DETAILED ACTION
This Office action is in response to the amendment filed on September 15th, 2025. Claims 1-5 are pending.
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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder “structure” that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “internal structure that causes working substance traveling through the tube to travel an overall distance through the tube that is longer than the length of the tube” in claims 1-5 and “a second internal structure that further directs the working substance around the internal periphery of the tube as it flows along the length of the tube” in claims 2 & 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
In particular, the first internal structure that causes working substance traveling through the tube to travel an overall distance through the tube that is longer than the length of the tube is being interpreted to cover the internal structures of fig. 4, including the gates 450, the ribbon of twisting material 462,464, and the internal tube structures 482, 485, 483, and 486.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites two internal structures comprising ‘a rib formed along the internal surface of the tube that runs the length of the tube in a constant twisting manner, … the first and second internal structures being arranged on substantially opposite internal surfaces of the tube’. The original disclosure does not include such a structure. Two embodiments appear to have features that correlate somewhat with this limitation. Device 460, which includes a ribbon of material that runs through the tube in a constant twisting manner, but runs through the center of the tube rather than along an internal surface, and is never disclosed to be used with a second internal structure arranged substantially opposite. And devices 470 and 480, which include tubes or channels that run along the surface in a constant twisting manner on opposite internal surfaces but are clearly not ribs. If it is applicant's intent to claim one those embodiments, the claim language needs to be clarified to clearly describe either a central structure running through the tube or a channel along the internal surface (or if neither is intended, to clarify what is intended or point to a structure that meets the limitations as claimed).
It is noted that claim 4 was indicated allowable in the last Office action (dated 03/13/2025). If applicant were to return to the language reciting sub-channels rather than ribs the claim would still be allowable, provided the indefinite language relating to resistivity were removed.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a tube having a “resistivity … less than 0.1cmH20.” Resistance is a term used in the art of fluid dynamics to describe resistance to flow, but in that context carries units of pressure divided by flow, that is, using the cm water units for pressure, cmH2O/L/sec. We would therefore expect resistivity in this context to have units of cmH2O/cm/sec, assuming resistivity is resistance divided by area (L being a volume measurement equivalent to 1000 cm3, which if divided by area in units of cm2 leaves cm). It is therefore unclear how a resistivity value claimed in units of pressure relates to the known meaning of the term.
In the remarks filed on September 15th, 2025, applicant has stated that “artisans routinely express the pressure drop across a conduit in cmH20 at nominal operating flow”. This suggests that applicant is trying to claim a pressure differential, rather than a resistivity. The units are correct for a pressure drop. Therefore, examiner believes what applicant actually intends to claim is “wherein the (pressure drop across) the tube is less than 0.1cmH2O”.
However, the pressure drop across a given conduit is dependent not only on features of the conduit (in particular pipe cross-sectional area and length, and in the turbulent regime, friction, see Hagen–Poiseuille equation and Darcy-Weisbach equations for information on how pressure drop across a conduit is determined) but also on fluid factors such as flow rate and fluid viscosity. Therefore, a conduit does not have a fixed pressure differential. The same conduit will have a range of pressure differentials for different fluid flows. Therefore, the phrase “wherein the (pressure drop across) the tube is less than 0.1cmH2O” is indefinite since it cannot be determined what the pressure drop is without flow parameters.
The situation is analogous to trying to claim an electrical resistance as a voltage drop. An electrical element has a defined electrical resistance, but the voltage drop across it will change depending on the current running through it. The voltage drop is easily determined once the resistance and the current are known, via Ohm’s law. But the electrical element itself has no defined ‘voltage drop’. In the same way, the tube has definable parameters that, in combination, describe how the tube “resists” the flow of fluid, and if these are known, and a particular flow is also known, the pressure drop one can expect is easily determined. But the tube itself has no defined ‘pressure drop’.
If applicant can find support in the specification, they can claim a particular pressure drop *at a defined flow*. For example, “wherein the pressure drop across the tube is less than 0.1cmH2O for a nominal flow of (specific fluid flowing at specific rate)” would be definite.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/02131476 (Donhowe et al.) in view of US 2019/0359505 (Chao).
