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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 21, 2025 has been entered.
Response to Amendment
Those rejections not repeated in this Office Action are withdrawn.
Claims 1 and 3-13 are pending. Claims 11-13 are withdrawn from consideration.
Claims 1 and 3-10 are rejected.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Claim 1 recites the limitation, “circulating a first part of the retentate over the elongated filtering device by feeding it to the elongated filtering device such that it forms part of the milk product.” For matters of form, this limitation should be amended to recite,
“circulating a first part of the retentate over the elongated filtering device by feeding the first part of the retentate to the elongated filtering device such that the first part of the retentate forms part of the milk product.”
Claim 1 recites the limitation, “feeding a second part of the retentate to the tank such that it forms part of the milk product.” (see lines 12-13). For matters of form, the limitation, “it” should be amended to recite, “the second part of the retentate.”
Claim 3 recites, “comprising letting the air enter a section of a first fluid line that is arranged for the feeding of the milk product to the elongated filtering device, and enter a section of a third fluid line.” (see lines 1-4). For matters of form, this limitation should be amended to recite, “comprising letting the air enter a section of a first fluid line that is arranged for the feeding of the milk product to the elongated filtering device, and letting the air enter a third fluid line.”
Appropriate correction is required.
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 and 3-10 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 the limitation, “circulating a first part of the retentate over the elongated filtering device by feeding it to the elongated filtering device such that it forms part of the milk product.” This limitation is not clear as to whether it is referring to “the milk product” in the tank or the milk product that is being fed to the elongated filtering device. From Applicant’s specification it appears that the first part of the retentate forms part of the milk product hat is being fed to the elongated filtering device (see page 6, lines 23-36 and figure 2, item 398 which is the mixing point between the milk product and the first part of the retentate). As such, this rejection can be overcome by amending the limitation to recite, “circulating a first part of the retentate over the elongated filtering device by feeding the first part of the retentate to the elongated filtering device such that the first part of the retentate forms part of the feeding of the milk product to the elongated filtering device.”
Claim 1 recites the limitation, “feeding a second part of the retentate to the tank such that it forms part of the milk product” (see lines 12-13). The limitation, “the milk product” lacks proper antecedent basis because it is not clear whether this is referring to the milk product in the tank or the milk product at some other part of the process. This rejection can be overcome by amending the limitation to recite, “feeding a second part of the retentate to the tank such that the second part of the retentate forms part of the milk product in the tank.
Claim 1 recites the limitation, “gradually” on 14, which is a relative term that has not been defined by the claims or specification, thus making the scope of what can be construed to be “gradual” unclear.
Claim 1 recites the limitation, “which is” on line 20. This limitation is unclear whether it is referring to the air valve or the air flow.
Claim 1 recites, “the predetermined concentration” on lines 23, 24 and 27-28. This limitation lacks proper antecedent basis as it is not clear whether it is referring back to “a predetermined concentration” as recited on line 6 or line 17. This rejection can be overcome by amending the line 17 limitation of, “a predetermined concentration” to “the predetermined concentration.”
Claim 1 recites the limitation, “from elongated filtering device.” (see line 25). This limitation should be amended to recite, “from the elongated filtering device.”
Claim 1 recites, “collecting the milk product having the predetermined concentration of a substance emptied from the elongated filtering device.” (see lines 27-28). This limitation is not clear as to whether it is referring to an emptying step prior to the opening of an air valve, or whether it is referring to the milk product that has been emptied via the opening of the air valve.
Claim 3 recites the limitation, “comprising letting the air” on lines 1-2, which lacks proper antecedent basis. It is not clear whether “the air” is intending to refer to the air flow as a result of the opening of the air valve, then this rejection can be overcome by amending the above limitation to recite, “comprising letting the air flow after the opening of the air valve to”
Claim 3 recites the limitation, “such that milk product held in the sections of the first fluid.” (see line 5). The limitation of, “the sections of the first fluid line” lacks proper antecedent basis because the claim only refers to “a second of a first fluid line.”
Claim 3 recites the limitation “said sections” on the last line of the claim. It is not clear whether this is intending to refer to the section of the first fluid line and the section of the third fluid line or some other sections. This rejection can be overcome by amending the limitation said sections to, “the section of the first fluid line and the section of the third fluid line.”
