DETAILED ACTION
This detailed action is in response to the amendments and arguments filed on December 19, 2025, and any subsequent filings.
Claims 1-10 stand rejected. Claim 3 has been canceled. Claims 1, 2, and 4-10 are pending.
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 .
Response to Arguments
Specification
The specification has been amended and the objections withdrawn.
Claim Rejections - 35 USC § 112
Claims 1, 5, 6, and 10
Claims 1, 5, 6, and 10 have been amended and the prior rejections withdrawn; however, the amendments give rise to new rejections under 35 USC 112 as detailed below.
Claim 8
Applicant's arguments filed December 4, 2025 have been fully considered but they are not persuasive.
As to the Applicants' reliance upon a Wikipedia article (Remarks, Page 8 (“Pg”)), "Wikipedia, as a website, can be an 'unreliable source of information' for purposes of resolving legal disputes, because (1) it is not peer reviewed; (2) the authors are unknown; and (3) apparently anyone can contribute to its content." Ex parte Daum (Appeal No. 2011-012714) (citing Ex parte Mandy, No. 2011-000015, Application No. 10/537,714, 2013 Pat. App. LEXIS 3163 (Pat. App. May 23, 2013) ("We give minimal weight to Appellant’s citation of a Wikipedia entry"); Ex parte Bailey, No. 2010-010310, Application No. 11/168,650, 2013 Pat. App. LEXIS 2470 (Pat. App. Apr. 25, 2013) ("Wikipedia has limited probative value in view of its dubious reliability. Among other things, Wikipedia is not peer reviewed, the authors are unknown, and apparently anyone can contribute")). As such the Wikipedia link cited by Applicant does not overcome the rejection.
Claim Rejections - 35 USC §§ 102, 103
Applicant’s arguments are directed towards the amended claims and are not persuasive for the reasons detailed in the rejections below and detailed here.
As to Applicant’s reliance upon numbered paragraphs in Tateoka e.g., (Remarks, Pg11), the English translation provided by the Office does not contain numbered paragraphs and thus Applicant’s arguments are not clear.
In response to applicant's arguments against the references individually (Remarks, Pg12), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Response to Amendment
Claim Objections
Claim 5 is objected to because of the following informalities: the second line begins with a capital letter rendering the claim grammatically incorrect and the claim does not comply with the requirements of showing all changes from the prior version of the claim such as adding a capital letter. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention. Claim 1 recites concentrated water having less than a saturated solubility yet Claim 3 and paragraphs 32 and 60 relied on by Applicant for support of the subject matter do not disclose the new limitation. Claim 8 recites a passing rate of water of 1 meter/second yet paragraph 15 of international publication WO2022054688A1 from which priority is claimed recites “0.1 m/s” in paragraph 15 as does paragraph 15 of Japanese publication JP2022176325A from which priority is also claimed. Claim 10 recites concentrating to-be-treated water by a factor of 3 yet paragraph 17 of the specification indicates the concentration factor applies to “water supplied from the first desalting device.”
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
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.
Claims 8 is 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 8 recites a passing rate of water using units of “meter/second” yet how a flow rate may use distance per time instead of volume per time is not clear. For purposes of examination the claim will be interpreted as any flow rate of water.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 1 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tateoka, et al., International Publication No. WO 2014/115769A1 (“Tateoka”) in view of Suzuki, et al., Japanese Publication No. JP2020121278 (“Suzuki”) and further in view of Nobutoki, Japanese Publication No. JP2007253050 (“Nobutoki”). English machine translations have previously been provided and the claims are mapped to those translations and the drawings in the original documents.
Applicant’s claims are directed towards a method.
Regarding Claims 1 and 4-9, Tateoka discloses a method for operating a desalting device including a first desalting device (Fig. 2, item 8b, Page 13 / Paragraph 2 (“Pg/Pr”)) and a second desalting device (Fig. 2, item 8a, Pg14/Pr1), comprising a normal operation step in which to-be-treated water is supplied to the first desalting device (Fig. 2, Pg13/Pr2) and separated into first concentrated water and first desalted water (Fig. 2, Pg13/Pr2), and the first concentrated water is supplied to the second desalting device (Fig. 2, item 8a, Pg14/Pr1) and separated into second concentrated water and second desalted water (Fig. 2, Pg14/Pr1); and a recovery operation step in which the to-be-treated water is supplied to the first desalting device and separated into the first concentrated water and the first desalted water (Fig. 2, Pg13/Pr2-14/Pr1), and dilute water having a lower concentration than that of the first concentrated water is passed through the second desalting device (Fig. 2 (note mixing of water from lines 1a and tank 2c), Pg13/Pr2-Pg14/Pr1 (note mixing of water)), and desalting performance of the second desalting device is recovered (Pg14/Pr2).
