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 Rejections - 35 USC § 103
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 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.
Claims 1-2, 12-14, 16-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Zeren et al (US Patent Application No. 20140339169 A1) hereinafter Zeren in view of Vuong (US Patent No. 20080190849 A1) hereinafter Vuong.
Regarding Claim 1, Zeren teaches a sub-sea desalination system (i.e., a submersible water desalination system; Abstract) that involves reverse osmosis membrane units without external casings (i.e., a plurality of water separation membrane elements; Fig. 1, #5) that are directly exposed to a large body of salty water under high static pressure forces with a sub-sea pump (i.e. at a first depth; Fig. 1, #2) that creates a lower pressure inside the membrane unit that creates a driving force for desalination (i.e., that are supplied with salinated water under pressure, and which produce at least partially desalinated product water and concentrate or brine; Paragraph 0032) where the pump is secured to the sea floor by a support structure (i.e., a motorized submerged pump that rests upon or is affixed to the seabed; Fig. 1, #22; Paragraph 0066). Zeren further teaches that the membrane units are connected to a main fresh water accumulator (i.e., a product water collector; Fig. 1, #7) via fresh water connection pipes (i.e., a product water collector that receives product water from the membrane elements; Fig. 1, #6; Paragraph 0055) with the suction side of the sub-sea pump (i.e., a motorized submerged pump; Fig. 1, #2) being directly connected to the accumulator exit (Fig. 1, #11) via a direct connection conduit (i.e., a permeate conduit that transports product water from the collector to a motorized submerged pump remotely located from the membrane elements and collector; Fig. 1, #13) and the fresh water generated from the RO station can be pumped directly to the shoreline via conduit (i.e., the submerged pump having a suction side that receives product water from the permeate conduit and a discharge side that pumps product water away from the desalination apparatus through a product water conduit for surface or subsurface use; Fig. 1, #34). Zeren further discloses a static head, imparting pressure, can be adjusted by lowering or lifting a u-tube portion (Fig. 2, #15) of the pump suction line (Fig. 2, #14) and the manipulation of the suction line allows for a steady supply of fresh water/permeate to the pump (i.e., a permeate conduit transports the product water downwardly from the collector to a motorized submerged pump wherein the second depth is sufficiently greater than the first depth so that product water standing column height maintains a net positive suction head; Paragraph 0060). Zeren further discloses that the pressure differential across the membranes should exceed the osmotic pressure of the salty water in order for the process to start (Paragraph 0011) and, except for the conduits downstream of the pump (Fig. 1, #2), the remainder of the conduits may be filled with fresh water at pressure equilibrium with the surrounding sea water (i.e., the permeate conduit having a standing column of the product water between the membrane elements and the pump suction side, the product water standing column having a height; wherein the second depth is sufficiently greater than the first depth so that product water standing column height maintains a net positive suction head that prevents inlet side cavitation during both startup and operation of the pump; Paragraph 0062). Zeren further teaches that the membrane units (Fig. 1, #5) are suspended above the sea floor (Paragraph 0031) and that the pump (Fig. 1, #2) is supported by a support structure (Fig. 1, #22) that is secured to the sea floor (Paragraph 0066), as well as directional arrows showing water flow going ultimately downwards towards the pump suction (Fig. 1). Raising and lowering the pump suction line is an art recognized alternative for increasing the suction head pressure by increasing the depth of the pump relative to the membrane elements as both solutions will accomplish increased head pressure on the suction side of the pump.
Zeren does not teach a plurality of water separation membrane elements that are buoyantly moored above a seabed and a motorized submerged pump at a second depth greater than the first depth.
However, Vuong teaches that the total system (Fig. 1) is floating and tethered to the ocean floor by an anchor (Fig. 1, #100) with the elements of the system configured to be neutrally buoyant so that floats or weights can be added to hold the modules at a desired depth (i.e., a plurality of water separation membrane elements that are buoyantly moored above a seabed; Paragraph 0113) for the purpose of providing a pressure sufficient to produce potable water of reduced dissolved salts content from seawater via reverse osmosis (Paragraph 0006). Vuong further teaches a pump (i.e., a motorized submerged pump; Fig. 11B, #724) located vertically below the suspended system (i.e., at a second depth greater than the first depth; Fig. 11B, #720; Paragraph 0147) for the purpose of saving energy (Paragraph 0149).
