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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/22/2026 has been entered.
Claim Interpretation
Claims 1-3, 5, 9, 12-15 and 17 are apparatus claims requiring only the positively recited structural components, although structured with physical features that can perform the stated functions or accomplish the intended uses. Functional limitations state either an intended use or operation, a manner of operating a device, apparatus or system, or what the apparatus/system does. Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Also, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Of course, in the patentability analysis of these apparatus claims, functional features are not ignored and Applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP 8§ 2114, 2173.05(g)).
The recited liquid, nano-bubbles and gas, for example, are considered materials potentially contained within, transient or passing through, generated or produced, or otherwise worked upon by the apparatus rather than structural components of the apparatus. According to the MPEP §2115 [R-2], a material or article worked upon does not limit apparatus claims: Expressions relating an apparatus to contents thereof during an intended operation are of no significance in determining patentability of apparatus claims. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
The limitation “the housing and gas-permeable member being configured such that the flow rate of the liquid carrier from the liquid source as it flows parallel to the outer surface of the gas-permeable member from the liquid inlet to the liquid outlet is greater than the turbulent threshold of the liquid to create turbulent flow conditions, thereby allowing the liquid to shear gas from the outer surface of the gas-permeable member and form nano-bubbles in the liquid carrier” are directed to a manner of operating disclosed apparatus, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In the patentability analysis, the Office applies the broadest reasonable interpretation (BRD consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires the electrical conductor located around or integral with the exterior surface of the gas-permeable membrane, while claim 9, which depends on claim 1, now recites that the electrical conductor is located on the exterior cavity of the housing, which would change the location of the electrical conductor and would fail to include the location limitation of claim 1, upon which claim 9 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-3, 5, 9, 12-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell et al. (U.S. Patent Pub. No. 2020/0003506) in view of Kress (WO2018/100553A1) and You (KR102091672B1) (with paragraph numbers referring to machine translation).
Regarding claim 1, Russell et al. discloses an apparatus (title; figure 1) comprising:
an elongate housing comprising a first end and a second end (figure 1, #12 and 22), the housing defining a liquid inlet (figure 1, #26), a liquid outlet (figure 1, #28), and an interior cavity adapted for receiving the liquid carrier from a liquid source (figure 1, #12);
a gas-permeable member at least partially disposed within the interior cavity of the housing (figure 1, #20), the gas-permeable member comprising a first end adapted for receiving a pressurized gas from a gas source (figure 1, #38 and 44), a second end, and a porous sidewall extending between the first and second ends, the gas-permeable member defining an inner surface, an outer surface, and a lumen (figure 1, #20);
the housing and gas-permeable member being configured such that the flow rate of the liquid carrier from the liquid source as it flows parallel to the outer surface of the gas-permeable member from the liquid inlet to the liquid outlet is greater than the turbulent threshold of the liquid to create turbulent flow conditions, thereby allowing the liquid to shear gas from the outer surface of the gas-permeable member and form nano-bubbles in the liquid carrier (figure 1, #12 and 20, see arrows) (it is noted that the limitation is directed to the to a manner of operating disclosed apparatus and the material, and neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.” The housing and gas-permeable membrane are capable of operating as recited (figure 1, #12 and 20, and arrows; [0020]; [0045]).
However, Russell et al. does not explicitly disclose at least one electrical conductor disposed around or integral with the exterior surface of the gas-permeable membrane and adapted to generate a magnetic flux parallel to the outer surface of the gas-permeable member as the liquid carrier flows from the liquid inlet to the liquid outlet.
Kress teaches another apparatus for producing nano bubbles (abstract). The reference teaches at least one electrical conductor disposed around or integral with the exterior surface of the gas permeable membrane and adapted to generate a magnetic flux parallel to the outer surface of the gas-permeable member as the liquid carrier flows from the liquid inlet to the liquid outlet (figure 5, magnetic element 262 surrounds porous element 250; [0046]-[0050] (positions the magnetic field force lines parallel with the longitudinal axis of the reactor 200 and the inner surface of the porous element 250 ([0048])).
You teaches another nano bubble generator (title). The reference teaches at least one electrical conductor adapted to generate a magnetic flux as the liquid carrier flows from the liquid inlet to the liquid outlet (figures 4 and 5, #4400; [0319]-[0324]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide the electrical conductor of Kress and You on the gas-permeable membrane of Russell et al. One of ordinary skill in the art would reasonably expect such a combination to be suitable given that all references teach nano bubble generators. One of ordinary skill in the art would be motivated to provide an electrical conductor it provides an electromagnetic force to the liquid to soften the liquid in order to further refine gas bubbles present in the liquid or to further generate more gas bubbles (You [0322-[0325]) and because the magnetic field surrounding the fluid passing will aid in generating smaller nanobubbles and/or in generating nanobubbles having a narrower size distribution (Kress [0046]).
