DETAILED ACTION
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 .
Claim Objections
Claims 1, 9, 15 and 21 are objected to because of the following informalities:
-In claim 1, the phrase “in which collector the collected disinfected particles” in lines 12-13 is grammatically awkward as the word “collector” appears to be superfluous
-In claim 9, the phrase “which outlet is provided” in lines 3-4 is grammatically awkward and should be replaced with --wherein the outlet is provided--
-In claim 15, the term “a gas inlet” in line 4 was previously introduced in claim 1 and should be replaced with --the gas inlet--
-In claim 21, the phrase “which outlet is optionally shut-off” in lines 3-4 is grammatically awkward and should be replaced with --wherein the outlet is optionally shut off--
Appropriate correction is required.
Claim 17 is objected to because the claim includes a reference character which is not enclosed within parentheses as the number “17” appears after the word “rotor” in line 2.
Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 and 15-25 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.
Regarding claims 1 and 16, the phrase "such as SARS-CoV-2" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
In regard to claims 2-3, 7 and 16-17, it is unclear how the terms “upstream of the rotor” and “downstream of the rotor” are defined as there are two different flows, a disinfectant liquid and a gas, within the housing. This lack of defining the direction of the “stream” is especially evident in claims 3 and 17 when the disinfectant and gas are flowing in opposite directions. Did Applicant intend for “upstream” and “downstream” to simply be “above” and “below,” respectively?
Regarding claim 6, the phrase "such as a polyolefin polymer" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, the phrase "preferably a flame retardant polymer" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 18, the phrase "such as a propeller" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
In regard to claim 23, the scope of “wherein an assembly is used” is unclear as the broadest reasonable interpretation of the word “assembly” would include the device of claim 1 wherein the components of the device have been fitted together. Therefore, the BRI of the limitation does not further limit the subject matter of claim 1 without further defining the structure of “an assembly.”
Claim 24 recites the limitation "the common vessel" in line 2. There is insufficient antecedent basis for this limitation in the claim.
In regard to claims 24 and 25, the limitation of “each rotational disinfection device” in each claim is unclear has the parent claims only recite one rotational disinfection device.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brouwers (WO 2018/212643).
In regard to claim 1, Brouwers discloses a rotational device 100 capable of capturing and disinfecting infectants from a gas, the device comprising means for transmitting the infectant-containing gas (duct connected to gas inlet) to a gas inlet 2 of a housing 16, which housing is further provided with a gas outlet 3, a liquid inlet 6 and a liquid outlet 13; a rotor 17 mounted for rotation in said housing and connecting to the inlets and outlets, the rotor comprising a plurality of channels 1 extending axially and parallel to a common rotation axis, wherein the channels are circumferentially enclosed by walls over an entire axial length of the rotor between the liquid inlet and the liquid outlet; and wherein the device further comprises means for rotating the rotor (externally driven bearings 19) and means for providing a sustained flow of liquid to the liquid inlet (such as the pump in the recirculating outlet 15), wherein the device further comprises a liquid collector (proximal outlet 13 or the upstream end of 27 in Figure 4B) that connects to the liquid outlet, in which the collected disinfected particles are capable of settling to form a disinfected particle-rich bottom layer and a disinfected particle-poor top layer; and a return conduit (15 in Figure 2 or 27 in Figure 4B) that connects the liquid collector outlet with the liquid inlet, and a pump (depicted in Figure 2 but necessarily present in Figure 4B) to transfer liquid from the disinfected particle-poor top layer to the disinfectant liquid inlet through the return conduit for re-use; wherein the return conduit, the liquid collector outlet and the liquid inlet form a closed fluid circuit. See Figures 1A-4B and pages 9-13. It is noted that Brouwers does not explicitly disclose wherein the apparatus is a disinfectant device which contains disinfectant liquid. However, the Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
In regard to claims 2-3, Brouwers discloses the recited arrangement of claim 2 in Figure 1B and Figure 2, and the recited arrangement of claim 3 in Figure 4B.
In regard to claim 5, Brouwers discloses wherein the device can include a propeller (i.e. a fan) for transmitting gas within the device. See page 12, line 20.
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.
Claims 4, 6 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Brouwers.
In regard to claim 4, Brouwers discloses wherein the device can include a propeller (i.e. a fan) for transmitting gas within the device. See page 12, line 20. Brouwers is silent in regard to the location of the fan but it would have been within the ambit of one of ordinary skill in the art to have determined an optimum or workable location for the fan within the device for the purpose of transmitting a flow through the device. The mere rearrangement of parts, without any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Japikse, 86 USPQ 70 (CCPA 1950) (see MPEP § 2144.04).
In regard to claim 6, Brouwers is silent in regard to the use of a polymer for forming the rotor and/or housing. However, polymers are extremely well known and the Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). Therefore, it would have been within the ambit of one of ordinary skill in the art to have selected a known polymer for forming the rotor and/or the housing without creating any new or unexpected results.
In regard to claims 10-11, Brouwers does not explicitly disclose an assembly of a plurality of the devices. However, it would have been within the ambit of one of ordinary skill in the art to have provided an assembly of a plurality of the devices for the purpose of allowing for a larger gas flow to be treated by the devices. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Harza, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04). Further, it would have been obvious to one of ordinary skill in the art through well-known means to have connected a common vessel having a pump for delivering liquid to each device as one of ordinary skill in the art would well understand that additional liquid would need to be added to the devices through use. It is held that connecting different locations in need of liquid with conduit and pumping liquid thereto from a storage vessel is extremely well known in the prior art and would have been within the ambit of one of ordinary skill in the art to have implement for the purpose of distributing liquid to different locations in need.
In regard to claim 12, it is held that the recited limitation merely regards the intended use, manner of operating, and/or function of the apparatus and the cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Claims 7-8 and 15-20 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Brouwers in view of Itzhak et al. (US 2010/0043632; hereinafter “Itzhak”).
In regard to claims 7-8, Brouwers is applied in the same manner for claims 1-6 and 10-12 above. Brouwers is silent in regard to a HEPA filter and to wherein the apparatus is used for capturing and disinfecting infectants.
Itzhak discloses a method and apparatus for treating biologically contaminated air through contact with oxidizing brines that act as disinfectants. Itzhak discloses that the brine is brought into contact with the airflow by flowing the air through absorbent layers 18 wetted by downwardly flowing streams 24 of brine. Itzhak also discloses wherein HEPA air filters can be used in combination with the apparatus. See [0003], [0007], [0013], [0018], [0058] and Figure 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the HEPA filter if Itzhak with the device of Brouwers and substituted use of disinfectant brine for capturing and disinfecting air as disclosed by Itzhak for the liquid of Brouwers for the purpose of treating biologically contaminated air to remove and capture pathogens therefrom.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Brouwers in view of Brookman (US 2010/0024646).
In regard to claim 9, Brouwers is silent in regard to an outlet for the bottom layer.
Brookman discloses an air scrubber which includes a sump drain 124 having a shut off valve (depicted in Figure 2) for controllably opening the sump drain. See Figures 1-2 and [0016].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the sump drain and valve of Brookman with the device of Brouwers for the purpose of draining liquid and settled particulate from the interior of the housing.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Brouwers in view of Itzhak and Brookman.
In regard to claim 21, Brouwers is silent in regard to an outlet for the bottom layer.
Brookman discloses an air scrubber which includes a sump drain 124 having a shut off valve (depicted in Figure 2) for controllably opening the sump drain. See Figures 1-2 and [0016].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the sump drain and valve of Brookman with above combined device and method of Brouwers and Itzhak for the purpose of draining liquid and settled particulate from the interior of the housing.
Conclusion
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774