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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/040,437 application filed on February 3, 2023. Claims 2-25 were amended and claims 26-28 were added in a preliminary amendment. Claims 1-28 are pending and have been fully considered. The examined claims are directed to an apparatus.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 02/03/2023. Please refer to the signed copy of the PTO-1449 form attached herewith.
Claim Interpretation
The examined claims are apparatus claims requiring only the positively recited structural components, although structured with physical features that can perform the stated functions or accomplish the intended uses. Functional limitations state either an intended use or operation, a manner of operating a device, apparatus or system, or what the apparatus/system does. 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). Also, 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).
Of course, in the patentability analysis of these apparatus/system claims, functional features are considered/not ignored and Applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP §§ 2114, 2173.05(g)).
The recited machine fluids, for example, are considered materials potentially contained within, transient or passing through, generated or produced, or otherwise worked upon by the apparatus rather than structural components of the apparatus.
According to the MPEP §2115 [R-2], a material or article worked upon does not limit apparatus claims: Expressions relating an apparatus to contents thereof during an intended operation are of no significance in determining patentability of apparatus claims. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “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) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
Claim Objections
Claims 1-28 are objected to because of the following informality: Claim 1 recites in part:
“ . . .so that water falling into the collector within the perimeter wall can escape therefrom, while the machine fluids are retained by said oleophilic material and
wherein the collector comprises at least one composite component for machine fluid retention comprising at least three layers
wherein at least one layer comprises activated carbon and
wherein this layer is secured within the composite between two layers of porous material mechanically bonded to each other through the activated carbon layer.”
The use of the underlined ‘and’ before the wherein clauses seem inconsistent. A comma appears necessary before the second wherein clause. Also, for consistency and clarity, Applicant should consider replacing the ‘ands’ preceding the first two wherein clauses with commas and placing a comma after the first ‘activated carbon.’
In claim 8, the semicolon should likely be replaced by a colon.
Claim 16 recites: The collector according to claim 1, wherein the perimeter wall comprises a fabric cover composite component lines the interior surfaces of the fabric cover.
The underlined language is unclear. It appears one or more words may be missing.
Appropriate correction is required.
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.
(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.
Claims 1-5, 7-10, 14, 115, 17-20, 27 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clarke et al. (WO2015015192; Clarke)(IDS of 2-03-2023).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure.
Regarding claims 1-5, 7-10, 14, 15, 17-20, 27 and 28, Clarke discloses a collector for machine fluids (Abstract; p. 1, where the reference mentions liquids and fuels; also p. 11 mentions fluids and impliedly the device would be suitable for machine fluid; pp. 9 & 10; Figs. 1 & 2), comprising
a mat (cylinder 100) having a perimeter wall (upper closure 218) upstanding therefrom, the mat and/or the wall comprising oleophilic material 102, 104, 106, 108 (p. 12, lines 10-18, where the layers retain oil, petrol, diesel and BTEX implying that they are oleophilic) and the wall being water-permeable, so that water falling into the collector within the perimeter wall can escape therefrom, while the machine fluids are retained by said oleophilic material and
wherein the collector comprises at least one composite component for machine fluid retention comprising at least three layers
wherein at least one layer comprises activated carbon (106, polyester foam with activated carbon) and
wherein this layer is secured within the composite between two layers of porous material (104 is polyether foam, and 108 is polyester foam) mechanically bonded to each other through the activated carbon layer.
An additional layer (102) of nonwoven fibre with activated carbon is present between layer (104) and perforated tube material (218).
