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 .
Election/Restrictions
Applicant’s election of claims 1-23 in the reply filed on 2/3/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 21 is objected to because of the following informalities: the claim requires the water to be passed through a degassing membrane “prior to dispense” (see claim 21 at line 2). However, this phrasing would seem to be grammatically incorrect.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 14, 15, 18 and 20 are 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.
Claims 14 and 15 each recite the limitation "the first and second cycles" in lines 1-2 of each of the claims. However, there is insufficient antecedent basis for these limitations in the respective claims. Specifically, it is unclear whether the timing that is being referred to is the first and second respective cycles of either the “one or more first alternating cycles” of the first water purification stage (see claim 12 at lines ) or if it is the “one or more second alternating cycles” of the second water purification stage (see claim 12 at lines ). Alternatively, what is being referred to could also be the timing for both of the one or more first and the one or more second alternating cycles of claim 12.
Please note, for purposes of claim interpretation the examiner will be treating the claims as though they are referring to the timing for both of the one or more first alternating cycles and the one or more second alternating cycles.
Claim 18 recites the limitation "the dispense" in line 2. However, there is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation "the electrodeionisation module" in lines 1-2. However, there is insufficient antecedent basis for this limitation in the claim. Specifically, it is noted that claim 20 depends from claim 19, which depends from claim 18, and claim 18 sets forth “an electrodeionisation device or module” (see claim 18 at line 2). As such, either claim 18 should be amended to just set forth “an electrodeionisation module” or claim 20 should be amended to refer to “the electrodeionisation device or module” (see claim 20 lines 1-2).
Claim Rejections - 35 USC § 112(d)
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 13 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. Specifically, it is noted that independent claim 1, the claim from which dependent claim 13 indirectly depends, requires the method to provide a purified water stream with a conductivity of <20 µS/cm (see claim 1 at lines 1-2). However, claim 13 as presented requires a purified water stream of <200 µS/cm (see claim 13). As such, to the extent claim 13 requires a purified water stream having a conductivity of a larger range than that of independent claim 1, it would seem that claim 13 fails to further limit the subject matter of the claims from which it depends, i.e. claims 1, 6 and 12.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in 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 § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 5, 17-19, 21 and 23 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by WO 2019/193901 A1 to Nakayama et al., with reference to the corresponding US filing, US Pub. No. 2021/0053849 (hereinafter referred to as "NAKAYAMA") with evidence from US Pub. No. 2022/0194816 to Emery et al., (hereinafter referred to as “EMERY”) or, in the alternative, under 35 U.S.C. 103 as obvious over NAKAYAMA in view of US Pub. No. 2019/0233314 to Dentici et al., (hereinafter referred to as “DENTICI”).
Regarding claim 1, NAKAYAMA teaches a method of treating potable mains feed water to provide a purified water stream of conductivity less than 20 µS/cm (see generally NAKAYAMA at Abstract and Fig. 7, and see NAKAYAMA at ¶40 teaching the feed water being tap water; see also NAKAYAMA at ¶125 teaching the embodiment of Fig. 7 for use to produce ultrapure water or the like; see EMERY at ¶47 and ¶98 evidencing that ultrapure water has a resistivity of greater than 15 MΩ·cm, i.e. a conductivity of less than 1 µS/cm, or greater than 18 MΩ·cm), comprising at least the steps of:
providing the feed water into a first storage tank (see NAKAYAMA at Fig. 7 depicting water in a first pass through 51A going into storage tank 46 which would then be recirculated as needed to reach a set purity level; see NAKAYAMA at ¶44 teaching the recirculation of water being treated via circulation pipeline 6 as needed; additionally see NAKAYAMA at Fig. 7 depicting 13D water supply unit which would seem to include a water tank as shown);
circulating the feed water in the first storage tank one or more times through a first purification loop including a first capacitive deionization module in a charging mode to provide a first purified water stream having a conductivity less than the feed water (see NAKAYAMA at Fig. 7 and ¶44 as cited to above which as ions are removed from the water via the CDI treatment would necessarily result in ions being removed and so the conductivity decreasing as claimed); and
circulating the first purified water stream one or more times through a second purification re-circulation loop including a second capacitive deionization module in a charging mode to provide a second purified water stream having a conductivity less than the first purified water stream (see NAKAYAMA at Fig. 7 depicting both storage tank 46 and purified water tank 14D which feeds water into water treatment unit 51B which would further remove ions so as to further decrease the conductivity as claimed).
Alternatively, as to the teachings of NAKAYAMA, with evidence from EMERY, relied upon above as to the limitation requiring the purified water stream to have a conductivity of less than 20 µS/cm, it would have been further obvious to have conducted the purification process of NAKAYAMA to achieve such a purity as taught by DENTICI.
