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 .
Election/Restrictions
Applicant’s election without traverse of Group I and Species D, E and I-K in the reply filed on 6/2/2025 is acknowledged.
Applicant alleges claims 1-19 and 23 read on the elected species D, E and I-K of figures 4A, 4B, 5A, 5B and 9-11. However claim 4 is further identified as reading on a non-elected Species, in particular “a stator” (element 205 and 705) as shown in figures 2A, 2B and 7 (Species B and G); claims 6-8 are further identified as reading on a non-elected Species, in particular “a helicoidal member” (element 207) as shown in figures 2A and 2B (Species B) (helicoidal member 207 is in addition to and different than electrical conductor 405/505 as shown in elected Species D and E of figures 4 and 5); claim 10 is further identified as reading on a non-elected Species, in particular the location of the electrical conductor in the interior cavity of the housing as shown in figures 1A-1C (species A); claims 11 is further identified as reading on a non-elected Species, in particular the location of the electrical conductor on the outer surface of the gas-permeable member as shown in figures 1A-1C (species A); claim 16 is further identified as reading on a non-elected Species, in particular the location of the hydrofoil downstream of the gas permeable member; claims 18 and 19 are further identified as reading on a non-elected Species, in particular “a helicoidal member” (element 207) as shown in figures 2A and 2B (Species B); figure 23 is further identified as reading on a non-elected Species, in particular the location of the gas inlet in the housing and the liquid inlet in gas-permeable membrane as shown in figure 12 (Species L). Accordingly claims 4, 6-8, 10-11, 16, 18-19 and 23 are withdrawn to non-elected species embodiments.
Claims 1-3, 5, 9, 12-15 and 17 are taken up for examination upon the elected invention and species. Claims 20-22 and 24-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Additionally, claims 4, 6-8, 10-11, 16, 18-19 and 23 are also withdrawn as being directed to a non-elected species embodiment and presents a combination of patentably distinct features which are not depicted to required in the elected species D, E and I-K of figures 4A, 4B, 5A, 5B and 9-11. Election was made without traverse in the reply filed on 6/2/2025.
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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 9, 14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kress (WO2018/100553A1).
Regarding claim 1, Kress discloses an apparatus (title; figures 4-6) comprising:
an elongate housing comprising a first end and a second end (figure 4, reference #106, 108 and 158; figure 5, reference #204 and 206; figure 6, reference #408), the housing defining a liquid inlet (figure 4, reference #102; figure 5, reference #204; figure 6, reference #409), a liquid outlet (figure 4, reference #114; figure 5, reference #206; figure 6, reference #440), and an interior cavity adapted for receiving the liquid carrier from a liquid source (figure 4, reference #104; figure 5, reference #204; figure 6, reference #404);
a gas-permeable member at least partially disposed within the interior cavity of the housing (figure 4, reference #150; figure 5, reference #250; figure 6, reference #450), the gas-permeable member comprising a first end adapted for receiving a pressurized gas from a gas source (figure 4 and 5, reference #152; figure 6, reference #452), 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 4, reference #150; figure 5, reference #250; figure 6, reference #450; [0035]; [0042]; [0045]; [0051]);
at least one electrical conductor 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, reference #262; [0046]-[0050]),
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 4, reference #108 and 150; figure 5, reference #204 and 250; figure 6, reference #408 and 450) (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 4, reference #108 and 150; figure 5, reference #204 and 250; figure 6, reference #408 and 450; [0002]-[0005]; [0038]-[0040]; [0049]).
Regarding claim 2, Kress discloses wherein the gas-permeable member is electrically conductive ([0035]).
Regarding claim 9, Kress discloses wherein the electrical conductor is located on the exterior of the housing (figure 5, reference #262).
Regarding claim 14, Kress discloses further comprising a hydrofoil located in the interior cavity of the housing (figure 4, reference #132; figure 5, reference #232).
Regarding claim 15, Kress discloses wherein the hydrofoil is located upstream of the gas-permeable member (figure 4, reference #132 upstream of reference #150; figure 5, reference #232 upstream of reference #250).
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uda (JP2008178870A).
Regarding claim 1, Uda discloses an apparatus (figure 1) comprising:
an elongate housing comprising a first end and a second end (figure 1, reference #3), the housing defining a liquid inlet (figure 1, reference #4), a liquid outlet (figure 1, reference #5), and an interior cavity adapted for receiving the liquid carrier from a liquid source (figure 1, reference #15; and 30);
a gas-permeable member at least partially disposed within the interior cavity of the housing (figure 1, reference #6), the gas-permeable member comprising a first end adapted for receiving a pressurized gas from a gas source (figure 1, reference #11 and 12), 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 (figures 1-3, reference #6, 6a and 6b);
at least one electrical conductor 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 (reference #22, 23 and 24),
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, reference #3 and 6) (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, reference #3 and 6).
Regarding claim 5, Uda discloses wherein the electrical conductor comprises a wire (figure 31, reference #67).
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 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, reference #12 and 22), the housing defining a liquid inlet (figure 1, reference #26), a liquid outlet (figure 1, reference #28), and an interior cavity adapted for receiving the liquid carrier from a liquid source (figure 1, reference #12);
a gas-permeable member at least partially disposed within the interior cavity of the housing (figure 1, reference #20), the gas-permeable member comprising a first end adapted for receiving a pressurized gas from a gas source (figure 1, reference #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, reference #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, reference #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, reference #12 and 20, and arrows; [0020]; [0045]).
However, the reference does not explicitly disclose at least one electrical conductor 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 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, reference #262; [0046]-[0050]).
You teaches another nano bubble generator (title). The reference teaches at least one electrical conductor 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 (figures 4 and 5, reference #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 apparatus 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 because 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 (Kress figure 5, reference #262; 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, reference #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, reference #132 upstream of reference #150; figure 5, reference #232 upstream of reference #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).
Conclusion
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/ELIZABETH INSLER/Primary Examiner, Art Unit 1774