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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendment filed on 22 JUNE 2026 has been entered.
In view of the amendment to the claims, the amendment of claims 19, 22-24, and 26-28 and the cancellation of claims 20-21 have been acknowledged.
Pending Claims: 19 and 22-28
Cancelled Claims: 1-18 and 20-21
In view of the amendment to the claims, most of the objections and rejections under 35 U.S.C. 112(b) have been withdrawn. Some of these have been missed and some new issues have arisen from the amendments, which can be seen below.
In view of the amendment to claim 19, the rejection under 35 U.S.C. 103 has been modified.
Response to Arguments
Applicant’s arguments filed on 22 JUNE 2026 have been fully considered.
Applicant argues, regarding the 35 U.S.C. 112(b) rejection of instant claim 26, that “the filtered seawater” as antecedent basis due to a previous reference in instant claim 26 stating “at least one prefilter assembly configured to filter the seawater”. Therefore the rejection of instant claim 26 under 35 U.S.C. 112(b) should be withdrawn (Arguments filed 22 JUNE 2026, Page 6, Paragraph 3).
Regarding Applicant’s argument, there are multiple filters involved in the desalination system including at least one reverse osmosis filter which has “a seawater side” on line 26 of instant claim 19. Filtered seawater could be referencing either the desalinated water of instant claim 19 or the water that has passed the pre-filter module of instant claim 26. Applicant could amend the language to read “supply the seawater filtered by the at least one prefilter assembly” to make the reference more clear.
Applicant argues that Katz teaches an above-water container for the energy recovery device(s), which would not be suitable for use in a subsea system and so Katz is also not analogous to the instant application as offshore and undersea desalination are different technologies. Therefore, instant claim 19 is allowable (Arguments filed 22 JUNE 2026, Page 7 to Page 8, Paragraph 1).
Applicant argues that Katz does not teach modular containers because the containers contain all of the piping, wiring, and instrumentation for the modules inside the container and are a “plug and play” unit and so they are unsuitable for being retrievable from module zones of templates located on the seabed. Therefore, instant claim 19 is allowable (Arguments filed 22 JUNE 2026, Page 8, Paragraph 2).
Applicant argues that there is no teaching of how to combine the containers taught by Katz with Ton That and Pedenaud, what the effect of the combination would be, or how such a combination would work and that one of ordinary skill in the art would not be able to combine the teachings of the prior art due to the land-based design of Katz. Therefore, instant claim 19 is allowable (Arguments filed 22 JUNE 2026, Page 8, Paragraph 3).
Applicant’s arguments with respect to instant claim 19 and Katz 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. Specifically, Ton That teaches energy recovery devices designed to be located undersea, while Pedenaud teaches a modular template. Henthorne et al, US Patent Application No. US 20120067820 A1 (hereinafter Henthorne), has been brought in to teach that energy recovery devices (Fig. 2, #232, 260) are known to be located on the sea floor (Fig. 3C) and are clearly depicted as having their own, separate, foundation with bypass and removal of the energy recovery device known based upon need (Figs. 6A, 6B, 7; Paragraphs 0038, 0073, and 0097-0099). These combined teachings demonstrate to one of ordinary skill in the art that the energy recovery device of Ton That can be adapted to the flow base as taught by Pedenaud on a separate foundation with flow through and bypass piping connecting to the retentate discharge of the reverse osmosis unit as taught by Henthorne. Therefore, instant claim 19 is not allowable.
Applicant argues that instant claim 19 is allowable and to instant claims 22-28 are also allowable because they depend upon instant claim 19 (Arguments filed 22 JUNE 2026, Page 8, Paragraph 4 to Page 9).
Regarding Applicant’s argument, instant claim 19 is not allowable and so instant claims 22-28 are also not allowable.
Claim Objections
Claims 19, 24, and 27 are objected to because of the following informalities:
In Claim 19, “each of the plurality module zones” in line 4 of the claim should read “each of the plurality of module zones”.
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 outlet of the RO-module connection” in lines 36-37 of the claim should read “the outlet of the at least one RO-module connection”.
