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
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on January 22, 2026.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 4-10, 12-14, 16 & 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20180118596 A1 (hereinafter US 596).
Regarding claim 1, US 596 discloses a coffee maker (see US 596 coffee machine/brew unit - claim 1, figures 1, 4 and paragraphs [0005], [0017], [0018], [0047], [0060]).
US 596 discloses that the coffee maker comprises a water supply opening (see US 596 water supply line - figure 1 water (1) supplied via line), a scale inhibitor dosing element (see US 596 a scale inhibitor dosing unit - claim 1, figures 3a-3b and paragraphs [0009], [0015], [0031]-[0034], [0063]), a heating unit (see US 596 – heating element, separate heating unit, “the heating unit (and thus in some embodiment the descaling reactor) may be configured as steam chamber”, and/or the descaling reactor configured as boiler - figures 1, 4 and paragraphs [0037], [0054], [0060]), a scale collector element (see US 596 scale inhibitor adsorbent, with or without a membrane, of the outlet unit – abstract, figures 1-4 and paragraphs [0015], [0024]-[0030], [0039]), and a water processing unit (see US 596 brewing unit/coffee maker – paragraphs [0005], [0017], [0047], [0060] and figures 1, 4).
US 596 discloses a flow control device is configured for providing a fluid comprising water to flow from the water supply opening via the heating unit to the water processing unit (see US 596 flow control elements, such as “piping, valves, venturies, and other components or parts as present in the water flow path” (see US 596 paragraphs [0007]) – figures 1, 4 and paragraphs [0007], [0020], [0053]).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed flow control device of the present application, and therefore, the structure of US 596 is presumed inherently capable of providing a fluid comprising water to flow from the water supply opening via the heating unit to the water processing unit.
US 596 discloses various domestic applications including a kettle, a coffee maker, an espresso maker, a tea maker, a hot chocolate maker (see US 596 paragraph [0017] and claim 13). US 596 discloses “heating unit (and thus in some embodiment the descaling reactor) may be configured as steam chamber, and thus be configured to provide steam” (see US 596 paragraph [0037]). Hence, US 596 is deemed to discloses a coffee maker with a steam function.
Therefore, even if US 596 does not disclose the water processing unit comprises a brewing unit and a steam pipe, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate a pipe and/or tubing, as disclosed in US 596, with the steam chamber, as disclosed in US 596, because it would assist with the movement of steam from the chamber to a new and/or final destination/end user.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to incorporate a pipe and/or tubing, as disclosed in US 596, with the steam chamber, as disclosed in US 596, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. assist with the movement of steam.
Hence, US 596 is deemed to disclose a coffee maker with a steam function, wherein the coffee maker comprises a water supply opening, a scale inhibitor dosing element, a heating unit, a scale collector element, and a water processing unit, wherein a flow control device is configured for providing a fluid comprising water to flow from the water supply opening via the heating unit to the water processing unit, wherein the water processing unit comprises a brewing unit and a steam pipe.
US 596 discloses the scale inhibitor dosing element is configured for providing a scale inhibitor to the fluid at a location in the heating unit (see US 596 figures 1) and/or upstream of the heating unit (see US 596 figure 4).
It is noted that the claimed “location” feature is a functional feature of the claimed scale inhibitor dosing element.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the scale inhibitor dosing element of the present application, and therefore, the structure of US 596 is presumed inherently capable of providing a scale inhibitor to the fluid at a location in the heating unit and/or upstream of the heating unit.
It is noted that in the figures of US 596, the location of the scale inhibitor/ scale inhibitor dosing element and the heating unit are both structurally connected to the descaling unit and are presented as connected within the same system. Hence, US 596 is deemed to disclose the scale inhibitor dosing element is configured for providing a scale inhibitor to the fluid at a location in the heating unit.
Also, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the location the scale inhibitor dosing element in relation to the heating unit, as disclosed in US 596, to be at a location in the heating unit and/or upstream of the heating unit, because the it would assist with reducing the amount of scale present on the heating element (see US 596 paragraphs [0002], [0004]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the location the scale inhibitor dosing element in relation to the heating unit, as disclosed in US 596, to be at a location in the heating unit and/or upstream of the heating unit, because rearranging the location of the scale inhibitor dosing element to be at a location in the heating unit and/or upstream of the heating unit reasonably expect the resulting apparatus to work as the prior art intended, i.e. reduce the formation of scale (see US 596 paragraphs [0002], [0004]).
Location of the scale inhibitor dosing element to be at a location in the heating unit and/or upstream of the heating unit is considered nothing more than an obvious rearrangement of parts (see M.P.E.P. 2144.04 VI. C.).
US 596 discloses the coffee maker is configured for alternately generating hot water and steam (see US 596 figures 1, 4 and paragraphs [0005], [0017], [0018], [0047], [0037], [0054], [0060]).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed coffee maker of the present application, and therefore, the structure of US 596 is presumed inherently capable of alternately generating hot water and steam.
