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 .
DETAILED ACTION
Applicant’s response filed December 3, 2025 is acknowledged. Claims 12, 26, 33, 80, and 89 are amended, claims 2-11, 19-24, 30-31, 34-35, 49-53, 57-78, 81-88, and 90-95 are canceled, and claims 96-97 are newly added. Claims 1, 12-18, 25-29, 32-33, 36-48, 54-56, 79-80, 89, and 96-97 are pending and further considered on the merits.
Response to Amendment
In light of applicant’s amendment, the examiner withdraws the 35 U.S.C. 112 second paragraph rejections and maintains all other rejections set forth in the office action filed June 4, 2025.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 12, 25-26, 29, 32-33, 46-48, 54-56, 79-80, 89, and 96-97 is/are rejected under 35 U.S.C. 102(a1/a2) as being anticipated by Holdich et al,. WO 2014/006384 (Holdich).
Regarding claim 1, Holdich discloses a membrane emulsification apparatus (abstract, figs. 1-3) comprising:
A membrane (REF 40, fig. 2, pg. 8 lines 8-32) defining a plurality of apertures (REF 48) connecting a first volume on a first side of the membrane to a second volume on a second different side of the membrane, the apparatus configured to receive a first phase of liquid in the first volume (via REF 30, figs, 2, 6) and a second phase of liquid in the second volume (via REF 36, figs. 2, 6), and generate an emulsion through egression of the first phase into the second phase via the plurality of apertures (pg. 10, lines 16-26);
A refiner (REF 44, fig. 2, pg. 9, lines 19-26) arranged to receive the emulsion from the membrane, said refiner comprising an inlet (portion of REF 44 upstream from REF 50) and an outlet (portion of REF 44 downstream from REF 50) and an opening (REF 50) therebetween, the opening configured to converge flow of the emulsion and break up droplets into a refined emulsion (pg. 9, line 28 – pg. 10, line 2);
Wherein the opening is adjustable and comprises adjustment means (REF 42, 52, pg. 10, lines 4-14).
Regarding claim 12, Holdich discloses an apparatus wherein the adjustment means comprises a differential screw (REF 52, figs. 2-3, pg. 10, lines 4-7).
Regarding claim 25, Holdich discloses an apparatus wherein the refiner (REF 44) is integral to the membrane (figs. 2-3).
Regarding claim 26, Holdich discloses an apparatus wherein the adjustable opening comprises a refiner plug (distal end of REF 42 proximate REF 44) adjacent the opening (REF 50), such that movement of an insert rod (REF 42) closer to the opening reduces the size of the opening (figs. 2-3).
Regarding claim 29, limitations drawn to “simulating multiple passes” are considered to be drawn to an intended use of the apparatus and do not provide patentable weight to the claim. Additionally, since the insert rod provided in the prior art is shown to have the same structure and configuration in the claims, the examiner considers the insert rod to be capable of the recited function drawn to “multiple passes”.
Regarding claim 32, limitations drawn to the use of the apparatus are not considered to provide patentable weight to the claim since such limitations do not provide a structural limitation underpinning the recited function.
Regarding claim 33, Holdich discloses an apparatus wherein the refiner comprises multiple inlets and/or outlets (REF 50, figs. 2-3, pg. 10, lines 4-7).
Regarding claims 46-48 and 54-55, Holdich discloses a method of preparing a refined emulsion comprising using the apparatus recited above (fig. 6, Claims 8-14), wherein the apparatus is arranged so that flow of the second phase in the second volume creates a shear field at an area of egression of the first phase, the shear field being in a direction substantially perpendicular to the direction of egression of the first phase (pg. 10, lines 16-26).
Regarding claim 56, Holdich discloses a method wherein the membrane is tubular in shape (pg. 11, lines 8-9) and comprises a first end and a second end, the first end receiving the second phase (via REF 36) and the refiner coupled to the second end (adjacent REF 44).
Regarding claim 79, Holdich discloses a method wherein the apparatus is used in a continuous mode (fig. 6, Claims 9-14).
Regarding claim 80, Holdich discloses a method wherein the refiner comprises multiple inlets and/or outlets (REF 50, figs. 2-3, pg. 10, lines 4-7).
Regarding claim 89, Holdich is relied upon in the rejections set forth above, each limitation in claim 89 already addressed in previous rejections set forth above.
Regarding claim 96, Holdich is relied upon in the rejection of claim 1 set forth above. Holdich further discloses the refiner comprising multiple stages (see ‘upstream’/’downstream’ stages proximal to REF 50, fig. 2).
