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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 7/10/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 recites that the second tank is positioned above the first tank but the claim upon which it depends states the second tank extends laterally from the first tank with a portion of the second tank is located below the upper portion of the first tank. As such, claim 7 fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-5, 7, 15-17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dobby et al. (US 2013/0140218 in IDS) in view of Hildreth (US 4,026,799) and Yang (US 2016/0060137).
Regarding claim 1, Dobby teaches an apparatus comprising a tank capable of storing a fluid, the tank comprises an inlet (3) in the sidewall of the tank, a first outlet (8) in a second sidewall, and a second outlet (4 17) in the second sidewall, and an agitator (5 6 9) (Figs. 1, 3, and 5-6; [0028]-[0036]). Dobby further teaches that a gas can be injected into the tank through a pipe or sparger (second inlet having one or more gas dispensers) located below the agitator ([0032]).
Dobby fails to specifically teach the second inlet for the gas/sparger means being provided through a bottom portion of the sidewall. Hildreth teaches that a gas sparger means located inside a tank at the bottom thereof comprises an inlet for the gas sparger that is provided through a bottom portion of the sidewall (Fig. 1 and C3/L45-60). The tank in Dobby would have to have some sort of design to allow for the second inlet/sparger located at the bottom of the tank. As such, one skilled in the art would have found it obvious to provide a design for providing the gas to the bottom of the tank in the manner taught in Hildreth by having the second inlet being provided in a bottom portion of the sidewall of the tank as it is a known design that provides the same placement for the sparger/gas diffuser heads at the bottom of the tank and one skilled in the art would have a reasonable expectation of success in doing so.
As can be seen in Fig. 5, the first inlet is located above the second outlet but below the first outlet. Therefore, Dobby fails to teach the first inlet being located above the first and second outlet as claimed. Yang teaches that for flotation units, at least two of the various outlets can be located below the inlet to the flotation/frothing apparatus (Yang Fig. 5 and [0028]-[0033]). As such, it would have been obvious to move the outlet that is located above the inlet in Dobby to be slightly below the inlet as such designs are known in other separation units that use gas/bubbles as a separation aid with a reasonable expectation of success. This is also consistent with MPEP 2144.04 providing a basis that the slight rearrangement of parts would have been obvious when the rearrangement would not change the operation of the device as such locations are already known and use din the art (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).
Dobby in Figs. 5-6 teaches a pipe/outlet (17) for removing the top portion of the fluid being treated but fails to teach a second tank extending laterally from an upper portion of the first tank, wherein a bottom surface of the second tank is below an upper edge of the second sidewall as claimed. However, in a different embodiment Dobby Figs. 8-9, a second tank is shown as claimed wherein the second tank extends laterally away from the upper portion of the tank. Further, Hildreth teaches a second tank extending laterally from an upper portion of a first tank and provides a means to collect the treated liquid and provide separate outlets for further separation due to different specific gravity (C5/L16-38). As such, the inclusion of a second tank as claimed is well known in the art and would be included in order to provide a second containment means for the treated top liquid/fluid while also providing further separation due to specific gravity.
It is noted that the specific fluid treated/produced (recycled slurry), how the claimed apparatus is connected to unclaimed elements (drain) 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). 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).
In this case, the claimed apparatus is capable of treating various fluids and producing a recycled slurry. Further, piping connected to the outlet port for outlets (4 17) could be categorized as a drain as the piping removes/drains fluids from the tank. Additionally, a tank that stores different fluids or reagents is still just a tank that has a capability of storing the specific fluids treated. No specific source of the reagents is claimed and the limitations directed to what is inside the tank during use is still directed to intended uses.
Regarding claim 2, as can be seen in Fig. 3, Dobby teaches that the various tanks can be connected in series.
Regarding claims 3-4, as discussed above, the specific components of the fluid treated are not given patentable weight. The Dobby apparatus is capable of treating fluids with the components claimed and therefore meets the claim limitations.
Regarding claim 5, Dobby teaches that the agitator is an impeller/fan (6) driven by a motor (9) ([0032] and [0046]). It is submitted that while it is never explicitly stated that the motor comprises at least one bearing, it is submitted that rotating parts such as impellers/motors would typically have bearings in order to allow for the desired rotation, or it would have been obvious to provide a motor with a bearing to allow for the desired rotation.
Regarding claim 7, as discussed above, the claims appear to claim contradictory structural limitations so it is unclear what elements should be examined. It is noted that Fig. 8-9 of Dobby show a large portion of the second tank being located above an upper portion of the first tank.
Regarding claim 15, Dobby teaches an apparatus comprising a first tank/flotation module capable of storing a fluid having an inlet (3), a first outlet (4), and a second outlet (8 17), and an agitator (5 6 9) (Figs. 1, 3, and 5-6; [0028]-[0036]). Dobby further teaches that the various tanks/flotation modules can be connected in series (Fig. 3 and [0045]) thereby providing a second tank having another inlet (third inlet), a third outlet (8), and a fourth outlet (4 17), wherein the first outlet is connected to the another inlet/third inlet (Fig. 3). Further, each tank would have its own agitator capable of creating bubbles (Fig. 3). Dobby further teaches that a gas can be injected into the tank through a pipe or sparger (second inlet having one or more gas dispensers) located below the agitator ([0032]).
