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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the measuring of water quality Na concentration must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
For the purpose of compact prosecution and clarity of record, Examiner interprets the following:
In Claim 1, Examiner interprets the method as having the following positively recited steps:
measuring pH of inflow water … and water quality (See Claims p 3 ln 7)
adjusting the pH of the inflow … on the basis of the measured pH and water quality, … (See Claims p 3 ln 10-11)
Operation condition adjustment: comparing average values of water quality temporally… and adjusting the pH of the inflow water” (See Claims p 3 lns 13-18)
Examiner interprets decarboxylation treatment is not a positively recited step in the method.
Examiner interprets that adjusting the pH of the inflow water is a required limitation of the operation condition adjustment step C), but step B) would not require adjustment if permeated water quality is already within a predetermined range. Thus, adjustment of pH is required at least once in the overall method.
Examiner interprets:
“water quality” as “a water quality” ( = a water characteristic/property)
“the pH of the inflow water is changed by a predetermined width” as “the pH of the inflow water is changed by a predetermined value”
In Claim 2, Examiner interprets “Na concentration” as “sodium concentration”, to include sodium ions
In Claim 3, Examiner interprets “width of the pH” as “value of pH”
In Claim 4, Examiner interprets “the operation condition adjusting step is performed periodically” to encompass steps performed at regular intervals or steps performed intermittently.
In Claims 5, 6, 9, 10, Examiner interprets each recitation of “when the average value after the water quality change is [lower/higher]…a direction of next pH change is [reversed/the same]” to be a conditional step of the method.
MPEP 2111.04 (II) states “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.”
In Claim 7, Examiner interprets “when the average value before the water quality change is outside a predetermined range, the operation condition adjusting step is performed” to be a conditional step of the method.
MPEP 2111.04 (II) states “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.”
In Claim 8, Examiner interprets “when the average value after the water quality change is within the predetermined range, the pH of the inflow water is maintained as it is” to be a conditional step of the method.
MPEP 2111.04 (II) states “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.”
In Claim 11, “an inorganic carbonic acid concentration of the decarboxylated water is less than 15 mg/L”, as decarboxylated water is not positively recited previously, Examiner interprets “the decarboxylated water ” as water in any of steps A), B), or C) of the pure water production method.
Claim Rejections - 35 USC § 112
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 1-12 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 1 recites:
“A pure water production method of deionizing water to be treated using a reverse osmosis membrane separation device after performing a decarboxylation treatment of the water to be treated under acidic conditions, the pure water production method comprising…”
It is unclear whether decarboxylation treatment is intended as a step or the environment following which the method the method takes place.
“ measuring pH of inflow water …and water quality of permeated water of the reverse osmosis membrane separation device; and adjusting the pH of the inflow water such that the water quality of the permeated water is within a predetermined range on the basis of the measured pH and water quality, …comparing an average value of water quality of the permeated water of a predetermined time after the pH change (hereinafter referred to as an average value before water quality change) and an average value of water quality of the permeated water of a predetermined period after a predetermined time elapses after the pH change (hereinafter referred to as an average value after water quality change)”
It is unclear whether all recitations of “the measured water quality” and “water quality” are the same.
It is unclear whether “measuring…water quality of permeated water” means:
measuring the broad concept of “acceptable levels of properties/characteristics of water for an intended use” or
measuring “a water quality of permeated water”, such as a singular property, for example pH
If so, addition of the appropriate article before the first recitation of “water quality” would distinguish water quality in general from a water quality/property.
“the pH of the inflow water is changed by a predetermined width”
It is unclear whether “the pH of the inflow water is changed by a predetermined width” refers to a predetermined range or increment of pH change or the pH adjuster amount.
“an average value of water quality of the permeated water of a predetermined time after the pH change (hereinafter referred to as an average value before water quality change)”
Parantheses render the claim indefinite because it is unclear whether the limitations in parentheses are part of the claimed invention
Regarding the information within parentheses, pH change is a water quality change, so post-adjustment values cannot be considered a value before water quality change.
