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 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 § 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 other arguments filed 7/21/2026 have been fully considered but they are not persuasive.
Applicant continues to argue against each reference individually. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues Kress cannot teach the electrical conductor because Kress fails to disclose the liquid source flows along and parallel to the outer surface of the gas-permeable membrane from the liquid inlet to the liquid outlet or that it is surrounded by gas. This is not founder persuasive. Kress is not used to teach how the liquid flows, but rather is used to teach “at least one electrical conductor disposed around or integral with the exterior surface of the gas-permeable member and adapted to generate a magnetic flux parallel to the outer surface of the gas-permeable membrane as the liquid carrier flows from the liquid inlet to the liquid outlet”. Kress teaches this as explained above. Kress’s magnetic element 262 is around gas-permeable membrane 250 and generates a parallel flux along the longitudinal axis ([0048]). The flux being parallel means it is parallel to both the inner surface of the gas permeable membrane and the outer surface and the liquid flow, since all are parallel. 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 or the magnetic element being in gaseous space 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. Similarly, Applicant’s argument regarding the design of Kress being different are irrelevant to the teaching of Kress. Examiner has clearly set forth a clear explanation of reasoning for obviousness, as explained in the 103 rejection above.
Applicant argues You cannot teach an electrical conductor because the electronic force providing unit 400 of You is upstream of the gas injection unit 420 which is not a gas permeable membrane. Again, Applicant is arguing a limitation that You is not being used to teach in the obviousness rejection. Applicant is arguing against the You reference individually without considering the combined teachings. 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.
The obviousness rejection of the combination of Russell in view of Kress and You teaches all the limitations as set forth above. Each reference does not need to teach all the limitations or limitations which are not being taught by that reference. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues the references all have different designs and form bubbles in different ways, and therefor cannot be combined. This is not founder persuasive. All references are from the same field of endeavor, being apparatuses for generating nano bubbles; and therefore are analogous art that can be combined for an obviousness rejection.
Applicant argues the teaching of Kress does not disclose the limitations of claim 9. This is found unpersuasive. Again, Applicant is attacking a secondary reference that is not even used to teach such a limitation. Regardless, as seen in figure 5, the magnetic element 262 of Kress is connected and attached to the flange of the outer wall of exterior of the housing and thus located on the exterior of the housing. The combination of You in view of all the teachings of the other reference teaches the limitations as explained above, regardless of the location of the gas-permeable membrane which is not a part of claim 9.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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