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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10 April 2026 has been entered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority (JP2020-151402, filed 09 September 2020) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/JP2021/030530, filed 20 August 2021) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Response to Amendments
Applicant’s amendments filed 10 April 2026 have been entered. Claims 1, 9, and 17 have been amended; Claims 7 and 8 have been canceled; Claims 9-20 are withdrawn; and new Claim 21 has been added. Claims 1-6 and 9-21 are pending.
Regarding the rejections of Claims 1-8 under 35 U.S.C. 101, Applicant’s amendments are not sufficient to overcome the rejections. The added limitation of “a warning unit” to the claimed water treatment system of Claim 1 is considered an additional element that does not add significantly more than nor integrates the previously-cited judicial exceptions.
Regarding the rejections of Claim(s) 1-3, 5, and 6 under 35 U.S.C. 102(a)(1) as being anticipated by PARK et al. (KR 20130058473 A), Applicant’s amendments are sufficient; these rejections and the dependent claim rejections of Claim(s) 4 under 35 U.S.C. 103 as being unpatentable over PARK et al. (KR 20130058473 A) in view of TAKATORI et al. (US 2021/0078873 A1); and Claim(s) 7 and 8 under 35 U.S.C. 103 as being unpatentable over PARK et al. (KR 20130058473 A) in view of WOLF (US 2010/0292844 A1) are withdrawn. However, upon further consideration and search, new grounds of rejection have been made for Claim 1 under 35 U.S.C. 103 as being unpatentable over PARK et al. (KR 20130058473 A) in view of WOLF (US 2010/0292844 A1).
Please note the added 35 U.S.C. 112(b) rejection of Claim 21.
Response to Arguments
Applicant’s arguments filed 10 April 2026 have been fully considered.
Regarding “Rejections under 35 U.S.C. §101”, Applicant argues that “the claims have now been amended to explicitly recite a particular way of achieving an improvement, namely an improvement to conventional techniques for removing "impurities from water." This improvement solves the "water treatment system" problem disclosed at paragraphs [0002] and [0004 ]-[0009] of the present application's Specification (as filed)” (pg. 10, par. 2). Applicant further argues “it would be unreasonable for the Examiner to continue to dismiss the "water treatment apparatus" of claim 1 as being directed to "insignificant extra-solution activity," because the claimed "water treatment apparatus" provides for the transformation of an article (i.e., water) from a state of impurity into a "pure water" state (e.g., an ultrapure state)” (par. spanning pg. 10-11).
The Examiner respectfully disagrees.
Despite Applicant’s assertions, Applicant has not “explicitly recite[d] a particular way” for improving the treatment of water to remove impurities. The claimed invention remains generic and recites broad limitations directed to generic machines, e.g., a treatment apparatus, an information processing device, a concentration calculation unit, a warning unit, etc. Such recitations are hardly “explicit” and “particular” and instead are wholly generic.
Further, no purported transformation to a different state has been recited. The treatment of water to produce water does not transform or reduce an article to a different state. The nature of transformation requires that the transformed article have a different function or use and not merely a different condition (e.g., untreated vs. treated). Further, a transformation that contributes only nominally or insignificantly to the execution of the claimed invention (e.g., from untreated to treated water) would not provide significantly more (or integrate a judicial exception into a practical application). Such a transformation is considered a field-of-use limitation and does not provide significantly more than the judicial exception (MPEP 2106.05(c)). Even further, the claimed invention merely requires a water with impurities to a water without impurities – such a transformation is not particular and is wholly general, e.g., no specific impurity level, no level of impurity reduction, no specific impurity, etc. are recited to warrant the claim to be considered as a particular transformation.
It is noted that Applicant’s new Claim 21 is not rejected under 35 USC 101.
Regarding “Rejection under 35 U.S.C. §102” (pg. 12), as noted earlier, Applicant’s amendments are sufficient to overcome the prior art rejection under 35 USC 102—this rejection has been withdrawn; as such, Applicant’s arguments have been considered but are not persuasive because they are directed to grounds of rejection that have been withdrawn. Therefore, the arguments are not commensurate in scope with the presently pending claims.