US 596 discloses the heating unit is configured for heating the water in a heating mode and for converting the water into steam in a steam formation mode (see US 596 paragraphs [0023], [0037], [0060]).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed heating unit of the present application, and therefore, the structure of US 596 is presumed inherently capable of heating the water in a heating mode and for converting the water into steam in a steam formation mode.
US 596 discloses the scale collector element is arranged downstream of the heating unit and upstream of a scale sensitive flow restriction (see US 596 figures 1, 2c-4 and paragraphs [0015], [0024]-[0030]).
The scale collector element of US 596 is a scale inhibitor adsorbent, with or without a membrane, of the outlet unit (see US 596 abstract, figures 1-4, claims 4 & 12; and paragraphs [0014], [0015], [0024]-[0030], [0039], [0058], [0071]), which is deemed the scale collector element comprises a sieve having a three dimensional sieve profile comprising through holes with a changing size along a longitudinal axis of the through holes.
The as-originally filed specification does not define the term “longitudinal axis”, but merely states “direction of the longitudinal axis of the through holes may change along the length of the axis” (see Applicant’s specification page 15 lines 10-11). Under the broadest reasonable interpretation, the term “longitudinal axis” is understood to be an imaginary line that creates an arbitrary division in a structure.
A) The adsorbent of US 596 will necessarily comprise a three-dimensional sieve profile comprising through holes with a changing size along a longitudinal axis of the through holes. The adsorbent of US 596 may be a packed filter bed, a fluidized bed system or may be one or more of granular ferric hydroxide (GFH) and waste filtration sand (WFS) (see US 596 claims 4 & 12 and paragraphs [0014], [0028], [0039], [0058], [0071]). Each of the adsorbent embodiments of US 596 would possess pores, i.e. through holes, in which fluid/water can pass through and scale/particle(s) will be prevented from passing through. The pores/through holes of one or more of the different adsorbent embodiments of US 596 would have a changing size along a longitudinal axis from one “undefined” section to another “undefined” section of that adsorbent. B) The membrane of US 596 may be a flat, curved or spiral wound membrane (see US 596 paragraph 0026). At least the curved and spiral wound membrane shapes will necessarily comprise a three-dimensional sieve profile comprising through holes with a changing size along a longitudinal axis of the through holes. US 596 discloses “the membrane is configured such that water from the descaling reactor can only reach the descaling unit outlet via (i.e. especially through) the membrane. … a flow-through membrane, substantially impermeable to the scale inhibitor (see US 596 paragraph 0026).). C) The combination of the adsorbent and the membrane of US 596 will necessarily comprise a three-dimensional sieve profile comprising through holes with a changing size along a longitudinal axis of the through holes.
Each of these embodiments of US 596 comprises a through holes/pores that allows water to flow through the three-dimensional structure while preventing solid matter from flowing through. Each of these embodiments of US 596 would have three dimensional sieve profile comprising through holes with a changing size along a longitudinal axis of the through holes. The longitudinal axis may be any axis of the sieve/scale collector element of US 596. “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.” See MPEP 2112, II.
US 596 discloses that “in addition to a membrane, also a particles or granules may be applied as scale inhibitor adsorbent. Such particles will in general be in the range of 0.1 μm-20 mm, such as 1 μm-10 mm … . the membrane is especially configured such that water from the descaling reactor can only reach the descaling unit outlet via (i.e. especially through) the membrane” (see US 596 paragraph 0028). US 596 is deemed to disclose a size of the through holes that is selected from a range of 0.1 – 1mm since the membrane of US 596 has a mesh size to contain particles/granules ranging from 0.1 μm-20 mm, which overlaps the claimed range of 0.1 – 1 mm.
In the alternative, even if US 596 does not disclose a “the size of the through holes is selected from a range of 0.1-1 mm”, then this feature is nonetheless rendered obvious by US 596.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the membrane of US 596 to optimize the through hole size because if the through hole size is too large then the particles/granules of scale inhibitor adsorbent would not be contained and if the through hole size is too small then the flow of water would not be sufficient to efficiently use the coffee maker.
The membrane and/or the combination of membrane and adsorbent will necessarily result in mechanically trapping solid scale particles released from the heating unit due to thermal stress caused by switching between the heating mode and the steam formation mode. The membrane or the membrane with adsorbent embodiments of US 596 appears to be substantially identical to the claimed element and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed. “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.” See MPEP 2112, II.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed scale collector element of the present application, and therefore, the structure of US 596 is presumed inherently capable of mechanically trapping solid scale particles released from the heating unit due to thermal stress caused by switching between the heating mode and the steam formation mode.
US 596 is deemed to disclose scale sensitive flow restriction (see US 596 figure 1, 3a-4 – sharp bends; see also US 596 paragraphs [0007], [0022], figure 4 – the presence flow control device(s), i.e. pumps, valves and/or venturi devices, being used within the system to control the fluid/water within the system).
