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 (371 of PCT/US2022/042005, filed 08/30/2022, PRO 63/254,507, filed 11 October 2021, PRO 62/248,530, filed 26 September 2021, and PRO 63/238,776, filed 31 August 2021) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of a certified copy of foreign application US 63/254,507, however the present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55. If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1). If the application being examined is a national stage application under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the applicable petition fee under 37 CFR 1.17(m)(1) or (m)(2).
Claim Objections
Claims 73 and 74 are objected to because the claims fail to provide the appropriate status identifiers. After each claim number, the status identifier of the claim must be presented in a parenthetical expression, and the text of each claim under examination as well as all withdrawn claims (each with markings if any, to show current changes) must be presented. The listing will serve to replace all prior versions of the claims in the application (MPEP §714 IIC). Acceptable status identifiers and alternatives as set forth in 37 CFR 1.121(c) are listed in MPEP §714 IIC(E).
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) 24, 25, 27, 28, 38, 40, 65, and 71-73 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by TROUVE et al. (US 2017/0305765 A1).
Regarding Claim 24, TROUVE discloses a microreactor for desalinating salt water (abstract). As shown in FIG. 1A, the microreactor 1 is of elongate shape with at least one ion migration compartment C1, at least one separation compartment C2, and at least one fluid collecting compartment C3 (p0040). The at least one ion migration compartment C1 includes an inlet opening 1B and a main channel 1A; at least one first cathode electrode 11A and at least one first anode electrode 12A are located on opposite sides of the compartment C1; and upper lip openings 22, 23 allow the collection of ions (p0041-0046). It is noted that the TROUVE-disclosed cathode electrode and anode electrode are interpreted as reading upon the claimed conductor (i.e., electrodes are capable of carrying a current and are considered conductors). The at least one separation compartment C2 includes lateral channels 7 and 8 and a continuation of the main channel 1A (p0046-0050).
PNG
media_image1.png
790
562
media_image1.png
Greyscale
As denoted in the annotated FIG. 1A, the disclosed at least one ion migration compartment C1, including the upper lip openings 22, 23, reads on the claimed “first section” (delimited by the dot-dash line); part of the disclosed at least one separation compartment C2 (i.e., the top half) reads on the claimed “second section” (delimited as a dot-dot-dash line); the claimed “first region” is read upon by the area in the disclosed device closest to at least one first anode electrode 12A, including the area immediately abutting the main channel 1A in the labeled “Stage 1” area and the lateral channel 8 in the labeled “Stage 2…n” area (delimited by the dashed line); and the claimed “second region” is read upon by the area in the disclosed device immediately adjacent the “first region” and within the main channel 1A (delimited by the dotted line). Finally, electrode 12A corresponds with the claimed “a conductor”.
The limitations “liquid comprising ions flowing through the main passage”, “a concentration of ions of a second charge type in the first region”, “and a concentration of ions of the second charge type in the second region” are all directed toward materials or articles worked upon by the claimed system and are not subject to patentable consideration. 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); MPEP §2115).
TROUVE further discloses the operation of the microreactor: saline water is directed toward the microreactor at opening 1B of the main channel 1A such that saline water flows through the main channel 1A (indicated by arrow 3; FIG. 1A). Once a potential difference is applied between the two electrodes (11A and 12A and/or 11B and 12B), an electrical field is set up between the electrodes; this enables the migration of positive ions towards the negative electrode (12A) and negative ions towards the positive electrode (11A), e.g., sodium ions to lateral channels 6 and 8 and chloride ions to lateral channels 5 and 7, respectively (FIG. 1A; p0115). Due to this electrical field, the two lateral channels on either side of the main channel 1A have higher ion concentrations than in the main channel (i.e., a conductor configured, in response to the conductor carrying an electrical current and liquid comprising ions flowing through the main passage, to cause a concentration of ions of a second charge type in the first region to be greater than a concentration of ions of the second charge type in the second region; p0116).
