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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 OCTOBER 2025 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendment filed on 14 OCTOBER 2025 has been entered.
In view of the amendment to the claims, the cancellation of claims 1-11, 13-16, and 18 and the addition of new claims 19-28 have been acknowledged.
In view of the cancellation of claims 14-15, the claim interpretation section has been rendered moot.
In view of the cancellation of claims 1, 4, 11, and 18, the previous claim objections have been withdrawn.
In view of the cancellation of claims 1-11 and 13-16, the previous rejections under 35 U.S.C. 112(b) have been withdrawn.
In view of the cancellation of claims 1-11, 13-16, and 18, the previous rejections under 35 U.S.C. 103 have been withdrawn.
Response to Arguments
Applicant’s arguments filed on 14 OCTOBER 2025 have been fully considered.
Applicant argues, regarding claim 19, that the previously cited prior art does not teach the new limitations of instant claim 19 and is thus allowable (Arguments filed 14 OCTOBER 2025, Pages 6-7).
The Examiner respectfully disagrees.
Applicant’s arguments with respect to claim 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Claim 19 is not allowable in view of the newly cited prior art below.
Claim Objections
Claims 19-24 and 26-28 are objected to because of the following informalities:
In Claim 19, “the at least one module connection” in line 23 of the claim should read “the at least one zone connection”.
In Claim 19, “the at the least one zone connection” in lines 24-25 of the claim should read “the at least one zone connection”.
In Claim 19, “the at the at least one module connection” in lines 37-38 of the claim should read “the at least one zone connection”.
In Claim 19, “the at least one module connection” in line 39 of the claim should read “the at least one zone connection”.
In Claim 20, “the RO-module connection” in line 3 of the claim should read “the at least one RO-module connection”.
In Claim 20, “the pressure regulator” in line 4 of the claim should read “the at least one pressure regulator”.
In Claim 21, “the energy recovery module” in line 2 of the claim should read “the at least one individually retrievable energy recovery module”.
In Claim 21, “the energy recovery module inlet” in line 7 of the claim should read “the at least one individually retrievable energy recovery module inlet”.
In Claim 21, “the energy recovery module outlet” in line 8 of the claim should read “the at least one individually retrievable energy recovery module outlet”.
In Claim 22, “the energy recovery assembly” in lines 1-2 of the claim should read “the at least one energy recovery assembly”.
In Claim 23, “the RO-module connection” in lines 3-4 of the claim should read “the at least one RO-module connection”.
In Claim 23, “the pressure regulator” in lines 4-5 of the claim should read “the at least one pressure regulator”.
In Claim 24, “the at least one energy recovery module” in lines 3-4 of the claim should read “the at least one individually retrievable energy recovery module”.
In Claim 24, “the at least one RO-module” in line 6 of the claim should read “the at least one RO-module connection”.
In Claim 24, “the at least one module connection” in lines 6-7 of the claim should read “the at least one zone connection”.
In Claim 24, “the at the least one module connection” in line 8 of the claim should read “the at least one zone connection”.
In Claim 26, “the prefilter module” in line 2 of the claim should read “the at least one individually retrievable prefilter module”.
In Claim 26, “seawater” in line 6 of the claim should read “the seawater”.
In Claim 26, “the at least one prefilter module” twice in lines 6-7 and in lines 7-8 of the claim should read “the at least one individually retrievable prefilter module”.
In Claim 27, “the prefilter module” in lines 2-3 of the claim should read “the at least one individually retrievable prefilter module”.
In Claim 27, “the sixth zone” twice in lines 5 and 7 of the claim should read “the sixth module zone”.
In Claim 27, “the prefilter module inlet” in lines 5-6 of the claim should read “the at least one individually retrievable prefilter module inlet”.
In Claim 27, “the at the least one module connection” in line 6 of the claim should read “the at least one zone connection”.
In Claim 27, “the prefilter module outlet” in lines 9-10 of the claim should read “the at least one individually retrievable prefilter module outlet”.
In Claim 28, “permanent seabed foundation” in lines 1-2 of the claim should read “a permanent seabed foundation”.
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 19-28 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.
Claim 19 recites the limitations:
"the booster module inlet" in lines 14-15 of the claim
"the booster module outlet" in line 16 of the claim
"the RO-module inlet" in line 27 of the claim
"the RO-module outlet" in line 28 of the claim
And “the outlet of the at least one RO-cartridge assembly" in lines 36-37 of the claim.
There is insufficient antecedent basis for this limitation in the claim.
Claims 20-28 are rejected because of their dependence upon claim 19.
Claim 21 recites the limitation "the seawater" in line 8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 22-24 are rejected because of their dependence upon claim 21.
