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
Newly submitted claims 97-103 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The newly added claims pertain to a specific method of using the apparatus, which was restricted without traverse in the previous non-final office action filed on 11 SEPTEMBER 2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 97-103 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Status
Rejected Claims: 84-96
Withdrawn Claims: 97-103
Cancelled Claims: 1-83
Response to Amendment
The amendment filed on 11 DECEMBER 2025 has been entered.
In view of the amendment to the claims, the amendment of claims 84, 87-88, 92, and 94-95, the cancellation of claims 77-83, and the addition of new claims 97-103 have been acknowledged.
In view of the amendment to the specification and drawings, the objections to the drawings have been withdrawn.
In view of the amendment to the specification, the objections to the specification have been withdrawn.
In view of the amendment to claims 87 and 95, the objections to the claims have been withdrawn.
In view of the amendment to claims 87, 88, and 94, the rejections under 35 U.S.C. 112(b) have been withdrawn.
In view of the amendment to claim 84, the rejections under 35 U.S.C. 103 have been modified.
Response to Arguments
Applicant’s arguments filed on 11 DECEMBER 2025 have been fully considered.
Applicant argues, regarding claim 84, that bare metal of the disc-like elements is exposed due to the machining process and Bauer (US Patent Application No. 20180134583 A1) hereinafter Bauer, nor any of the other cited prior art, does not explicitly teach the exposure of molybdenum through machining the metal of the disc-like elements which leads to improved cracking of hydrocarbons in liquids being treated by the device and thus the instant claim is allowable over Bauer (Arguments filed 11 DECEMBER 2025, Page 11 to Page 14).
Applicant argues, regarding claims 85-96, that claims 85-96 are dependent claims of claim 84 and are also allowable (Arguments filed 11 DECEMBER 2025, Page 14, Paragraph 5).
The Examiner respectfully disagrees.
Regarding Applicant’s arguments for claim 84, Bauer teaches the use of 316L stainless steel, which contains 2-3% molybdenum. The molybdenum is uniformly distributed throughout the stainless steel and would thus always be present on the surface. While the particular machining method is not detailed, it is not assumed that there would be a leftover additional layer on the stainless steel from the manufacturing method. Furthermore, Johnson (US Patent Application No. 20060231462 A1) hereinafter Johnson teaches the explicit use of machined 316L stainless steel for use in cracking hydrocarbons and that additional molybdenum is used as a known catalyst for the acceleration of hydrocarbon cracking reactions. There is no structural difference between the cited prior art and the instant claims, and so there can be no advantage gained by the molybdenum of the instant claims that would naturally be present in the device made obvious by Bauer in view of Johnson.
Regarding Applicant’s arguments for claims 85-96, claim 84 is not allowable and so the dependent claims 85-96 are also not allowable.
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 84-92 and 95-96 are rejected under 35 U.S.C. 103 as being unpatentable over Bauer (US Patent Application No. 20180134583 A1) hereinafter Bauer in view of Johnson (US Patent Application No. 20060231462 A1) hereinafter Johnson.
Regarding Claim 84, Bauer teaches a nanobubble generator (Paragraph 0021) which produces nanobubbles in a source liquid containing oils (i.e., a system to process a hydrocarbon-bearing source material, the system comprising; Paragraph 0075)
a pump (i.e., a machine to pressurize the hydrocarbon-bearing source material)
that includes a housing with an inflow portion for receiving a source liquid (i.e., an apparatus comprising: a housing having an inflow portion connected to the machine), the pump is configured to produce a pressure between 1 and 10 bar, or 14 and 145 psi (i.e., to receive the hydrocarbon-bearing source material at a pressure of within a range of about 70 psi to about 125 psi; Paragraph 0024),
a treatment portion between the inflow and outflow portions that includes at least two sequential shear surface planes separated by cavitation spaces (i.e., a treatment portion for treating the hydrocarbon-bearing source material; wherein the treatment portion further includes at least two contact surface planes separated by cavitation spaces; Paragraph 0021),
where the structure involves disc-like elements (Paragraph 0061) made from stainless steel 316L (Paragraph 0065), which contains 2-3% molybdenum, (i.e., wherein the treatment portion includes a molybdenum-containing structure made of a corrosion-resistant alloy including molybdenum) with multiple disc-elements (i.e., wherein the molybdenum-containing structure further includes at least two disc-like elements having contact surfaces; Fig. 5, #160) and a series of sequential cavitation zones (Fig. 4, #190) located between the disc-elements (i.e., separated by a cavitation space; Paragraphs 0061-0065), with 316 stainless steel having a uniform distribution of molybdenum in the structure of the steel (i.e., to expose the molybdenum to the hydrocarbon-bearing source material during the treatment thereof),
and an outflow portion for releasing a nanobubble containing liquid (i.e., an outflow portion to output a hydrocarbon-bearing processed material; Paragraph 0021).