In Claim 24, “the at the least one module connection” in line 10 of the claim should read “the at least one zone connection”.
In Claim 27, “the at the least one module connection” in line 6 of the claim should read “the at least one zone connection”.
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 23 and 26-27 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 23 recites the limitation "the at least one pressure regulator" in line 5 of the claim. Claim 19 has been amended to introduce “at least one pressure regulator” and another “at least one pressure regulator” is introduced in lines 2-3 of claim 23. As such, it is unclear if there are two different pressure regulators and, if so, which one is being referenced in line 5 of claim 23.
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 and 22-28 are rejected under 35 U.S.C. 103 as being unpatentable over Ton That, US Patent Application No. US 20080290032 A1 (hereinafter Ton That), in view of 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), in view of Henthorne et al, US Patent Application No. US 20120067820 A1 (hereinafter Henthorne).
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),
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), and
the use of a pressure exchanger energy recovery exchanger (i.e., at least one energy recovery assembly; 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., at least one pressure regulator in fluid communication with a retentate side of the least one RO-cartridge assembly through the at least one RO-module connection and the at least one zone connection of the second zone, the at least one pressure regulator being configured to provide sufficient backpressure for the at least one RO-cartridge assembly; 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 at least one individually retrievable energy recovery module inlet and to discharge the pressurized concentrated seawater through the at least one individually retrievable energy recovery module outlet to the seawater; Paragraphs 0052-0055).
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 at the time of filing the instant claimed invention 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.
Ton That in view of Pedenaud does not explicitly teach that there is at least one individually retrievable energy recovery module.
However, Henthorne teaches that energy recovery devices, such as a turbobooster (Fig. 2, #232, 260; Paragraph 0038), may be located on the sea floor depending on the location of the seawater treatment system (Fig. 2, #200, Fig. 3C; Paragraph 0073) and are clearly depicted as having their own, separate, foundation (i.e., at least one individually retrievable energy recovery module) with bypass and removal of the energy recovery device known based upon the desire to recover energy from the concentrate (Figs. 6A, 6B, 7; Paragraphs 0038, 0073, and 0097-0099). As Figs. 6A and 7 clearly demonstrate the turbobooster located on a separate foundation, with the teaching clearly combines with the Flowbase taught by Pedenaud which separates each unit into a separate module located on the Flowbase template foundation.
Henthorne is analogous to the claimed invention because it pertains to membrane-based water treatment (Paragraph 0002) located on the seafloor (Paragraph 0038). It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the energy recovery device of Ton That in view of Pedenaud to be located in a separate module as taught by Henthorne because the location of the energy recovery device next to the seawater treatment system and on its own foundation would allow the device to be bypassed or even removed entirely if the energy recovery device is not needed.
Regarding Claim 22, 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).
Henthorne further teaches that energy recovery devices can include a turbobooster (i.e., wherein the energy recovery assembly includes a turbine aggregate with a turbine and one of a mechanical connection; Paragraph 0038) which captures energy from the concentrate and returns it to the variable speed high-pressure pump (Fig. 2, #212) to reduce operating costs (i.e., that transmits recovered energy to at least one of the at least one booster module; Paragraph 0049).
Regarding Claim 23, 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 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).
Henthorne further teaches that energy recovery devices, such as a turbobooster (Fig. 2, #232, 260; Paragraph 0038), are clearly depicted as having their own, separate, foundation with bypass and removal of the energy recovery device known based upon the desire to recover energy from the concentrate (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; Figs. 6A, 6B, 7; Paragraphs 0038, 0073, and 0097-0099).
Regarding Claim 25, 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 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, 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 at least one individually retrievable 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 at least one individually retrievable prefilter module inlet is configured to be in fluid communication the at least one zone 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 at least one individually retrievable prefilter module outlet is configured to be in fluid communication with the at least one prefilter module connection; Fig. 5).
Regarding Claim 28, 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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/A.A.G./ Examiner, Art Unit 1772
/Ryan B Huang/ Primary Examiner, Art Unit 1772
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