Claim 24 recites the limitation "the inlet" in line 5 of the claim. There are numerous inlets introduced before this recitation and it is unclear which instance is being referenced here.
Claim 24 recites the limitation "the outlet" twice in lines 7 and line 9 of the claim. There are numerous outlets introduced before this recitation and it is unclear which instance is being referenced here.
Claim 26 recites the limitation "the filtered seawater" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 is rejected because of its dependence upon claim 26.
Claim Rejections - 35 USC § 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 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.
Claims 19-20 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Ton That (US Patent No. 20080290032 A1) hereinafter Ton That, in view of Pedenaud et al (Pedenaud, Pierre, Hallot, Raymond, Skivington, Graeme, Riviere, Luc Kristian, and Stephane Jean Anres. "Springs: Subsea Seawater Treatment - Case Study." Paper presented at the OTC Brasil, Rio de Janeiro, Brazil, October 2013. doi: https://doi.org/10.4043/24273-MS) hereinafter Pedenaud.
Regarding Claim 19, Ton That teaches a submersible desalination unit (i.e., a shallow water desalination system; Abstract)
with a removably attached frame (i.e., at least one subsea desalination template; Fig. 1, #10; Paragraph 0042) anchored on the ocean floor via three vessel anchor lines (Fig. 2, #50) and concrete blocks (i.e., configured to be permanently located on a seabed in shallow water; Fig. 2, #52)
that contains a high pressure pump (i.e., a pump assembly configured to boost a seawater pressure at the booster module inlet from a hydrostatic pressure to a pressure exceeding an osmotic pressure that is discharged to the booster module outlet; Fig. 1, #26)
and booster pump (Fig. 1, #42) which feeds prefiltered water (i.e., the at least one booster module connection having an inlet configured to be in fluid communication with a seawater inlet at the least one zone connection of the first zone, and an outlet configured to be in fluid communication with the at the least one zone connection of the first zone; the at least one RO-module connection having an inlet configured to be in fluid communication with the booster module outlet through the least one module connection of the second zone)
to reverse osmosis membranes to above 800 PSI (i.e., at least one RO-cartridge assembly having a seawater side in fluid communication with the RO-module inlet and a desalinated water side in fluid communication with the RO-module outlet, wherein the pressure exceeding an osmotic pressure of the booster module pump assembly is sufficient for the at least one RO-cartridge assembly; Fig. 1, #32; Paragraph 0045)
and a permeate pipeline (i.e., the at least one transport module connection having an inlet configured to be in fluid communication with the outlet of the at least one RO-cartridge assembly through the at the at least one module connection of the third zone; Fig. 1, #12) which carries permeate to the shore by throttling the permeate pressure in order to obtain the necessary pressure to overcome the ambient hydrostatic head and the friction loss of the permeate pipeline (i.e., and an outlet configured to be in fluid communication with the at the least one module connection of the third zone such that desalinated water from the at least one RO-module can be pumped to a location above sea level; Paragraph 0051).
Ton That further teaches that the desalination unit is equipped with means for bringing it to the surface for maintenance (Paragraph 0072).
Ton That does not explicitly teach
(1) the at least one subsea desalination template includes a plurality of module zones, wherein each of the plurality module zones has at least one zone connection;
(2) at least one booster module configured to be placed in a first zone of the plurality of module zones and to be individually retrievable from the first zone, the at least one booster module includes: at least one booster module connection configured to releasably mate with the at least one zone connection of the first zone;
(3) at least one RO-module configured to be placed in a second zone of the plurality of module zones and to be individually retrievable from the second zone, the at least one RO- module includes: at least one RO-module connection configured to releasably mate with the at least one zone connection of the second zone, and an outlet configured to be in fluid communication with the at the least one zone connection of the second zone;
(4) and at least one transport module configured to be placed in a third zone of the plurality of module zones and to be individually retrievable from the third zone, the at least one transport module includes: at least one transport module connection configured to releasably mate with the at least one zone connection of the third zone.
However, Pedenaud teaches a local subsea processing system (Abstract) that includes a SPRINGS station module designed to modularize system for the purpose of functionality and maintainability (Page 5, Paragraph 3) and that each module is easily retrievable by a new generation of inspection, maintenance, and repair vessels (Page 6, Paragraph 1). Pedenaud further teaches
(1) a Flowbase (i.e., the at least one subsea desalination template includes a plurality of module zones, wherein each of the plurality module zones has at least one zone connection),
(2) which is secured on a foundation located on the sea floor, with specific separate modules shown for a feed pump (i.e., at least one booster module configured to be placed in a first zone of the plurality of module zones and to be individually retrievable from the first zone, the at least one booster module includes: at least one booster module connection configured to releasably mate with the at least one zone connection of the first zone),
(3) a membrane module (i.e., at least one RO-module configured to be placed in a second zone of the plurality of module zones and to be individually retrievable from the second zone, the at least one RO- module includes: at least one RO-module connection configured to releasably mate with the at least one zone connection of the second zone, and an outlet configured to be in fluid communication with the at the least one zone connection of the second zone),
(4) and an injection pump module (i.e., and at least one transport module configured to be placed in a third zone of the plurality of module zones and to be individually retrievable from the third zone, the at least one transport module includes: at least one transport module connection configured to releasably mate with the at least one zone connection of the third zone; Fig. 5).