Bauer does not explicitly teach the disc-like elements being machined or polished.
However, Johnson teaches that hydrotreating is a known method of separating hydrocarbons from non-hydrocarbons (Paragraph 0011), that cavitation bubbles and high pressures are known to facilitate hydrocarbon cracking and separation (Paragraphs 0040-0041), molybdenum is a known catalyst for facilitating hydrocarbon cracking (Paragraph 0135), and that machined 316L stainless steel is the preferred material for the construction of fluid flow pathways for devices because of the corrosion resistance of the stainless steel (Paragraph 0100).
Johnson is analogous to the claimed invention because it pertains to the cracking of carbon-carbon bonds to facilitate hydrocarbon purification from crude oil (Abstract). It would have been obvious to one of ordinary skill in the art to modify the stainless steel as taught by Bauer to be machined as taught by Johnson because the machining is a known manufacturing technique of creating passages for hydrotreating reactors.
Bauer in view of Johnson does not explicitly teach the pressure of within a range of about 70 psi to about 125 psi in the instant claim. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have selected the pressure that corresponds to the claimed range while experimenting with the range made obvious by Bauer in view of Johnson.
Regarding Claim 85, Bauer in view of Johnson makes obvious the system of claim 84. Bauer further teaches that the source solution may contain oils and water (i.e., wherein the hydrocarbon-bearing source material comprises an oil-in-water emulsion, and wherein the hydrocarbon-bearing processed material comprises separate aqueous and oil phases; Paragraph 0075).
Furthermore, the limitation “wherein the hydrocarbon-bearing source material comprises an oil-in-water emulsion, and wherein the hydrocarbon-bearing processed material comprises separate aqueous and oil phases” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115.
Furthermore, the limitation “wherein the hydrocarbon-bearing processed material comprises separate aqueous and oil phases” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Regarding Claim 86, Bauer in view of Johnson makes obvious the system of claim 84. Bauer further teaches that the disc-elements are laser cut (i.e., wherein the molybdenum-containing structure is machined; Paragraph 0065). Johnson further teaches that machined 316L stainless steel is the preferred material for the construction of fluid flow pathways for devices because of the corrosion resistance of the stainless steel (i.e., wherein the molybdenum-containing structure is machined; Paragraph 0100).
Furthermore, the limitation “to remove scale from a casting process” is directed toward a product-by-process claim and is therefore not subject to patentability because the patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113(I)).
Regarding Claim 87, Bauer in view of Johnson makes obvious the system of claim 84. Bauer further teaches multiple disc-elements (i.e., wherein the at least two disc-like elements; Fig. 5, #160) preferably made from 316L stainless steel arranged along a rod (i.e., are mounted on a shaft extending axially through the housing; Fig. 5, #180) with a distance “b” between consecutive disc-elements (i.e., the disc-like elements being separated by the cavitation space), the disc including opposite walls (i.e., each of the disc-like elements having a first wall facing the inflow portion, a second wall facing the outflow portion; Fig. 4, #161, 162) and a peripheral wall between the opposite walls (i.e., and a peripheral wall extending between the first and second walls; Fig. 4, #163) with the opposite walls shown in Fig. 4 to be facing the each an in-flow and out-flow direction, and a series of sequential cavitation zones (Fig. 4, #190; Paragraphs 0061-0065).
Regarding Claim 88, Bauer in view of Johnson makes obvious the system of claim 84. Bauer further teaches that the disc-elements are laser cut (i.e., wherein each of the at least two contact surfaces forms a surface on the disc-like elements which is machined; Paragraph 0065). Johnson further teaches that machined 316L stainless steel is the preferred material for the construction of fluid flow pathways for devices because of the corrosion resistance of the stainless steel (i.e., wherein the contact surface plane forms a surface on the disc-like elements which is machined; Paragraph 0100).
Furthermore, the limitation “to remove scale from a casting process” is directed toward a product-by-process claim and is therefore not subject to patentability because the patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113(I)).
Regarding Claim 89, Bauer in view of Johnson makes obvious the system of claim 87. Bauer further teaches that the disc-elements may be made from 316L stainless steel (Paragraph 0065) which is known to have a composition of 2-3% molybdenum (i.e., wherein the disc-like elements are made of a metal alloy comprising about 1.0 wt. % or more molybdenum).
Regarding Claim 90, Bauer in view of Johnson makes obvious the system of claim 89. Bauer further teaches that the disc-elements may be made from 316L stainless steel (Paragraph 0065) which is known to have a composition of 10-14% nickel (i.e., wherein the metal alloy of the disc-like elements further comprise about 5.0 wt. % or more nickel).
