FINAL OFFICE ACTION after RCE
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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 .
Drawings
The replacement sheet of drawings filed 5 JAN 2026 is approved for entry.
Specification
The abstract is acceptable.
The title is acceptable.
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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 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.
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.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter parties review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144 [as in section 19 below]. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
In view of the above guidance, claims 1, 2, 3, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over (GB 2177618 A to BOYES) in view of SU 1200957 A.
GB 2177618 A (to Inventor BOYES) discloses in the embodiment of FIGURE 1 an impeller free tank/vortex generator for processing liquid and gas substances having a tangential first fluid inlet port 10 (Figure 1) or 12 (Figure 2) into a fluid tank 1 with a duct interfaced with an outer portion of the tank 1; the fluid tank being the upper portion of the generator above 2 as denoted herein; the first fluid inlet port 10 for fluid communication with a fluid source such as liquid and/or gas sources as labeled in Figures 1-2 and as taught at page 1, lines 50-58:
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wherein the fluid tank 1 itself having a lower fluid outlet port (the opening/port within the plane of the junction between the divergent portion of duct 2 and the tank 1) that leads directly into fluid outlet duct 2 that includes a divergent section (above reference character 2) that leads directly in series into a column section 2 having an internal cross-sectional area that is larger than the internal cross-sectional area of the fluid outlet port and leading into a convergent section (below reference character 2) that is in series with the column section 2; a second fluid inlet port at 6 (Figures 1 or 2) at the top surface of the tank 1 for fluid communication with a fluid source such as liquid and/or gas sources as labeled in Figures 1-2 and as taught at page 1, lines 50-58; the fluid outlet port of the tank 1, the second inlet port 6 and the duct exit (within the plane of the junction between the convergent section and the duct portion having 11 therein) being arranged concentrically - Figure 1; the unlabeled vertical duct with an inline valve (below 11) being capable of being used as an outlet port or duct that is arranged concentrically with the fluid outlet port of the tank 1 and the second inlet port 6; wherein the first fluid intake duct 10 is provided substantially on a tangent to the first sidewall segment of the fluid tank sidewall and aligned to deliver a first fluid to an internal surface of the first sidewall segment (page 3, lines 44-60); the fluid outlet duct 2 meeting the claimed structural element of a “duct” and being in fluid communication with an exit 11 (thus being an outlet duct); wherein the second fluid inlet port 6 is located on an opposite side of the fluid tank 1 (on the upper surface or side of the tank 1) relative to the fluid outlet port and the fluid outlet duct 2 which are both located on the opposite lower side of the tank.
GB 2177618 A does not disclose the first fluid inlet port comprising a curved flow channel defined between a first sidewall segment of the fluid tank sidewall and a second sidewall segment of the fluid tank sidewall or the now recited bottom wall of the tank just added to the specification, drawings, and claim 1 at this late stage of the prosecution (note the first section of the interview summary held 16 DEC 2025 where this very issue was discussed).
[AltContent: arrow][AltContent: textbox (DIVERGENT
PORTION OF FLUID OUTLET DUCT)][AltContent: arrow][AltContent: textbox (FLUID TANK 1)][AltContent: arrow][AltContent: connector][AltContent: connector]
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[AltContent: textbox (FIGURE 1 OF GB ‘618/BOYES, DENOTING THE FLUID TANK 1 and OUTLET DUCT)]
SU 1200957 A discloses as seen below an impeller-free vortex generator apparatus in the Figure comprising: a fluid tank/vortex generator defined by a sidewall 1 and a bottom wall 3 (as noted in said interview summary) and comprising:
a first fluid inlet port comprising a curved flow channel 2 defined between a first outer sidewall segment of the fluid tank sidewall and a second sidewall segment of the fluid tank sidewall as seen in Figure 1; a fluid outlet port 6 formed in the bottom wall 3; the fluid outlet port 6 being spaced from the sidewall 1 is connected to the sidewall via the bottom wall per said Figure; a first fluid intake duct 4 or 5 in fluid communication with the first fluid inlet port; wherein the first fluid intake duct 4 is provided substantially on a tangent to the first sidewall segment of the fluid tank sidewall and aligned to deliver a first fluid to an internal surface of the first sidewall segment - Figure 1; wherein the first fluid intake duct 4 is interfaced with an outer surface of the fluid tank to communicate the first fluid along the radially outer surface; and wherein the sidewall defines a spiral centered on the fluid outlet port 6 as denoted by the flow arrows in Figure 1 - see last line of the translation before the “Claims” section.
