Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/21/2026 has been entered.
Response to Amendment
It is noted that the claim amendments submitted 1/21/2026 would still be considered non-compliant as amendments to the claims fail to rewrite the entire claim with all changes (additions and deletions) with the proper markings indicating the deleted and added text based on the last entered set of claims, which would be the 7/28/2025 set of claims and not the originally filed set of claims. The last compliant set of claims was dated 7/28/2025 so any amendments should have been based on that set of claims and any deletions and additions would need the correct markings. However, in order to advance prosecution, Examiner has reviewed and entered the set of claims 1/21/2026 even though they would be deemed non-compliant. Any further amendments in future office actions should include all markings as to how any further set of claims differ from the latest compliant/entered set of claims, which for the next action would be the 1/21/2026 set of claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5-6 and 8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to change the term “stream” to “port” as it pertains to many different elements/functional limitations. It is noted that the previous rejection was based on the various port streams inherently providing a respective port (inlet port or outlet port) as read as a functional limitation. Now that the term “stream” is changed to “port,” many of the limitations that were directed to a stream and its functional flow path are unclear. For example, “a first outlet port comprising water and a solvent” is unclear as a port is a physical structure but the amendments define it as water and solvent. Similarly, “a first outlet port comprising 95 wt % or greater water,” a first outlet port comprising the solvent, and a second outlet port comprising a recovery agent,” and said second outlet port of the separation unit to produce a third outlet port and a fourth outlet port” also attempts to define a structure by a what is flowing through the structure thereby making the claims unclear.
Claim 1 recites “an inlet port” in the second line, the fourth line, and the sixth line. It is unclear if the language is directed to the same or different elements. For the purposes of examination, it will be assumed the references are attempting to refer to different elements. Terminology for different elements should be different to prevent clarity issues (first port, second port, third port, fourth port…).
Claim 1 recites “ a first outlet port” in lines 3, 5, and 7-8. It is unclear if the language is directed to the same or different elements. For the purposes of examination, it will be assumed the references are attempting to refer to different elements.
Claim 1 recites “ a second outlet port” in lines 5-6, and 8. It is unclear if the language is directed to the same or different elements. For the purposes of examination, it will be assumed the references are attempting to refer to different elements.
Claim 1 lines 4-5 recites “an inlet port comprising the first outlet port of the first liquid-liquid separator.” It is unclear what is being claimed as it could be interpreted that the inlet port is fluidly connected to the first outlet port or it could be interpreted that the two ports are the same element, which would lead to new matter issues.
Claim 1 lines 6-7 recites “an inlet port comprising the second outlet port of the second liquid-liquid separator.” It is unclear what is being claimed as it could be interpreted that the inlet port is fluidly connected to the second outlet port or it could be interpreted that the two ports are the same element, which would lead to new matter issues.
Similarly, stating the inlet ports of the first and second separators comprise a different port in lines 9-11 of claim 1 provide the same issues discussed above.
Claim 1 last 4 lines state that the various ports “produce a third outlet port and a fourth outlet port.” It is unclear what is attempting to be claimed as the ports are already physical structures so they are incapable of producing further ports. Further, it is wholly unclear what is structure is being claimed when the added claim language is being read in light of the specification and figures. As Examiner is incapable of understanding what the structure or function of the added language is attempting to provide, rejection analysis under 35 USC 102 and 103 will not be provided.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-6 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (US 3,823,000 in IDS).
Regarding claim 1, Johnson teaches a device comprising: a first liquid-liquid separator (51), the first liquid-liquid separator comprising a first inlet capable of providing a stream (50 52 77), a first outlet (56) capable of removing a stream and a second outlet (71) capable of removing a stream, wherein the inlet is capable of providing a stream with 10-35 wt. % salt and the first outlet stream is capable of providing water and a solvent; a second liquid-liquid separator (55), the second liquid-liquid separator comprising a second inlet (56) capable of providing a stream, a third outlet (53) capable of removing a stream, and a fourth outlet (61) capable of removing a stream, wherein the second inlet is fluidly connected to the first outlet of the first liquid-liquid separator and the third outlet is capable of providing a stream with 90 wt. % or greater water; and a separation unit, the separation unit (60) comprising a third inlet (61) capable of providing a stream, a fifth outlet (52) capable of removing a stream, and a sixth outlet (63) capable of removing a stream, wherein the third inlet is fluidly connected to the fourth outlet of the second liquid-liquid separator, the fifth outlet is capable of providing a stream comprising the solvent, and the sixth outlet is capable of providing stream comprising a recovery agent, wherein the first inlet of the first liquid-liquid separator is fluidly connected to the fifth outlet of the separation unit via line 52, and the second of the second liquid-liquid separator is fluidly connected to the sixth outlet of the separation unit via lines (63 65) (Fig. 5 and C8/L33-C9/L44).
It is noted that the specific fluids being treated and material worked upon are not given patentable weight as only the structure is being given patentable weight. As discussed above, the Johnson apparatus teaches the various separators having the same ports which are connected via conduits in the same manner thus reading on all limitations for the apparatus claim.
It is noted that claims are apparatus claims and how the apparatus is operated or the specific material worked upon are not given patentable weight ("[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.) A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). The Johnson apparatus is capable of working on the salt stream claimed and is capable of including solvents thereby reading on all limitations that are given patentable weight.
Regarding claim 2, it is submitted that the extractor (51) in Johnson would be considered a brine concentrator.
Regarding claims 3 and 5-6, Johnson teaches that the apparatus is capable of treating a salt stream and using various solvents/recovery agents and therefore is capable of treating the specific stream claimed and using the solvents claimed as the specific fluids being worked upon are not given patentable weight.
Regarding claim 8, Johnson teaches that the separation unit is a distillation column (Fig. 5).
Response to Arguments
Applicant's arguments filed 1/21/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., zero liquid discharge and the various elements of the apparatus are configured to provide certain chemistry) are not recited in the rejected claim(s). 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).
It is further noted that even if such language is provided, for apparatus claims, it must be tied to some sort of structure rather than effects of operating the apparatus on specific streams that are not given patentable weight.
Examiner notes that the claims are directed to an apparatus claims. The structure of the apparatus is what is being examined. Every structure that is claimed either directly or functionally is taught in Johnson. Johnson teaches a separation apparatus that has three separators, which would be a three stage configuration. Johnson also teaches various ports connected to one another in the manner claimed which would read on potential recycling means. As discussed above, operational parameters, such as temperatures, concentrations, chemistry reactions, and flow rates are not given patentable weight in an apparatus claim. Further, the MPEP is clear that the material worked upon is not given patentable weight in an apparatus claim. Thus, the effects of operating the apparatus on a specific fluid and the treatment results on that fluid are not given weight as the claim is an apparatus claim. Therefore, Johnson teaches all structural limitations and is capable of working upon various fluids and providing the similar results for the fluids claimed as the same structure as claimed is taught in Johnson.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777