Regarding Claim 25, TROUVE anticipates the system of Claim 24. As shown in the above annotated FIG. 1A, in the “second section”, lateral channel 8 and main channel 1A represent the claimed first passage and second passage, respectively, being “fluidically separated” from each other (i.e., in the second section, the first region is at least partially contained within a first passage and the second region is at least partially contained within a second passage substantially fluidically separated from the first passage).
Regarding Claim 27, TROUVE anticipates the system of Claim 24. As denoted in the above annotated FIG. 1A, the disclosed the claimed “third region” is read upon by the area in the disclosed device closest to at least one first cathode electrode 11A, including the area immediately abutting the main channel 1A in the labeled “Stage 1” area and the lateral channel 7 in the labeled “Stage 2…n” area (delimited by the long-dashed line) (i.e., the main passage further has a third region, wherein, in the first section, the third region is fluidically coupled or fluidically couplable to the second region, and wherein, in the second section, the third region is substantially fluidically separated or substantially fluidically separable from the second region).
Regarding Claim 28, TROUVE anticipates the system of Claim 27. As shown in the above annotated FIG. 1A, in the “second section”, lateral channel 8, main channel 1A, and lateral channel 7 represent the claimed first passage, second passage, and third passage, respectively, all being “fluidically separated” from each other (i.e., in the second section, the first region is at least partially contained within a first passage, the second region is at least partially contained within a second passage, and the third region is at least partially contained within a third passage, and wherein, in the second section, the second passage is substantially fluidically separated from the first passage and from the third passage).
Regarding Claim 38, TROUVE anticipates the system of Claim 24. As shown in the above annotated FIG. 1A, electrodes 12A and 11A are axially parallel with the main channel 1A as are electrodes 12B and 11B (i.e., wherein the conductor generally extends along the fluidic path of the main passage; p0043, p0058).
Regarding Claim 40, TROUVE anticipates the system of Claim 24. TROUVE further explicitly discloses the lack of use of a membrane (i.e., the main passage does not include a membrane in at least one of the first region or the second region; p0017, p0031-0032, p0036).
Regarding Claim 65, TROUVE anticipates the system of Claim 28. As shown in FIG. 1A, lateral channels 7 and 8 terminate at their distal end in a vessel 10 that collects highly saline fluid 10A (i.e., the first and third passages are fluidically coupled to a high-salinity passage at respective distal ends of the first and third passages; p0057).
Regarding Claim 71, TROUVE anticipates the system of Claim 24. As noted, upon application of a potential difference between the two electrodes, an electrical field is generated between the electrodes (p0115). Although TROUVE is deficient in explicitly disclosing “generat[ing] a magnetic field within the main passage having a direction perpendicular to the fluidic path of the main passage”, such a limitation is inherently anticipated as described by TROUVE based on simple electromagnetic physics principles (i.e., the conductor is configured, in response to carrying the electric current, to generate a magnetic field within the main passage having a direction perpendicular to the fluidic path of the main passage). The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer (Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947, Fed. Cir. 1999; MPEP §2112 I).
Regarding Claim 72, TROUVE anticipates the system of Claim 27. As noted in the rejection of Claim 24, TROUVE discloses the operation of the microreactor wherein saline water is directed toward the microreactor at opening 1B of the main channel 1A such that saline water flows through the main channel 1A (indicated by arrow 3; FIG. 1A). Once a potential difference is applied between the two electrodes (11A and 12A and/or 11B and 12B), an electrical field is set up between the electrodes; this enables the migration of positive ions towards the negative electrode (12A) and negative ions towards the positive electrode (11A), e.g., sodium ions to lateral channels 6 and 8 and chloride ions to lateral channels 5 and 7, respectively (FIG. 1A; p0115). Due to this electrical field, the two lateral channels on either side of the main channel 1A have higher ion concentrations than in the main channel (i.e., the conductor is configured, in response to carrying the electric current and the liquid comprising ions flowing through the main passage, to generate a magnetic field and to cause, via the magnetic field: the concentration of ions of the second charge type in the first region to be greater than a concentration of ions of the second charge type in the second region and in the third region, and a concentration of ions of the first charge type in the third region to be greater than a concentration of ions of the first charge type in the second region and in the first region; p0116).