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Accordingly, since there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ it would have been obvious to one skilled in the art before the effective filing date of the invention to have substituted the fluid tank section (1) in GB ‘618/BOYES with the fluid tank of SU ‘957 that includes a curved flow channel defined between a first sidewall segment of the fluid tank sidewall and a second sidewall segment of the fluid tank sidewall and also includes the now recited bottom wall (3) as disclosed by SU ‘957 for the purposes of providing a premixing cavity in the curved flow channel and for configuring said curved flow channel such that incoming flow to the vortex generator is directed in a circumferential direction around the inner surface of the sidewall of the vortex generator and discharged through outlet (6) whereby under pressure of centrifugal force, the inlet flow bends around the inner surface of the chamber circumferentially and flows again at the exit of cavity (2), but on the other side to produce a zone of reduced pressure in the zone, into which a second component can flow, which is then captured on both sides by the flows and carried to the mixing chamber (3) when at the exit from cavity (2), the flows are additionally displaced via turbulence resulting from the disruption of the flow to mix in the chamber 3, where they move in a spiral path from the periphery to the center in the vortex flow and merge through the outlet (6) - per the machine translation.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over BOYES/GB 2177618 A in view of SU 1200957 A as applied to claim 1 above and further in view of STAAF (US 4092013).
Modified BOYES/GB 2177618 A does not disclose the first fluid intake duct having a divergent section. STAAF discloses a vortex generator 10 having a first fluid intake duct 19 with a divergent section as seen in Fig. 9.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided the intake duct of the vortex generator of modified GB 2177618 A with a divergent section as taught by STAAF to control the flow rate of the substances entering the vortex generator (such as to lower the flow rate/velocity via said divergent section).
Claims 10-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over BOYES/GB 2177618 A in view of SU 1200957 A as applied to claim 1 above and further in view of WAGNER et al. (US 3794299).
Modified BOYES/GB 2177618 A does not disclose the valve, pump, control system, or particle reservoir.
WAGNER et al. discloses a vortex generator 10 with inlets 24 and 34; control valves 56, 62, 86, 88, 100; adjustable (i.e., controlled) metering pumps 58, 64, 90, 92, or 102; a control system 70 or 120, a particle reservoir 50 that is in flow communication and thereby feeds the inlet 34.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided the vortex generator of modified BOYES/GB 2177618 A with one or more valves, pumps, a control system, and particle reservoir for the purpose of controlling the flow of substances fed into the vortex generator from the particle reservoir and through the inlets thereof.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over BOYES/GB 2177618 A in view of SU 1200957 A and WAGNER et al. as applied to claim 10 above and further in view of CH 545649 A.
Modified BOYES/GB 2177618 A does not disclose the vortex generator submerged in a fluid within a fluid reservoir.
CH 545649 A discloses a vortex generator 53 or 72 (Figures 10-11) wholly submerged within a fluid contained in fluid reservoir 51 or 61; the outlet duct 55 or 73 of the vortex generator is submerged within the fluid; a second fluid intake duct 66, 68 with a portion 68 connected to the second fluid inlet port 70 and a second end 66 of the fluid intake duct is located outside the fluid within the fluid reservoir.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have placed the vortex generator of modified GB 2177618 A in a submerged location in a fluid within a fluid reservoir for the purpose of blending the fluids within said reservoir.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over BOYES/GB 2177618 A in view of SU 1200957 A and WAGNER et al. and CH 545649 A as applied to claim 13 above and further in view of ROBBERTS (US 5705060).
Modified BOYES/GB 2177618 A does not disclose the second end of the second fluid intake duct being located outside the first fluid of the reservoir and is connected to the atmosphere.