Vuong is analogous to the claimed invention because it pertains to systems and methods for the desalination of seawater (Paragraph 0002). It would have been obvious to one of ordinary skill in the art to modify the sub-sea desalination device taught by Zeren with the neutrally buoyant system as taught by Vuong because neutrally buoyant system would enable the reverse osmosis system to operate in areas where a depth for providing sufficient pressure to perform reverse osmosis is above the depth of the sea floor. It would have been obvious to one of ordinary skill in the art to modify the sub-sea desalination device as taught by Zeren with the pump located vertically below the reverse osmosis membranes as taught by Vuong because the positioning would reduce pumping energy.
Furthermore, the limitation “wherein the second depth is sufficiently greater than the first depth so that product water standing column height maintains a net positive suction head that prevents inlet side cavitation during both startup and operation of the pump” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Regarding Claim 2, Zeren in view of Vuong makes obvious the system of claim 1. Zeren further discloses a reverse osmosis sub-sea desalination system (i.e., wherein the water separation membrane elements are reverse osmosis elements; Abstract).
Regarding Claim 12, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view Vuong does not explicitly teach the second depth [of the submerged pump] is at least 3 meters greater than the first depth [of the membrane elements]. Zeren does teach a static head, imparting pressure, can be adjusted by lowering or lifting a u-tube portion (Fig. 2, #15) of the pump suction line (Fig. 2, #14) and the manipulation of the suction line allows for a steady supply of fresh water/permeate to the pump (Paragraph 0060). As a result, the difference in height caused by lowering or lifting the u-tube portion of the tube (i.e., permeate/pump suction line) performs the same function as changing the depth difference between the membrane elements and the pump by allowing a greater accumulation of water within the pipe. There is not a specific depth or range of depths between the accumulator and the pump, taught by Zeren in view of Vuong. However, a person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense (KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007)). Therefore, it would have been obvious for one of ordinary skill in the art to try height differences between the accumulator and the pump of at least 3 meters if the supply of permeate flow to the pump suction was not steady during pump operation. See MPEP 2141(III)(E).
Regarding Claim 13, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not explicitly teach the second depth [of the submerged pump] is at least 5 meters greater than the first depth [of the membrane elements]. Zeren does teach a static head, imparting pressure, can be adjusted by lowering or lifting a u-tube portion (Fig. 2, #15) of the pump suction line (Fig. 2, #14) and the manipulation of the suction line allows for a steady supply of fresh water/permeate to the pump (Paragraph 0060). As a result, the difference in height caused by lowering or lifting the u-tube portion of the tube (i.e., permeate/pump suction line) performs the same function as changing the depth difference between the membrane elements and the pump by allowing a greater accumulation of water within the pipe. There is not a specific depth or range of depths between the accumulator and the pump, taught by Zeren in view of Vuong. However, a person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense (KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007)). Therefore, it would have been obvious for one of ordinary skill in the art to try height differences between the accumulator and the pump of at least 5 meters if the supply of permeate flow to the pump suction was not steady during pump operation. See MPEP 2141(III)(E).
Regarding Claim 14, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not explicitly teach the second depth [of the submerged pump] is at least 10 meters greater than the first depth [of the membrane elements]. Zeren does teach a static head, imparting pressure, can be adjusted by lowering or lifting a u-tube portion (Fig. 2, #15) of the pump suction line (Fig. 2, #14) and the manipulation of the suction line allows for a steady supply of fresh water/permeate to the pump (Paragraph 0060). As a result, the difference in height caused by lowering or lifting the u-tube portion of the tube (i.e., permeate/pump suction line) performs the same function as changing the depth difference between the membrane elements and the pump by allowing a greater accumulation of water within the pipe. There is not a specific depth or range of depths between the accumulator and the pump, taught by Zeren in view of Vuong. However, a person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense (KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007)). Therefore, it would have been obvious for one of ordinary skill in the art to try height differences between the accumulator and the pump of at least 10 meters if the supply of permeate flow to the pump suction was not steady during pump operation. See MPEP 2141(III)(E).
