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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/24/2026 has been entered.
Response to Amendment
Claim 9 is amended. Claim 13 is new. Thus, claims 9-13 are pending. In view of the Applicant’s amendments, the rejections of claims 9-12 under 35 USC 112(b) are withdrawn. However, new rejections under 35 USC 112(b) are presented below.
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 9-13 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.
Regarding claim 9, the claim recites “using an emulsion flow system” in the preamble. It is not clear if this is a structure of the liquid-liquid multistage apparatus or an unclaimed piece of equipment intended to be used with the liquid-liquid multistage apparatus. For examination on the merits, “using an emulsion flow system” has been interpreted as an intended use of the liquid-liquid multistage apparatus.
Claims 10-13 are rejected because they depend from indefinite claim 9.
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.
Claims 9, 11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ji et al. (US PGPub 2007/0217285, hereinafter Ji).
Regarding claim 9, Ji discloses a multistage apparatus using an emulsion flow system, the multistage apparatus comprising:
two or more stages (figure 3, compartments 304a-e) separated by at least one stage partition plate (dividers 308a-d) installed within a single-piece container (item 300),
wherein each of the two or more stages is provided with at least one of a droplet ejection nozzle or a stirring blade (agitators 312a-f) for mechanical stirring by rotation,
wherein a heavy liquid phase communicates with a first adjacent stage at a bottom of the single-piece container, and a light liquid phase communicates with a second adjacent stage at a top of the single-piece container so that the light liquid phase is sent to the second adjacent stage without overflowing (see dividers 308a-e). As shown in the figure, the dividers allow for communication at a lower part of the stage and an upper part of the stage. The heavy and light liquid phases are considered material worked upon by the apparatus, and thus do not limit the apparatus claims. See MPEP 2115. Further, it is well-settled that an apparatus must be defined by its structure. See MPEP 2114. In this case, from a structural standpoint, the communication of liquid phases at the upper and/or lower part of the stages only means that the partition plates must have a structure that allows for such communication. As can clearly be seen in figure 3 of Ji, dividers 308a-d do not extend to the top or bottom of the tank, and thus allow for such communication, meeting the claim.
With regard to the limitations relating to liquid-liquid mixing and phase mixing, these are considered to relate only to the material worked upon by the apparatus and intended use of the apparatus, both of which are not germane to the patentability of an apparatus. See MPEP 2115 and 2111.02.
With regard to the limitation of “without overflowing,” the instant Specification defines overflowing as a liquid feed mainly by suction force of an impeller or stirring blade (paragraph 0010, “the mixer settler utilizes the liquid feed based on an overflow mainly by the suction force of an impeller (stirring blade)”). Ji clearly does not feed liquid by suction from the agitators 312a-f, instead using a feed stream 320 flowing from elsewhere. Thus, Ji is considered to meet the limitation “without overflowing.”
Regarding claim 11, Ji discloses each of the two or more stages has a backflow preventing plate to prevent backflow from the rear stage to the front stage (see figure 3). Due to the breadth of the claim language, compartments 304a-b, 304c-d, and 304e-f could be considered stages divided by dividers 308b and 308d. In this interpretation, dividers 308a, c, and f would be the backflow preventing plates. There is no specific structure recited in the claims with relation to the partition plates and the backflow plates, and thus any plate could be considered either of these structures.
Regarding claim 13, the claim is a method of operation of the device, as demonstrated by the clear method language in the claim (“are phase mixed”, etc.). As held in In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), “the manner or method in which such machine is utilized is not germane to the issue of patentability of the machine itself.” Nonetheless, the apparatus disclosed in Ji contains all the necessary structure to perform the functions stated in claim 13 of the present application, and thus the claim is met. If further structure is required to perform the method steps recited in claim 13, that structure should be claimed so that it will be given patentable weight as part of the apparatus claims.
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 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US PGPub 2007/0217285, hereinafter Ji) in view of Morgan et al. (US 6817376, hereinafter Morgan).
Regarding claim 10, Ji is silent to a direction changing plate as recited. Morgan teaches a direction-changing partition plate is provided between the stage partition plates to change the flow direction of an emulsion flow in which the heavy liquid phase and the light liquid phase are mixed (see fluid flow lines in figure 2). To one of ordinary skill in the art before the effective filing date of the claimed invention, it would have been obvious to have provided the apparatus of Ji with the direction-changing plate of Morgan for the purpose of introducing turbulence to the material to increase mixing.
Regarding claim 12, Ji discloses each of the two or more stages has a backflow preventing plate to prevent backflow from the rear stage to the front stage (see figure 3). Due to the breadth of the claim language, compartments 304a-b, 304c-d, and 304e-f could be considered stages divided by dividers 308b and 308d. In this interpretation, dividers 308a, c, and f would be the backflow preventing plates. There is no specific structure recited in the claims with relation to the partition plates and the backflow plates, and thus any plate could be considered either of these structures.
Response to Arguments
Applicant's arguments filed 02/24/2026 have been fully considered but they are not persuasive.
The Applicant argues that the apparatus according to claim 9 and that of Ji are different in terms of their purpose (remarks, page 5). Whether or not this is true, it is well-settled that an apparatus claim must be differentiated from the prior art based on its structure to be patentable (see MPEP 2114) and that secondary considerations are irrelevant to rejections under 35 USC 102 (see MPEP 2131.04). The Applicant has not pointed out any structure in the claims that is different from that of Ji, but has merely pointed out differences in intended use and material worked upon by the apparatus. Thus, this argument is not persuasive.
The Applicant argues that Ji uses an overflow method for feeding, citing Ji’s use of an overflow divider as evidence (remarks, pages 6 and 7). The Examiner respectfully disagrees. Ji uses an overflow divider (i.e. a divider that allows for flow over the top but not under the bottom) in its last compartment, but the Examiner fails to see any relation between this and the overflow feed as defined by the instant Specification. The instant Specification defines overflow as a liquid feed mainly by suction force of an impeller or stirring blade (paragraph 0010, “the mixer settler utilizes the liquid feed based on an overflow mainly by the suction force of an impeller (stirring blade)”). Ji clearly does not feed liquid by suction from the agitators 312a-f, instead using a feed stream 320 flowing from elsewhere. It is noted that the overflow divider of Ji is at the downstream end of the device, so it is not clear how it would have any effect on feeding, and that the instant Specification defines overflow as related to impellers within the device and not to the dividers. Thus, this argument is not persuasive.
It is noted that there are structures of the invention that have not been claimed that would likely overcome the Ji reference. For example, figure 4A includes light liquid phase inlets and outlets in each stage that are not present in Ji. Also, figure 4A appears to include a heavy liquid phase inlet and outlet that are in specific positions, while Ji does not appear to have an inlet and outlet in those positions. The Examiner encourages the Applicant to claim additional structure not found in the Ji reference instead of adding further limitations relating to the intended use, material worked upon, or method of operation of the device, as these three aspects are given little patentable weight in an apparatus claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC C HOWELL whose telephone number is (571)272-9834. The examiner can normally be reached Monday-Friday 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARC C HOWELL/Primary Examiner, Art Unit 1774