S. Patent 12,275,661, taken in combination, have been fully considered but they are not persuasive. No specific grounds of Argument are submitted, applicant merely requested that the rejection be reconsidered. It is submitted that such Rejection has been reconsidered and it is decided to maintain the Rejection.
Applicant’s arguments, filed 07/08/2026, with respect to the Rejection of claims 10 and 15-30 under 35 U.S.C. 112(b), regarding the claim amendments as having addressed the Rejection, have been fully considered and are persuasive. The 35 U.S.C. 112 (b) rejection of claims 10 and 15-30 regarding issues present with the original presentation of the claims has been dropped, however the amendments to claim 15, raise a new 112 (b) issue with regard to grammatical clarity, hence claim 15, and claims 16-20, dependent on claim 15 remain Rejected under 35 U.S.C. 112(b).
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 15-20 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 15, in the “wherein” clause, “wherein the anode comprising…” is grammatically confusing (“wherein the anode comprises…” is suggested).
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 1, 3-10 and 13-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-15 and 17-24 of U.S. Patent No. 12,275,661, taken in combination. The instant claims are diagrammed and compared against the claims of patent ‘661 as follows: (claims or claim portions of patent ‘661 are identified within the “( )” symbols.
1. A method of removing iodide from an aqueous solution (claim 1 preamble) comprising:
a. submerging an iodophilic electrode in a first aqueous solution containing iodide, wherein the iodophilic electrode is bound to a current collector (claim 1, “submerging” clause); then
b. applying current to the electrode to electrochemically oxidize the iodide to iodine and/or polyiodide within the electrode as a result of the applied current (claim 1, “applying a current” and “electrochemical oxidizing” clauses) ; then
c. submerging the electrode in a second aqueous solution (claim 13, “submerging” clause and claim 17, “after the step of electrochemically oxidizing” clause); and then
d. applying current to the electrode to reduce the iodine and/or polyiodide within the electrode to iodide and release the iodide into the second aqueous solution (claim 13, “applying a current” clause, and claim 17, “after the step of electrochemically oxidizing” clause ), wherein current in step d is in an opposite direction from current applied in step b (claims 14 and 15, specifically claim 15, last 2 lines and claim 17, “after the step of electrochemically oxidizing” clause).
3. The method of claim 1 wherein applying current in steps b and d creates a voltage at the electrode of 0.3 V or greater VS. a Ag/AgCl reference electrode (claim 3).
4. The method of claim 1 wherein the iodophilic electrode comprises:
an iodophilic material; and
an electrically conductive material (claim 4).
5. The method of claim 4 wherein the iodophilic material comprises cellulose, starch, a cationic polymer, polyvinyl alcohol, polyethylene glycol, polypropylene glycol, polyvinylpyrrolidone, polypyrrole, polyaniline, poly(3,4-ethylenedioxythiophene) a metallocene, a metallocene- containing polymer, or a cationic metal complex (claim 5).
6. The method of claim 4 wherein the iodophilic electrode further comprises a binder material (claim 6).
7. The method of claim 4 wherein the iodophilic material comprises a starch, chitosan, or carboxycellulose (claim 7).
8. The method of claim 4 wherein the iodophilic material comprises a cationic polymer (claim 8).
9. The method of claim 4 wherein the iodophilic material comprises an anion exchange membrane (claim 9).
10. The method of claim 4 wherein the electrically conductive material comprises graphite, graphene, carbon nanotubes, a conductive polymers, a doped semiconductors, or a metal (encompassed in claim 10).
13. The method of claim 6 wherein the binder material comprises polyvinylidenefluoride (PVDF), polyfluoroethylene (PTFE), styrenebutadiene rubber and/or polyamide (claim 11).
14. The method of claim 4 wherein the first aqueous solution comprises water which was previously treated by UV photolysis using iodide as a photosensitizer for the destruction of PFAS (claim 12).
15. A system for recovering iodine from an aqueous solution comprising (claim 18 preamble):
a first electrode comprising an anode, (encompassed within claim 18, “a first electrode” clause), the iodophilic electrode comprising:
a second electrode comprising a cathode (all encompassed within claim 18, “a first electrode” clause); and
an electrolyte configured to provide cation flow from the first electrode to the second electrode (claim 18, “an electrolyte” clause);
wherein the anode comprising an iodophilic electrode bound to a current collector (claim 1, “submerging” clause), the iodophilic electrode comprising an iodophilic material and a conductive material (claim 4).
16. The system of claim 15 wherein the iodophilic material comprises cellulose, starch, one or more cationic polymers, polyvinyl alcohol, polyethylene glycol, polypropylene glycol, polyvinylpyrrolidone, polypyrrole, polyaniline, poly(3,4-ethylenedioxythiophene) a metallocene, a metallocene-containing polymer, or a cationic metal complex (claim 19).