Alternatively, even if US 596 does not disclose a scale sensitive flow restriction being downstream of the scale collector element (“the scale collector element … upstream of a scale sensitive flow restriction”), it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system of US 596 to form a flow control device, such as pumps, valves and/or venturi devices, as disclosed in US 596, downstream of the scale collector element/prior to outlet of the apparatus because it would assist with controlling the flow of treated water/heated water through the outlet/brewing unit (see US 596 figure 4 and paragraphs 0053).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system of US 596 to form a flow control device, such as pumps, valves and/or venturi devices, as disclosed in US 596, downstream of the scale collector element/prior to outlet of the apparatus and reasonably expect the resulting apparatus to work as the prior art intended, i.e. control the flow of fluid. Further, rearranging the location of a control flow control device, such as pumps, valves and/or venturi devices, as disclosed in US 596, is considered nothing more than an obvious rearrangement of parts (see M.P.E.P. 2144.04 VI. C.).
Regarding claim 2, US 596 discloses the invention as discussed above in claim 1. Further, US 596 discloses the scale collector element is configured for trapping scale particles having a particle size equal to or larger than 1 mm (see US 596 paragraph [0028]).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed scale collector element of the present application, and therefore, the structure of US 596 is presumed inherently capable of trapping scale particles having a particle size equal to or larger than 1 mm.
Regarding claim 4, US 596 discloses the invention as discussed above in claim 1. Further, US 596 discloses the flow restriction comprises at least one of a valve, an orifice, a joint or a junction (see rejection of claim 1; see also see US 596 paragraphs [0007], [0020], [0053] & figures 1, 4).
Regarding claim 5, US 596 discloses the invention as discussed above in claim 1. Further, US 596 discloses the scale inhibitor comprises a food approved scale inhibitor comprising a poly-phosphate compound (see US 596 paragraphs [0004], [0063]).
As established above, the structure of US 596 is substantially identical to the scale inhibitor dosing element of the present application, and therefore, the structure of US 596 is presumed inherently capable of providing a scale inhibitor that comprises a food approved scale inhibitor comprising a poly-phosphate compound.
Nevertheless, US 596 discloses prior art that uses polyphosphates in a method of reducing limestone scale on surfaces and heating elements with regards to food service machines (see US 596 paragraph [0004]) and discloses “it is noted that a scale-growth inhibitor such as polyphosphate has the disadvantage that it relatively rapidly decomposes to inactive monophosphate at a higher temperature” (see US 596 paragraph [0063). Thus, US 596 discloses a poly-phosphate compound as a scale inhibitor but discourages its use under specific conditions.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use a poly-phosphate compound as a scale inhibitor, as disclosed in US 596 under specific conditions, such as specific temperatures, i.e. not “at a high temperature”, because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). This substitution would yield the predictable result of removing scale.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use a poly-phosphate compound as a scale inhibitor, as disclosed in US 596 under specific conditions, such as when the scale inhibitor dosing element is further away from the heating unit, and thus is not exposed to high temperatures, because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). This substitution would yield the predictable result of removing scale.
Regarding claim 6, US 596 discloses the invention as discussed above in claim 1. Further, US 596 discloses the scale inhibitor dosing element is configured to provide the water with the scale inhibitor in a range of 1-10 ppm (see US 596 paragraph [0014], [0016], [0019], [0035], [0036], [0041], [0059], [0062]).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed scale inhibitor dosing element of the present application, and therefore, the structure of US 596 is presumed inherently capable of providing the water with the scale inhibitor in a range of 1-10 ppm.
Regarding claim 7, US 596 discloses the invention as discussed above in claim 1. Further, US 596 discloses an ion exchange element configured to remove calcium ions from the water (see US 596 paragraphs [0006], [0016]).
While US 596 does not explicitly disclose a single embodiment of a coffee maker further comprising an ion exchange element configured to remove calcium ions from the water, as recited in claim 7, US 596 nonetheless does disclose all of these features within the disclosure as being compatible aspects of a single invention. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the disclosure of US 596 in order to achieve a coffee maker further comprising an ion exchange element configured to remove calcium ions from the water, as recited in claim 7, and reasonably expect the resulting device to filter water as intended by US 596.
US 596 discloses ion exchange resin produce magnesium rich water, which “is generally not suitable for making tea, soy milk or diluting powder baby milk” (see US 596 paragraph [0006]). Claim 1 of the present application is directed towards a coffee maker and not “making tea, soy milk or diluting powder baby milk”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the disclosure of US 596 in order to achieve a coffee maker further comprising an ion exchange element configured to remove calcium ions from the water, as recited in claim 7, because an ion exchange resin would assist in the removal of calcium from the fluid/water (see US 596 paragraph [0016]) and because the combination of ion exchange resin and scale inhibitor would assist with the treatment of the fluid/water.