Claim 3 recites, “such that milk product held in the seconds of the first fluid line and the section of the third fluid line is emptied.” This limitation is not clear because it recites that the section of the third fluid line contains the milk product; however the claim recites on line 4-5 that the section of the third fluid line is feeding the second part of the retentate to the tank - thus appearing to contradict the limitations on lines 4-5.
Claim 3 recites, “collecting milk product emptied from said sections” (see the last line of the claim). It is not clear as to what “milk product” is being referred to because a first fluid line is arranged for the feeding of the milk product, while the third fluid line is arranged for feeding of the second part of the retentate.
Claim 4 recites the limitation, “the filtering device” on line 3. This limitation lacks proper antecedent basis but can be overcome by amending the limitation to recite, “the elongated filtering device.”
Claims 5-10 are rejected based on their dependence to a rejected claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Rizvi (US 20030077357) in view of Nutalpati (US 20180221822) and Reece (US 3692178) and in further view of Nishio (US 20160144320) and BE896485A (referred to as BE485).
Regarding claims 1, 7 and 8, Rizvi teaches a method for concentrating a substance in a milk product (see the abstract and paragraph 3), the method comprising the steps of:
a) feeding the milk product from a tank (figure 1, “Feed Tank”) to an elongated filtering device (Figure 1, “membrane modules”, paragraph 16, 19), wherein the elongated filter device is arranged in a direction that extends from a milk product inlet to a retentate outlet (see figure 1 where the membrane modules have a product inlet and a retentate outlet, and where the membrane modules extend from the inlet to the outlet).
b) filtering, in the elongated filtering device, the milk product into a permeate (see figure 1, where permeate is collected at the top of the figure) and a retentate such that the substance is concentrated in the retentate (see the recirculation of the retentate back to the feed tank),
c) circulating a first part of the retentate over the elongated filtering device by feeding it to the filtering device such that it forms part of the milk product and d) feeding a second part of the retentate to the tank such that it forms part of the milk product (see figure 1, where downstream of the heat exchanger a first part of the retentate is circulated back over the filtering device; and see figure 1, downstream of the heat exchanger, where a second part of the retentate is returned to the feed tank),
e) repeating steps a) to d), to thereby gradually increase a concentration of the substance in the milk product (see the abstract). It is noted that the claims do not recite any particular amount of repeating and therefore read on, for example, repeating steps one time.
Regarding the step of, “f) stopping step e when the concentration of the substance in the milk product has reached a predetermined value,” it would have been obvious to one having ordinary skill in the art to have stopped the repeating when reaching a desired concentration because the claim reads on any amount of concentration of any substance in the milk product reaching some value.
Claim 1 differs from Rizvi in specifically reciting, “wherein the direction is inclined with respect to a horizontal direction sufficient for milk producing having a predetermined concentration of a substance to be emptied from the elongated filtering device due to gravity” and “after the stopping of step e): opening an air valve to let air flow into the elongated filtering device, which is arranged such that milk product having the predetermined concentration of a substance held in the elongated filtering device is emptied by letting the air flow fill the space previously occupied by the milk product having the predetermined concentration of a substance when the milk product having the predetermined concentration of a substance flows out from elongated filtering device due to the gravitational force.”
Regarding the opening of an air valve to let air flow into the elongated filtering device to occupy space that was previously occupied by the milk product that flows out from the filtering device, Nutalpati teaches a method for filtering liquids (see at least, paragraph 2), which comprises an elongated filtering device (see figure 1, item 3 and paragraph 28, “crossflow filtration filter”) through which liquid is circulated (see paragraph 28, “passageways and avenues for the circulation and/or flow of sample liquid to or among the various system components”). Nutalpati further teaches that it has been desirable to facilitate recovery of residual fluid after filtration (See paragraph 3: “Quantitative recovery of the valuable concentrated biofluid after purification and/or concentration is one area of interest…Numerous strategies have been applied to facilitate recovery of this residual biofluid”. Nutalpati teaches that one way to do this to use air to pressurize the filtering device so as to recover valuable flow (see paragraph 10, step “viii”) and which fluid remains concentrated (paragraph 11). At paragraph 13-14, Nutalpati further teaches using pressurized air to blow down the biofluid from the flow path and which can be a viable option for recovering concentrated fluid within the filtering device, provided that foaming is not a concern. This teaches that using pressurized air has been a known and desirable expedient for emptying a concentrated fluid from a filtering device, and which can increase product recovery by 11-20% for example (see paragraph 14). Nutalpati further teaches providing an air source with associated valves for pressurized draining of the residual fluids from the flowpath (see paragraph 16, “…the present processes offer a continuous and seamless transition from standard concentration or collection to a pressurized raining of the residual fluids from the flowpath”), by opening the valve to allow an air flow into the filtering device to assist in removing additional concentrated fluid therefrom (see paragraph 43 and 52, 54). Nutalpati is further similar to Rizvi because Nutalpati is also teaching a permeate line (see figure 1, item 13) as well as a retentate line (figure 1, item 12 that can return fluid back to the tank 1a) that can recirculate the retentate fluid to the filtering device.