Tateoka does not disclose dilute water having less than a saturated solubility or dilute water is passed through the second desalting device for 10 to 60 minutes to dissolve a scale adhered to the second desalting device
Suzuki also relates to a water treatment device and discloses dilute water having less than a saturated solubility (Fig. 2, Pr33,37 (note permeate water from membrane 24 which is below the saturated solubility used to wash membrane 10)).
Nobutoki also relates to a method of operating a filtering device and discloses wherein, in a recovery operation step, water is passed for 5 minutes the device (Pr55).
It would been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the method disclosed by Tateoka with the dilute water below the saturated solubility disclosed by Suzuki because, according to Suzuki, the lower solubility allows for easily removing scale (Pr5,38). It would have also been obvious to combine the method disclosed by Tateoka and Suzuki with Nobutoki to arrive at the claimed washing time because, according to Nobutoki, the time may be greater and depends on flow rates (see also MPEP 2144.05 as to obviousness of ranges).
Additional Disclosures: Claim 4: wherein the to-be-treated water is used as dilute water (Tateoka, Pg14/Pr1 (note raw water used for cleaning)). Claim 5: wherein the first desalted water off the first desalting device is used as dilute water (Suzuki, Fig. 2, Pr33, 34, 37). Claim 6: wherein a scale inhibitor is added to the dilute water (Tateoka, Pg18/Pr1). Claim 7: wherein the first desalting device and the second desalting device are a reverse osmosis membrane device (Tateoka, Pg18/Pr1; Suzuki, Pr9). Claim 8: wherein the passing rate of dilute water is 0.001 to 1 meter/second (Tateoka, Pg13/Pr2-Pg14/Pr1 (note water flow); see also 112(b) analysis above)). Claim 9: wherein the water quality of the first concentrated water is any one of the following a to c: a. a calcium ion concentration of 0.1 to 10 mg/L, and a fluoride ion concentration of 3,000 to 8,000 mg-F/L, b. a calcium ion concentration of 500 to 1,500 mg/L, and a fluoride ion concentration of 50 to 150 mg-F/L, and c. a calcium ion concentration of 400 to 1,500 mg/L, and an M alkalinity of 800 to 2,000 mg/L (Tateoka, Pg7/Pr1 (noting feed concentrations vary), Pg8/Pr1 (noting final concentrations depend on feed concentrations)).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tateoka, et al., International Publication No. WO 2014/115769A1 (“Tateoka”) in view of Suzuki, et al., Japanese Publication No. JP2020121278 (“Suzuki”) and Nobutoki, Japanese Publication No. JP2007253050 (“Nobutoki”) and further in view of Hirahara, et al., Japanese Publication No. JP2020093233 (“Hirahara”). English machine translations have previously been provided and the claims are mapped to those translations and the drawings in the original documents.
Applicant’s claim is directed towards a method.
The combination of Tateoka, Suzuki, and Nobutoki discloses the method for operating a desalting device according to Claim 1 except wherein a plurality of second desalting devices are installed in parallel, and while the normal operation step is performed in some second desalting devices, the recovery operation step is performed in other second desalting devices.
Hirahara also relates to an operating a desalting device and discloses wherein a plurality of second desalting devices are installed in parallel (Fig. 5, items 12 Pr58), and while the normal operation step is performed in some second desalting devices, the recovery operation step is performed in other second desalting devices (Pr61-62).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the desalting device disclosed by Tateoka, Suzuki, and Nobutoki with the plurality of second desalting devices and simultaneous operations disclosed by Hirahara because, according to Hirahara, the device and operations allow for a high system availability (Pr62) due to efficient contaminant removal (Pr3).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tateoka, et al., International Publication No. WO 2014/115769A1 (“Tateoka”) in view of Suzuki, et al., Japanese Publication No. JP2020121278 (“Suzuki”) and Nobutoki, Japanese Publication No. JP2007253050 (“Nobutoki”) and further in view of Osaki, et al., Japanese Publication No. JP2016137447 (“Osaki”). English machine translations have previously been provided and the claims are mapped to those translations and the drawings in the original documents.
Applicant’s claim is directed towards a method.
The combination of Tateoka, Suzuki, and Nobutoki discloses the method for operating a desalting device according to Claim 1 except wherein the first concentrated water is obtained by concentrating water the to-be-treated supplied by a factor of 3 or more.
Osaki also relates to a method for operating a desalting device and discloses wherein the first concentrated water is obtained by concentrating water the to-be-treated supplied by a factor of 3 or more (Pr66).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to arrive at the claimed concentrations because, according to Tateoka, such concentrations depend on feed concentrations which may vary (Pg7/Pr1-Pg8/Pr1; see also MPEP 2144.05) and, according to Osaki, concentration may be increased by 6.7 times (Pr66).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 6, and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 2, 6, and 7 of copending Application No. 18/836749 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application contain the same limitations of the instant application albeit in a different order.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 PATRICK ORME whose telephone number is (408)918-7585. The examiner can normally be reached Monday - Thursday, 7:30 am - 6:00 pm Pacific Time.
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.
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.
/PATRICK ORME/Primary Examiner, Art Unit 1779