Additional Disclosures Included: Claim 2: The layers of porous material are woven and/or non-woven materials (p. 5, lines 9-15; claim 10); Claim 3: The at least one of the layers of porous material are non-woven materials (p. 5, lines 9-15; claim 10); Claim 4: The at least one of the layers of porous material is oleophilic (claim 1 analysis); Claim 5: The at least one of the layers of porous material is hydrophilic (claim 1, where at least the polyether coalescing filter foam is hydrophilic); Claim 7: The composite comprises multiple layers of activated carbon material (p. 3, lines 26-27; additional layer 102); Claim 8: The mechanical bonding between layers is achieved through use of one or more of the following mechanical bonding techniques; needle punching, stitch bonding or hydroentanglement (p. 9, lines 15-19); Claim 9: The mechanical bonding between layers is achieved through use of needle punching (p. 9, lines 15-19); Claim 10: The mat comprises an impermeable base layer (see claim 1; Figs, 1 & 2); Claim 14: The at least one of the layers of porous material is a spun bond nonwoven (p. 6, lines 1-6; p. 9, lines 5-6); Claim 15: The perimeter wall comprises a foam core with at least one composite component in contact with the foam core (p. 9, lines 25-30; p. 10, lines 11-21); Claim 17: The perimeter wall comprises a resiliently compressible core material encased with composite component (p. 9, lines 15-19); Claim 18: The composite component is located adjacent to an interior surface of the perimeter wall that is adjacent to the collection zone (claim 1, Figs. 1-2); Claim 19: The collector according to claim 1, wherein a composite component is located at the base of the perimeter wall (claim 1, Figs. 1-2); Claim 20: The composite component material is sandwiched between at least two layers of resiliently compressible material located within the interior of the perimeter wall (p. 9, lines 15-19, where the material is compressible and impliedly resiliently compressible); Claim 27: At least one of the layers of porous material is hydrophobic (the activated carbon and polyester foam is generally hydrophobic); and Claim 28: The mat comprises one or more composite components (claim 1 analysis).
Claims 1-3, 5, 6, 8-10 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN107823916; Wang)(IDS of 2-03-2023)(English Machine Translation referenced below).
Regarding claims 1-3, 5, 6, 8-10 and 13, Wang discloses a collector for machine fluids (Abstract; Figs. 1-3, where oil is a machine fluid), comprising
a mat 1-3 ([0030]) having a perimeter wall 42 upstanding therefrom, the mat and/or the wall comprising oleophilic material 1, 3 ([0008], [0030]) and the wall being water-permeable, so that water falling into the collector within the perimeter wall can escape therefrom, while the machine fluids are retained by said oleophilic material ([0034]) and
wherein the collector comprises at least one composite component for machine fluid retention comprising at least three layers
wherein at least one layer comprises activated carbon 2 ([0030], [0033] and
wherein this layer is secured within the composite between two layers of porous material 1, 3 mechanically bonded to each other through the activated carbon layer.
Additional Disclosures Included: Claim 2: The layers of porous material are woven and/or non-woven materials ([0004], [0005], claim 5, where natural general purpose cotton is woven); Claim 3: At least one of the layers of porous material are non-woven materials ([0004], [0005], claim 5); Claim 5: At least one of the layers of porous material is hydrophilic ([0011]-[0013]); Claim 6: The layers of porous material are arranged as an outer an inner layer and the inner layer of porous material is hydrophilic ([0011]-[0013]); Claim 8: The mechanical bonding between layers is achieved through use of one or more of the following mechanical bonding techniques: needle punching, stitch bonding or hydroentanglement ([0005], where stitched is referenced); Claim 9: The mechanical bonding between layers is achieved through use of needle punching ([0005]); Claim 10: The mat comprises an impermeable base layer ([0010], [0030], [0051], Fig. 1, where anti-leakage, leak-proof, or leakage proof implies impermeable); and Claim 13: At least one of the layers of porous material is a nonwoven polyolefin felt ([0005], where polypropylene, for example, is a polyolefin).
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over Ibbotson (WO2019081248, Ibbotson)(IDS of 2-03-2023) in view of Iwasaki (US 6589904, Iwasaki).
The analysis considers the alternate concepts of the various potential embodiments in a particular reference.
Regarding claims 1-21 and 23-28, Ibbotson discloses a collector for machine fluids (Abstract, Figs. 1-8), comprising
a mat (1, 501) having a perimeter wall 502 upstanding therefrom, the mat and/or the wall comprising oleophilic material and the wall being water-permeable, so that water falling into the collector within the perimeter wall can escape therefrom, while the machine fluids are retained by said oleophilic material and
wherein the collector comprises at least one composite component for machine fluid retention comprising at least three layers ([0062],
wherein at least one layer comprises a hydrocarbon and oil absorbing material 3 ([0062]), and
wherein this layer is secured within the composite between two layers of porous material 2, 2’ mechanically bonded to each other through the activated carbon layer.