Regarding “Rejections under 35 U.S.C. §103” (pg. 12-13), Applicant has not addressed the specific rejections and only references newly added Claim 21.
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.
Claim 21 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.
Regarding Claim 21, the limitations “a first series”, “a second series”, “a third series”, and “a fourth series” are recited; it is unclear as to what subjects these limitations are modifying, e.g., “a first series of activated carbon granules”. Because these limitations fail to particularly point out and distinctly claim the subject matter of the invention, the claim is considered indefinite.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Regarding Claims 1-6, the claimed invention falls under a statutory category, i.e., a system or apparatus (Step 1; MPEP 2106.03).
The claim(s) recite(s) the judicial exceptions (Step 2A, Prong One; MPEP 2106.04(II)(A)(1), 2106.04(a)(2)) of (1) “a concentration calculation unit that… calculates a predicted value of a concentration of impurities”, (2) “a removal rate calculation unit that calculates the removal rate”, (3) “a storage unit that stores the removal rate”, (4) “the concentration calculation unit calculates the predicted value of the concentration of impurities”, (5) “a concentration measuring unit that measures the concentration of impurities”, (6) “the removal rate calculation unit calculates the removal rate”, (7) “the concentration measuring unit measures a concentration of total organic carbon and a concentration of urea”, (8) “the removal rate calculation unit calculates the removal rate”, and (9) “the removal rate calculation unit calculates a current removal rate”.
These judicial exceptions are directed toward mental processes (3, 5, and 7; MPEP 2106.04(a)(2)(III), i.e., claims recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions; performing a mental process on a generic computer; or using a computer as a tool to perform a mental process) and mathematical concepts (1, 2, 4, 6, 8, and 9; MPEP 2106.04(a)(2)(I), i.e., mathematical formulas or equations or calculations).
These judicial exceptions are not integrated into a practical application (Step 2A, Prong Two; MPEP 2106.04(II)(A)(2), 2106.04(d)) because the claims do not reflect a particular way of achieving any purported improvement (MPEP 2106.05(a)), no particular machine is recited (MPEP 2106.05(b)), no transformation or reduction of a particular article to a different state or thing is claimed (MPEP 2106.05(c)), no meaningful limitations beyond generally linking the use of the judicial exceptions to a particular technological environment are recited (MPEP 2106.05(e)), insignificant extra-solution activity is added to the judicial exceptions (MPEP 2106.05(g)), and/or the judicial exceptions are generally linked to a particular technological environment or field of use (MPEP 2106.05(h)). The cited additional elements are (1) a water treatment apparatus, (2) an information processing device, (3) measuring units for total organic carbon and urea, (4) an output unit, and (5) a warning unit. All cited additional elements do not integrate the judicial exceptions because these additional elements are considered mere data gathering (i.e., obtaining information, determining information, and offering information to users; MPEP 2106.05(g)). Even further, the claimed “warning unit” of Claim 1 is considered a post-solution activity that is well-understood and conventional as to be considered an insignificant extra-solution activity (MPEP 2106.05(g)): the provision of a “warning unit” designed to output a “predetermined alert and a signal” to perform a process to remediate a determined excess concentration of impurities is considered so rote and routine as to be wholly expected for a water treatment system. As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B; MPEP 2106.05) because the additional elements identified in the previous step (Step 2A, Prong Two), taken alone or in combination, do not amount to significantly more than the judicial exception and further, because all additional elements are disclosed by or obvious over the prior art as noted in the subsequent prior art rejections. WOLF (US 2010/0292844 A1) discloses additional limitations (1), (2), (4), and (5); TAKATORI et al. (US 2021/0078873 A1) discloses the additional limitation (3) of measuring units for total organic carbon and urea.
Thus, the claimed invention is not subject matter eligible.
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.
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.
Claim(s) 1-3, 5, 6, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over PARK et al. (KR 20130058473 A; see previously provided machine translation) in view of WOLF (US 2010/0292844 A1).