Regarding Claim 16, Zeren in view of Vuong makes obvious the system of claim 1. Zeren further discloses that the pump (Fig. 1, #2) is supported by support structure (Fig. 1, #22) that is secured to the sea floor (i.e., wherein the pump is affixed to a seabed; Paragraph 0066).
Regarding Claim 17, Zeren in view of Vuong makes obvious the system of claim 1. Zeren further teaches where the pump is secured to the sea floor by a support structure (i.e., wherein the pump rests upon the seabed; Fig. 1, #22; Paragraph 0066).
Regarding Claim 18, Zeren in view of Vuong makes obvious the system of claim 1. Vuong further teaches a recovery rate of about 2% with a lower recovery rate being desirable because higher-salinity feed water will not be contacting the lower portions of the membrane elements (Paragraph 0139).
It would have been obvious for one of ordinary skill in the art to operate the sub-sea desalination system taught by Zeren at a recovery ratio of 2% taught by Vuong because it would prevent the lower membranes from contacting high-salinity feed water.
Furthermore, the limitation “wherein the system has a recovery ratio of product water volume to feedwater volume that is no greater than 40%” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the prior art product structure is capable of performing the intended use as recited, a prima facie case of either anticipation or obviousness has been established because the devices meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II).
Regarding Claim 19, Zeren in view of Vuong makes obvious the system of claim 1. Vuong further teaches a recovery rate of about 2% with a lower recovery rate being desirable because higher-salinity feed water will not be contacting the lower portions of the membrane elements (Paragraph 0139).
It would have been obvious for one of ordinary skill in the art to operate the sub-sea desalination system taught by Zeren at a recovery ratio of 2% taught by Vuong because it would prevent the lower membranes from contacting high-salinity feed water.
Furthermore, the limitation “wherein the system has a recovery ratio of product water volume to feedwater volume that is no greater than 20%” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115
Regarding Claim 21, Zeren in view of Vuong makes obvious the system of claim 1. Vuong further teaches that the reverse osmosis system is suspended or tethered to the bottom at a specific depth (i.e., wherein the first depth is a fixed depth; Paragraph 0007).
Claims 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Zeren in view of Vuong as applied to claim 1 above, and further in view of Babbitt et al (US Patent No. 20150104328 A1) hereinafter Babbitt.
Regarding Claim 3, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach wherein the pump comprises a multistage pump.
However, Babbitt teaches at least one pump in fluid communication with an inlet of at least one other pump (i.e., a multistage pump) for the purpose of increasing hydraulic fluid pressure through staged pumping (Paragraph 0076).
Babbitt is analogous to the claimed invention because it pertains to subsea pumping including a desalination system (Abstract). It would have been obvious to one of ordinary skill in the art to use the multistage pump taught by Babbitt with the sub-sea desalination system made obvious by Zeren in view of Vuong because it would increase the hydraulic fluid pressure of the pump outlet.
Regarding Claim 4, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach wherein the pump comprises a positive displacement, centrifugal or axial-flow pump.
However, Babbitt teaches at that suitable pumps include positive displacement pumps, centrifugal pumps, or axial piston pumps (i.e., a positive displacement, centrifugal or axial-flow pump; Paragraph 0070) because subsea pumping reduces the amount of hydraulic lines and/or routing required (Paragraph 0102) and because the subsea pumping apparatus (Figs. 7A-7E, #10c) is configured to have components, such as the pumps, be modular, replaceable, reconfigurable, and/or interchangeable within the subsea pumping apparatus (Paragraph 0103).
It would have been obvious to one of ordinary skill in the art to use the positive displacement pump in the subsea pumping apparatus taught by Babbitt with the sub-sea desalination system made obvious by Zeren in view of Vuong because the pump would be modular, replaceable, reconfigurable, and/or interchangeable and would reduce the amount of hydraulic lines required.
Regarding Claim 5, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach wherein the pump comprises a piston pump.