Dobby fails to specifically teach the second inlet for the gas/sparger means being provided through a bottom portion of the sidewall. Hildreth teaches that a gas sparger means located inside a tank at the bottom thereof comprises an inlet for the gas sparger that is provided through a bottom portion of the sidewall (Fig. 1 and C3/L45-60). The tank in Dobby would have to have some sort of design to allow for the second inlet/sparger located at the bottom of the tank. As such, one skilled in the art would have found it obvious to provide a design for providing the gas to the bottom of the tank in the manner taught in Hildreth by having the second inlet being provided in a bottom portion of the sidewall of the tank as it is a known design that provides the same placement for the sparger/gas diffuser heads at the bottom of the tank and one skilled in the art would have a reasonable expectation of success in doing so.
As can be seen in Fig. 5, the first inlet is located above the second outlet but below the first outlet. Therefore, Dobby fails to teach the first inlet being located above the first and second outlet as claimed. Yang teaches that for flotation units, at least two of the various outlets can be located below the inlet to the flotation/frothing apparatus (Yang Fig. 5 and [0028]-[0033]). As such, it would have been obvious to move the outlet that is located above the inlet in Dobby to be slightly below the inlet as such designs are known in other separation units that use gas/bubbles as a separation aid with a reasonable expectation of success. This is also consistent with MPEP 2144.04 providing a basis that the slight rearrangement of parts would have been obvious when the rearrangement would not change the operation of the device as such locations are already known and use din the art (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).
Dobby in Figs. 5-6 teaches a pipe/outlet (17) for removing the top portion of the fluid being treated but fails to teach a second tank extending laterally from an upper portion of the first tank, wherein a bottom surface of the second tank is below an upper edge of the second sidewall as claimed. However, in a different embodiment Dobby Figs. 8-9, a second tank is shown as claimed wherein the second tank extends laterally away from the upper portion of the tank. Further, Hildreth teaches a second tank extending laterally from an upper portion of a first tank and provides a means to collect the treated liquid and provide separate outlets for further separation due to different specific gravity (C5/L16-38). As such, the inclusion of a second tank as claimed is well known in the art and would be included in order to provide a second containment means for the treated top liquid/fluid while also providing further separation due to specific gravity.
It is noted that the specific fluid treated/produced (recycled slurry), how the claimed apparatus is connected to unclaimed elements (drain) 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). 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).
In this case, the claimed apparatus is capable of treating various fluids and producing a recycled slurry. Further, piping connected to the outlet port for outlets (4 17) could be categorized as a drain as the piping removes/drains fluids from the tank.
It is noted that having the same/similar tanks in series would result in the 2nd tank in series having third tank and fourth inlet as claimed as it is merely a repeat of the elements of the first flotation module that are in series.
Regarding claim 16, Dobby teaches that the first inlet (3) is capable of inputting a slurry.
Regarding claim 17, Dobby teaches that the third outlet (8) located in the middle portion of the second flotation module/tank is configured to provide a stream that is recycled. As discussed above, the specific fluid being treated is not given patentable weight.
Regarding claim 19, it is submitted that the first and second tanks in series are configured to/capable of collecting the components as claimed during its operation.
Regarding claim 20, it is submitted that the outlet at the top of the first and second tanks (17) are capable of providing a draining means for the tank.
Claim(s) 8-14 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dobby et al. (US 2013/0140218 in IDS) in view of Hildreth (US 4,026,799) and Yang (US 2016/0060137) and further in view of Nagaraj et al. (US 2010/0021370).
Regarding claim 8, Dobby teaches an apparatus comprising a first tank/flotation module capable of storing a fluid having an inlet (3), a first outlet (4), and a second outlet (8 17), and an agitator (5 6 9) (Figs. 1, 3, and 5-6; [0028]-[0036]). Dobby further teaches that the various tanks/flotation modules can be connected in series (Fig. 3 and [0045]) thereby providing a second tank having another inlet (third inlet), a third outlet (8), and a fourth outlet (4 17), wherein the first outlet is connected to the another inlet/third inlet (Fig. 3). Further, each tank would have its own agitator capable of creating bubbles (Fig. 3). Dobby further teaches that a gas can be injected into the tank through a pipe or sparger (second inlet having one or more gas dispensers) located below the agitator ([0032]).
Dobby fails to specifically teach the second inlet for the gas/sparger means being provided through a bottom portion of the sidewall. Hildreth teaches that a gas sparger means located inside a tank at the bottom thereof comprises an inlet for the gas sparger that is provided through a bottom portion of the sidewall (Fig. 1 and C3/L45-60). The tank in Dobby would have to have some sort of design to allow for the second inlet/sparger located at the bottom of the tank. As such, one skilled in the art would have found it obvious to provide a design for providing the gas to the bottom of the tank in the manner taught in Hildreth by having the second inlet being provided in a bottom portion of the sidewall of the tank as it is a known design that provides the same placement for the sparger/gas diffuser heads at the bottom of the tank and one skilled in the art would have a reasonable expectation of success in doing so.