Regarding Claim 73, TROUVE anticipates the system of Claim 72. As shown in FIG. 1A, the lateral channels 6 and 8 (i.e., the first region) and the lateral channels 5 and 7 (i.e., the third region) are respectively positioned on opposite sides of the main channel 1A (i.e., the main passage and the second region) (i.e., the first and third regions are respectively positioned on opposite sides of the main passage, and the second region is positioned between the first and third regions).
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(s) 64 is/are rejected under 35 U.S.C. 103 as being unpatentable over TROUVE et al. (US 2017/0305765 A1).
Regarding Claim 64, TROUVE anticipates the desalination system of Claim 27. As further shown in the annotated FIG. 1A above, part of the disclosed at least one separation compartment C2 (i.e., the bottom half) reads on the claimed “third section” such that the second section is between the first section and the third section. As shown in FIG. 1A, the third section includes channels 6A and 5A that fluidically couple the first region to the second region and the second region to the third region, respectively, such that the first region is considered to be fluidically coupled to the third region. As even further shown in FIG. 1A, electrodes 12B and 11B extend along the length of the third section. It is further noted that although TROUVE discloses separate electrodes whereas the instant claim cites a single conductor, TROUVE indicates that the pairs of anode electrodes 12A, 12B and cathode electrodes 11A, 11B are positioned so as to be continuations of one another (p0064); indeed, the operability of the disclosed devices relies on the electric field generated between the electrodes 11, 12 (p0086)—the lateral channels 6 and 5 between the vertically oriented electrodes serve only to shunt the separated ions (p0065). One of ordinary skill in the art would find a single electrode (i.e., a single conductor) would be an obvious simple substitution for the disclosed multiple electrodes because the same electric field would be generated/expected. The claim would have been obvious to one of ordinary skill in the art because the substitution of one known element for another would have yielded predictable results (MPEP §2143.01 B).
The limitation “in response to the conductor carrying the electric current and the liquid flowing through the main passage, to cause, in the first section, a concentration of ions of a first charge type in the third region to be greater than a concentration of the ions of the first charge type in the second region” is directed toward an intended result from the practice or use of the claimed invention and thus, is not subject to patentable consideration. Claim scope is not limited by claim language that suggests or makes optional but does not limit a claim to a particular structure. Because the prior art, singly or in combination, teaches all claimed structural language, the “adapted to” or “adapted for” clause in question is optional and does not limit the claim. The clause expresses the intended use of the claimed structural element and thereby, does not further limit the claim (MPEP §2111.04).
Even further, such a limitation is directed toward an intended use and manners or methods by which the claimed system is used. If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II). The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); MPEP §2115).
Claim(s) 68-70 and 74 is/are rejected under 35 U.S.C. 103 as being unpatentable over TROUVE et al. (US 2017/0305765 A1) as applied to Claims 27, 24, and 72, and further in view of SHIGENIWA et al. (JP 2008191084 A; machine translation provided and referenced herein).
Regarding Claim 68, TROUVE anticipates the desalination system of Claim 27. TROUVE is deficient in disclosing the second region surrounds the third region, and the first region surrounds the second region.
SHIGENIWA discloses a cylindrical desalination reactor that removes ions from a water-to-be-treated (abstract). As shown in FIGs. 1 and 2 and described in the last paragraph of pg. 4 to the middle paragraph of pg. 5, SHIGENIWA discloses a cylindrical diaphragm structure 10 includes a bottom 12 at one end and opening 13 at the other (FIG. 1). FIG. 2 depicts a cross-section of structure 10 as cylindrical desalter 20; the desalter 20 includes an outer peripheral electrode 21, a center electrode 22, and inner and outer peripheral diaphragms 24 and 23, respectively.