However, Babbitt teaches at that suitable pumps include piston pumps (i.e., a piston pump; Paragraph 0070) because subsea pumping reduces the amount of hydraulic lines and/or routing required (Paragraph 0102) and because the subsea pumping apparatus (Figs. 7A-7E, #10c) is configured to have components, such as the pumps, be modular, replaceable, reconfigurable, and/or interchangeable within the subsea pumping apparatus (Paragraph 0103).
It would have been obvious to one of ordinary skill in the art to use the piston pump in the subsea pumping apparatus taught by Babbitt with the sub-sea desalination system made obvious by Zeren in view of Vuong because the pump would be modular, replaceable, reconfigurable, and/or interchangeable and would reduce the amount of hydraulic lines required.
Regarding Claim 6, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach wherein the pump comprises a plunger pump.
However, Babbitt teaches at that suitable pumps include plunger pumps (i.e., a plunger pump; Paragraph 0070) because subsea pumping reduces the amount of hydraulic lines and/or routing required (Paragraph 0102) and because the subsea pumping apparatus (Figs. 7A-7E, #10c) is configured to have components, such as the pumps, be modular, replaceable, reconfigurable, and/or interchangeable within the subsea pumping apparatus (Paragraph 0103).
It would have been obvious to one of ordinary skill in the art to use the plunger pump in the subsea pumping apparatus taught by Babbitt with the sub-sea desalination system made obvious by Zeren in view of Vuong because the pump would be modular, replaceable, reconfigurable, and/or interchangeable and would reduce the amount of hydraulic lines required.
Regarding Claim 7, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach wherein the pump comprises a rotary pump.
However, Babbitt teaches at that suitable pumps include screw or gear pumps (i.e., a rotary pump; Paragraph 0070) because subsea pumping reduces the amount of hydraulic lines and/or routing required (Paragraph 0102) and because the subsea pumping apparatus (Figs. 7A-7E, #10c) is configured to have components, such as the pumps, be modular, replaceable, reconfigurable, and/or interchangeable within the subsea pumping apparatus (Paragraph 0103).
It would have been obvious to one of ordinary skill in the art to use the screw pump in the subsea pumping apparatus taught by Babbitt with the sub-sea desalination system made obvious by Zeren in view of Vuong because the pump would be modular, replaceable, reconfigurable, and/or interchangeable and would reduce the amount of hydraulic lines required.
Regarding Claim 8, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach wherein the pump comprises a centrifugal pump.
However, Babbitt teaches at that suitable pumps include centrifugal pumps (i.e., a centrifugal pump; Paragraph 0070) because subsea pumping reduces the amount of hydraulic lines and/or routing required (Paragraph 0102) and because the subsea pumping apparatus (Figs. 7A-7E, #10c) is configured to have components, such as the pumps, be modular, replaceable, reconfigurable, and/or interchangeable within the subsea pumping apparatus (Paragraph 0103).
It would have been obvious to one of ordinary skill in the art to use the centrifugal pump in the subsea pumping apparatus taught by Babbitt with the sub-sea desalination system made obvious by Zeren in view of Vuong because the pump would be modular, replaceable, reconfigurable, and/or interchangeable and would reduce the amount of hydraulic lines required.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Zeren in view of Vuong as applied to claim 1 above, and further in view of Evans et al (US Patent No. 20190047879 A1) hereinafter Evans.
Regarding Claim 15, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not explicitly teach wherein the first depth is adjustable to increase or decrease hydrostatic pressure on the apparatus and the net positive suction head.
However, Evans teaches a bladder (Fig. 9, #58) that is the primary collector of fresh water that is used to control buoyancy of the system (Figs 9, #20) for positioning at a desired depth and/or pressure (Paragraph 0027). Evans further teaches that the method of lifting by the bladder is considerably more controllable and reliable than using air filled bladders insofar as the lifting provided by the fresh water, which is incompressible, is more constant during ascent (Paragraph 0006).
Evans is analogous to the claimed invention because it pertains to a desalination system that is deployable in a body of water (Abstract). It would have been obvious to one of ordinary skill in the art to modify the sub-sea desalination system made obvious by Zeren in view of Vuong with the bladder taught by Evans because the lifting method of the bladder filled with fresh water would lift more controllably than an air filled bladder.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Zeren in view of Vuong as applied to claim 1 above, and further in view of Discenzo et al (US Patent No. 6663349 B1) hereinafter Discenzo.