“an average value of water quality of the permeated water of a predetermined period after a predetermined time elapses after the pH change (hereinafter referred to as an average value after water quality change)”
Parentheses render the claim indefinite because it is unclear whether the limitations in parentheses are part of the claimed invention
Regarding the information within parentheses, it is unclear whether a “value after water quality change” means after the change begins or after the changes is completed.
Claims 2-12 dependent from Claim 1 and are also rejected.
Regarding Claims 5, 6, 9, and 10, “the average value after the water quality change” and “the average value before the water quality change”
Given the parenthetical nature of similar information in Claim 1, it is unclear whether there is antecedent basis for these limitations.
Claim 11 recites “ the decarboxylation treatment is performed such that an inorganic carbonic acid concentration of the decarboxylated water is less than 15 mg/L”
There is no antecedent basis for “the decarboxylated water”
Claim 12 recites “a scale inhibitor is added to water to be treated before the decarboxylation treatment.”
It is unclear whether the decarboxylation treatment is a positively recited step.
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.
Claims 7-10 are 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.
Claim 7 recites “when the average value before the water quality change is outside a predetermined range, the operation condition adjusting step is performed”, indicating the operation condition adjustment is a conditional step
Claim 1 positively recites “the pure water production method comprising… an operation condition adjusting step” showing the operation condition adjustment is a required step.
Claim 7 fails to include all the limitations of the claim upon which it depends
Claims 8-10 dependent from claim 7 are also rejected.
Claim 8 recites “according to claim 7 when the average value after the water quality change is within the predetermined range, the pH of the inflow water is maintained as it is”
Claim 1 recites “the pure water production method comprising:… adjusting the pH of the inflow water such that the water quality of the permeated water is within a predetermined range on the basis of the measured pH and water quality, …and adjusting the pH of the inflow water” indicating pH adjustment is required.
Claim 8 fails to include all the limitations of the claim upon which it depends.
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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to at least one abstract idea without significantly more.
Claim 1 recite(s) “measuring pH of inflow water flowing into the reverse osmosis membrane separation device and water quality of permeated water of the reverse osmosis membrane separation device; and
adjusting the pH of the inflow water such that the water quality of the permeated water is within a predetermined range on the basis of the measured pH and water quality, wherein
the pH of the inflow water is changed by a predetermined width, and
an operation condition adjusting step of
comparing an average value of water quality of the permeated water of a predetermined time after the pH change (hereinafter referred to as an average value before water quality change) and an average value of water quality of the permeated water of a predetermined period after a predetermined time elapses after the pH change (hereinafter referred to as an average value after water quality change) and
adjusting the pH of the inflow water”, which is a mental process which describes the measuring and comparing water quality values with the insignificant extra-solution activity of adjusting a water quality, pH, on the basis of the measure water quality values.”
The limitations reciting comparing, as drafted, are evaluations that, under broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of insignificant extra-solution activity measuring and adjusting a water quality, pH, on the basis of the measure water quality values. That is, other than reciting “measuring pH of inflow water” and “adjusting the pH of the inflow water”, nothing in the claim elements preclude the evaluations from practically being performed in the mind.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of insignificant extra-solution activity, then it falls at least within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. See MPEP § 2106.04(a)(2)(III).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, i.e. beyond what is well understood, routine and conventional within the art, specifically measuring and adjusting pH of inflow of water, taught in JP H10309574A, hereinafter Sato. (See the prior art rejection for Claim 1, below). See MPEP § 2106.05(d).
As discussed above with respect to integration of the abstract ideas into a practical application, the additional element of measuring and adjusting a water quality amounts to no more than insignificant extra-solution activity. Insignificant extra-solution activity cannot provide an inventive concept. See MPEP § 2106.05(g). The claim is not patent eligible.
Furthermore, Claims 2, 5, 6, 9 and 10 do not solve the above and are also rejected.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, i.e. beyond what is well understood, routine and conventional within the art, specifically the water quality is a specific resistance, a conductivity or a Na concentration, taught in Sato (See the prior art rejections for Claim 2, 5, 6, 9 and 10, below).
Furthermore, Claims 3 and 4 do not solve the above and are also rejected.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, i.e. beyond what is well understood, routine and conventional within the art, specifically predetermined periodic adjustment , taught in Sato (See the prior art rejections for Claim 3 and 4, below).
