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 .
Election/Restrictions
Applicant's election with traverse of invention I claims 1-6 and 14-17 in the reply filed on 10/16/2025 is acknowledged. The traversal is on the ground(s) that groups I and II are not distinct since both are directed to treating/treatment of brine in salt baths for salting cheese. This is not found persuasive because the restriction is based upon the requirement for unity of invention, where the groups lack unity of invention since the shared technical feature does not make a contribution over the prior art in view of D1 (FR 2605339 A1) and D2 (US 6270823 B1) as stated in the written restriction (item 4; pages 4-10).
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-13 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/16/2025.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 4, amend “there” to instead recite “therein” in order to place the claim in better form.
In line 12, delete “for concentration and quantity losses of salt and water in the brine in the salt bath” and amend to instead recite “the brine in the salt bath for concentration and quantity of salt and water lost to said discharging” in order to place the claim in better form.
In line 14, delete “contaminated brine that is discharged” and amend to instead recite “discharged contaminated brine” in order to place the claim in better form.
Appropriate correction is required.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function.
Such claim limitations are:
“separating, by means of a first membrane separation method” and “desalinating the contaminated brine retentate by means of a second membrane separation method” in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-6 and 14-17 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 1, in lines 19 and 20 the limitations “first fractions of dissolved salt” and “second fractions of dissolved salt” render the claim indefinite since it is unclear how the term “fractions” should be interpreted. It is unclear if the term is intended to mean multiple fractions of different types of salts, a single type of salt in parallel processing lines, or if the plural form was used unintentionally. The claim does not previously recite or otherwise indicate the presence of multiple salts, particularly since the claim only recites the singular form “salt”. The specification does not provide clarification regarding how to interpret the term “fractions”. It is noted the rejection can be overcome by amending the claim to either properly establish antecedent basis for a plurality of salt types, or amend “fractions” to be singular.
In lines 31-32, the limitation “does not exceed statutory limit for introduction of the desalinated contaminated brine retentate into surface water” renders the claim indefinite since the boundary of the claim is unclear. Statutory limits can vary (e.g., by location, governing body, environmental protections, etc.). Neither the claim nor the specification provides sufficient information for one of ordinary skill in the art to determine the appropriate “statutory limit”, and therefore the limit for the chloride content in the desalinated contaminated brine retentate cannot be determined.
In line 29, the limitation “dimensioning a flow of the contaminated brine” renders the claim indefinite since it is unclear what is meant by the term “dimensioning”. The specification recites the same term without providing a definition or further detail for one of ordinary skill to determine what is meant by the term (paragraphs 20, 29-30, 48, 52, and 58). It is unclear what feature(s) are encompassed by the term “dimensioning” (e.g., processes such as measuring, calculating, controlling, etc., and devices such as a processor, controller, flow driving means, etc.).
In lines 34-35, the limitation “merging, in a controlled manner, the cleaned brine permeate and the cleaned brine in a second quantitative ratio, by means of which a mixture of both components is concentrated to a salt content…” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses the word “means” or a generic placeholder (“by means of which”) coupled with functional language (“a mixture of both components is concentrated…”), but it is modified by some structure or material (“merging, in a controlled manner” which indicates the presence of at least a merging vessel) that is ambiguous regarding whether that structure or material is sufficient for performing the claimed function (prong C). It is unclear if the structure implied by “merging” is sufficient for performing the function of “concentrated to a salt content…”
The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claims 2-6 and 14-17 are rejected by virtue of their dependence on a rejected base claim.
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 1-6 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s admitted prior art (AAPA) in view of Jolkin (US 6,270,823 B1), Mistry (US 2004/0101612 A1) and Knoop (US 2020/0023293 A1). van Gennip et al. (US 4,744,998) is relied on as evidence for claim 1.
Regarding claim 1, AAPA teaches a known, generic method for the treatment of brine in salt baths for salting cheese is characterized in that a cheese to be salted is introduced in batches or continuously into a predetermined volume of the brine in the salt bath, undergoes salting therein for a specified dwell time, and leaves the salt bath, in batches or continuously accordingly, as salted cheese. During the dwell time, the brine is circulated and, as a result of the salting process, a certain quantity of whey and other constituents from the cheese passes into the predetermined volume of the brine in the salt bath. To keep the predetermined volume constant, an excess volume of a brine contaminated by the whey and the constituents is discharged from the salt bath and the concentration and quantity losses of salt and water in the brine in the salt bath are compensated for. The discharged contaminated brine is separated by a first membrane separation method into a brine permeate cleaned of the whey and the constituents and a brine retentate contaminated with the whey and the constituents. A desalination of the contaminated brine retentate by means of a second membrane separation method is also provided, which is configured so that at least a portion of dissolved salt is transferred into a flow of receiving water and dissolved therein, the water and the salt dissolved therein form a clean brine, and a correspondingly desalinated contaminated brine retentate is discarded as wastewater. Finally, the cleaned brine permeate and the cleaned brine are conducted into the brine in the salt bath (paragraph 15).