Regarding Claim 91, Bauer in view of Johnson makes obvious the system of claim 90. Bauer further teaches that the disc-elements may be made from 316L stainless steel (i.e., wherein the metal alloy is 316L stainless steel; Paragraph 0065). Johnson further teaches that machined 316L stainless steel is the preferred material for the construction of fluid flow pathways for devices because of the corrosion resistance of the stainless steel (Paragraph 0100).
Regarding Claim 92, Bauer in view of Johnson makes obvious the system of claim 87. Bauer further teaches that the disc-elements may be made from a single metal such as 316L stainless steel (i.e., wherein a surface of the disc-like elements is free of dielectric contaminants; Paragraph 0065).
Regarding Claim 95, Bauer in view of Johnson makes obvious the system of claim 87. Bauer further teaches that there may be 5 disc-elements spaced apart in the nanobubble generator (i.e., wherein the apparatus includes between 2 and 30 of the disc-like elements; Paragraph 0061).
Regarding Claim 96, Bauer in view of Johnson makes obvious the system of claim 84. Bauer further teaches that the source solution may contain oils and water (i.e., wherein the hydrocarbon-bearing source material comprises a liquid solution or emulsion containing oil; Paragraph 0075).
Furthermore, the limitation “wherein the hydrocarbon-bearing source material comprises a liquid solution or emulsion containing oil, and wherein the hydrocarbon- bearing processed material has a lower viscosity than the hydrocarbon-bearing source material” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115.
Furthermore, the limitation “wherein the hydrocarbon- bearing processed material has a lower viscosity than the hydrocarbon-bearing source material” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). See MPEP §2112.01(I).
Claim 93 is rejected under 35 U.S.C. 103 as being unpatentable over Bauer in view of Johnson as applied to claim 87 above, and further in view of Jahanmir et al (US Patent No. 5507962 A) hereinafter Jahanmir.
Regarding Claim 93, Bauer in view of Johnson makes obvious the system of claim 87. Bauer in view of Johnson does not explicitly teach wherein the disc-like elements are machined or polished with a non-ionic sanding grit which contains no metal contaminants.
However, Jahanmir teaches a method of fabricating steel articles (Col. 4, Lines 15-25) with a cutting point that may be diamond or silicon carbide among other materials with containing no metals (Col. 6, Lines 3-20) with the benefits of providing a method that will attenuate tool vibration to improve retention of the cutting point in the cutting zone and will reduce power consumption while cutting (Col. 4, Lines 32-44).
Jahanmir is analogous to the claimed invention because it pertains to methods of fabricating articles by machining (Abstract) and explicitly stainless steel articles (Col. 4, Lies 15-25). It would have been obvious to one of ordinary skill in the art to modify the machining of the stainless steel made obvious by Bauer in view of Johnson with the method as taught by Jahanmir because the method would attenuate tool vibration to improve retention of the cutting point in the cutting zone and reduce power consumption while cutting.
Furthermore, the limitation “wherein the disc-like elements are machined or polished with a non-ionic sanding grit which contains no metal contaminants” is directed toward a product-by-process claim and is therefore not subject to patentability because the patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113(I)).
Claim 94 is rejected under 35 U.S.C. 103 as being unpatentable over Bauer in view of Johnson as applied to claim 87 above, and further in view of CAMM Metals (CAMM Metals, “When is it appropriate to use laser cutting vs. waterjet cutting?”, 2018, https://inbound.cammmetals.com/blog/when-is-it-appropriate-to-use-laser-cutting-vs.-waterjet-cutting) hereinafter CAMM.
Regarding Claim 94, Bauer in view of Johnson makes obvious the system of claim 87. Bauer in view of Johnson does not teach wherein the at least one edge within the disc-like elements is water jet cut.
However, CAMM teaches that laser cutting and water cutting are interchangeable depending upon the desired parameters of how much heat may be added to the material being cut, the amount of waste generated, and the necessary precision of the cuts (i.e., wherein the at least one edge within the disc-like elements is water jet cut; Whole document).
CAMM is analogous to the claimed invention because it pertains to laser cutting of metal compared to waterjet cutting of metal (Page 1). It would have been obvious to one of ordinary skill in the art to modify the laser cutting process made obvious by Bauer in view of Johnson with the waterjet cutting process as taught by CAMM because the waterjet cutting would not add as much heat to the metal during the cutting process.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ADRIEN GERMAIN whose telephone number is (703)756-5499. The examiner can normally be reached Mon - Fri 7:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.G./ Examiner, Art Unit 1777
/John Kim/ Primary Examiner, Art Unit 1777