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 .
Examiner Notes
It is noted that the Final Rejection dated 1/5/2025 fails to address claim 21. As such, the rejection dated 1/5/2025 is withdrawn and this rejection is applied.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283).
Regarding claim 15, Rabe teaches a separation unit comprising a separation tank (1 101 201), an inlet (11 111 211) for influent comprising the water and the contaminants, a gas injector (4) for injecting gas into the influent, an outlet (104 204) for effluent, an outlet for liquid reject (112 212), and an outlet (12) for the gas, (Figs. 1 and 7-8; [0031]-[0057]).
It is noted that while Rabe teaches the gas inlets and outlets in Fig. 1 and Figs. 7-8 include the other outlets claimed, no specific drawing provides all the inlets and outlets in one figure. However, the description of Figs. 7-8 both state the tank is an example of a flotation unit illustrated in Fig. 1 thereby implying that the structure in Fig. 1 is present even if not shown in both Figs. 7-8. Therefore, one skilled in the art would have found that Rabe anticipates the inlet and gas outlet structure as being part of the units in Figs. 7-8, or it would have been obvious to do so in order to provide said structure of Fig. 1 into the tanks of Figs. 7-8 as it was considered by Rabe and would provide the benefits associated with the gas injector inlet to the tanks of Figs. 7-8.
Rabe teaches an inlet section that includes the inlet for the influent, the gas injector and is configured to supply the resulting mixed influent into the separation tank. Rabe teaches the inlet section having a flow restriction capable of increasing turbulence and a diffuser/expanding portion capable of reducing the flow velocity (Figs. 2-5). It is noted that the flow restriction is at the gas injector and not downstream as claimed. It is Examiner’s position that merely moving the gas diffuser slightly back to be upstream of the flow restriction would have been an obvious matter of rearranging parts or an obvious change of order with no critical benefits (Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
It is noted that the specific operation steps and effects on the fluid being treated during operation are not given patentable weight when the structure is disclosed. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). In this case, all claimed structure is taught in Rabe and the apparatus is capable of being operated as claimed.
Regarding claim 17, Rabe teaches that the inlet section provides the influent into the separation tank in a tangential manner (Figs. 1 and 7-8; and [0031]).
Claim(s) 1-3, 6-8, 11, 18, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283) in view of Ball, IV (US 9,884,774).
Regarding claim 1, Rabe teaches a separation unit comprising a separation tank (1 101 201), an inlet (11 111 211) for influent comprising the water and the contaminants, a gas injector (4) for injecting gas into the influent, an outlet (104 204) for effluent, an outlet for liquid reject (112 212), and an outlet (12) for the gas, wherein the separation unit, under operation, is capable of including in the separation tank a gas cushion and a gas-liquid interface, the various outlets being controlled by valves and wherein the separation unit is adapted to control a level of the gas-liquid interface in the separation tank by regulating leakage of gas at the liquid reject valve and/or the gas reject valve (inherent as fluid exiting from the tank from any of the outlets would also affect the gas liquid interface) (Figs. 1 and 7-8; [0031]-[0057]).
It is noted that while Rabe teaches the gas inlets and outlets in Fig. 1 and Figs. 7-8 include the other outlets claimed, no specific drawing provides all the inlets and outlets in one figure. However, the description of Figs. 7-8 both state the tank is an example of a flotation unit illustrated in Fig. 1 thereby implying that the structure in Fig. 1 is present even if not shown in both Figs. 7-8. Therefore, one skilled in the art would have found that Rabe anticipates the inlet and gas outlet structure as being part of the units in Figs. 7-8, or it would have been obvious to do so in order to provide said structure of Fig. 1 into the tanks of Figs. 7-8 as it was considered by Rabe and would provide the benefits associated with the gas injector inlet to the tanks of Figs. 7-8.