Regarding claim 97, Holdich discloses the refiner comprising multiple inlets and/or outlets (REF 50, figs. 2-3, pg. 10, lines 4-7).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holdich in view of Marty, US 1644197 (Marty).
Regarding claim 13, Holdich discloses the differential screw comprising a spindle with threaded portion (Claim 5) but does not disclose the spindle comprising two external threads of differing thread pitch. However, Marty discloses that the use of differential screws having external threads of differing pitch is a common solution for providing an adjustment mechanism to said differential screw (REF 22, 24, fig. 1, pg. 2, lines 6-23).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the differential screw of Holdich to have two external screw threads with differing thread pitch as described in Lowe in order to provide fine and accurate adjustment means to a differential screw (Marty, pg. 2, lines 37-49).
Regarding claim 14, Marty further discloses that the external threads are congruous (fig. 1).
Claim(s) 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holdich in view of Marty as relied upon in the rejection of claim 13 set forth above, and in further view of Lowe, US 2264805 (Lowe).
Regarding claim 15, Holdich (in view of Marty) does not disclose the external screw threads having differing handedness. However, Lowe discloses that utilizing screw threads of differing pitch or handedness is common in homogenizers (fig. 1, C2/L26-44).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the differential screw to have differing handedness threads as described in Lowe since it has been shown that such an arrangement is effective in providing adjustment means for homogenizer orifices.
Regarding claim 16, Lowe further discloses a differential screw comprising nuts (REF 23, 27, fig. 1) located around two external screw threads of said differential screw.
Regarding claim 17, Lowe further discloses a differential screw wherein a first end of a spindle (REF 22b) adjacent a homogenizer opening is smaller than a second end of the spindle (REF 22), which is distal to the homogenizer opening.
Regarding claim 18, modified Holdich discloses the distal end of the spindle provided with a first external thread (Marty, REF 22, fig. 1), the diameter of which is wider than that of the end of the spindle adjacent the opening, which is provided with a second external thread (Marty, REF 24, fig. 1).
Claim(s) 27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holdich in view of Maniere, US 2012/0103546 (Maniere).
Regarding claim 27, Holdich does not disclose the end of the insert rod comprising a frustoconical member with a terminal protrusion. However, Maniere discloses a homogenizer (abstract, figs. 3-4) comprising an adjustable opening (REF 80), wherein an insert rod adjacent the opening has a frustoconical member (region surrounding REF 66) with a terminal protrusion (i.e. bottom of REF 66).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the apparatus of Holdich to have a frustoconical member as described in Maniere since it has been shown that such shapes are effective in adjusting a space for the purposes of homogenizing an emulsion.
Regarding claim 28, Maniere further discloses the terminal protrusion comprises a flat end surface (figs. 3-4).
Response to Arguments
Applicant's arguments filed December 3, 2025 have been fully considered but they are not persuasive.
Applicant argues Holdich does not disclose a “tunable” refiner. In response, the examiner directs applicant’s attention to the rejections set forth above in which “positioning of the flow control member 42 varies the flow of the emulsion through the one or more apertures 50 and may consequently be used to control the size to which the droplets of the first phase 28 are reduced to” (pg. 10, lines 4-14). The examiner interprets the adjustment means of Holdich to be tunable (i.e. capable of adjustment) configuration.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., single-pass operation, size distribution) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues Holdich does not disclose a differential screw as recited in claim 12. In response, the examiner notes a differential screw is interpreted as a threaded screw which can be turned to provide a differential or modified opening. The screw disclosed in Holdich and relied upon above discloses this function.
In response to applicant's argument that Marty is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Marty is considered to be pertinent to the particular problem with which the inventor was concerned, namely the use of a differential screw comprising a spindle with external screw threads having a differing thread pitch. The use of such screws are not unique to the separation art (as seen in Marty) and as seen in the rejections set forth above, are merely used as an alternative for differential screws.
Arguments drawn to Lowe with respect to claims 13-14 are not considered persuasive since Lowe is not relied upon in these rejections.
Arguments with respect to claims 15-18 are similarly not considered since they generally allege patentability without pointing out specific arguments against the prior art.
In response to applicant's argument that the references fail to show certain features of the invention (with respect to claims 27-28), it is noted that the features upon which applicant relies (i.e., coefficient of variation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, the rejection of claims 27-28 does not rely on a motivation for producing a uniform size distribution. As seen above, the examiner relies on Maniere for alternative shapes which are shown to be effective in homogenizing an emulsion.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIRK R BASS whose telephone number is (571)270-7370. The examiner can normally be reached 8-4:30 EST Monday-Friday.
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, Bobby Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779