Regarding claim 2, Russell et al. in view of Kress and You discloses all the limitations as set forth above. The reference as modified further discloses wherein the gas-permeable member is electrically conductive (Kress [0035]).
Regarding claim 3, Russell et al. in view of Kress and You discloses all the limitations as set forth above. The reference as modified further discloses wherein the electrical conductor comprises an electromagnetic coil (You [0320]).
Regarding claim 5, Russell et al. in view of Kress and You discloses all the limitations as set forth above. The reference as modified further discloses wherein the electrical conductor comprises a wire (You [0320]).
Regarding claim 9, Russell et al. in view of Kress and You discloses all the limitations as set forth above. The reference as modified further discloses wherein the electrical conductor is located on the exterior of the housing (You figures 4 and 5, reference #4400).
Regarding claim 12, Russell et al. in view of Kress and You discloses all the limitations as set forth above. While the reference as modified does not disclose the electrical conductor is located downstream of the gas-permeable member, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to further refine gas bubbles present in the liquid or to further generate more gas bubbles and smaller nanobubbles having a narrow size distribution by placing the electrical conductor downstream of the gas-permeable membrane where the gas has already been introduced in the liquid, since it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167.
Regarding claim 13, Russell et al. in view of Kress and You discloses all the limitations as set forth above. The reference as modified further discloses wherein the electrical conductor is located upstream of the gas-permeable member (You figure 5, #4400 upstream of gas inlet 420 which would be upstream of gas-permeable member of Russell et al. which first end contains the gas inlet).
Regarding claims 14 and 15, Russell et al. in view of Kress and You discloses all the limitations as set forth above. The reference as modified further discloses a hydrofoil located in the interior cavity of the housing and upstream of the gas-permeable member in order to accelerate the angular velocity of the fluid (Kress figure 4, #132 upstream of #150; figure 5, #232 upstream of #250; [0049]).
Regarding claim 17, Russell et al. in view of Kress and You discloses all the limitations as set forth above. While the reference as modified does not explicitly disclose wherein the hydrofoil is physically attached to the gas-permeable member, as the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to connect the hydrofoil and gas-permeable member of Russell et al. as modified, since such modification would have involved making elements integral. Making elements integral is generally recognized as being within the level of ordinary skill in the art. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and the Uda reference have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's other arguments filed 4/22/2025 have been fully considered but they are not persuasive.
Applicant argues Kress does not disclose an electrical conductor as claimed because Kress’s magnetic element 262 directs magnetic force “radially inward” [0050]). Examiner finds this argument unpersuasive. Kress discloses that the electrical conductor magnets may be magnetized in different configurations, with one configuration positioning the magnetic force lines parallel with the longitudinal axis of the reactor and the inner surface of the porous element 250 ([0048]). As such, the electrical conductor of Kress reads on the limitations as claims in claim 1. Regarding Applicant’s argument about the flow of liquid in Kress, this is irrelevant since the secondary reference Kress is used to teach the provision of an electrical conductor; and therefore, arguments directed to other parts of the secondary reference are irrelevant because they have no bearing on the teaching of providing an electrical conductor.
Applicant argues You does not disclose the electrical conductor around a gas-permeable membrane because You does not disclose a gas-permeable membrane. While this may be true, the office action uses You as a secondary reference to teach the motivation for providing an electrical conductor on a nano bubble generator and is not used to teach its location being around a gas-permeable membrane.
Regarding the 103 rejection, Applicant argues the secondary references do not disclose permeable members or permeable members in the correct arrangement and therefore the combination of references does not teach the limitations of claim 1. Examiner finds this argument unpersuasive. As explained above, Kress teaches the exact location of the electrical conductor and its magnetic force being parallel as claimed, including the motivation to do so. The secondary references Kress and You are used to teach the provision of an electrical conductor; and therefore, arguments directed to other parts of the secondary references are irrelevant because they have no bearing on the teaching of providing an electrical conductor. Applicant has provided no evidence as to why providing an electrical conductor on the gas-permeable membrane of Russell would destroy the design of Russell, beyond reciting the conclusory statement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH INSLER whose telephone number is (571)270-0492. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
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/ELIZABETH INSLER/Primary Examiner, Art Unit 1774
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