PNG
media_image2.png
45
400
media_image2.png
Greyscale
[AltContent: textbox (CONCENTRATED SECTION (e.g., high ion conc.))][AltContent: textbox (CONCENTRATED SECTION (e.g., high ion conc.))][AltContent: textbox (DESALTING SECTION (e.g., saline water))][AltContent: textbox (INNER DIAPHRAGM)][AltContent: textbox (OUTER DIAPHRAGM)][AltContent: textbox (INNER ELECTRODE)][AltContent: textbox (OUTER ELECTRODE)]
PNG
media_image2.png
45
400
media_image2.png
Greyscale
During operation, liquid-to-be-treated is introduced into the desalting section 25; a potential gradient is applied to the electrodes 21 and 22 to induce charges on the electrodes causing oppositely-charged ions in the liquid to migrate toward the electrodes into the concentrated sections 26 and 27 (pg. 5, bottom paragraphs). Advantageously, the use of a cylindrically-shaped desalinating device as taught by SHIGENIWA allows for relatively easier adaptation to higher liquid flows (pg. 4, §ADVANTAGEOUS-EFFECTS). Further, SHIGENIWA discloses that such a cylindrically-shaped desalter provides advantages over parallel plate desalters by addressing known issues with maintaining insulation throughout such conventional devices (pg. 3, middle). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide/substitute a desalination device such as the cylindrical device taught by SHIGENIWA where a second region surrounds a third region and a first region surrounds the second region as claimed for the desalination system taught by TROUVE.
Regarding Claim 69, modified TROUVE makes obvious the desalination system of Claim 68. As disclosed by SHIGENIWA, the electrodes run along the length of the cylindrical desalter (i.e., the conductor extends through at least part of the third region; pg. 5, middle; see also FIGs. 4 and 5).
Regarding Claim 70, TROUVE discloses the desalination system of Claim 24. TROUVE is deficient in disclosing the conductor extends through a center of at least part of the main passage.
SHIGENIWA discloses a cylindrical desalination reactor that removes ions from a water-to-be-treated (abstract). As shown in FIGs. 1 and 2 and described in the last paragraph of pg. 4 to the middle paragraph of pg. 5, SHIGENIWA discloses a cylindrical diaphragm structure 10 includes a bottom 12 at one end and opening 13 at the other (FIG. 1). FIG. 2 depicts a cross-section of structure 10 as cylindrical desalter 20; the desalter 20 includes an outer peripheral electrode 21, a center electrode 22, and inner and outer peripheral diaphragms 24 and 23, respectively. The center electrode 22 reads upon the claimed limitation that the conductor extends through a center of at least part of the main passage.
During operation, liquid-to-be-treated is introduced into the desalting section 25 (i.e., the main passage); a potential gradient is applied to the electrodes 21 and 22 to induce charges on the electrodes causing oppositely-charged ions in the liquid to migrate toward the electrodes into the concentrated sections 26 and 27 (pg. 5, bottom paragraphs). Advantageously, the use of a cylindrically-shaped desalinating device as taught by SHIGENIWA allows for relatively easier adaptation to higher liquid flows (pg. 4, §ADVANTAGEOUS-EFFECTS). Further, SHIGENIWA discloses that such a cylindrically-shaped desalter provides advantages over parallel plate desalters by addressing known issues with maintaining insulation throughout such conventional devices (pg. 3, middle). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide/substitute a desalination device such as the cylindrical device taught by SHIGENIWA where the conductor extends through a center of at least part of the main passage as claimed for the desalination system taught by TROUVE.
Regarding Claim 74, TROUVE discloses the desalination system of Claim 72. TROUVE is deficient in disclosing the third region is an inner region of the main passage, the first region is an outer region of the main passage, and the second region is positioned between the first and third regions.
SHIGENIWA discloses a cylindrical desalination reactor that removes ions from a water-to-be-treated (abstract). As shown in FIGs. 1 and 2 and described in the last paragraph of pg. 4 to the middle paragraph of pg. 5, SHIGENIWA discloses a cylindrical diaphragm structure 10 includes a bottom 12 at one end and opening 13 at the other (FIG. 1). FIG. 2 depicts a cross-section of structure 10 as cylindrical desalter 20; the desalter 20 includes an outer peripheral electrode 21, a center electrode 22, and inner and outer peripheral diaphragms 24 and 23, respectively.