Specifically, DENTICI is also directed towards a process and apparatus for providing ultrapure water with the use of a CDI unit (see generally DENTICI at Abstract and Fig. 1). Moreover, DENTICI teaches the starting feed water being tap water (see DENTICI at ¶109), and after a single pass through the CDI device the water having a conductivity of around 4.6 µS/cm (see DENTICI at ¶150). Furthermore, NAKAYAMA teaches the conductivity being a direct indication of the concentration of ionic substances within the water (see NAKAYAMA at ¶49 teaching the higher the concentration of ionic substances in the water the higher the conductivity).
Consequently, while DENTICI teaches the ultrapure water being produced additionally being treated via other purification processes - including an electrodeionization step so as to reach the final purity or conductivity of 0.055 µS/cm (see DENTICI at ¶150), one of ordinary skill in the art would have recognized that in the process of NAKAYAMA, also directed to the production of ultrapure water, that it would have been desirable to reach similar purity or conductivity levels for the production of ultrapure water. As such, one of ordinary skill in the art would have been motivated to have conducted the process of NAKAYAMA so as to achieve a sufficient removal of the ions within the tap water of NAKAYAMA so as to reduce the conductivity to values less than 20 µS/cm as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of NAKAYAMA to produce ultrapure water so as to conduct the purifying CDI processing until the conductivity of the water reaches a value less than 20 µS/cm for ultrapure water as taught by DENTICI so as to arrive at the process as claimed.
Regarding claim 5, NAKAYAMA, or NAKAYAMA as modified by DENTICI, teaches the method wherein some of the path of the first purification recirculation loop is the same as the path of the second purification recirculation loop (see NAKAYAMA at Fig. 7 depicting first purification recirculation loop in water treatment device 51A being from storage tank 46 around circulation pipe 6 and back and with the second purification recirculation loop including storage tank 46 in 51A and then through purified water tank 13D, 14D and then into water treatment device 51B).
Regarding claim 17, NAKAYAMA, or NAKAYAMA as modified by DENTICI, teaches the method wherein the purified water stream has conductivity less than 10 µS/cm (see rejection of claim 1 above teaching ultrapure water having a conductivity as claimed or setting forth why it would have been obvious to one of ordinary skill in the art).
Regarding claim 18, NAKAYAMA, or NAKAYAMA as modified by DENTICI, fails to explicitly teach the method further comprising passing the water through an electrodeionization device prior to the dispensing of the purified water.
However, DENTICI teaches a method of producing ultrapure water as set forth above (see teachings of DENTICI cited above with respect to the rejection of claim 1). Furthermore, DENTICI teaches the use of an electrodeionization stage after the CDI stage (see DENTICI at Fig. 1 depicting CDI stage 16 followed by EDI stage 22). DENTICI additionally teaches the EDI step as being able to remove silica and also carbon dioxide from the water besides being able to remove ions (see DENTICI at ¶70). As such, one of ordinary skill in the art would have recognized that an EDI step could be conducted after the CDI removal steps and could be used to either further purify the water or to allow the CDI steps to not have to operate to the same degree thereby decreasing recirculation requirements in order to achieve the same purity levels.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added a EDI step, as taught by DENTICI, after the CDI steps of NAKAYAMA in order to further purify the water.
Regarding claim 19, NAKAYAMA as modified by DENTICI, teaches the method wherein the purified water stream has conductivity less than 0.2 µS/cm (see rejection of claim 1 above teaching ultrapure water having a conductivity as claimed or setting forth why it would have been obvious to one of ordinary skill in the art).
Regarding claim 21, NAKAYAMA as modified by DENTICI, fails to explicitly teach the method further comprising passing the water through a degassing membrane prior to the water being dispensed.
However, DENTICI also teaches the optional degassing of the water prior to undergoing CDI (see DENTICI at Fig. 3 and ¶49). As such, one of ordinary skill in the art would have recognized the potential benefit of degassing the water prior to the capacitive deionization step since it was known to do so as shown by DENTICI.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a degassing step, as taught by DENTICI, in the CDI process of NAKAYAMA in order to remove dissolved gases from the water to be purified.
Regarding claim 23, NAKAYAMA, or NAKAYAMA as modified by DENTICI, fails to explicitly teach the method wherein the volume of purified water having a conductivity of less than 20 µS/cm is 50% of the volume of the potable mains feed water provided into the first storage tank. However, regardless of the sizing of the first storage tank, the process of NAKAYAMA, or NAKAYAMA as modified by DENTICI, through operation would eventually produce sufficient purified water to be at a volume percent as claimed and so would necessarily be met by the operation of the method.
Allowable Subject Matter
Claims 2-4, 6-12, 16 and 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pub. No. 2020/0024155 to Kano et al., teaching a method for producing ultrapure water
US Pub. No. 2019/0345051 to Keary teaching a method for providing ultrapure water
US Pub. No. 2004/0118780 to Willman et al., teaching a water purification system and method
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794
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