Regarding Claim 1, PARK discloses an apparatus for determining a cleaning time for filtering wastewater using a membrane (abstract). The apparatus comprises a wastewater treatment system (i.e., a water treatment system comprising a water treatment apparatus) with a water quality monitoring unit 110 (i.e., an information processing device) that collects raw untreated water flowing into the system and measures the level/concentration of organic matter contained in the raw water (pg. 4, par. 4); a first database 120 that stores information about the treatment capacity of the system (pg. 4, par. 5); a second database 130 that stores information on the filter membrane 30, e.g., filtration capacity and quality (pg. 4, par. 6); and a water prediction unit 140 that predicts the concentration of contaminants contained in treated effluent (i.e., a concentration calculation unit; pg. 5, par. 1). The water prediction unit 140 determines this effluent concentration by basing calculations on historical data on the filter membrane 30 capacity, filtration quality, and a “concentration rate of contaminants” using a rate calculation unit 150 to determine a filtration rate by which the membrane removes contaminants (i.e., calculates a predicted value of a concentration of impurities contained in water supplied from the water treatment apparatus based on a removal rate for removing impurities in the water treatment apparatus; pg. 5, par. 2).
As noted earlier, the PARK-disclosed system utilizes a water prediction unit 140 that predicts the concentration of contaminants contained in raw water (pg. 5, par. 1). PARK further discloses a certain treatment capacity of the apparatus, e.g., a filtration rate of the membrane (pg. 5, par. 2), such that when the predicted contaminant concentration in the raw water exceeds a certain capacity of the apparatus to sufficiently treat, a cleaning procedure is implemented (i.e., when the predicted value of the concentration of impurities calculated by the concentration calculation unit exceeds a predetermined threshold value; pg. 5, par. 3). PARK is deficient in disclosing the information processing device includes a warning unit that, when the predicted value of the concentration of impurities calculated by the concentration calculation unit exceeds a predetermined threshold value, outputs a predetermined alert and a signal for performing a process for reducing the concentration of impurities.
WOLF discloses an automated water treatment system for treating raw water to produce potable water (abstract). The system comprises a controller that monitors water quality conditions, e.g., a TOC sensor, a turbidity sensor, and a particle sensor (p0114). If the controller determines a TOC value (or any other measured water quality parameter) exceeds a programmed threshold, the controller sends a signal to activate a treatment unit to address that determination (i.e., a warning unit that… outputs a predetermined alert and a signal for performing a process for reducing the concentration of impurities; p0114). Advantageously, this automatic determination by the controller to proceed with a treatment step bypasses any unnecessary treatment subsystems, maintains high operating efficiency, and minimizes the operating costs of treating raw water if certain treatments are not necessary (p0046). It is further noted that WOLF discloses an operator monitors all aspects of the operation from a monitoring station (p0127). The operator may choose to “manually activate a clean in place process” when a predetermined threshold is reached (p0075). While these disclosures do not explicitly indicate a “warning unit” per se, the teaching that an operator is provided the option to manually activate a cleaning procedure implies that the system alerts the operator to a predetermined threshold being exceeded, i.e., there must be some type of warning/alerting unit that functionally transforms the information determined by the controller into a signal readable/perceivable by the operator. Thus, WOLF suggests or makes obvious a warning unit that outputs a predetermined alert when the predicted value of the concentration of impurities calculated by the concentration calculation unit exceeds a predetermined threshold value. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). 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 a warning unit as suggested by WOLF for the system disclosed by PARK.
Regarding Claim 2, modified PARK makes obvious the system of Claim 1. PARK further discloses that the water prediction unit 140 includes the rate calculation unit 150 that determines the “concentration rate of contaminants”, i.e., the rate by which the filtering membrane 30 concentrations/removes contaminants from the raw water (i.e., a removal rate calculation unit that calculates the removal rate; pg. 5, middle). As noted earlier, PARK discloses the water prediction unit 140 utilizes data from the second database 130 that contains historical data on the filter membrane 30 capacity and filtration quality on prior treatments of the influent raw water (i.e., a storage unit that stores the removal rate of the water treatment apparatus that was calculated by the removal rate calculation unit; the concentration calculation unit calculates the predicted value of the concentration of impurities based on the removal rate stored in the storage unit; pg. 5, top).