ROBBERTS discloses a vortex generator 1, 34 that is partially submerged in a fluid contained within a reservoir; the vortex generator including a first fluid inlet 7; and a second fluid inlet 8 wherein an end of the inlet 8 is located outside of the fluid within the reservoir and is connected to the atmosphere:
When the vessel 1 is to be used to oxygenate water, the water is delivered under pressure through the inlet conduit 7. Because the water flows into the inlet chamber tangentially, the water is caused to rotate and flow through the tubular part 3 with tubular motion. As the water flows past the flared part 9 of the tubular part 3, the throughflow area decreases and the flow rate of the water increases. The throughflow area increases markedly downstream of the flared part 9, causing a lower pressure to be generated locally in the region beneath the mouth or outlet orifice of the second tube 8. When the tube 8 communicates with air under atmospheric pressure, air will thus be sucked into the tubular part 3. It has been also been observed that a strong turbulent flow occurs in the central part of the junction part 5, at the same time as a thin layer of water flows helically around the tube wall. It should be noted that it is the water from the surface of the generated vortex 10 that is mixed in the turbulent region with the air delivered through the tube 8. - per col. 2, lines 17-28 and lines 37-42.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have modified BOYES/GB 2177618 A in view of SU 1200957 A and WAGNER et al. and CH 545649 A to locate an end of the second fluid intake duct outside the reservoir and connected to (in fluid communication with) the atmosphere as taught by ROBBERTS for the purpose of enabling an oxygen-containing gas, such as air, oxygen gas or ozone to be introduced into the vortex generator via a tube/intake duct through which an oxygen-containing gas, such as air, oxygen gas or ozone is introduced to thereby oxgenate the water introduced into the vortex generator from the first fluid inlet (col. 1, lines 48-57).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over BOYES/GB 2177618 A in view of SU 1200957 A as applied to claims 1 and 3 above and further in view of DUPLOUY et al. (US 4337032).
Modified BOYES/GB 2177618 A discloses the subject matter of claim 5 as explained above but does not disclose the recited distances.
DUPLOUY et al. discloses in FIGURE 1 a tank/vortex generator 2 having a fluid inlet port 21 into the tank 2; the tank 2 itself having a lower fluid outlet port within the plane of reference character 21 that leads directly into fluid outlet duct that includes a divergent section 111 that leads directly in series into a column section 112 having an internal cross-sectional area that is larger than the internal cross-sectional area of the fluid outlet port (within plane 21) as seen in FIGURE 1 and leading into a convergent section 12 that is in series with the column section 112;
wherein the distance between the second fluid inlet port (i.e., the top surface of the tank 2 of DUPLOUY where the second fluid inlet port 6 of GB ‘618 is disposed) and the fluid outlet port (within the plane of reference character 21 in DUPLOUY) is smaller than the distance between the fluid outlet port and duct exit at 4 of DUPLOUY et al.;
wherein the column section 112 of the fluid outlet duct in DUPLOUY has a length which is greater than the distance between the second fluid inlet port (i.e., the top surface of the tank 2 of DUPLOUY where the second fluid inlet port 6 of GB ‘618 is disposed) and the fluid outlet port.
Since persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced, it would have been obvious and/or mere common sense to one skilled in the art before the effective filing date of the invention to have modified the recited relative distances in GB ‘618 to emulate those of DUPLOUY et al. for the purposes of slowing the flow through the divergent section as a result of the expanding diameter of the divergent section so that the flow remains in the divergent section for an increased duration to improve mass transfer conditions, to then improve the mixing of fluids within the longer column section (as compared to the height of the tank) that follows the divergent section, and then to increase the discharge velocity of the fluid mixture from the column section as the mixture is discharged from the exit of the convergent section.
Moreover, MPEP 2144.04 holds that changes in size or proportion are generally obvious to one skilled in the art [as in this instance in view of the disclosure of DUPLOUY et al.] See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Allowable Subject Matter
All claims are rejected over the prior art - no claims stand allowed.
Remarks and Conclusion
The assertions throughout the remarks that modifying BOYES as outlined in the prior art would render the apparatus of BOYES unsuitable for its intended purpose is mere speculation. Applicant’s position on this point is considered to be speculative attorney's argument unsupported by objective technical evidence on the issue. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).
Further, during the examination of an application or the reexamination of a patent, any objective evidence of nonobviousness must be submitted by way of an affidavit or declaration; attorney arguments alone cannot take the place of such evidence in the record where the evidence is necessary. See 37 CFR 1.132; MPEP 716.01(c) and MPEP 2145, subsection I. However, filing such evidence after final would lack the required Rule 116 showing and therefore not be timely. There is no evidence that substituting the fluid tank of BOYES with the fluid tank of SU ‘957 would render the vortex generator of BOYES inoperable or unsuitable for mixing certain types of fluids that mix more completely under increased velocity conditions provided via the fluid tank of SU ‘957.