Rabe fails to teach a gas liquid-interface measurement device as claimed. Ball teaches in a separation tank capable of separating into a gas portion and a liquid portion, it is beneficial to provide a gas-liquid measurement device in order to provide data to a controller that then controls the various valves in the system in order to the desired fluid levels within the tank (claim 2). As such, it would have been obvious to provide a gas-liquid measurement device in Rabe in order to provide data to a controller that then controls the various valves in the system in order to the desired fluid levels within the tank.
Regarding claim 2, modified Rabe is capable of providing the operational effects depending on how the apparatus is operated and therefore meets the claim limitation.
Regarding claim 3, Rabe teaches that a plate (103 202) is provided in the separation tank that has the effect of deflecting the interface or fluid associated with the interface towards the liquid reject outlet during operation (Figs. 7-8).
Regarding claim 6, Rabe teaches an inlet section that includes the inlet for the influent, the gas injector and is configured to supply the resulting mixed influent into the separation tank (Figs. 1 and 7-8).
Regarding claim 7, Rabe teaches the inlet section having a flow restriction capable of increasing turbulence and a diffuser/expanding portion capable of reducing the flow velocity (Figs. 2-5). It is noted that the flow restriction is at the gas injector and not downstream as claimed. It is Examiner’s position that merely moving the gas diffuser slightly back to be upstream of the flow restriction would have been an obvious matter of rearranging parts or an obvious change of order with no critical benefits (Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Regarding claim 8, Rabe teaches that the inlet section provides the influent into the separation tank in a tangential manner (Figs. 1 and 7-8; and [0031]).
Regarding claim 11, Rabe is silent on the operation of the apparatus being controlled via a PLC. Bell teaches that a PLC is used to control the process via (claim 2) in order to automate said process. Therefore, it would have been obvious to provide a PLC as claimed in order to automate the operation of the Rabe apparatus.
Regarding claim 18, see claim 1 above for the teachings directed to valves and for the gas-liquid interface measurement device.
Regarding claim 21, it is noted that claim 21 is directed to how the various valves are operated during the process of using the apparatus. As such, the operational method steps claimed are considered to be intended use. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). No further structure is claimed, only how the valves are intended to operate during use. Modified Rabe is capable of being operated as claimed by manual control of the valves taught in modified Rabe and therefore reads on the intended use limitations.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283) in view of Ball, IV (US 9,884,774) as applied to claim 2 above, and further in view of Anderson (US 2016/0016816).
Regarding claim 4, Rabe fails to teach that the process is automated with the control being done via a timer. Anderson teaches that it is known for flotation chambers to be controlled via automatic timers thereby ensuring the proper inlet/outlet control and treatment rates ([0017] and claim 10). As such, one skilled in the art would have found it obvious to automate the Rabe apparatus via a timer in order to allow for the desired treatment and removal times.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283) in view of Ball, IV (US 9,884,774) as applied to claim 2 above, and further in view of Rabe et al. (US 2016/0207791 hereinafter `791).
Regarding claim 5, Rabe fails to teach any of the outlets having a sensor for inline measurement of the concentrations/composition of going through said outlet and controlling the outlets based off of said reading. `791 teaches an outlet having a sensor for inline measurement of the concentrations/composition of going through said outlet and controlling the outlets based off of said reading ([0021]). Therefore, it would have been obvious to provide an inline sensor as claimed in order to allow for control of the valve controlling said outlet to operate only during the desired conditions.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283) in view of Ball, IV (US 9,884,774) as applied to claim 1 above, and further in view of Lee et al. (US 2011/0297620).
Regarding claim 9, Rabe teaches that the flow pattern of the liquid being treated can be manipulated via plates (103 202) in order to aid in the separation of oil from water but fails to teach the plates forming a vertical, serpentine flow path as claimed. Lee teaches that known flow paths that aid in the separation of oil from water include vertical plates that provide a serpentine flow path as claimed (Fig. 3). As such, one skilled in the art would have found it obvious to provide vertical plates as claimed in order to provide the serpentine path that aids in the separation of oil from water as it another, known and used flow path capable of aiding in the separation of oil from water.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283) in view of Ball, IV (US 9,884,774) as applied to claim 1 above, and further in view of Grimsley (US 4,251,361).