The enhancement of the treatment process is obvious to one of ordinary skill in the art. Achieving a higher degree of treatment of water is an obvious enhancement to one of ordinary skill in the art and this objective is achieved by the combination of prior art. The "desire to enhance commercial opportunities by improving a product or process is universal and even common-sensical-we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves" (See MPEPE 2144, 11 ).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed ion exchange element of the present application, and therefore, the structure of US 596 is presumed inherently capable of removing calcium ions from the water.
Regarding claim 8, US 596 discloses the invention as discussed above in claim 7. Further, US 596 does not disclose the ion exchange element is arranged upstream of the scale inhibitor dosing element.
Nevertheless, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to place the ion exchange element, as disclosed in US 596 either upstream of the scale inhibitor dosing element because when the ion exchange element is upstream of the scale inhibitor dosing element, the ion exchange element will assist with reducing the quantity of calcium in the water (see US 596 paragraph [0016]) and/or will assist with reducing dosing of the scale inhibitor needed in the system to remove scale since an ion exchange resin would assist in the removal of calcium from the fluid/water.
Regarding claim 9, US 596 discloses the invention as discussed above in claim 8. Further, US 596 discloses one or more of the scale inhibitor dosing element and the scale collector element are removably arranged in the coffee maker (see US 596 paragraphs [0029] and [0031]-[0032])
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the device of US 596 to make one or more of the scale inhibitor dosing element, ion exchange element and the scale collector element removable because it would be desirable to make any or all of the scale inhibitor dosing element, ion exchange element and the scale collector element removable so that each may be replaced, such as 1) removing the scale inhibitor dosing element to replace and/or fill up the scale inhibitor, 2) removing the ion exchange element to replace the ion exchange material and/or to fix any broken ion exchange element and/or 3) removing the scale collector element to replace the adsorbent when it is no longer efficiently removing particles/scales from the fluid/water.
Regarding claim 10, US 596 discloses the invention as discussed above in claim 1. Further, US 596 discloses the sieve is in the form of a depth filter or a depth sieve configured to collect the scale particles in a body of the filter or the sieve, over a depth of the filter or the sieve (see US 596 combination of membrane and adsorbent and see rejection of claim 1).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed scale collector element/sieve/filter comprising a filter of the present application, and therefore, the structure of US 596 is presumed inherently capable of collecting the scale particles in a body of the filter.
Regarding claim 12, US 596 discloses the invention as discussed above in claim 7. Further, US 596 discloses the scale inhibitor dosing element comprises a total inhibitor volume (Vi) of the scale inhibitor (see US 596 paragraphs [0014]).
US 596 does not disclose the ion exchange element comprises an ion exchange resin comprising a total resin volume (Vr), wherein a ratio of the total resin volume (Vr) to the total inhibitor volume (Vi) is selected from a range of 500:1 - 50:1.
However, the scale inhibitor dosing element and the ion exchange element of US 596 will necessarily achieve the scale inhibitor dosing element comprises a total inhibitor volume (Vi) of the scale inhibitor, wherein the ion exchange element comprises an ion exchange resin comprising a total resin volume (Vr). The scale inhibitor dosing element and the ion exchange element of US 596 appears to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed.
US 596 does not disclose a ratio of the total resin volume (Vr) to the total inhibitor volume (Vi) is selected from a range of 500:1 - 50:1.
Without showing unexpected results, the claimed ratio cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the claimed range of the ratio of the total resin volume (Vr) to the total inhibitor volume (Vi). It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).) The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the ratio and, in the course of routine experimentation, arrive at the claimed invention.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to optimize the ratio of the total resin volume (Vr) to the total inhibitor volume (Vi) in the device of US 596 because it would assist in maximizing the efficient of both the scale inhibitor and the ion exchange resin.
Regarding claim 13, US 596 discloses the invention as discussed above in claim 7. Further, US 596 discloses a scale handling unit, wherein the scale handling unit comprises two or more of the scale inhibitor dosing element, the scale collector element, and wherein the scale handling unit is a disposable scale handling unit (see US 596 the domestic appliance, functional unit, the descaling unit – abstract, claims 1, 2, 10, figures 1-3b, and paragraphs [0015], [0020], [0022]-[0024], [0040]-[0041], [0047]-[0052]; see rejection of claims 1 & 9).
It is noted that “unit” is an undefined, non-structural element. Thus, any combination of the device/system of US 596 is deemed to disclose a scale handling unit.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system/device of US 596 to two or more of the scale inhibitor dosing element, the scale collector element since it has been held that mere duplication of an element of an apparatus involves only routine skill in the art. MPEP 2144.04.VI.B. Like the apparatus at issue in In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), the fact that a claimed apparatus has a plurality of the scale inhibitor dosing element and/or the scale collector element is not sufficient by itself to patentably distinguish the claimed invention over an otherwise old device unless there are new or unexpected results. There is no patentable significance of an additional scale inhibitor dosing element and/or the scale collector element, which predictable provides one of ordinary skill in the art with additional in assistance in the treatment of the fluid/water and/or with additional assistance in removing calcium from water, and does not produce any new and/or unexpected results.
