DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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 1-15 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.
Claims 1 and 12 are amended to include “reusable”. It is unclear what structure is required to make the apparatus “reusable”. This term is not defined in the disclosure and it is not possible for one of ordinary skill in the art to determine if and how this is structurally limiting.
“reusable” is interpreted for a prior art application as a material unintended to be destroyed.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-15 rejected under 35 U.S.C. 103 as being unpatentable over Sato et al.
Claims 1-4: Sato et al. teach a reusable non-permeable substrate sheet (col. 2, lines 30-35; Claim 1 “thermoplastic film or sheet”) having a textured surface (Fig. 1, 1), the textured surface comprising a plurality of protrusions (Fig. 1, 2). The protrusions are configured in such a way that if liquid comprising particles were passed over the surface, the surface would interfere with the liquid flow and remove particulates in the liquid flow (See Fig. 1). The protrusions are pyramidal (col. 2, lines 55-68).
Sato et al. do not teach the claimed intended use of the substrate being for the removal of particulates from a liquid flow. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Claim 5: the shape is rounded (col. 2, lines 65-67 wherein a cone has rounded sides).
Claim 6: there are a mix of three dimensional shapes (col. 2, lines 61-68).
Claim 7: the geometric shapes have different sizes (col. 3, lines 9-15).
Claim 8: the material is plastic or polymers (col. 2, lines 30-39).
Claims 12: Sato et al. teach a non-permeable reusable substrate sheet (col. 2, lines 30-35) having a textured surface (Fig. 1, 1), the textured surface comprising a plurality of protrusions (Fig. 1, 2). The protrusions are configured in such a way that if liquid comprising particles were passed over the surface, the surface would interfere with the liquid flow and remove particulates in the liquid flow (See Fig. 1).
Sato et al. do not teach the claimed intended use of the substrate being for the removal of particulates from a liquid flow. Sato et al. do not teach the “when” clause, which is the intended functioning of the filtration device in an intended use. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Claim 9 further limits the stereolithography materials of Claim 8 wherein the stereolithography materials of Claim 8 are claimed in the alternative and the prior art teaches the rubber or polymer material.
Claim 10: the substrate member is rigid in that it can support the protrusions (Fig. 1) and the opposite side is smooth (Fig. 1, opposite side of 1).
Claim 11: the uniform surface is made of a resin or plastic which creates a frictional surface that be adhered to an external surface (col. 2, lines 30-49).
Claim 13: the shape is rounded (col. 2, lines 65-67 wherein a cone has rounded sides).
Claim 14: The protrusions are pyramidal (col. 2, lines 55-68).
Claim 15: the substrate comprises a mat (Fig. 1). The “disposed on a declining angle relative to the liquid flow” pertains to relative positioning of the substrate when used in an intended use. This is not further limiting to the substrate member as “the liquid flow” and the “a liquid source” are part of the intended use limitation.
Response to Arguments
Applicant’s arguments with respect to claims 1-15 have been considered but are not persuasive.
Applicant presents two arguments. The first is that Sato et al. is “non-analogous art”.
The rejection is a single-reference rejection under 103. The Sato et al. reference is analogous art in that it is a non-permeable substrate, which is the claimed invention. The “for removal…” is not structurally limiting to the claim; rather it is intended use. To address this, the Examiner provides a discussion of case law and, thus, made the rejection a 103 rejection. It is arguable that the rejection could have been a 102 rejection given that the structure claimed is the same as Sato et al.
Applicant emphasizes the two prong test to determine if art is analogous. Applicant discusses that “the reference is from the same field of endeavor as the claimed invention (even if it addresses another problem)”. In this case, the invention as claimed is to a non-permeable substrate. The “for” language precedes intended use and the “configured to” language simply means the structure must be capable of performing the function; applied prior art does not need to address the same problem as Applicant. In this case, the protrusions must simply be able to “interfere with a liquid flow traversing the textured surface and remove particulate entrained in the liquid flow”. The liquid is not part of the apparatus and is not required to be present. Rather, it is clear that even in a sealed configuration, the space between Sato et al.’s non-permeable substrates is capable of holding a fluid and the angles of the protrusions are capable of capturing particles in a fluid. As such, it is clear that the art is analogous art to the claimed invention.
Prior art does not need to be relevant to the concept of the entire disclosure, any specific embodiment, any preferred embodiment, or Applicant’s identified problem. The prior art is relevant for being the “nonpermeable reusable substrate” claimed.
Regarding argument II, Applicant argues that Sato does not render the claimed “nonpermeable reusable substrate” obvious.
It is again noted that the prior art is compared to the claims, not the entirety of the disclosure.
Applicant argues that the interlayer cannot interact with a liquid flow because it is “semi-melted”. This is not persuasive. Clearly the intention is for the interlayer to maintain structure for spacing. It is especially clear thar “semi-melted” is not fully melted and space and structure is maintained.
Applicant argues that “significant experimentation” would be required to “determine if it is a suitable device for water filtration”. The claims never recite “water filtration”. The claims do not recite any other structure that would require the “nonpermeable reusable substrate” to be integrated into a filtration apparatus or even communicate with a liquid source. The Examiner is not required to show how the prior art would be used for water filtration because that is not required in the claim. The structure of the claim can be deduced to:
a nonpermeable substrate having a textured surface, the textured surface comprising protrusions configured to interfere with fluid flow
the substrate being a mat or a belt
There is no other structure claimed to support Applicant’s arguments of what the prior art must teach in order to meet the claims. Rather, Applicant fails to acknowledge the basic nature of the claim limitations and what is fundamentally required in the claims. Even the “configured to” language does not actually require liquid to be present or to be flowing. Rather, it simply requires that the protrusions be capable of performing the claimed function. In this case, fluid with particulates could be sealed inside the laminate and passed over the protrusions wherein the angles of the protrusions would trap particulates of certain sizes.
The final product is the product the Examiner is considering and it is clear that it is nonpermeable. The fact that the top and bottom nonpermeable substrates are sealed together forming a interlayer with spaces is not obviated by the claim language. There is nothing in the claim language that prevents Sato et al. from applying to the claims.
Applicant alleges there is some degree of porosity in the nonpermeable substrate. Then Applicant acknowledges a vacuum formed inside the structure. A vacuum could not be formed if the substrates were permeable.
If Applicant intends for other structural elements to be required to clearly define the claimed apparatus as a water filtration apparatus or some more specificity, then it must be claimed. Sato et al. fully teach all the claimed structure. The function is not limiting to the claims and the configured to language is met as Sato et al.’s structure is capable of performing the claimed function. Applicant is also reminded that apparatus claims are not defined by material worked upon by the apparatus.
Conclusion
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 ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/Primary Examiner, Art Unit 1773