Regarding Claim 22, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach further comprising one or more sensors that detect inlet side cavitation.
However, Discenzo teaches the detection of inlet or suction pressure which is sent to the control system (Fig. 1, #8; Col. 5, Lines 18-36) and a cavitation detection controller (Fig. 2, #70) that utilizes values from a pressure suction sensor (Fig. 2, #24) to determine incipient cavitation (i.e., further comprising one or more sensors that detect inlet side cavitation; Col. 6, Lines 16-67) for the purpose of reducing the damage or wear associated with pump cavitation (Col. 2, Lines 42-55).
Discenzo is analogous to the claimed invention because it pertains to the art of industrial controllers, control systems, and control methodology for controlling pump cavitation and blockage (Col. 1, Lines 14-16). It would have been obvious to one of ordinary skill in the art to modify the sub-sea desalination system made obvious by Zeren in view of Vuong with the cavitation detection as taught by Discenzo because the cavitation detection would reduce the damage or wear on the pump associated with pump cavitation.
Regarding Claim 23, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach further comprising one or more sensors or controls that limit or avoid inlet side cavitation during the submerged pump operation.
However, Discenzo teaches the detection of inlet or suction pressure which is sent to the control system (Fig. 1, #8; Col. 5, Lines 18-36) and a cavitation detection controller (Fig. 2, #70) that utilizes values from a pressure suction sensor (Fig. 2, #24) to determine incipient cavitation (i.e., further comprising one or more sensors or controls that limit or avoid inlet side cavitation during the submerged pump operation; Col. 6, Lines 16-67) for the purpose of reducing the damage or wear associated with pump cavitation (Col. 2, Lines 42-55).
It would have been obvious to one of ordinary skill in the art to modify the sub-sea desalination system made obvious by Zeren in view of Vuong with the cavitation detection as taught by Discenzo because the cavitation detection would reduce the damage or wear on the pump associated with pump cavitation.
Furthermore, the limitation “that limit or avoid inlet side cavitation during the submerged pump operation” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Zeren in view of Vuong as applied to claim 1 above, and further in view of Sheth et al (US Patent Application No. 20070110593 A1) hereinafter Sheth.
Regarding Claim 24, Zeren in view of Vuong makes obvious the system of claim 1. Zeren in view of Vuong does not teach further comprising a torque limiting coupling that limits or avoids inlet side cavitation during the submerged pump operation.
However, Sheth teaches a coupling member with a torque limiting element (i.e., teach further comprising a torque limiting coupling; Paragraph 0007) for the purpose of reducing or preventing failure of the pump (Paragraph 0006).
Sheth is analogous to the claimed invention because it pertains to submersible pumps (Paragraph 0002). It would have been obvious to one of ordinary skill in the art to modify the sub-sea desalination system as made obvious by Zeren in view of Vuong with the coupling member as taught by Sheth because the coupling member would reduce or prevent failure of the pump.
Furthermore, the limitation “that limit or avoid inlet side cavitation during the submerged pump operation” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Response to Amendment
The amendment filed on 07 OCTOBER 2025 has been entered.
In view of the amendment to the claims, the amendment of claims 23-24 has been acknowledged.
In view of the amendment to claims 23-24, the claim objections have been withdrawn.
Response to Arguments
Applicant’s arguments filed on 07 OCTOBER 2025 have been fully considered.
Applicant argues, regarding claim 1, that Zeren et al (US Patent Application No. 20140339169 A1) hereinafter Zeren does not teach different relative depths of separation membrane elements and the motorized submerged pump and the u-tube taught by Zeren, which would supply a positive suction pressure to the submerged pump, does not explicitly mention pump cavitation or the prevention thereof (Arguments filed 07 OCTOBER 2025, Page 6 to Page 7, Paragraph 1).
Applicant argues, regarding claim 1, that the u-tube taught by Zeren is not an art recognized alternative for increasing the depth of the pump relative to the membrane separation elements (Arguments filed 07 OCTOBER 2025, Page 7, Paragraphs 2-3).