Pedenaud is analogous to the claimed invention because it pertains to Subsea Seawater Treatment (Title). It would have been obvious to one of ordinary skill in the art to modify the single structure of the submersible desalination unit as taught by Ton That to have a modular structure with each unit operation being individually replaceable as taught by Pedenaud because the modularization of the structure would improve the functionality and maintainability of the individual unit operations.
Regarding Claim 20, Ton That in view of Pedenaud makes obvious the shallow water desalination system of claim 19. Ton That further teaches the use of a pressure exchanger energy recovery exchanger (Fig. 1, #38) that uses the residual energy of the rejected brine from the reverse osmosis membrane (Fig. 1, #32) and is set at a predetermined pressure to overcome the ambient ocean hydrostatic pressure (i.e., further comprising at least one pressure regulator in fluid communication with a retentate side of the least one RO-cartridge assembly through the RO-module connection and the at least one zone connection of the second zone, the pressure regulator being configured to provide sufficient backpressure for the at least one RO-cartridge assembly; Paragraphs 0052-0055).
Regarding Claim 25, Ton That in view of Pedenaud makes obvious the shallow water desalination system of claim 19. Ton That further teaches that the submersible desalination unit comprises a control system that operates and monitors equipment (i.e., at least one control module; Paragraph 0033). Pedenaud further teaches a subsea control module (SCM) included in a separate module (i.e., further comprising at least one individually retrievable control module located in a fifth module zone of the plurality of module zones; Fig. 5).
Regarding Claim 26, Ton That in view of Pedenaud makes obvious the shallow water desalination system of claim 19. Ton That further teaches a pre-filtration membrane housing (i.e., at least one prefilter assembly; Fig. 1, #22) with a set of pre-filtration hollow fiber membranes (Fig. 1, #20; Paragraph 0043) prior to feeding the reverse osmosis membrane (i.e., the prefilter module including an inlet configured to receive seawater; an outlet in fluid communication with the at least one booster module connection inlet; Paragraphs 0045-0047) for the purpose of removing larger contaminants and debris (i.e., the at least one prefilter assembly configured to filter the seawater received at the inlet of the at least one prefilter module and to supply the filtered seawater to the outlet of the at least one prefilter module; Abstract). Pedenaud further teaches a coarse filter module (i.e., at least one individually retrievable prefilter module; Fig. 5).
Regarding Claim 27, Ton That in view of Pedenaud makes obvious the shallow water desalination system of claim 26. Pedenaud further teaches the coarse filter module is located on the Flowbase (i.e., wherein the at least one subsea desalination template includes a second subsea desalination template, and wherein the prefilter module is configured to be placed on one of: a sixth module zone of the plurality of module zones and to be individually retrievable from the sixth zone on the at least one subsea desalination template, wherein the prefilter module inlet is configured to be in fluid communication the at the least one module connection of the sixth zone ; and the second of the at least one subsea desalination template, wherein the second subsea desalination template includes at least one prefilter module connection, and wherein the prefilter module outlet is configured to be in fluid communication with the at least one prefilter module connection; Fig. 5).
Regarding Claim 28, Ton That in view of Pedenaud makes obvious the shallow water desalination system of claim 19. Pedenaud further teaches a foundation upon which the Flowbase is mounted (i.e., further comprising a permanent seabed foundation, and wherein the at least one subsea desalination template is configured to be located on top of the permanent seabed foundation; Fig. 5).
Claims 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ton That in view of Pedenaud as applied to claim 19 above, and further in view of Katz (US Patent No. 20170349455 A1) hereinafter Katz.
Regarding Claim 21, Ton That in view of Pedenaud makes obvious the shallow water desalination system of claim 19. Ton That further teaches the use of a pressure exchanger energy recovery exchanger (i.e., at least one energy recovery module; Fig. 1, #38) that uses the residual energy of the rejected brine from the reverse osmosis membrane (Fig. 1, #32) and is set at a predetermined pressure to overcome the ambient ocean hydrostatic pressure (i.e., the energy recovery module including: an inlet in fluid communication with the at least one RO-module and configured to receive pressurized concentrated seawater from the at least one RO-module; an outlet; and at least one energy recovery assembly configured to receive the pressurized concentrated seawater at the energy recovery module inlet and to discharge the pressurized concentrated seawater through the energy recovery module outlet to the seawater; Paragraphs 0052-0055).