Regarding claim 10, Rabe fails to teach a means to supply a chemical to the influent before it enters the treatment tank. Grimsley teaches that for gas flotation separation of liquids, such as oil and water, an injection port (13) for chemicals that aid in hastening phase separation are providing upstream of the gas injection point thereby speeding up the desired separation (claim 4 and Fig. 1). As such, one skilled in the art would have found it obvious to provide a chemical addition port upstream of the gas injectors in order to allow the addition of chemicals that aid in separation when the liquid being treated enters the separation tank.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283) as applied to claim 15 above, and further in view of Lee et al. (US 2011/0297620).
Regarding claim 19, Rabe teaches that the flow pattern of the liquid being treated can be manipulated via plates (103 202) in order to aid in the separation of oil from water but fails to teach the plates forming a vertical, serpentine flow path as claimed. Lee teaches that known flow paths that aid in the separation of oil from water include vertical plates that provide a serpentine flow path as claimed (Fig. 3). As such, one skilled in the art would have found it obvious to provide vertical plates as claimed in order to provide the serpentine path that aids in the separation of oil from water as it another, known and used flow path capable of aiding in the separation of oil from water.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabe et al. (US 2013/0207283) as applied to claim 15 above, and further in view of Grimsley (US 4,251,361).
Regarding claim 20, Rabe fails to teach a means to supply a chemical to the influent before it enters the treatment tank in the inlet section. Grimsley teaches that for gas flotation separation of liquids, such as oil and water, an injection port (13) for chemicals that aid in hastening phase separation are providing upstream of the gas injection point thereby speeding up the desired separation (claim 4 and Fig. 1). As such, one skilled in the art would have found it obvious to provide a chemical addition port upstream of the gas injectors in the inlet section in order to allow the addition of chemicals that aid in separation when the liquid being treated enters the separation tank.
Response to Arguments
Applicant's arguments filed 10/9/2025 have been fully considered but they are not persuasive.
Applicant argues that Rabe lacks any discussion about how the oil and gas are separated after leaving the oil outlet. As discussed in the rejection above, the gas outlet (12) and oil outlet (212) are considered to be different outlets and providing both would have been either anticipated or obvious based on the Rabe reference.
Applicant argues the Rabe apparatus operates in a specific manner. However, the operational method argued is merely their interpretation and based on the assumption that the oil outlet and gas outlet in Rabe do not have a valve and if they have a valve, it is only always open. Rabe specifically states all outlets have valves that would control the flow while only the water outlet valve has been shown ([0031]). It is also noted that the claims are directed to an apparatus. The structure provided in Rabe is identical/rendered obvious to be identical to what is claimed. The specific manner of operation is not given patentable weight. Applicant should provide details as to what structure is missing in the Rabe reference or how the Rabe invention is entirely incapable of providing any claimed functions. In this case, the arguments are directed to potential operational method steps that are based on the premise of no valves or the valves in the outlets for the gas and oil outlets being open continually, something that is not supported by Rabe. Further, as Applicant’s interpretation of the Rabe system does not include all teachings in Rabe (outlet valves are taught), the non-varying nature premise of Applicant’s argument is also flawed. The valves in the outlets control the flow in the system which would also control the interface level. Therefore, monitoring and controlling the interface level would have been an obvious matter when combined with Ball.
Applicant argues that if the gas diffuser was provided slightly upstream of the flow restriction, the Rabe apparatus would cease to operate. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). Applicant asserts that the Rabe design would cease to operate but fails to provide any factual basis for their position. Examiner notes that Tamura et al. (US 2016/0236160) provides a factual basis that the slight rearrangement of the gas diffuser upstream of the flow restriction would not render the Rabe apparatus unworking as argued (compare Fig. 1 closest to Rabe design and Figs. 3-4 moving the gas diffuser slightly upstream of the flow restriction).
It is noted that the above rejection and response to arguments provide a basis for the outlet arrangements claimed and the potential control of the gas liquid interface via the valves present in all outlets.
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.
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777