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 .
Response to Amendment
Acknowledgment is made to Applicant’s claim amendments received 12 August 2025. Claims 1, 2, 4 and 7 are currently pending. Claims 3, 5, 6 and 8 have been cancelled. It is important to note that when a claim is indicated as cancelled the limitations should not longer be presented.
Claim Interpretation
It is important to note that the claims are apparatus claims that include a great deal of functional language. Apparatus claims must be distinguished from the prior art by structure rather than function. Functional language does not serve to further limit apparatus claims beyond imparting the limitation that the apparatus be capable of performing the claimed limitation.
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 2 and 4 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.
As to claim 2, the term “fast” in the claim is a relative term which renders the claim indefinite. The term “fast” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The use of the term “fast” renders indefinite the speed of oxidation.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0145739 to Cotten (Cotten) in view of US 4,748,314 to Desage (Desage).
As to claim 1, Cotten teaches a system comprising a primary brine chamber (36) receiving brine (14) from a brine inlet (42), a water vapor collection chamber (turbine housing) fluidly connected to the primary brine chamber (36) and configured to collect water vapor from the vaporization performed in the primary brine chamber (36), a condenser chamber (34) fluidly connected to the water vapor collection chamber and configured to condense water vapor and a freshwater chamber (reservoir) fluidly connected to the condenser (34) and configured to collect freshwater (Paragraphs 0020-0027; Figure 2). However, Cotten fails to teach that the primary brine chamber comprises a charged metal including anodes and cathodes submerged in the brine in the primary brine chamber.
However, Desage also discusses the vaporization of water and teaches that rapid vaporization can be achieved via forming the vaporization chamber with two submerged copper electrodes applied with power from an alternating current circuit, thus charged metal including an anode and a cathode (Column 2, Lines 21-29; Column 4, 57-60; Column 6, Lines 41-51). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the vaporization brine chamber of Cotten with charged metal including an anode and a cathode provided with alternating current in order to allow for the vaporization to occur rapidly as taught by Desage. Desage fails to specifically teach a plurality of anodes and cathode; however, the duplication of parts is not patentably significant (MPEP 2144.04 VI B). Desage teaches that the current is alternating current and that the voltage is 220V (Column 9, Lines 47-49). Desage fails to specifically teach the functional language of “alternating current having a frequency of between 60 Hz to 1000 Hz for conducting a primary electrolysis to cause fast oxidation of the charged noble metal, wherein water disassociates at an anode of the charged noble metal and changes phase form a liquid to a gas”; however, one of ordinary skill in the art would have been expected that a standard alternating current source with 220V could be operated to provide a frequency of 60 Hz, a standard frequency of alternating current, and thus performing the functional language of “alternating current having a frequency of between 60 Hz to 1000 Hz for conducting a primary electrolysis to cause fast oxidation of the charged noble metal, wherein water disassociates at an anode of the charged noble metal and changes phase form a liquid to a gas” (MPEP 2114).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Cotten and Desage as applied to claim 1 above, and further in view of US 2019/0048483 A1 to Swonger et al. (Swonger).
As to claim 2, the combination of Cotten and Desage teaches the apparatus of claim 1. Cotten teaches that a concentrated brine outlet from the apparatus but fails to further teach any valuable use of this brine (Paragraph 0022). However, Swonger also discusses concentrated brine and teaches that it is valuable as a source of recovering valuable lithium (Paragraph 0044; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art to recover lithium from the brine of Cotten in order to form a valuable product as taught by Swonger. Swonger teaches that the lithium is recovered utilizing an electrolysis chamber receiving the concentration brine, thus a secondary brine chamber, and comprises a lithium filter (lithium ion selective membrane) and a charged cathode plate for deposition of lithium that has passed through the filter thereon, thus passing through with the application of electrical energy and performing the functional limitation of “wherein the lithium ions are electromagnetically drawn” (Paragraph 0045; MPEP 2114).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Cotten, Desage and Swonger as applied to claim 2 above, and further in view of WO 2017/096451 A1 to Freitas (Freitas).
As to claim 4, the combination of Cotten, Desage and Swonger teaches the apparatus of claim 2. Cotten further teaches that the water vapor collection chamber is connected to a turbine (40) for transferring energy from the water vapor to the turbine (Paragraphs 0020, 0025 and 0027). However, Cotten is silent as to the specific use for this energy available from the turbine. However, Freitas also discusses the use of water vapor to transfer energy to a turbine and teaches that this turbine is utilize for connection to an AC generator for generating alternating current at 220V and 60 Hz (Paragraphs 0008, 0015 and 0016). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to connect the turbine of Cotten with an alternating current generator as in Freitas in order to provide a valuable use of the energy collected by the turbine as taught by Freitas. As this energy, 220V alternating current, is the same energy required by the vaporization electrodes of Desage, it would have been further obvious to one or ordinary skill in the art to utilize this generated current within the system itself.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Cotten and Desage as applied to claim 1 above, and further in view of Freitas.
As to claim 7, the combination of Cotten and Desage teaches the apparatus of claim 1. Cotten further teaches that the water vapor collection chamber is connected to a turbine (40) for transferring energy from the water vapor to the turbine (Paragraphs 0020, 0025 and 0027). However, Cotten is silent as to the specific use for this energy available from the turbine. However, Freitas also discusses the use of water vapor to transfer energy to a turbine and teaches that this turbine is utilize for connection to an AC generator for generating alternating current at 220V and 60 Hz (Paragraphs 0008, 0015 and 0016). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to connect the turbine of Cotten with an alternating current generator as in Freitas in order to provide a valuable use of the energy collected by the turbine as taught by Freitas. As this energy, 220V alternating current, is the same energy required by the vaporization electrodes of Desage, it would have been further obvious to one or ordinary skill in the art to utilize this generated current within the system itself.
Response to Arguments
Acknowledgment is made to Applicant’s claim amendments received 12 August 2025. Applicants argue that the prior art fails to teach the newly claimed functional limitations. However, as discussed above, it is important to note that the claims are drawn to an apparatus. Functional limitations do note serve to further limit apparatus claims beyond imparting the limitation that the apparatus be capable of performing the limitation as claimed. The Examiner maintains that the combination as discussed above renders obvious the structural limitations, which would then be capable of performing the claimed functional limitations.
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.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794