Regarding claim 14, US 596 discloses the invention as discussed above in claim 13. Further, US 596 discloses the scale handling unit comprises the scale inhibitor dosing element configured for providing the scale inhibitor to water at the location upstream of and/or in the heating unit of the device coffee maker (see rejection of claim 1) during operation (see US 596 paragraphs [0015], [0020], [0047], [0067] and figures 1 & 4), and the scale collector element configured for collecting the scale particles from the fluid flowing through the scale collector element downstream of the heating unit (see rejection of claim 1), optionally wherein the scale handling unit further comprises the ion exchange element configured for removing the calcium ions from the water contacting the ion exchange element (see rejection of claim 7).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed scale collector element comprising a filter of the present application, and therefore, the structure of US 596 is presumed inherently capable of providing the scale inhibitor to water at the location upstream of and/or in the heating unit of the coffee maker during operation and the structure of US 596 is presumed inherently capable of collecting the scale particles from the fluid flowing through the scale collector element downstream of the heating unit
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed ion exchange element comprising a filter of the present application, and therefore, the structure of US 596 is presumed inherently capable of removing the calcium ions from the water contacting the ion exchange element.
Regarding claim 16, US 596 discloses the invention as discussed above in claim 13. Further, US 596 discloses in the steam formation mode, a layer of scale is deposited in the heating unit and/or downstream of the heating unit, wherein the layer of the scale that is deposited breaks up in the scale particles (see rejection of claim 1). The coffee maker, components and steps disclosed in US 596 will necessarily result in “in the steam formation mode, a layer of scale is deposited in the heating unit and/or downstream of the heating unit, wherein the layer of the scale that is deposited breaks up in the scale particles”, as recited in claim 10. The coffee maker, components and steps disclosed in US 596 appear to be substantially identical to the claimed device, components, material(s) and step(s) and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed. “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.” See MPEP 2112, II.).
Regarding claim 17, US 596 discloses the invention as discussed above in claim 10. Further, US 596 discloses the through holes are parallel to a depth direction of the sieve (see rejection of claims 1 and 10).
The term “depth direction” is not defined in the as-originally filed specification. Under the broadest reasonable interpretation, the term “depth direction” is understood to be a path or direction that water flows through the filter media, usually from an outside/upstream side to an inside/downstream side of the filter media.
The adsorbent of US 596 may be a packed filter bed, a fluidized bed system or may be one or more of granular ferric hydroxide (GFH) and waste filtration sand (WFS) (see US 596 claims 4 & 12 and paragraphs [0014], [0028], [0039], [0058], [0071]). The membrane of US 596 may be a flat, curved or spiral wound membrane (see US 596 paragraph 0026). One of ordinary skill in the art, such as a chemical engineer with a Bachelors of Science, would understand that the membrane, the adsorbent or the combination of adsorbent and membrane of US 596 would have through holes/pores that are parallel to a depth direction of the sieve.
Claim(s) 7-9, 12-14, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 596 as applied to claim 1 above, and further in view of US20100326898A1 (hereinafter US 898).
Regarding claim 7, US 596 discloses the invention as discussed above in claim 1. Further, US 596 does not disclose an ion exchange element configured to remove calcium ions from the water.
US 898 discloses a water filter for domestic appliances, such as automatic coffee machines, that comprises two water treatment forms, i.e. a softener and a residual hardness stabilizer (see US 898 figures 1-2, paragraphs [0006]-[0012] & [0028]). US 898 discloses that “a phosphate compound, in particular a polyphosphate compound, is used as residual hardness stabilizer” (see US 898 paragraph [0012]) and “the softener may for example take the form of ion exchange filter material, for example in the form of an ion exchange resin” (see US 898 paragraph [0009]; see also US 898 figure 1). US 898 discloses that the “interplay of the two water treatment media is particularly advantageous in the case of subsequent heating of the filtered water to high temperatures, e.g. >80° C., and/or in the case of elevated water hardnesses, e.g. of >10° German water hardness (dH)” (see US 898 paragraph [0008]; see also US 898 paragraphs [0010] and [0011]).
US 898 is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. water treatment equipment/device, filtering component/scale control means within an domestic appliance/coffee maker.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system of US 596 by incorporating an ion exchange element, as disclosed in US 898, because the combination of two water treatment media, i.e. softener and residual hardness stabilizer/scale inhibitor, would assist with treatment and/or purification water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to substituting the scale inhibitor dosing element of US 596 with the water filter, as disclosed in US 898, because the combination of two water treatment media, i.e. softener and residual hardness stabilizer/scale inhibitor, would assist with treatment and/or purification water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system of US 596 by incorporating an ion exchange element, as disclosed in US 898, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. assist with treatment and/or purification water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to substituting the scale inhibitor dosing element of US 596 with the water filter, as disclosed in US 898, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. assist with treatment and/or purification water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to substituting the scale inhibitor dosing element of US 596 with the water filter, as disclosed in US 898, because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). This substitution would yield the predictable result of treatment and/or purification water.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 in view of US 898 is substantially identical to the claimed ion exchange element of the present application, and therefore, the structure of US 596 in view of US 898 is presumed inherently capable of removing calcium ions from the water.