Regarding claim 1, Donhowe et al. discloses a structure comprising: a tube (fig. 8A, element 815); a flexible circuit board including a plurality of UV-C light emitting diodes, wherein said flexible circuit board is wrapped around said tube with said plurality of UV-C light emitting diodes facing towards the center of said tube fig. 8A-B, element 805, wherein ‘In some embodiments, UV-LEDs useful with the flexible UV light generation sheets and treatment systems described herein include UVC LEDs, exhibiting emission between wavelengths of 100 nm and 280 nm.’ P 91).
Donahowe et al. does not disclose a first internal structure that causes working substance traveling through the tube to travel an overall distance through the tube that is longer than the length of the tube. Chao discloses a fluid purifier structure comprising a tube having such an internal structure (multiple figures, element 22). It would have been obvious to a person having ordinary skill in the art at the time the application was filed to incorporate the internal structure of Chao into the tube of Donahowe et al. to increase the irradiation time, as disclosed in Chao (‘In comparison with flowing straight through, the spiral passage 23 retards flowing of the fluid so that the fluid may be irradiated for a longer time by the multiple light-emitting elements 31. As a result, a better effect of cultivation, inhibition, sterilization, or a combination of the three due to irradiation may be provided by the present invention.’ P 23).
It cannot be determined whether the tube of Donahowe et al. has a resistivity/pressure drop of less than 0.1 cmH2O. As per MPEP 2112.01, when the structure recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be inherent.
Regarding claim 3, Donhowe et al. in view of Chao discloses the structure of claim 1, wherein the first internal structure comprises: a rib formed along the internal surface of the tube that runs the length of the tube in a constant twisting manner such that the length of the rib is greater than the length of the tube (Chao, multiple figures, element 22).
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/02131476 (Donhowe et al.) in view of US 2017/0291831 (Maiden et al.).
Regarding claim 1, Donhowe et al. discloses a structure comprising: a tube (fig. 8A, element 815); a flexible circuit board including a plurality of UV-C light emitting diodes, wherein said flexible circuit board is wrapped around said tube with said plurality of UV-C light emitting diodes facing towards the center of said tube fig. 8A-B, element 805, wherein ‘In some embodiments, UV-LEDs useful with the flexible UV light generation sheets and treatment systems described herein include UVC LEDs, exhibiting emission between wavelengths of 100 nm and 280 nm.’ P 91).
Donahowe et al. does not disclose a first internal structure that causes working substance traveling through the tube to travel an overall distance through the tube that is longer than the length of the tube. Maiden discloses a discloses a fluid purifier structure comprising a tube having such a structure (fig. 10, element 92). It would have been obvious to a person having ordinary skill in the art at the time the application was filed to incorporate the internal structure of Maiden et al. into the tube of Donahowe et al. to increase the irradiation time, as disclosed in Maiden et al. (‘Referring also to FIG. 10, the tubes 92 may be coiled, to provide longer paths through the flow-through amplifying chamber 90. Thus, the flow-through amplifying chamber 90 may be made correspondingly shorter, without adversely affecting the treatment of the water.’ P 55).
It cannot be determined whether the tube of Donahowe et al. has a resistivity/pressure drop of less than 0.1 cmH2O. As per MPEP 2112.01, when the structure recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be inherent.
Regarding claim 2, Donhowe et al. in view of Maiden et al. discloses the structure of claim 1, wherein the tube further comprises: a second internal structure that further directs the working substance around the internal periphery of the tube as it flows along the length of the tube (Maiden et al., fig. 10, element 92, where multiple tubes 92 are present).
Claim(s) 1 & 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/02131476 (Donhowe et al.) in view of US 2017/0355622 (Kim).