Reece also teaches gravity removal of a retentate from a filtering device (28) (see column 1, lines 12-16 and valves 71 and 72, which when opened allow for gravity dispensing within the filtering device). Reece further teaches that after filtering is completed, valves 71 and 72 are closed and valve 81 is opened to allow air into the filtering device so that any process liquid retained in the filter unit is displaced through the conduits and valves and recovered at 86 and after which recovery, the liquid can be returned to the storage tank (see column 8, line 41 to column 9, line 30 and specifically, column 9, lines 3-10; see also column 7, lines 58-64 which teaches return of the recovered liquid into conduit 22, which is then recirculated through the filtering device).
In the art of concentrating liquids via filtration, the prior art therefore teaches and suggests to one having ordinary skill in the art that it has been desirable after filtering to further introduce an air flow into an elongated filtering device for the purpose of assisting in recovering and also recirculating concentrated liquid that remains in the filtering device.
It would therefore have been obvious to one having ordinary skill in the art to have modified Rivzi and to have provided an air valve that allows air to enter Rivzi’s elongated filtering device for the similar purpose of recovering concentrated liquid that remained in the elongated filtering device, for further collection and processing.
Regarding the limitation of, “and wherein the direction is inclined with respect to a horizontal direction sufficient for milk product having a predetermined concentration of a substance to be emptied from the elongated filtering device due to gravitational force,” the above combination in is not specific in this regard.
However, Nishio teaches separation membranes that can have an angle with respect to the horizontal direction and with respect to the longitudinal direction of the membrane to be between 1-90 degrees (see paragraph 288) or 45 degrees (see paragraph 333). Nishio teaches that these angles can help to promptly drain discharge (see paragraph 289). With respect to a milk product inlet and a retentate outlet, the angle would appear to be about 90 degrees (see figure 10) and with respect to a longitudinal direction of the filtering device, the angle has been taught to be 45 degrees.
It is further noted that BE485 teaches an elongated filtration device (see figure 1, item 2-5 and at least, paragraph 17 of the machine translation: ultrafiltration batteries) which filtration device is at an incline relative to a horizontal direction (see figure 1). BE485 further teaches that the incline is useful for using gravity to recover concentrated liquid (see at least, paragraph 1 and 51) and which recovered concentrated liquid can be collected into the storage tank (figure 1, item 11; see also paragraph 25 of the machine translation). BE485 also discloses that a permeate can be discharged from the filtering device (see paragraph 31, 32) while the retentate can be recirculated back into the storage tank 11 (see paragraph 6 and 30). While BE485 might be directed to a concentrated liquid dye, the concept of providing an incline to the elongated filtering device to allow for gravity to also assist in discharging of the concentrated liquid would have been equally applicable to Rivzi for this same purpose.
To therefore modify Rivzi and to incline Rivzi’s elongated filtering device would have been obvious to one having ordinary skill in the art for the purpose of using gravity to help to discharge the concentrated liquid from the filtering device, as taught by Nishio and BE485.
In view of Nutalpati, Reece and Nishio, the combination is suggesting inclining the filtering device that blows air into the filtering device from a top of the device and flowing downward, and therefore the prior art is teaching and suggesting air fills the space previously occupied by the concentrated milk product that flows out from the filtering device due to the gravitational force.