Furthermore, Claims 7 and 8 are conditional limitations that do not solve the above and are also rejected, given:
MPEP 2111.04 (II) states “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.”
Furthermore, Claim 11 does not solve the above and is also rejected.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, i.e. beyond what is well understood, routine and conventional within the art, specifically an inorganic carbonic acid concentration of the decarboxylated water is less than 15 mg/L, taught in Sato, in view of JP 2003001255 A, hereinafter Ichiyanagi, further in view of JP2002001069A, hereinafter Kurita. (See the prior art rejection for Claim 11, below).
Furthermore, Claim 12 does not solve the above and is also rejected.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, i.e. beyond what is well understood, routine and conventional within the art, specifically a scale inhibitor is added, taught in Sato in view of Ichiyanagi (See the prior art rejection for Claim 12, below).
Note: Applicant is respectfully encouraged to see at least MPEP 2106 for more information about limitations qualifying as “significantly more”.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 2, and 4- 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H10309574A, hereinafter Sato. The wording below is an initial machine translation of the original publication.
Regarding Claims 1, 4, 7, and 8, Sato teaches a pure water production method of deionizing water to be treated using a reverse osmosis membrane separation device after performing a decarboxylation treatment of the water to be treated under acidic conditions (“In the method for producing pure water of the present invention, the raw water is decarboxylated under acidic conditions and then deionized with an RO membrane separator to produce pure water”, [0012]), the pure water production method comprising:
measuring pH of inflow water flowing into the reverse osmosis membrane separation device and water quality of permeated water of the reverse osmosis membrane separation device (“the pH of the feed water and the specific resistance of the production water are measured to trace the state of the fluctuation, and this relational curve is obtained”, [0015]); and adjusting the pH of the inflow water such that the water quality of the permeated water is within a predetermined range on the basis of the measured pH and water quality (“the pH is adjusted so that the specific resistance is increased based on this curve”, [0015]), wherein the pH of the inflow water is changed by a predetermined value (“A pH adjuster is adjusted to a predetermined pH value. Added.”, [0026]; “a signal for changing the pH setting of the relevant portion is output so that the optimum specific resistance can be obtained”, [0027]), and
an operation condition adjusting step of
comparing an average value of water quality of the permeated water of a predetermined time after the pH change and an average value of water quality of the permeated water of a predetermined period after a predetermined time elapses after the pH change (“the pH of the feed water and the specific resistance of the production water are measured to trace the state of the fluctuation, and this relational curve is obtained”, [0015], a curve requires periodic measurements at predetermined times, meaning measuring points(s) spaced a temporal period after a first predetermined time) and
adjusting the pH of the inflow water ([0015] and [0026], see above).
Regarding Claims 2, 5, and 9, Sato teaches the water quality is a specific resistance (“meter 17 that measures the specific resistance of the final treated water (permeated water of the third RO device 6), … The control device 10 is designed so that the relationship between each pH value, the specific resistance value, and the Na ion concentration is obtained and is always updated with the latest data”, [0027]).
Regarding Claim 6 and 10, Sato teaches the water quality is a conductivity or a Na concentration (“measures the Na ion concentration of the final treated water. … The control device 10 is designed so that the relationship between each pH value, the specific resistance value, and the Na ion concentration is obtained and is always updated with the latest data”, [0027]; “pH is higher than the optimum pH value due to the increase in Na ion concentration by the Na meter 18. It can also be a criterion for determining that the pH is in the range”, [0028]).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being obvious over Sato, as applied to the claims above.
Regarding Claim 3 while Sato does not quantitatively teach the ranges of predetermined value of the pH, predetermined time and the predetermined period, Soto teaches optimizing these predetermined values with a controller in response to the latest data and fluctuations in the system:
[0027]: “The control device 10 is designed so that the relationship between each pH value, the specific resistance value, and the Na ion concentration is obtained and is always updated with the latest data. Therefore, when the optimum pH fluctuates due to fluctuations in water flow conditions and the specific resistance decreases, the pH set value is raised or lowered at a specific pH adjuster addition site, and the pH value is compared with the pH value according to the pH fluctuation . The relationship with the resistance is examined, and a signal for changing the pH setting of the relevant portion is output so that the optimum specific resistance can be obtained.”