Ton That in view of Pedenaud does not explicitly teach that there is at least one individually retrievable energy recovery module.
However, Katz teaches that energy recovery devices (ERD) can be engineered to be in stand-alone containers where the feed water and pressurized water is piped into the containers (i.e., at least one individually retrievable energy recovery module; Paragraph 0093). Katz further teaches that the advantage of modular containers is that malfunctioning or underperforming equipment can be quickly removed and valves and piping can automatically reroute water away from such failing or underperforming equipment (Paragraph 0078).
Katz is analogous to the claimed invention because it pertains to offshore desalination (Abstract). It would have been obvious to one of ordinary skill in the art to modify the pressure exchanger energy recovery exchanger made obvious by Ton That in view of Pedenaud to be modular in its own container as taught by Katz because the container would be quickly removable when the device is malfunctioning.
Regarding Claim 22, Ton That in view of Pedenaud in view of Katz makes obvious the shallow water desalination system of claim 21. Ton That further teaches connecting the pressure exchanger booster pump (Fig. 1, #42) to the drive shaft (Fig. 1, #46) of a driving motor to utilize renewable energy (Paragraph 0050) and also teaches the use of a pressure exchanger energy recovery exchanger (Fig. 1, #38) which is fed by the reverse osmosis brine exit high pressure pipe (Fig. 1, #36) to connect a high pressure line (Fig. 1, #40) to feed the pressure exchanger booster pump (Paragraphs 0045-0053). Katz further teaches the use of energy recovery devices such as the Francis Turbine and the Pelton Wheel as shaft assisting mechanisms to feed recovered energy directly to a high pressure pump (i.e., wherein the energy recovery assembly includes a turbine aggregate with a turbine and one of an electric generator and a mechanical connection that transmits recovered energy to at least one of the at least one booster module and the at least one transport module; Paragraph 0089) for the purpose of reducing energy consumption of the desalination facility (Paragraph 0088). It would have been obvious to one of ordinary skill in the art to modify the pressure exchanger energy recovery exchanger made obvious by Ton That in view of Pedenaud to be a turbine as taught by Katz because the turbine would reduce energy consumption of the desalination facility.
Regarding Claim 23, Ton That in view of Pedenaud in view of Katz makes obvious the shallow water desalination system of claim 21. Ton That further teaches the use of a pressure exchanger energy recovery exchanger (i.e., wherein the at least one individually retrievable energy recovery module includes; Fig. 1, #38) that uses the residual energy of the rejected brine from the reverse osmosis membrane (Fig. 1, #32) and is set at a predetermined pressure in order to overcome ambient hydrostatic pressure (i.e., at least one pressure regulator in fluid communication with a retentate side of the least one RO-cartridge assembly through the RO-module connection and the at least one zone connection of the second zone, the pressure regulator being configured to provide sufficient backpressure for the at least one RO-cartridge assembly; Paragraphs 0052-0055).
Regarding Claim 24, Ton That in view of Pedenaud in view of Katz makes obvious the shallow water desalination system of claim 21. Ton That further teaches the pressure exchanger energy recovery exchanger (i.e., wherein the at least one energy recovery module; Fig. 1, #38) that uses the residual energy of the rejected brine from the reverse osmosis membrane (i.e., wherein the inlet is configured to be in fluid communication with the outlet of the at least one RO-module; Fig. 1, #32) and is set at a predetermined pressure in order to overcome ambient hydrostatic pressure (i.e., to discharge the pressurized concentrated seawater from the outlet to the seawater; Paragraphs 0052-0055). Pedenaud further teaches a local subsea processing system (Abstract) that includes a SPRINGS station module designed to modularize system for the purpose of functionality and maintainability (Page 5, Paragraph 3) and that each module is easily retrievable by a new generation of inspection, maintenance, and repair vessels (Page 6, Paragraph 1) and a Flowbase (i.e., a fourth zone of the plurality of module zones and to be individually retrievable from the fourth zone, includes at least one module connection configured to releasably mate with the at least one zone connection of the fourth zone; through at least one module connection of the fourth zone, and wherein the outlet is configured to be in fluid communication with the at least one module connection of the fourth zone), which is secured on a foundation located on the sea floor, with a variety of different modules connected to the Flowbase (Fig. 5). Katz further teaches that energy recovery devices (ERD) can be engineered to be in stand-alone containers where the feed water and pressurized water is piped into the containers (i.e., at least one individually retrievable energy recovery module is configured to be placed in a fourth zone of the plurality of module zones; Paragraph 0093).
Conclusion
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/A.A.G./Examiner, Art Unit 1777
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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