Further regarding the specific angle as recited in claims 7 and 8, once it was recognized to provide an inclined angle to the filtering device for the purpose of using gravity to help remove the contents from the filtering device, it is not seen that patentability can be predicated on the specific angle absent a showing that the specifically claimed angles would have provided an unexpected result. Nonetheless, in view of Nishio, the combination teaches an angle of 45 degrees as discussed above, which falls within the claimed range.
Regarding claim 6, Rizvi teaches that the filtering device comprises a membrane filter (see figure 1, “Membrane modules”).
Regarding claim 9, Rizvi teaches a fourth fluid line where the permeate can collect to a tank (see figure 1, the tank at the top of the figure).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 1 above, which relies on Rizvi (US 20030077357) as the primary reference, and in further view of Kobayashi (US 20220032234).
Regarding claim 3, in view of Nutalpati, the combination is teaching letting air enter a section of a first fluid line that is arranged for feeding of the milk product to the elongated filtering device to allow for gravitational force to empty product from said first line (see paragraph 52 which discloses that countercurrent flow is initiated from an internal pump 4 that is linked to the retentate flow line return 12 and sterile air source 5 that allows for air to be sent through the filtering device and therefore into a first line 11 for recovering liquid product within the filtering device). Since Nutalpati is teaching maximizing recovery it would have been obvious to have collected the liquid product that exits through line 14.
Additionally, Nutalpati is suggesting that retentate would have been forced out of an exit line 12, which could be construed as a third line that carries a portion of retentate; and Nutalpati is also suggesting that retentate would have been forced out of inline line 11 which carries a feed of the product into the filtering device and can be construed as a first line. Nutalpati is also already teaching the desirability of maximizing recovery of retentate from the filtration process by using air to pressurize the system to force retentate out of the lines and is therefore suggesting allowing air to enter the retentate and inlet lines for maximizing recovery.
Nonetheless, claim 3 differs from the combination, as applied to claim 1 above, in specifically reciting, letting air “enter a section of a third fluid line that is arranged for the feeding of the second part of the retentate to the tank,” such that milk product held in the section of the third fluid line is emptied by gravitational force when the air flows into the section of the third fluid line, and collecting milk product emptied from said section of the third fluid line.
Kobayashi teaches using air valves (see figures 2-4, item 25 and 26) that are used to ensure removal of residual liquid in the lines that extend toward and away from elongated filtering devices (31-36) (see at least paragraph 74, 76 and 78 that use pressurized gas to remove liquid from the lines).
While Rizvi teaches multiple fluid lines, in view of Nutalpati’s teachings as discussed above, and since Kobayashi also teaches introducing air into lines for purging liquid from those lines, it would have been obvious to one having ordinary skill in the art to have allowed for air to enter the fluid lines of Rizvi’s process for the purpose of purging liquid from the lines to maximize recovery of Rizvi’s retentate.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above, and in further view of Kent (US 20060065596) and Kromkamp (US 20070158256).
Regarding claim 4, Rizvi teaches feeding a part of the permeate into the filtering device (see the circulating of the permeate) such that milk product can be pushed out by the permeate and then collecting the milk product pushed out from the filtering device (see permeate tank and feed tank).
Claim 4 differs from Rizvi in specifically reciting, “after the stopping, feeding a part of the permeate into the filtering device, such that milk product held in the filtering device is pushed out by the permeate when the permeate flows into the filtering device, and collecting milk product pushed out from the filtering device.”
Kent teaches cleaning membrane filters by first performing a permeation step, where permeate is withdrawn from the tank through the membranes, which would thus have pushed out permeate from the filtering device (see paragraph 22, 23). Kromkamp teaches using more than one permeate circulation circuit (i.e. recycle loops) for the purpose of increasing the frequency of back pulsing for more thoroughly cleaning the filter (see paragraph 16 and figure 1 which shows feeding permeate into the filtering device).
Therefore, it would have been obvious to one having ordinary skill in the art to have modified the combination as applied to claim 1 and fed a part of the permeate into the filtering device for removing milk product within the filtering device and for increasing the efficacy of cleaning.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above, and in further view of Mendel (US 20150320063) or Innings (US 20160354726).
Regarding claim 5, while the combination as applied to claim 1 teaches circulating a first part of the retentate over the filtering device, claim 5 differs from the combination in specifically reciting wherein the first part of the retentate comprises 70-90% of the retentate that is filtered in the filtering device.