17. The system of claim 15 wherein the conductive material comprises graphite, graphene, carbon nanotubes, carbon cloth, conductive polymers, a doped semiconductors, or a metal (encompassed within claim 20).
18. The system of claim 15 wherein the electrolyte is configured to provide cation flow from the first electrode to the second electrode upon application of current to the system (claim 22).
19. The system of claim 18 further comprising a membrane separating the anode and the cathode (claim 23).
20. The system of claim 19 wherein the system comprises an electrolytic cell, and wherein the second electrode comprises an iodophilic electrode bound to a current collector (claim 24).
21. A system for recovering iodine from an aqueous solution (claim 18 preamble) comprising:
a first electrode comprising an anode (encompassed within claim 18, “a first electrode” clause);
a second electrode comprising a cathode (claim 18, clause concerning “second electrode”); and
an electrolyte configured to provide cation flow from the first electrode to the second electrode (claim 18 clause concerning “electrolyte”);
wherein the anode comprises an iodophilic electrode bound to a current collector (claim 1, “submerging” clause), the iodophilic electrode comprising;
a first material comprising a single material which is both an iodophilic material and a conductive material (claim 4); and
a second material comprising a binder (claim 6).
22. The system of claim 21 wherein the first material comprises polypyrrole, polyaniline, poly(3,4-ethylenedioxythiophene), a metallocene, a metallocene-containing polymer, graphite, graphene, carbon nanotubes, carbon cloth, or a cationic metal complex (encompassed in claims 19 and 20).
23. The system of claim 21 wherein the second material comprises polyvinylidenefluoride (PVDF), polyfluoroethylene (PTFE), styrenebutadiene rubber and/or polyamide (claim 21).
24. The system of claim 21 wherein the electrolyte is configured to provide cation flow from the first electrode to the second electrode upon application of current to the system (claim 22).
25. The system of claim 24 wherein further comprising a membrane separating the anode and the cathode (claim 23).
26. The system of claim 25 wherein the system comprises an electrolytic cell, and wherein the second electrode comprises an iodophilic electrode bound to a current collector (claim 24).
Instant method claims 1, 3-10, 13 and 14 substantially differ from claims 1, 3-15 and 17 of patent ‘661 by way of a portion of the limitations of instant independent claim 1, being present in respective dependent claims of ‘661. Hence, these instant method claims are obvious over these claims of patent ‘661, taken in combination.
Instant claims 15-26 differ from claims 18-24 of patent ‘661 only by omission of reciting the system comprising a “binder”. Hence, the systems described by the broader respective instant claims are an obvious genus to the narrower species claims of patent ‘661.
Allowable Subject Matter
Claims 1, 3-10 and 13-26 would be allowable if rewritten or amended to overcome the respective rejections under Obviousness Double Patenting and for claims 15-20, also the rejection under U.S.C. 112(b) set forth in this Office action.
Claim 1 would distinguish and be non-obvious over all of the prior art in view of recitation of the combination of limitations described in the method claims of “A method of removing iodide from an aqueous solution comprising:
a. submerging an iodophilic electrode in a first aqueous solution containing iodide, wherein the iodophilic electrode is bound to a current collector; then
b. applying current to the electrode to electrochemically oxidize the iodide to iodine and/or polyiodide within the electrode as a result of the applied current; then
c. submerging the electrode in a second aqueous solution; and then
d. applying current to the electrode to reduce the iodine and/or polyiodide within the electrode to iodide and release the iodide into the second aqueous solution, wherein current in step d is in an opposite direction from current applied in step b.
The closest prior art is deemed to be represented by the English translation of patent publication CN111530510 (‘510), Zhou et al patent 5,804,057 (Zhou), and Park et al PGPUBS Document US 2015/0021185 (Park), all made of record during the prosecution history of parent application 18/771,337, which matured into patent 12,275,661, and Cohen et al PGPUBS Document US 2020/0385291 (Cohen), newly made of record and considered during searching for the claims of the instant application.
Publication ‘510 and Zhou together teach a method for removing iodide from an aqueous solution utilizing a submerged iodophilic electrode in an aqueous solution containing iodide and applying current to the electrode to electrochemically oxidize the iodide to iodine as a result of the applied current, as claimed.
However, neither publication ‘510, nor Zhou, teach or suggest wherein the iodophilic electrode is bound to a current collector, nor the limitations of c. submerging the electrode in a second aqueous solution; and then d. applying current to the electrode to reduce the iodine and/or polyiodide within the electrode to iodide and release the iodide into the second aqueous solution, wherein current in step d is in an opposite direction from current applied in step b.
