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 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 1-3 and 6-21 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.
Claim 1 is indefinite for reciting “vibration assisted semipermeable membranes” wherein it is unclear if there is specific structure required of the “vibration assisted” or if this is simply membrane capable of vibrating, i.e. moving.
Claim 1 recites membranes including “vibrating flat sheet membranes, or vibrating hollow fibers”. The structure of these membrane elements is unclear. It is unclear if the “vibrating” is describing a structural element of the membrane or if this only requires that the membrane vibrate. This is an important distinction because if this is a physical limitation of the membrane, it is unclear what structure if required. And if it is simply that the membrane vibrates during the process, then it is not a physical limitation of the membrane itself and not limiting to the membrane structure.
“the membranes” lacks antecedent basis in the claim. This should be changed to “the vibration assisted semipermeable membranes”.
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 1-9, 14, 15, 18, 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Adham et al. (cited by Applicant) in view of Ly et al. (2019).
Claims 1, 4, 5, 6, 8, 14, 15, 18, 20, and 21: Adham et al. teach using Forward Osmosis, herein “FO”, to treat produced water from oil fields (1.2.; 2.1.3 Osmotic concentration with FO). They teach OC and/or osmotic dilution of complex industrial water streams (including produced water), is ideally carried out by FO (Page 5, col. 2, para. 2). One of the concerns associated with FO is membrane fouling (page 5, col. 2.1.3, para. 4). Fouling, however, can be controlled using pretreatment (page 5, col. 2.1.3, para. 4). They teach that Produced Water can be used as the draw solution to be diluted by feed water prior to disposal into a well (i.e. injection into the ground) and that the FO is mechanically assisted (Fig. 15). The membranes used are hollow fiber membranes (page 5, 2.1.2, second paragraph). While Fig. 15 shows the diluted produced water being sent to a “disposal well”, Adham et al. clearly teach that treated produced can be disposed of or, alternatively, reused for processes (2.1, para. 2) like hydraulic fracturing (page 11, para. 1) which comprises injecting treated produced water into oil injection wells (1.1.2, col. 1, para. 2-3). They explicitly state that “produced water treatment is limited to the removal of dispersed oil and/or suspended solids before injection and/or disposal” (Page 3, 1.3.1). It would have been obvious to one of ordinary skill in the art that reuse of suitably treated produced water as water injected into an oil reservoir for oil extraction after is a preferred alternative to disposing of treated produced water into a disposal well because it reduces the environmental impact of the process by reducing the amount of water needed for the processes and it also reduces the amount of waste water that needs to be disposed of. With the substation of reuse for the disposal, there is no disposal required. The simple substitution of one known element for another to obtain predictable results is obvious.
Adham et al. do not specifically teach that fouling is mechanically assisted control.
Ly et al. teach a method of water treatment comprising using forward osmosis (herein “FO”) to treat wastewater and for water reclamation (page 164, col. 2). Ly et al. teach that physical techniques (mechanically assisted) of enhancing the FO membrane functionality include physical cleaning involving sonication, hydraulic backwashing, flushing, pulsed flow (i.e. vibration), and high cross flow velocity (page 179, col. 1, para. 2; page 178, col. 2, 4.5.4.). The FO feedwater is preferably pretreated to eliminate or reduce foulants before they reach the FO membrane (page 179, col. 2, para. 2).
One of ordinary skill in the art at the time of the invention would have found it obvious to apply mechanically assisted control of fouling to Adham et al.’s method of FO treatment for the benefit of improving flux across the membrane and extending the useful life of the membrane.
Adham et al. teach that membrane filtration is typically applied as a pretreatment to membranes (page 6, col. 2). Other techniques for treatment of produced water include hydrocyclones, separators, and coalescers (page 3, col. 1, 1.3.1).
Claims 2, 3, and 7: Adham et al. and Ly et al. do not teach the specifics of the pre-treated aqueous liquid. However, Adham et al. and Ly et al. disclose a variety of sources and types of water to be treated with the pretreatment followed by forward osmosis. It would have been obvious to one of ordinary skill in the art at the time of the invention to try treating any type of water in need of remediation using Adham et al. and Ly et al.’s method. This including liquid that has mean suspended particle sizes of less than or equal to 5 and/or 2 microns and including the claimed oil-in-water content. The specific type of pretreatment is determined based on the beginning liquid composition and would be readily determined by one of ordinary skill in the art the depending on the incoming water composition and the requirements of the product water for injection. This is all within the ordinary and routine skill and experimentation conducted by one of ordinary skill in the art.
Claim 9: water treated include ground water (page 4, “shale play”).
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Adham et al. (cited by Applicant) in view of Ly et al. and further in view of Cort (US Pub. No. 2018/0022617).
Claims 10, 11, and 12: the prior art above does not teach the specific combination of degassing, filtering, and iron removal for pretreatment.
Cort teaches that produced water should be treated for reused by using oil/water separation methods [0058], removing iron [0061] and degassing to removed dissolved oxygen [0063] which reduces the scaling potential. Cort does not teach specifically that the “oil/water separator” includes a filter. However, the use of filters for pretreating produced water is known (see Adham et al.).
One of ordinary skill in the art at the time of the invention would have found it obvious to pretreat the produced water prior to FO treatment by degassing, filtering, and iron removal in order to reduce membrane fouling and disruption.
Claim 13: the prior art does not teach the specific composition of the injection water as claimed. However, the composition of the injection water is directly dependent on the processes and materials used to treat the water and the initial water composition. Injection water must meet specific standards prior to use in order to prevent environmental damage. Choosing specific values and levels of contaminant or target components is routine in the skill and is done so in order to meet environmental safety standards. These compounds would be reduced as much as possible. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Adham et al. (cited by Applicant), Ly et al., and in further view of Yip et al. (US Pub. No. 2012/0318729).
Claim 16: The prior art does not teach the specific membrane material.
Yip et al. teach a forward osmosis membrane material comprising a selective barrier made of a three-dimensional network (i.e. crosslinked) aromatic polyamide [0033].
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).
Claim 17 is a product by process type claim. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation.
Response to Arguments
Applicant's arguments filed 1/27/2026 have been fully considered but they are not persuasive.
As explained in the 112, 2nd paragraph rejection above, “vibrating flat sheet membranes, or vibrating hollow fibers” does not require any specific structure that overcomes the prior art as “vibration assisted” “vibrating flat sheet membranes, or vibrating hollow fibers” is met by the prior art teaching of pulsing resulting in membrane vibration. The membranes being pulsed will vibrate.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773