Applicant argues, regarding claim 1, that the expected results argument pertains to the preamble and therefore does not apply to the cavitation prevention limitation of the instant claim (Arguments filed 07 OCTOBER 2025, Page 7, Paragraph 4 to Page 8, Paragraph 3).
Applicant argues, regarding claims 12-14, that steady flow from the permeate side of the membrane does not necessarily maintain positive suction head pressure and therefore it would not be obvious to experiment with different distances between the membrane separation elements and the submerged pump to achieve stable system operation (Arguments filed 07 OCTOBER 2025, Page 8, Paragraphs 4-6).
The Examiner respectfully disagrees.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the Examiner stated “Zeren does not teach a plurality of water separation membrane elements that are buoyantly moored above a seabed and a motorized submerged pump at a second depth greater than the first depth”. Zeren explicitly teaches that the u-tube is capable of providing enough pressure to lift the permeate water to the surface without the use of a pump, and that a pump can be used to increase the pressure differential across the membrane to improve the water flux of the membranes (Paragraph 0022). Vuong further teaches a pump (i.e., a motorized submerged pump; Fig. 11B, #724) located vertically below the suspended system (i.e., at a second depth greater than the first depth; Fig. 11B, #720; Paragraph 0147) for the purpose of saving energy (Paragraph 0149). Combining the references would lead to the same configuration of the instant claim with a pipe that is full of water between a membrane separation system and a lower submerged pump. The prevention of cavitation of the two systems would be the same.
Regarding Applicant’s arguments against the art recognized alternative u-tube as taught by Zeren, Applicant has not described how the maintained water column of the instant application is different from the water column maintained by the u-tube as taught by Zeren. Both systems provide a standing column of water to the pump. Simply stating that the water “maintains a net positive suction head that prevents inlet side cavitation during both start-up and operation of the submerged pump” does not add any difference in structure to the systems.
Regarding Applicant’s arguments that the expected results argument pertains to the preamble and therefore does not apply to the cavitation prevention limitation of the instant claim, The Examiner agrees with the Applicant in the use of the incorrect case law. However, different case law applies and the prior art rejections still teach the same structure as the instant claim. The limitation “wherein the second depth is sufficiently greater than the first depth so that product water standing column height maintains a net positive suction head that prevents inlet side cavitation during both startup and operation of the pump” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115. There is no structural difference imparted to the system by the concept of preventing cavitation. The Applicant simply asserts that a standing column of water will prevent cavitation, and the combination of Zeren and Vuong teach a standing water column with the submerged pump being located below the separation membrane elements. Furthermore, Applicant asserts that a distance may be relevant to preventing cavitation but fails to mention the other standard parameters such as the inlet flow rate/membrane flux, pump sizing, and pipe diameter. For the sake of an example, the system could be run such that the membranes foul and the product water column disappears because the pump is not shut off. Therefore, the maintenance of a standing water column is directed to a manner of using the invention and not to a structural difference imparted on the invention. The column of water simply needs to be capable of holding enough water to prevent suction side cavitation on the pump.
Regarding Applicant’s arguments for claims 12-14, the height of the elements is simply one element of maintaining a liquid level on the suction side of the pump. Height is not specified but entirely depends upon the sizing of the application and the pump parameters that have been chosen for the application. Smaller pumps require less suction head and thus less height. Larger pumps can require both more height and a greater pipe diameter and separation membrane flux or even multiple membranes such that the permeate flow is able to sustain a full pipe with the appropriate suction pressure. All pumps will have specifications for net positive suction head supplied by the manufacturer, which one of ordinary skill in the art will take into account during the designing of conduits feeding their chosen pump. Providing sufficient net positive suction head is simply following the manufacturer’s directions for installing and using their pumps and not an inventive feature of a system, unless there is an unexpected result from changing such a height, but preventing cavitation is the entire point of the manufacturer providing a required net positive suction head specification.
Applicant’s arguments have been fully addressed but are not persuasive. All other arguments have been indirectly addressed.
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 ADAM ADRIEN GERMAIN whose telephone number is (703)756-5499. The examiner can normally be reached Mon - Fri 7:30-4:30.
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/A.A.G./Examiner, Art Unit 1777
/Ryan B Huang/Primary Examiner, Art Unit 1777