Park and Cohen cumulatively teach water treatment in which iodide, iodine and/or bromide ions are first oxidized by current applied to an electrode, in proximity to a current collector, followed by applying current to the electrode to reduce the generated iodine by reversing of current flow to an electrode and locating of an electrochemical electrode in proximity to a current collector. However, Park and Cohen describe methods and systems which remove the generated iodine from water by mechanisms requiring absorption to the electrode surface, whereas publication ‘510 and Zhou concern electrodes generating current to oxidize the iodide present in systems where the iodide oxidized to iodine remains in the flow of aqueous solution.
Hence, Park and Cohen do not provide reasonable motivation to modify the method or system of ‘510 and/or Zhou, to bind an iodophilic electrode to a current collector.
Additionally, none of the prior art teaches or suggests applying current to the electrode to reduce the iodine and/or polyiodide within the electrode to iodide with current being in an opposite direction from current applied during the electrochemical oxidation step, and also being accompanied by release of the iodide into a second aqueous solution.
Claims 3-10, 13 and 14 are deemed to be distinguished and non-obvious over all of the prior art in view of their respective direct or indirect dependence from independent claim 1 which is deemed to be distinguished and non-obvious over all of the prior art.
Each of independent claims 15 and 21 would distinguish and be non-obvious over all of the prior art in view of recitation of a system for recovering iodine from an aqueous solution comprising the combination of limitations of: a first electrode comprising an anode, the anode comprising an iodophilic electrode bound to a current collector, the iodophilic electrode comprising: an iodophilic material and a conductive material; a second electrode comprising a cathode; and a second electrode comprising a cathode, and which further comprises an electrolyte configured to provide cation flow from the first electrode to the second electrode..
The closest prior art is again deemed to be represented by the English translation of patent publication CN111530510 (‘510), Zhou et al patent 5,804,057 (Zhou), and Park et al PGPUBS Document US 2015/0021185 (Park), all made of record during the prosecution history of parent application 18/771,337, which matured into patent 12,275,661, and Cohen et al PGPUBS Document US 2020/0385291 (Cohen), newly made of record and considered during searching for the claims of the instant application.
Publication ‘510 and Zhou together teach a system for recovering iodine from an aqueous solution utilizing a first, submerged iodophilic electrode having conductive material, which may be an anode, in an aqueous solution containing iodide or iodine, such electrode, and applying current to the electrode to electrochemically oxidize the iodide to iodine as a result of the applied current, as claimed. However, neither ‘510 nor Zhou suggest a first electrode which is bound to a current collector.
Park and Cohen cumulatively teach water treatment in which iodide, iodine and/or bromide ions are first oxidized by current applied to an electrode, in proximity to a current collector, followed by applying current to the electrode to reduce the generated iodine by reversing of current flow to an electrode and locating of an electrochemical electrode in proximity to a current collector.
However, Park and Cohen describe systems which teach away from providing the claim limitation of an electrolyte configured to provide cation flow from first to second electrode, by requiring electrically insulating spacers either between electrode and current collector, or between the electrodes which would prevent the claimed current flow.
Hence, Park and Cohen do not provide reasonable motivation to modify the system of ‘510 and/or Zhou, to modify the system so as to bind the iodophilic electrode to a current collector in combination with an electrolyte configured to provide cation flow from the first electrode to the second electrode.
Claims 16-20 and 22-30 are deemed to be distinguished and non-obvious over all of the prior art in view of their respective direct or indirect dependence from independent claim 15 or 21, respectfully, which is deemed to be distinguished and non-obvious over all of the prior art.
Claims 2, 11, 12 and 27-30 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, in view of their respective direct or indirect dependence from independent claims 1 and 21, respectively which are deemed to be respectfully distinguished and non-obvious over all of the prior art.
. Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Parkey et al PGPUBS Document US 2020/0024159 is of interest as a desalination device with anode and cathode configured to desalinate and reduce salinity of water treated, in a system having a current collector.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Primary Examiner Joseph Drodge at his direct government phone number 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.
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 telephone number, for official, formal communications, for the examining group where this application is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from the Patent Examiner. Unpublished application information in Patent Center is available to registered users. Visit https:///www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https:///www.uspto.gov/patents/apply/patents/docx for information about filing in DOCX format. For additional questions contact the Electronic Business Center EBC) at 866-217-9197 (toll free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (in USA or Canada) or 571-272-1000.
JWD
07/18/2026
/JOSEPH W DRODGE/ Primary Examiner, Art Unit 1773
Prosecution Insights