Regarding claim 8, US 596 in view of US 898 discloses the invention as discussed above in claim 7. Further, US 596 in view of US 898 discloses the ion exchange element is arranged upstream of the scale inhibitor dosing element, or upstream of a first location where the scale inhibitor dosing element provides the scale inhibitor to the water (see rejection of claim 7).
Regarding claim 9, US 596 in view of US 898 discloses the invention as discussed above in claim 8. Further, US 596 in view of US 898 discloses one or more of the scale inhibitor dosing element and the scale collector element are removably arranged in the coffee maker (see US 596 paragraphs [0029] and [0031]-[0032]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the device of US 596 in view of US 898 to make one or more of the scale inhibitor dosing element, ion exchange element and the scale collector element removable because it would be desirable to make any or all of the scale inhibitor dosing element, ion exchange element and the scale collector element removable so that each may be replaced, such as 1) removing the scale inhibitor dosing element to replace and/or fill up the scale inhibitor, 2) removing the ion exchange element to replace the ion exchange material and/or to fix any broken ion exchange element and/or 3) removing the scale collector element to replace the adsorbent when it is no longer efficiently removing particles/scales from the fluid/water.
Regarding claim 12, US 596 in view of US 898 discloses the invention as discussed above in claim 7. Further, US 596 in view of US 898 discloses the scale inhibitor dosing element comprises a total inhibitor volume (Vi) of the scale inhibitor (see US 596 paragraphs [0014]).
US 596 in view of US 898 does not disclose the ion exchange element comprises an ion exchange resin comprising a total resin volume (Vr), wherein a ratio of the total resin volume (Vr) to the total inhibitor volume (Vi) is selected from a range of 500:1 - 50:1.
However, the scale inhibitor dosing element and the ion exchange element of US 596 in view of US 898 will necessarily achieve the scale inhibitor dosing element comprises a total inhibitor volume (Vi) of the scale inhibitor, wherein the ion exchange element comprises an ion exchange resin comprising a total resin volume (Vr). The scale inhibitor dosing element and the ion exchange element of US 596 in view of US 898 appears to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed.
US 596 in view of US 898 does not disclose a ratio of the total resin volume (Vr) to the total inhibitor volume (Vi) is selected from a range of 500:1 - 50:1.
Without showing unexpected results, the claimed ratio cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the claimed range of the ratio of the total resin volume (Vr) to the total inhibitor volume (Vi). It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 223) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).) The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the ratio and, in the course of routine experimentation, arrive at the claimed invention.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to optimize the ratio of the total resin volume (Vr) to the total inhibitor volume (Vi) in the device of US 596 in view of US 898 because it would assist in maximizing the efficient of both the scale inhibitor and the ion exchange resin.
Regarding claim 13, US 596 in view of US 898 discloses the invention as discussed above in claim 7. Further, US 596 in view of US 898 discloses a scale handling unit, wherein the scale handling unit comprises two or more of the scale inhibitor dosing element, the scale collector element, and wherein the scale handling unit is a disposable scale handling unit (see US 596 the domestic appliance, functional unit, the descaling unit – abstract, claims 1, 2, 10, figures 1-3b, and paragraphs [0015], [0020], [0022]-[0024], [0040]-[0041], [0047]-[0052]; see rejection of claims 1 & 9).
It is noted that “unit” is an undefined, non-structural element. Thus, any combination of the device/system of US 596 is deemed to disclose a scale handling unit.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system/device of US 596 in view of US 898 to two or more of the scale inhibitor dosing element, the scale collector element since it has been held that mere duplication of an element of an apparatus involves only routine skill in the art. MPEP 2144.04.VI.B. Like the apparatus at issue in In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), the fact that a claimed apparatus has a plurality of the scale inhibitor dosing element and/or the scale collector element is not sufficient by itself to patentably distinguish the claimed invention over an otherwise old device unless there are new or unexpected results. There is no patentable significance of an additional scale inhibitor dosing element and/or the scale collector element, which predictable provides one of ordinary skill in the art with additional in assistance in the treatment of the fluid/water and/or with additional assistance in removing calcium from water, and does not produce any new and/or unexpected results.