During operation, liquid-to-be-treated is introduced into the desalting section 25 (i.e., the second region); a potential gradient is applied to the electrodes 21 and 22 to induce charges on the electrodes causing oppositely-charged ions in the liquid to migrate toward the electrodes into the concentrated sections 26 and 27 (i.e., the first region and the third region, respectively; pg. 5, bottom paragraphs). Advantageously, the use of a cylindrically-shaped desalinating device as taught by SHIGENIWA allows for relatively easier adaptation to higher liquid flows (pg. 4, §ADVANTAGEOUS-EFFECTS). Further, SHIGENIWA discloses that such a cylindrically-shaped desalter provides advantages over parallel plate desalters by addressing known issues with maintaining insulation throughout such conventional devices (pg. 3, middle). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide/substitute a desalination device such as the cylindrical device taught by SHIGENIWA where the third region is an inner region of the main passage, the first region is an outer region of the main passage, and the second region is positioned between the first and third regions as claimed for the desalination system taught by TROUVE.
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 24, 25, 27, 28, 38, 40, and 64-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 64, 67, 66, 71, and 65 of copending Application No. 17/899,085 (reference application) singly or in combination with TROUVE et al. (US 2017/0305765 A1) and SHIGENIWA et al. (JP 2008191084 A).
Claims 24, 27, 65-67, and 71-73 are directly read upon by Claim 64 of copending ‘085. It is noted that although the copending ‘085 application cites “electrodes” instead of the instant application citation of “conductors”, there is no claimed difference between “electrode” and “conductor” and one of ordinary skill in the art would interpret an “electrode” to be a “conductor of electricity”.
Claims 25 and 28 are directly read upon by Claim 67 of copending ‘085.
Claim 38 is directly read upon by Claim 69 of copending ‘085.
Claim 40 is directly read upon by Claim 65 of copending ‘085.
Claim 64 of the instant application is obvious over Claim 64 of copending ‘085 in view of TROUVE; nearly all limitations of Claim 64 are disclosed by the copending Claim 64 except for the claimed third section and the claimed configuration of the conductor extending along the fluidic path of the first section, the second section, and the third second. These limitations are disclosed by TROUVE.
Claims 68-70 and 74 of the instant application are obvious over Claims 27, 24, and 72, respectively of copending ‘085 in view of TROUVE and SHIGENIWA; SHIGENIWA discloses a cylindrical desalination device comprising a center electrode and an outer shell electrode with three separated regions therebetween, i.e., a first region closest to the center electrode, a second region surrounding the first region, and a third region surrounding the second region and closest to the outer electrode.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Amendments/Arguments
Applicant’s reply filed 21 December 2025 has been fully considered.
Regarding §Priority Claim (pg. 7), Applicant’s arguments are sufficient; the claimed priority to the cited provisional applications has been considered.
Regarding §Rejection of Claims under 35 U.S.C. § 102 (pg. 8-9), Applicant argues that the electrodes of TROUVE cannot be considered to be the conductor of Claim 24. Applicant further argues “Trouve does not contemplate examples where the electrodes 11 and 12 carry electric currents” (pg. 9, bottom).
The Examiner respectfully disagrees.
TROUVE explicitly discloses that a potential difference is applied between the electrodes to generate an electrical field between the electrodes (p0115), i.e., the electrodes 11 and 12 do indeed carry electric currents and thus, operate as conductors as claimed. Thus, one of ordinary skill in the reading TROUVE despite disclosing “electrodes” will find the claimed “conductors” to be inherently anticipated by TROUVE.
Regarding §Nonstatutory Double Patenting Rejections (pg. 11), Applicant’s statements are noted; given the amended claims, the nonstatutory double patenting rejections have been updated appropriately to reflect the added prior art for the added new claims.
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 RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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.
/Ryan B Huang/Primary Examiner, Art Unit 1777