Regarding claim 1, Donhowe et al. discloses a structure comprising: a tube (fig. 8A, element 815); a flexible circuit board including a plurality of UV-C light emitting diodes, wherein said flexible circuit board is wrapped around said tube with said plurality of UV-C light emitting diodes facing towards the center of said tube fig. 8A-B, element 805, wherein ‘In some embodiments, UV-LEDs useful with the flexible UV light generation sheets and treatment systems described herein include UVC LEDs, exhibiting emission between wavelengths of 100 nm and 280 nm.’ P 91).
Donahowe et al. does not disclose a first internal structure that causes working substance traveling through the tube to travel an overall distance through the tube that is longer than the length of the tube. Kim discloses a fluid purifier structure comprising a tube having a such an internal structure (fig. 6, elements 420 and 425). It would have been obvious to a person having ordinary skill in the art at the time the application was filed to incorporate the vortex generators of Kim into the tube of Donahowe et al. to increase the irradiation time, as disclosed in Kim (‘In the case of the fluid that has formed the vortexes, the time it takes for the fluid to remain around the purification unit 120 can be increased.’ P 25).
It cannot be determined whether the tube of Donahowe et al. has a resistivity/pressure drop of less than 0.1 cmH2O. As per MPEP 2112.01, when the structure recited in the reference is substantially identical to that of the claims, claimed properties are presumed to be inherent.
Regarding claim 5, Donahowe et al. in view of Kim discloses the structure of claim 1, wherein the first internal structure comprises: a plurality of cross-sections located within the tube and spaced apart from each other within the tube, each of the cross-sections including at least one opening that is not aligned with the opening of adjacent cross-sections (‘In the case where the plurality of purification units are disposed in the conduit part 12, the centers of the openings formed in the respective purification units may be misaligned from each other.’ P 42).
Response to Arguments
Applicant's arguments filed September 15th, 2025 have been fully considered but they are not persuasive.
Applicant argues that “internal structure that causes working substance traveling through the tube to travel an overall distance through the tube that is longer than the length of the tube” should not be interpreted under U.S.C. 112(f) because a person having ordinary skill in the art would recognize the term “internal structure” to refer to a structural genus encompassing recognized species such as ribs, baffles, spiral guides, apertured gates, and internal channeling. They also note that additional of the modifier “internal” anchors the limitation by its location.
Examiner sees no reason a person having ordinary skill in the art would ever consider a term as broad as “structure” to be confined to this particular set of structures. Certainly, any of the suggested terms (ribs, baffles, etc.) would themselves be considered classes of structures that do not read on 112(f) but that does not mean that the nonce term “structure” is itself a particular class of structures. Examiner agrees that the modifier “internal” serves to as they say “anchor” the limitation by its location. That is precisely the point – it specifies location, rather than structure. Therefore, it is not a structural modifier by a relational modifier. Not that there is anything wrong with that. It just isn’t structural.
Applicant then notes that even if 112(f) were applied, the specification identifies ample corresponding structure supporting the recited function.
Examiner agrees. She specifically stated that the corresponding structures are present and identified the corresponding structures in the claim interpretation section. See paragraph 5 above. Examiner has not made any 112 rejections related to the limitations being interpreted under 112(f). They are perfectly valid 112(f) limitations and examiner has not taken the position that the corresponding structures are missing or that the 112(f) interpretations are problematic in any way. She is simply stating on the record that the terms are being interpreted under 112(f) for clarity.
Applicant argues that the indefiniteness rejection is unwarranted for reasons that are addressed in paragraphs 12-15 above. In short, applicant’s arguments make clear that the intention is claim a pressure drop, rather than a resistivity, which is the language they currently use. The claim needs to be amended to clarify that it is a pressure drop that is being claimed, and further they must amend to include reference to a particular flow for such a pressure drop to have definite meaning as a constraint on the tube.
The remaining arguments relate to whether the arts disclose the claimed pressure drop. As discussed above, a tube has no defined pressure drop. It is common in the art to specify a pressure drop of a pipe or other conduit at a nominal flow, but unless a nominal flow is specified the limitation has no meaning. Therefore, trying to determine whether the prior arts meet this limitation is an exercise in futility.
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 ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
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, Robert Kim can be reached at 571-272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881