Regarding claim 14, US 596 in view of US 898 discloses the invention as discussed above in claim 13. Further, US 596 in view of US 898 discloses the scale handling unit comprises the scale inhibitor dosing element configured for providing the scale inhibitor to water at the location upstream of and/or in the heating unit of the device coffee maker (see rejection of claim 1) during operation (see US 596 paragraphs [0015], [0020], [0047], [0067] and figures 1 & 4), and the scale collector element configured for collecting the scale particles from the fluid flowing through the scale collector element downstream of the heating unit (see rejection of claim 1), optionally wherein the scale handling unit further comprises the ion exchange element configured for removing the calcium ions from the water contacting the ion exchange element (see rejection of claim 7).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 in view of US 898 is substantially identical to the claimed scale collector element comprising a filter of the present application, and therefore, the structure of US 596 in view of US 898 is presumed inherently capable of providing the scale inhibitor to water at the location upstream of and/or in the heating unit of the coffee maker during operation and the structure of US 596 in view of US 898 is presumed inherently capable of collecting the scale particles from the fluid flowing through the scale collector element downstream of the heating unit.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 in view of US 898 is substantially identical to the claimed ion exchange element comprising a filter of the present application, and therefore, the structure of US 596 in view of US 898 is presumed inherently capable of removing the calcium ions from the water contacting the ion exchange element.
Regarding claim 18, US 596 in view of US 898 discloses the invention as discussed above in claim 7. Further, US 596 in view of US 898 discloses the ion exchange element is arranged upstream of the heating unit where the scale inhibitor dosing element provides the scale inhibitor to the water (see rejection of claim 7).
In the alternative, if US 596 in view of US 898 does not disclose a “the ion exchange element is arranged upstream of the heating unit where the scale inhibitor dosing element provides the scale inhibitor to the water”, then this feature is nonetheless rendered obvious by US 596 in view of US 898.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 596 in view of US 898 to form the ion exchange element is arranged upstream of the heating unit and reasonably expect the resulting apparatus to work as the prior art intended, i.e. remove impurities from water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 596 in view of US 898 to form the ion exchange element is arranged upstream of the heating unit because it would assist with removing impurities.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 596 in view of US 898 to form the ion exchange element is arranged upstream of the heating unit because rearranging the location of the ion exchange element is considered nothing more than an obvious rearrangement of parts (see M.P.E.P. 2144.04 VI. C.).
Regarding claim 19, US 596 in view of US 898 discloses the invention as discussed above in claim 7. Further, US 596 in view of US 898 does not disclose the ion exchange element is arranged in the heating unit where the scale inhibitor dosing element provides the scale inhibitor to the water (see rejection of claim 7).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 596 in view of US 898 to form the ion exchange element to be arranged in the heating unit where the scale inhibitor dosing element provides the scale inhibitor to the water and reasonably expect the resulting apparatus to work as the prior art intended, i.e. remove impurities from water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 596 in view of US 898 to form the ion exchange element to be arranged in the heating unit where the scale inhibitor dosing element provides the scale inhibitor to the water because it would assist with removing impurities.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 596 in view of US 898 to form the ion exchange element to be arranged in the heating unit where the scale inhibitor dosing element provides the scale inhibitor to the water because rearranging the location of the ion exchange element is considered nothing more than an obvious rearrangement of parts (see M.P.E.P. 2144.04 VI. C.).
Claim(s) 7-9, 12-14, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 596 as applied to claim 1 above, and further in view of CN 110590039 A (hereinafter CN 039) (Machine generated translation of CN 039 is presented and herein cited to).
Regarding claim 10, US 596 discloses the invention as discussed above in claim 1. Further, US 596 does not disclose the sieve is in the form of a depth filter or a depth sieve configured to collect the scale particles in a body of the filter or the sieve, over a depth of the filter or the sieve.
CN 039 discloses “a container system for processing percolate, comprising a pre-processing system, a membrane filtering device and guarantee processing system … filtering device in the percolating liquid suspended substance, colloid and organic substance interception; scale inhibition device, to change the crystal form of calcium and magnesium ions in leachate; the membrane filtration device for intercepting the pollutant in the percolate” (see CN 039 page 4). CN 039 discloses “the filter device comprises a primary filter which are connected in turn and a depth filter, the primary filter and a depth filter are suspended substance in the leachate the cut-off filter, the suspended substance of the percolate in the more than 50% removed” (see CN 039 page 5). CN 039 discloses that filtering with a depth filter, which is a multi-medium filter, achieves deep filtering of the liquid or water (see CN 039 page 12).
CN 039 is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. water treatment system and/or removal of impurities, such as scale, from water.
CN 039 is considered to be analogous to the claimed invention. “[a] reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.” See MPEP 2141.01(a). CN 039 is reasonably pertinent to the problem faced by the inventor, i.e. removal of scale in a water system that includes a heater element (see Applicant’s specification, page 1 line 2 - 13).), because CN 039 is directed towards removal or filtering of contaminants, such as calcium and/or magnesium, from a liquid medium (see CN 039 abstract and page 3-4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the scale collector element of US 596 by incorporating the depth filter of CN 039 and/or substituting the filter element of US 596 with the filter element of CN 039, which includes a depth filter, because it would assist with the removal of impurities from water, and/or because it would assist with achieving a multi-medium filter that assist with achieving a deep filtering of water and/or because the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). This substitution yields the predictable result of filtering fluid.