Applicant argues operational concepts such as: Boyes does not have the bottom wall as defined by claim 1 from which the fluid outlet port is formed. Boyes is structurally configured without a bottom wall and is intended to operate to provide gas and liquid mixing in a fundamentally different manner. In Boyes, swirling liquid occupies the entire cross-section of the tank 1, and there is no structural feature that creates a lower-pressure central air core. Adding a bottom wall would serve no functional purpose in Boyes because the pressure distribution through the vertical extent of the tank 1 and the downstream diverging section of the duct 2 is essentially hydrostatic. A bottom wall would not create a meaningful pressure discontinuity; the pressure profile would remain approximately or essentially continuous across the bottom wall. The practical effect would be added headloss (energy loss) with no improvement in bubble retention or performance, making the system less efficient. Applicant's apparatus is shown in which the tangential inlet and bottom wall (floor) arrangement is deliberately configured to increase velocity at the point of gas-liquid interaction and to transport the combined phases as far downstream as possible within the outlet duct and into the receiving water body. The examiner notes none of these concepts (the underlined language) are at issue in the pending claims. Such arguments are thus of no patentable consequence because it is well settled that features not claimed may not be relied upon in support of patentability. In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982). Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
Applicant argues: At Position 1, a bottom wall would obstruct air transport within the column. Any air passing beyond the bottom wall would rise and accumulate on the underside, leading over time to air pocket formation and periodic release ("air chugging"), destabilising operation and reducing process reliability. There is no evidnce of record that this is an inevitable result of providing BOYES with a bottom wall at this particular location.
Applicant then argues: At Position 2, the bottom wall would be introduced further down the constant- diameter cylinder, immediately upstream of the diverging "separator." The separator's purpose in Boyes is to reduce liquid velocity by increasing cross-sectional area, thereby promoting gas-liquid phase separation and preventing downstream gas transport. Introducing a bottom wall at this location would increase local velocity and continue to transport air into the downstream region, directly contradicting the separator's functional intent and undermining system performance. The examiner notes the magnitude of such an increase in velocity would be a function of the size/diameter of the opening in the bottom wall since pipe diameter is inversely related to flow velocity: if the flow rate is fixed, a smaller diameter increases velocity, which according to Bernoulli’s equation, reduces pressure, and a larger diameter decreases velocity, increasing pressure. However, a review of the specification and claims reveals that the particular size of the fluid outlet port 114 of the bottom wall is not at issue in any portion of this application, thus the increase in velocity of the flowing fluid could indeed be insignificant (e.g., with a large diameter bottom wall opening) with minimal effects on the operation of the BOYES device when provided with a bottom wall with an opening of unspecified size, when combined with SU ‘957. Moreover, the flow velocity entering the large size and large diameter portion 2 of BOYES after exiting the opening in the bottom wall at Position 2 would be diminished likely permitting BOYES to achieve an adequate gas-liquid phase separation.
Applicant then asserts that: Applicant's invention is fundamentally different. Its tangential inlet and bottom wall arrangement is deliberately configured to increase velocity at the point of gas-liquid interaction and to transport the combined phases as far downstream as possible within the outlet duct and into the receiving water body (see the above right drawing). This operating principle is not only absent from Boyes, but is directly opposite to Boyes' design objective of early gas separation. By contrast, Applicant's invention relies on a deliberate pressure discontinuity across the bottom wall. The unit is designed to produce a pressurised condition upstream of the bottom wall, and a near-zero (or atmospheric) pressure downstream of the bottom wall in the outlet duct to drive efficient aeration and mixing at the end of the outlet duct. Again, this underlined language above is of no patentable consequence because it is well settled that features not claimed may not be relied upon in support of patentability
The examiner notes that the objective in BOYES, as explained by Applicant, is to use a substantially constant cross-sectional central column section. Introducing a bottom wall would be incompatible with this requirement, as it would alter the effective cross-section and contradict the fundamental structural definition of the column. That operating principle does not exist in Boyes, where gas entrainment occurs in the jet process at the orifice nozzle 6. The claims are silent with regard to the cross-sectional area(s) of the claimed fluid tank and silent with regard to any “gas entrainment”.
Following the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA, the Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. Any argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the
allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. BOYES, SU ‘957, and the other applied prior art above represents common knowledge in the vortex generator/mixing art. In this instance, the mundane feature of a bottom wall with a fluid outlet port being present in the intake fluid tank of a vortex generator that is missing from BOYES is a rather ordinary feature and represents common knowledge in the relevant art. To apply this common knowledge represented by SU ‘957 into the vortex generator of BOYES is thus deemed well within the realm of obviousness, culminating in. . .
THIS ACTION IS MADE FINAL since Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLAIRE X. WANG can be reached on 571-272-1700. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES COOLEY/Examiner, Art Unit 1774
15 MAY 2026
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