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 10/29/2025.
Election/Restrictions
Applicant’s election without traverse of the apparatus in the reply filed on 7/18/2025 was acknowledged previously. New claims 14-18 are directed to a method, something previously non-elected. As such, claims 14-18 are considered withdrawn and grouped together with the original non-elected method claims.
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) 1-5 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mukhopadhyay (US 2006/0231491).
Regarding claim 1, Mukhopadhyay teaches an apparatus comprising a reverse osmosis membrane device (30), an electric deionizer, and that various operational parameters/processing conditions are controlled for various streams in the system, such as optimizing the pH of the streams leading to the RO units (Fig. 11, Table 1, [0075]-[0088], [0133], and [0185]).
It is noted that the Mukhopadhyay teaches that the pH is adjusted to desirable levels and that operating parameters are accounted for and adjusted according to desired results. Thus, one skilled in the art would have found that while a control device/controller is never positively stated, such a device would be part of the apparatus in order to allow for the control of the processing conditions to meet the desired operational parameters. It could be argued that a controller is not inherent. However, one skilled in the art would have found it obvious to provide a controller in order to allow for automated control of the processing conditions rather than manual control ( In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined "old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed." The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).
Further, it is noted that the claimed structure is merely a control device that controls a processing condition and the effects are merely choosing operating parameters. As no further structure is claimed, such as sensors for providing measurements, Mukhopadhyay reads on the claimed apparatus as “apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). The apparatus of Mukhopadhyay is capable of being operated in a manner claimed that would result in the claimed effects and therefore reads on the claim limitations.
Regarding claims 2-3, Mukhopadhyay teaches that the device can be controlled to operate at desired boron removal rates such as the one claimed (see Table 1). It is noted that the claims are directed to an effect of operating the apparatus and not the apparatus itself. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
Regarding claim 4 and 19, Mukhopadhyay teaches that the apparatus could include a conventional RO membrane having 60-70% boron removal rate followed by further RO units and the electric deionizer ([0185]). Further, Mukhopadhyay teaches the resistivity of the water is 18.2 megaohm and the boron after treatment is non-detectable ([0133] and table 3). It is Examiner’s position that the Mukhopadhyay apparatus is capable of providing the water with the properties cited as it is merely optimizing the operational process steps of the Mukhopadhyay apparatus.
Regarding claim 5, Mukhopadhyay teaches an apparatus comprising a reverse osmosis membrane device (30), an electric deionizer, and that various operational parameters/processing conditions are controlled for various streams in the system, such as optimizing the pH of the streams leading to the RO units (Fig. 11, Table 1, [0075]-[0088], [0133], and [0185]). Mukhopadhyay teaches the resistivity of the water is 18.2 megaohm and the boron after treatment is non-detectable ([0133] and table 3). It is submitted that the controller would be capable adjusting processing conditions, such as pH, thereby providing results that meet the values for the power consumption/operation of the electric deionizer, concentrations, and resistivity as claimed as it is merely optimizing the operational parameters of the Mukhopadhyay apparatus. Further, It is Examiner’s position that the Mukhopadhyay apparatus is capable of providing the water with the properties cited as it is merely optimizing the operational process steps of the Mukhopadhyay apparatus.
It is noted that the Mukhopadhyay teaches that the pH is adjusted to desirable levels and that operating parameters are accounted for and adjusted according to desired results. Thus, one skilled in the art would have found that while a control device/controller is never positively stated, such a device would be part of the apparatus in order to allow for the control of the processing conditions to meet the desired operational parameters. It could be argued that a controller is not inherent. However, one skilled in the art would have found it obvious to provide a controller in order to allow for automated control of the processing conditions rather than manual control ( In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined "old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed." The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).
Further, it is noted that the claimed structure is merely a control device that controls a processing condition and the effects are merely choosing operating parameters. As no further structure is claimed, such as sensors for providing measurements, Mukhopadhyay reads on the claimed apparatus as “apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). The apparatus of Mukhopadhyay is capable of being operated in a manner claimed that would result in the claimed effects and therefore reads on the claim limitations.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive. Applicant argues that the claims are allowable as the operating parameters and resulting properties of the fluid are different. As discussed above, the claims are directed to an apparatus. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). All structural limitations are considered and the only potential element not taught in Mukhopadhyay is the operational parameters, which are not structural limitations but would be considered intended use. Mukhopadhyay teaches all structural limitations and the Mukhopadhyay apparatus is capable of being operated as claimed thereby reading on all claim limitations. Further, the specific properties of the fluid being worked upon are not given patentable weight. "Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (MPEP 2115).
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