Hence, US 596 in view of CN 039 is deemed to disclose the sieve is in the form of a depth filter or a depth sieve configured to collect the scale particles in a body of the filter or the sieve, over a depth of the filter or the sieve.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 in view of CN 039 is substantially identical to the claimed scale collector element/sieve/filter comprising a filter of the present application, and therefore, the structure of US 596 in view of CN 039 is presumed inherently capable of collecting the scale particles in a body of the filter.
Regarding claim 17, US 596 in view of CN 039 discloses the invention as discussed above in claim 10. Further, US 596 in view of CN 039 discloses the through holes are parallel to a depth direction of the sieve (see rejection of claims 1 and 10).
Response to Arguments
Applicant's amendments and arguments filed on May 30, 2026 have been fully considered.
The prior art rejections that included K’a’racher as a secondary reference have been withdrawn. The prior art rejection(s) based upon US 596 have been maintained. The Examiner's remarks to Applicants' arguments are herein incorporated into the rejections presented above. Additional remarks are represented below.
In the response, it was argued that “US 596 fails to teach or suggest that the membrane 1235 has a three-dimensional sieve profile comprising through holes with a changing size along a longitudinal axis of the through holes” (see Response page 7 and top of page 9). This argument is deemed unpersuasive.
As established above, the adsorbent, the membrane or the combination of the adsorbent and membrane of the scale collector element of US 596 will necessarily comprise through holes, which allows water to flow through the structure (see US 596 paragraphs 0026-0028). The adsorbent of US 596 may be a packed filter bed, a fluidized bed system or may be one or more of granular ferric hydroxide (GFH) and waste filtration sand (WFS) (see US 596 claims 4 & 12 and paragraphs [0014], [0028], [0039], [0058], [0071]). Each of the adsorbent embodiments of US 596 would possess pores, i.e. through holes, in which fluid/water can pass through and scale/particle(s) will be prevented from passing through. The pores/through holes of one or more of the different adsorbent embodiments of US 596 would have a changing size along a longitudinal axis from one “undefined” section to another “undefined” section of that adsorbent. The membrane of US 596 may be a flat, curved or spiral wound membrane (see US 596 paragraph 0026). At least the curved and spiral wound membrane shapes will necessarily comprise a three-dimensional sieve profile comprising through holes with a changing size along a longitudinal axis of the through holes. As noted above, under the broadest reasonable interpretation, the term “longitudinal axis” is understood to be an imaginary line that creates an arbitrary division in a structure.
In the response, it was argued that figure 4 illustrates “layers are connected to each other such that the through holes 560 of adjacent layers are fluidly connected to each other and together define the through holes 560 from an upstream side to a downstream side of the sieve 550. … Compared to a generic flat sieve that collects the scale particles 21 on its surface, this depth sieve 550 enhances scale holding capacity, while maintaining optimal operational performance” (see Response page 8). This argument is deemed unpersuasive. First, Applicant’s argument is reliant upon features that are not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Second, US 596 disclosed the membrane may be a flat, curved or a spiral wound membrane (see US 596 paragraph 0026). The disclosure of US 596 is not limited to a “generic flat sieve”.
In the response, it was argued that “US 596 nowhere teaches that its membrane 1235 is configured to trap scale particles” (see Response page 8; see also top of page 9). This argument is deemed unpersuasive.
One of ordinary skill in the art, such as a chemical engineer with a Bachelors of Science, would understand that a membrane with through holes that allows water to pass is also capable of preventing particles, granules, scale and/or solid matter from passing through the membrane, which is deemed mechanical trapping. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of US 596 is substantially identical to the claimed scale collector element of the present application, and therefore, the structure of US 596 is presumed inherently capable of mechanically trapping solid scale particles released from the heating unit due to thermal stress caused by switching between the heating mode and the steam formation mode.
In the response, it was argued that “there is no description in US 596 that the filters have a three-dimensional profile or that the pores of the filters have a changing size along their longitudinal axes” (emphasis removed) (see Response page 10). In the response, it was argued that “US 596 … does not teach or suggest ‘through holes having a changing size along a longitudinal axis,’ as recited in amended independent claim 1. This claimed structure is also not a necessary or natural result of the combination of prior arts” (see Response page 10). These arguments are deemed unpersuasive.
First, explicit disclosure within a reference is not required to establish a prima facie case of obviousness. “[a] proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 ” (see Federal Register/Vol. 89, No. 39/Tuesday, February 27, 2024/page 14450). Further, a “person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421, 127 S. Ct. at 1742” (see Federal Register/Vol. 89, No. 39/Tuesday, February 27, 2024/page 14450). One of ordinary skill in the art, such as a chemical engineer with a Bachelors of Science, would understand that the membrane, the adsorbent or the combination of adsorbent and membrane of US 596 would possess pores/through holes that have a changing size along a longitudinal axis from one “undefined” section to another “undefined” section along an imaginary axis.
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BERNADETTE K MCGANN whose telephone number is (571)272-5367. The examiner can normally be reached M-F 7:00 am -3:30 pm (EST).
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/BERNADETTE KAREN MCGANN/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773
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