Therefore, Ibbotson discloses the claimed invention, except for specifying activated carbon as the absorbent material. However, activated carbon is a well-known absorbent of hydrocarbons and oil.
Iwasaki discloses a method for producing activated carbon using carbonaceous material (Abstract). Iwasaki notes that activated carbon is used widely is various fields particularly where more absorbability is desired (col. 1, lines 18-34).
Therefore, when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to consider the use of activated carbon as an effective absorbent and to incorporate this material into one of the layers.
Additional Disclosures Included: Claim 2: The layers of porous material are woven and/or non-woven materials (Ibbotson, [0010]); Claim 3: The at least one of the layers of porous material are non-woven materials (Ibbotson, [0010]); Claim 4: The at least one of the layers of porous material is oleophilic (Ibbotson, [0010], [0024); Claim 5: The at least one of the layers of porous material is hydrophilic (Ibbotson, [0010]); Claim 6: The collector according layers of porous material are arranged as an outer an inner layer and the inner layer of porous material is hydrophilic (Ibbotson, [0010], [0024; alternately, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the layers in any desired manner); Claim 7: The composite comprises multiple layers of activated carbon material (Ibbotson, [0010], [0016]); Claim 8: The mechanical bonding between layers is achieved through use of one or more of the following mechanical bonding techniques; needle punching, stitch bonding or hydroentanglement (Ibbotson, [0062]); Claim 9: The mechanical bonding between layers is achieved through use of needle punching (Ibbotson, [0062]); Claim 10: The mat comprises an impermeable base layer (Ibbotson, [0072]); Claim 11: The collector comprises a liner that comprises one or more composite components ([0072]); Claim 12: At least one of the porous layers comprise 3 denier polyolefin fibres (Ibbotson, [0014], [0024], where 4 denier is discloses but it would have been obvious to use any suitable denier); Claim 13: At least one of the layers of porous material is a nonwoven polyolefin felt (Ibbotson, [0031]); Claim 14: At least one of the layers of porous material is a spun bond nonwoven (Ibbotson, [0012]); Claim 15: The perimeter wall comprises a foam core with at least one composite component in contact with the foam core (Ibbotson, [0031]); Claim 16: The perimeter wall comprises a fabric cover composite component [that] lines the interior surfaces of the fabric cover (Ibbotson, [0031); Claim 17: The perimeter wall comprises a resiliently compressible core material encased with composite component (Ibbotson, [0073); Claim 18: The composite component is located adjacent to an interior surface of the perimeter wall that is adjacent to the collection zone (Ibbotson, [0031], [0032], Figs. 1-8); Claim 19: The collector according to claim 1, wherein a composite component is located at the base of the perimeter wall (Ibbotson, [0032], Figs. 1-8); Claim 20: The wherein composite component material is sandwiched between at least two layers of resiliently compressible material located within the interior of the perimeter wall (Ibbotson, [0073]); Claim 21: The composite component is in the form of a roll of material within the interior of the perimeter wall (Ibbotson, [0074], Fig. 8, where the tubular structure is tantamount to a roll); Claim 23: The composite component is not located within the perimeter wall of the collector but is located within a liner within the collection zone (Ibbotson, [0016], [0072]); Claim 24: The composite component is also located within the perimeter wall (Ibbotson, [0030], [0031], [0072]); Claim 25: The collector further comprises a liner (Ibbotson, [0016], [0072); Claim 26: The collector further comprises a removable liner (Ibbotson, [0016], [0072]); Claim 27: At least one of the layers of porous material is hydrophobic (Ibbotson, [0037], [0050]); and Claim 28: The mat comprises one or more composite components (Ibbotson, [0008], [0009], [0024]).
Regarding claim 22, Ibbotson and Iwasaki combined discloses or suggests the collector according to claim 1, except wherein the activated carbon is present at from 200 to 450 gm-2 (g/m2).
Ibbotson discloses different densities for the nonwoven felt material ranging from 100 to 400 g/m2 (Ibbotson, [0031]). Although the material is not activated carbon, it would suggest that similar ranges may work for that material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to routinely experiment with different densities or concentration ranges for the activated carbon to achieve a desired effect, including the recited range.
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via 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) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAYDEN BREWSTER/Examiner, AU 1779