MPEP 2144.05 (III)(A) states “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies”
Soto is considered analogous art because Soto addresses the same problem of pH adjustment in eater decarboxylation and RO treatment, with controlled optimization of water quality changes.
Therefore it would have been obvious to one of ordinary skill in the art, before the effectively filed date, for the Soto controller to regularly perform operating condition adjustment steps “so that the optimum specific resistance can be obtained” (Soto [0027]).
Claim 11 is rejected under 35 U.S.C. 103 as being obvious over Sato, as applied to the claims above, in view of JP 2003001255 A, hereinafter Ichiyanagi, further in view of JP2002001069A, hereinafter Kurita. The wording below is an initial machine translation of the original publications.
Regarding Claim 11, while the combination of Soto and Ichinayagai does not quantitatively teach an inorganic carbonic acid concentration of the decarboxylated water is less than 15 mg/L, Soto supports measuring inorganic carbonic acid as a criterion for pH adjustment:
“a TOC meter … that measures carbonate ions is provided … and IC (Inorganic Carbon: a value obtained by converting carbonic acid components (CO2, HCO3-, and CO32-) into carbonic acid) Can be used as a criterion for pH adjustment” [0028].
Soto also provides motivation for minimizing carbonate ion sources below a predetermined value: “resistivity decreases mainly due to the increase of anions such as carbonate ions in the production water” [0017];
Ichinayagi provides further motivation for removal: “carbonate ions and bicarbonate ions in the water can be effectively removed as carbon dioxide gas, and the deposition of carbonate scale such as calcium carbonate, which is the greatest cause of scale damage in the downstream RO membrane device, can be effectively prevented.”, [0005]
However, Kurita teaches an inorganic carbonic acid concentration of the decarboxylated water is less than 15 mg/L (“the method for producing pure water, raw water, after being conditioned to have pH 4-7.5 and CO2 concentration of 10 mg/L or below”, Abstract)
MPEP 2144.05 (III)(A) states “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies”
Ichiyanagi is considered analogous art because Ichiyanagi addresses the same problem of pH-adjusted decarboxylation and RO treatment of water.
Kurita is considered analogous art because Kurita addresses the same problem of pH-adjusted decarboxylation and RO treatment of water.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effectively filed date, to minimize carbonic acid in the decarboxylation treatment of Sato, as motivated by Ichinyanagi, to level as low as those taught in Kurita. By reducing carbonic acid, “the greatest cause of scale damage in the downstream RO membrane device, can be effectively prevented.”, (Inchiyanagi [0005]).
Claim 12 is rejected under 35 U.S.C. 103 as being obvious over Sato, as applied to the claims above, in view of Ichiyanagi.
Regarding Claim 12, Soto does not positively teach a scale inhibitor.
However, Ichiyanagi supports a scale inhibitor added to water to be treated before the decarboxylation treatment (“pH adjuster and a scale inhibitor are added as required” [0025]; “ From the viewpoint of preventing scale damage in the RO membrane device 5, it is preferable that the adjusted pH be acidic. However, if the adjusted pH is excessively low, it may cause corrosion of the equipment and piping materials, so it is necessary to keep the pH within the above-mentioned range”, [0027]; “The scale inhibitor may be added upstream of the RO membrane device … such as the inlet or outlet side of the decarbonation tower 2”, [0029]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effectively filed date, to combine acidic conditions and scale inhibitor upstream of RO treatment, as taught in Ichiyanagi with predictable results of scale prevention when acidic conditions alone are not sufficient for scale prevention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2018138957 A1 teaches a method for controlling pH by electrical conductivity.
WO 2015002309 A 1 teaches the impact of low pH on equilibrium state of carbonic acid
JP 6269866 B 1 teaches adjusting pH of decarbonated water based on conductivity, including RO treatment.
JP H0839066 A teaches decarbonation treatment by adding an acid thereto and passing the treated water through reverse osmosis membrane separators.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARRIAH ELLINGTON whose telephone number is (703)756-1061. The examiner can normally be reached Monday - Friday, 9:00 am - 4:00 pm EST.
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MARRIAH ELLINGTON
Examiner
Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773