AAPA does not teach carrying first fractions of dissolved salt in the cleaned brine permeate and second fractions of dissolved salt in the contaminated brine retentate; adjusting a first quantitative ratio between the cleaned brine permeate and the contaminated brine retentate in such a manner that the quantity of the contaminated brine retentate corresponds at least to the quantity of the whey and the other constituents that pass into the brine in the salt bath during the specified dwell time; dimensioning a flow of the contaminated brine that is discharged in connection with the adjusted first quantitative ratio in such a manner that a chloride content in the desalinated contaminated brine retentate does not exceed statutory limit for introduction of the desalinated contaminated brine retentate into surface water; and merging, in a controlled manner, the cleaned brine permeate and the cleaned brine in a second quantitative ratio, by means of which a mixture of both components is concentrated to a salt concentration that corresponds at least to a required salt bath concentration.
In view of the rejections under 35 USC 112(b) above, the following limitations are given their broadest reasonable interpretation in view of the specification. The “first fractions” and “second fractions” are interpreted to refer to at least two different types of salt e.g., NaCl and CaCl2. The limitation “dimensioning a flow” is interpreted to mean any method of determining any desired flow characteristic by any means known in the art. The limitation “does not exceed statutory limit for introduction of the desalinated contaminated brine retentate into surface water” is interpreted to encompass any predetermined amount (of chloride content) according to any known regulatory framework.
Regarding the first and second fractions of dissolved salt, van Gennip et al. is relied on as evidence to show that cheesemaking processes are generally understood to include calcium ions or a calcium ion donor such as calcium chloride (column 1 lines 15-17; column 2 lines 28-31 and 59-61). Absent persuasive evidence to the contrary, one of ordinary skill would have reasonably expected multiple types of salt such as NaCl and CaCl2 to be present in the brine of AAPA.
Jolkin teaches a method to treat whey (abstract), such as purifying wastewater created during cheese production via desalination (column 2 lines 4-6) comprising flowing saliferous whey to a first membrane filtration unit 3 to perform a separation, the permeate of the first filtration then sent to a second filtering membrane unit 4 which purifies the permeate and produces a “commercial clean water” (column 1 lines 45-64; column 2 lines 46-54). The reduces the amount of wastewater and the water introduced into the process which results in cost reduction, the permeate of the process is sufficiently clean that it can be led directly to a waterway, and reclaimed salts or other components can be reused which further reduces manufacturing cost (column 1 lines 58-67; column 2 lines 1-2).
Knoop teaches a nutrient concentration and water recovery system for a waste stream (abstract), where separation methods such as reverse osmosis are used to extract chlorides from the wastewater, and water analysis of the flow stream can be used to determine best options for obtaining a desired reduction based on field test data (paragraphs 108 and 237).
Regarding the chloride content in the desalinated contaminated brine retentate not exceeding a stator limit for introduction into surface water, Mistry teaches that environmental regulations limit the disposal of high chloride content waste due to potential toxicity (paragraph 6). The desalination is performed by membrane filters (paragraphs 21 and 25).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of AAPA to “adjust a first quantitative ratio…” and “dimensioning a flow of the contaminated brine…” as claimed since the prior art recognizes that multiple membrane filtration steps can be used to increase recovery of salts and chlorides, since the prior art recognizes that it is desirable to minimize salt and chloride content in wastewater that is to be disposed into surface water due to environmental regulations, since there is no evidence of unexpected results associated with the claimed features, and therefore in order to similarly optimize the process to reduce water requirements and processing costs.
Regarding “merging…the cleaned brine permeate and the cleaned brine…by means of which a mixture of both components is concentrated…to a required salt bath concentration”, Jolkin teaches the reclaimed salt can be returned to the process as previously stated. The reference further teaches the products of the process can be stored e.g., in a tank for saliferous water, and then reintroduced to the salt brine processing (column 2 lines 63-66).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of AAPA to perform the claimed merging step since the method is recognized by the prior art for returning captured salt to the brining process, to minimize water and salt requirements for the manufacturing process as stated above, and in order to ensure the correct salinity of the brine is obtained prior to reintroduction, thereby ensuring consistency of quality and characteristics of the cheese.
Regarding claims 2-4, AAPA teaches ultrafiltration and electrodialysis to regenerate salt from the brine (paragraph 4) but does not specify the order.
Mistry further teaches ultrafiltration can be used if the salt concentration is to be lowered prior to concentration (paragraph 26).
Jolkin further teaches the retentate from a membrane filter can be further subjected to electrodialysis for desalination, where the captured salt content depends on the performance of the desalination process (column 3 lines 15-19).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of AAPA such that the first membrane separation is a ultrafiltration and the second membrane separation is electrodialysis in order to facilitate subsequent concentration processes by removing larger molecules, since electrodialysis is recognized by the art for desalination processes, since there is no evidence of unexpected results associated with the order and type of separation steps, and in order to obtain a desired degree of desalination.
Regarding claims 5 and 14-15, AAPA teaches sodium chloride (paragraph 4). Additionally, sodium chloride and calcium chloride are known to be used in cheese salting processes as stated for claim 1.
Regarding claims 6 and 16-17, AAPA teaches lactic acid passes into the brine from the cheese during the salting process (paragraph 4). Further, milk is known to contain lactose and other proteins (e.g., casein), see also Mistry paragraph 26. Absent evidence to the contrary, one of ordinary skill would have reasonably expected lactic acid, lactose, and other milk proteins to also pass from the cheese into the brine during the process of AAPA.
Conclusion
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/BRYAN KIM/Examiner, Art Unit 1792