As can be seen in Fig. 5, the first inlet is located above the second outlet but below the first outlet. Therefore, Dobby fails to teach the first inlet being located above the first and second outlet as claimed. Yang teaches that for flotation units, at least two of the various outlets can be located below the inlet to the flotation/frothing apparatus (Yang Fig. 5 and [0028]-[0033]). As such, it would have been obvious to move the outlet that is located above the inlet in Dobby to be slightly below the inlet as such designs are known in other separation units that use gas/bubbles as a separation aid with a reasonable expectation of success. This is also consistent with MPEP 2144.04 providing a basis that the slight rearrangement of parts would have been obvious when the rearrangement would not change the operation of the device as such locations are already known and use din the art (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).
Dobby in Figs. 5-6 teaches a pipe/outlet (17) for removing the top portion of the fluid being treated but fails to teach a second portion as claimed extending laterally from an upper portion of the first tank, wherein a bottom surface of the second tank is below an upper edge of the second sidewall as claimed. However, in a different embodiment Dobby Figs. 8-9, a second tank is shown as claimed wherein the second tank extends laterally away from the upper portion of the tank. Further, Hildreth teaches a second tank extending laterally from an upper portion of a first tank and provides a means to collect the treated liquid and provide separate outlets for further separation due to different specific gravity (C5/L16-38). As such, the inclusion of a second tank as claimed is well known in the art and would be included in order to provide a second containment means for the treated top liquid/fluid while also providing further separation due to specific gravity.
Dobby teaches that chemicals are used during treatment and would be present in the tank ([0004] and [0032]). Further, Dobby explicitly states that surfactants used would alter a hydrophobicity of solids in the flotation tank and would be classified as modifiers according to Applicant. However, Dobby fails to state the common chemicals for flotation would also include a frother and a collector. Nagaraj teaches that common flotation chemicals for ores/minerals as treated in Dobby include collectors, frothers, pH regulators, froth phase modifiers, dispersants, and depressants ([0028] and [0056]). As such, one skilled in the art would have found it obvious to include various common chemicals as part of the treatment mixture within the tank in order to provide better separation during flotation.
It is noted that the specific fluid treated/produced (recycled slurry), how the claimed apparatus is connected to unclaimed elements (drain) 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). 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).
In this case, the claimed apparatus is capable of treating various fluids and producing a recycled slurry. Further, piping connected to the outlet port for outlets (4 17) could be categorized as a drain as the piping removes/drains fluids from the tank.
Regarding claims 9 and 11-12, the specific type of fluid being treated, various reagents, gas, and results of the combination during treatment are considered to be intended use and the material worked upon. Dobby is capable of treating/holding the specific fluids cited and would result in similar effects.
Regarding claim 10, it is submitted that the frother, modifier, and collector in modified Dobby are capable of providing the function claimed.
Regarding claim 13, it is submitted that the second tank in series is configured to/capable of collecting the agglomeration as claimed during its operation.
Regarding claim 14, Dobby teaches that the agitator is an impeller/fan (6) driven by a motor (9) ([0032] and [0046]). It is submitted that while it is never explicitly stated that the motor comprises at least one bearing, it is submitted that rotating parts such as impellers/motors would typically have bearings in order to allow for the desired rotation, or it would have been obvious to provide a motor with a bearing to allow for the desired rotation.
Regarding claim 18, see claims 8 and 15 above. It is noted that deionized water would be a common known portion of solutions of modifiers, collectors, and frothers.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dobby et al. (US 2013/0140218 in IDS) in view of Hildreth (US 4,026,799) and Yang (US 2016/0060137) and further in view of Smith (US 4,425,227).
Regarding claim 21, Dobby fails to teach a heating device capable of controlling a temperature of the fluid within the tank. Smith teaches that for specific fluids, separation and recovery can be increased by controlling the fluid temperature during a flotation stage via a heating means (C10/L14-C11/L5). As such, one skilled in the art would have found it obvious to provide a heating means as claimed in order to allow for operating the flotation cells of Dobby at higher temperatures thereby ensuring greater separation and recovery efficiency.
Response to Arguments
Applicant's arguments filed 7/10/2026 have been fully considered but they are not persuasive. It is noted that the above rejection has been modified to address the added claim limitations.
It is noted that the arguments that the embodiment of Figs. 8-9 of Dobby teaches that that no agitator is present. It is noted that the rejection is based on the embodiment of Figs. 5-6 and the inclusion of the second tank surrounding the top of the tank in the Dobby embodiments in Figs. 8-9 as well as Hildreth. Further, the argument that the tank in Dobby is vertical extension is not persuasive as Dobby and Hildreth clearly show the second tank extending laterally from the first tank even if some part of the second tank also extends vertically.
In regards to the inclusion of the chemicals in claim 1, the claim language still includes that language as in intended use “a first tank that stores…” What a tank stores is an intended use. Contrast to claims 8 and 18 that states the tank comprises a portion that includes the specific reagents.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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 1776
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