Mendel teaches microfiltration of a milk product (see the abstract) where the retentate can be used to prepare a milk product and where 10-100% or 90% of the retentate milk product can be recycled (see paragraph 31) for influencing the relative production of the milk product and the retentate milk product. Mendel’s recycling has been construed to be analogous to Rizvi’s first part of the retentate that is fed back into the filtering device. Innings teaches microfiltration of milk products (see paragraph 2) where 90% of the retentate is recirculated into the feed of the filtering device (see paragraph 32).
Since Rizvi already recirculates a first part of the retentate over the filtering device, it would have been obvious to one having ordinary skill in the art to have recycled 90% as taught by Mendel and Rizvi based on conventional expedients useful for achieving the desired concentrations in the milk product.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 and in further view of Maynard (WO 8911226) and Kopf (US 20030059512).
Regarding claim 10, the claim differs from the combination as applied to claim 1, in specifically reciting, wherein the substance is Lactoferrin.
Maynard teaches microfiltration where the retentate can comprise lactoferrin (see paragraph 28 of the machine translation). Kopf also teaches that it has been conventional to use filtration to concentrate lactoferrin (see paragraph 256; figure 1).
Since Rizvi is open to the substance being concentrated, it would have been obvious to have modified Rizvi’s separation process to concentrate lactoferrin as a matter of engineering and/or design based on desired concentrated retentates.
Response to Arguments
Applicant’s remarks with respect to the Bonnelye and Graham references have been considered and are persuasive in light of the amendment to the claims and Applicant’s remarks. Therefore, these references have been withdrawn.
On pages 8-9 and 10-13 of the response, Applicant urges that paragraph 40 of the published application discloses that the relative incline to a horizontal direction is not arbitrary but functionally important for enabling gravitational flow of the concentrated milk product out of the device and it would not have been obvious to one having ordinary skill in the art to add Bonnelye’s cleaning related gravity drainage to a system like Rizvi.
These arguments have been considered but is moot in view of the new grounds of rejection as presented in this Office Action, which teaches and suggests an incline to a filtering device for the purpose of allowing gravitational flow to recover any product retained within an elongated filtering device.
On page 13-14 of the response regarding Nishio, Applicant urges that the reference only discusses the benefits of a connected separation membrane, not their include for efficient discharge of drainage and only refers to steam drainage and does not contemplate an incline with respect to a horizontal direction sufficient for milk product having a predetermined concentration to be emptied form the elongated filtering device due to gravitational force.
These arguments have been considered but are not sufficient to overcome the rejection. Nishio teaches that there is an advantage to providing an incline to the filtering device, because the incline can be advantageous for helping to drain discharge (see paragraphs 288-289). As shown in figure 10, it is clear that there is an angle with respect to a horizontal direction which allows for “steam / drainage” to exit the bottom of the filtering device. By disclosing that the angle helps for drainage, it would have been obvious to one having ordinary skill in the art that Nishio is teaching the incline for the purpose of removing a liquid from within the elongated filtering devices. Since the prior art also teaches that such an incline has been recognized in the art for draining a concentrated product, as taught by BE485, it would have been obvious to one having ordinary skill in the art that the combination is teaching and suggesting an include sufficient for allowing a milk product having some degree of concentration from being drained so as to recover as much of the concentrated product as possible.
Applicant’s remarks on pages 14-16 are not sufficient to overcome the rejection as presented in this Office Action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McGovern (US 20200261850) discloses a process for concentrating a beverage (see paragraph 20), which includes filtering a liquid through a filtering device (figure 2, item 302) into a retentate and a permeate, and a first portion of the retentate is circulated back over the filtering device (see figure 2, 209, “recycle”) and a second part of the retentate is collected (figure 2, item 208).
Felix (US 3155613) teaches introducing air into multiple lines of a filtration process, for the purpose of purging the liquid from said lines (see figure 1, item 72, 74 and column 6, lines 27-45 which shows a first line; see figure 1, item 92 and column 8, lines 1-7).
Lim (US 20080173595) teaches allowing air to traverse through the lines that are present across a membrane filter for removing liquid therefrom (see paragraph 34 and figure 3A)
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792