Regarding Claim 3, modified PARK makes obvious the system of Claim 2. PARK further discloses the water quality monitoring unit 110 collects untreated raw water and measures the level/concentration of organic matter contained in the raw water (i.e., a concentration measuring unit that measures a concentration of impurities contained in the water supplied to the water treatment apparatus; pg. 4, middle). PARK even further discloses that the water prediction unit 140 determines the “concentration rate of contaminants” based on the quality of the influent raw water (i.e., the removal rate calculation unit calculates the removal rate in the water treatment apparatus based on the concentration of impurities contained in the water supplied to the water treatment apparatus and the concentration of impurities contained in the water supplied from the water treatment apparatus measured by the concentration measuring unit; pg. 5, top).
Regarding Claim 5, modified PARK makes obvious the system of Claim 2. As noted earlier, PARK discloses the water prediction unit 140 utilizes data from the measured concentration of contaminants in the raw water and the second database 130 that contains historical data on the filter membrane 30 capacity and filtration quality on prior treatments of the influent raw water (i.e., the removal rate calculation unit calculates a current removal rate in the water treatment apparatus based on a current state of use and records of past use of the water treatment apparatus; pg. 5, top).
Regarding Claim 6, modified PARK makes obvious the system of Claim 1. PARK further discloses the water prediction unit 140 of the water quality monitoring unit 110 outputs a predicted concentration of contaminants in treated effluent (pg. 5, top) to be utilized in calculating a ratio of contaminants and a subsequent washing time determination unit 160 (i.e., the information processing devices includes an output unit that outputs information indicating a concentration calculated by the concentration calculation unit; pg. 5, bottom).
Regarding Claim 21, modified PARK makes obvious the system of Claim 1. WOLF further discloses that when the controller determines a reverse osmosis subsystem treatment is required, the controller increases flow stream pressure sufficient for reverse osmosis operation (i.e., wherein the process for reducing the concentration of impurities comprises… increasing a flow rate of the reverse osmosis membrane filtration device; p0085); while WOLF is deficient in explicitly disclosing “increasing a flow rate of the reverse osmosis membrane filtration device”, this disclosed increase in flow stream pressure necessarily results in an increased flow rate of the reverse osmosis subsystem. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over PARK et al. (KR 20130058473 A) in view of WOLF (US 2010/0292844 A1), as applied to Claim 3 above, and further in view of TAKATORI et al. (US 2021/0078873 A1).
Regarding Claim 4, modified PARK makes obvious the system of Claim 3. PARK further discloses the concentration of organic matter in the raw water is determined by measuring the total organic carbon (TOC) content (i.e., the concentration measuring unit measures the concentration of total organic carbon; pg. 6, bottom). Modified PARK is deficient in disclosing that the concentration measuring unit also measures a concentration of urea contained in water supplied from the water treatment apparatus.
TAKATORI discloses a water treatment management apparatus for monitoring and evaluating water supplied to a water treatment system and the management of said system (abstract). The apparatus includes a TOC removal apparatus and measuring means for measuring TOC concentration including hardly-decomposable TOC components such as urea (i.e., the concentration measuring unit measures the concentration of total organic carbon; p0037). As further disclosed, TAKATORI reports on the concentration of urea after treatment (i.e., the concentration measuring unit measures…a concentration of urea contained in water supplied from the water treatment apparatus; e.g., Table 1, Example 1, p0047-0048). All claimed elements were known in the prior art and one of ordinary skill in the art could have combined the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A). 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 a concentration measuring unit that has the capability to measure the concentration of urea as taught by TAKATORI for the system made obvious by modified PARK.
Conclusion
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vickie Kim can be reached at (571)272-0579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
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