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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 9/11/2025.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noguchi et al. (JP 2015/157262 in IDS but machine translation provided by Examiner).
Regarding claims 1 and 4, Noguchi teaches an apparatus comprising a biological treatment means (2) capable of treating water with an organic material, a means for adding hypobromous acid (3 4), and an ultraviolet radiating apparatus (30) downstream of the means for adding the hypobromous acid (Figs. 1-2 and pages 2-7). Noguchi further teaches that the apparatus includes a line with various elements of the system, such as the means for adding the hypobromous acid and the UV apparatus, located on the line (Fig. 2). It is noted that the hypobromous acid and the UV apparatus is only connected via the line thereby reading on the claim limitation.
Regarding claim 2, Noguchi teaches that the biological treatment means is a tower having biological activated carbon carrying microorganisms (page 3).
Claim Rejections - 35 USC § 103
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (JP 2015/157262) in view of Wolf (US 2010/0292844).
Regarding claim 3, Noguchi teaches that the biological treatment means is a tower having biological activated carbon carrying microorganisms (page 3) but fails to teach multiple towers in parallel. Wolf teaches that various treatment means including biologically activated carbon filters having microbes can be provided in parallel thereby allowing for switching of the fluid flow based on water quality parameters in order to allow for maintenance of the parallel filters not being used (claim 8). Therefore, it would have been obvious to provide multiple carbon towers as claimed in parallel thereby allowing for maintenance of the activated carbon towers not being used in operation.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (JP 2015/157262) in view of McConnell (US 4,822,494).
Regarding claim 5, Noguchi teaches that a certain amount of hypobromous acid provides the best results for removal of urea, but fails to teach a urea detecting means capable of providing information on the appropriate amount of hypobromous acid. McConnell teaches that it is beneficial to monitor the urea concentration and to provide a urea destroying reagent to urea in order to efficiently remove urea from the fluid being treated (abstract and C8/L55-C9/L15). When applied to Noguchi, one skilled in the art would have found it obvious provide a urea detecting means in order to optimize the hypobromous acid dosage based on the concentration readings of the urea detecting means thereby minimizing excessive additions of hypobromous acid.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (JP 2015/157262) in view of Rice et al. (US 2006/0157424).
Regarding claim 6, Noguchi only teaches one UV apparatus and not a second downstream one as claimed. Rice teaches that for treating waters, providing multiple UV apparatuses in series provides a further UV treatment more than one UV treatment means alone ([0076], [0085], and Fig. 10). As such, one skilled in the art would have found it obvious to provide a second UV apparatus downstream of the first in order to provide further UV treatment by the downstream UV apparatus.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (JP 2015/157262) in view of Nachtman et al. (US 2002/0179508).
Regarding claim 7, Noguchi teaches a means for removing extra hypobromous acid (adding a reducing agent or an activated carbon filter consistent with Applicant’s disclosure) would be beneficial prior to various downstream treatment means (page 5) but fails to teach the means being provided downstream of the UV apparatus. While changing the order of method steps is an obvious matter (Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.), Nachtman further teaches that providing an activated carbon filter after a UV treatment means is beneficial as it would remove various unwanted compounds formed during UV treatment prior to any downstream equipment said compounds might damage ([0029] and [0040]). As such, one skilled in the art would have found it obvious to change the order of the UV treatment means to be before the activated carbon filter in order to remove any unwanted compounds that may have formed during the UV treatment.
Response to Arguments
Applicant's arguments filed 9/11/2025 have been fully considered but they are not persuasive.
Applicant’s arguments appear to interpret the “wherein the point of addition and the ultraviolet ray radiating apparatus is connected only by the line” as meaning the addition point is directed upstream of the UV radiating apparatus on a pipe/line with no further structures between the point of addition and the ultraviolet ray radiating apparatus on said line. 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., the direct placement of the UV radiating apparatus following the addition point and nothing between them other than a line) 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). The claims merely recite a line connecting the two points and does not preclude any other elements on the line between the two claimed elements. This interpretation is consistent with Applicant’s own claim language (“a line on which the ultraviolet ray radiating apparatus is provided” and “a point of addition on the line”). Claim language should provide a basis for the argued interpretation and not merely be one of the possible narrower interpretations when limitations from the specification are read into the claims.
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.
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777