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
The amendment filed on February 12, 2026 is acknowledged. Claims 1-10 and 22-24 remain pending, wherein claims 3 and 6-8 remain withdrawn but subject to rejoinder. Applicant amended claims 1 and 22. Applicant also submitted replacement drawings and made corresponding changes to the specification to identify new reference numerals in the replacement drawings.
Response to Arguments
Regarding Applicant’s remarks concerning the outstanding 35 U.S.C. 112(b) rejections (Remarks 9-10), some of the rejections are maintained because Applicant did not traverse the rejections and/or the amendment did not properly address the rejections. The maintained rejections are elaborated upon or reiterated below.
Regarding the prior art rejection of claims 22-24 (see Remarks 10), Applicant’s remarks are moot. The amendment necessitated the new ground of rejection set forth below.
Regarding the prior art rejection of claim 1 and its dependent claims, Applicant argues that elements 81 and 83 of Sakamoto are “channels”, not “back pressure tubing”. Remarks 10-11. In addition, Applicant argues that elements 81 and 83 are not configured to control regenerant flow rate, as recited in claim 1. Id. The arguments are not persuasive.
Regarding whether elements 81 and 83 are “back pressure tubing”, the limitation “back pressure tubing” is not an art-recognized terminology that conveys specific meaning to the limitation, and the specification does not provide a definition for the limitation. That said, the limitation “back pressure tubing” is subject to the broadest reasonable interpretation. In this instance, the limitation “back pressure” merely conveys intended use and the limitation “tubing” refers to any tube-shaped structure that can transport fluid. Based on this interpretation, the examiner maintains that elements 81 and 83, which are stand-alone channels for transporting liquid (see Fig. 1 and [0032]), anticipate the limitation “back pressure tubing”.
Regarding whether elements 81 and 83 are “configured so the first and second regenerant flow channels have a consistent regenerant flow rate…”, the recitation is indefinite, as discussed below. Based on how the indefinite recitation is being interpreted (see 35 U.S.C. 112(b) rejection below), elements 81 and 83 of Sakamoto are deemed to be “configured so the first and second regenerant flow channels have a consistent regenerant flow rate…” as recited in claim 1.
Claim Objections
Claim 22 is objected to because of the following informalities:
The limitation “are fluidically” in the last clause of claim 22 should be changed to “is/are fluidically”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, 4, 5, 9, 10 and 22-24 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Independent claim 1 was amended to recite that the first and second back pressure tubing “are configured so that the first and second regenerant flow channels have a consistent regenerant flow rate…”. The originally filed specification fails to provide support for the amendment. The specification is devoid of disclosure associating the claimed consistent regenerant flow rate to the back pressure tubing.
Independent claim 22 was amended to recite a back pressure coil/coils fluidically connected to the first and second regenerant flow channels. The originally filed specification fails to provide support for the amendment. In the specification, the lone disclosure directed to back pressure coil(s) refers to the system illustrated in Figure 1, which is structurally distinct from the device recited in claim 22. Consequently, the specification does not disclose coil(s) implemented in a device having the features recited in claim 22, let alone coil(s) connected to two regenerant flow channels as recited in claim 22.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 5, 9, 10 and 22-24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claims 1 and 22, there is still no antecedent basis for the limitation “the first regenerant” in line 10. Applicant instead amended the limitation “the first regenerant flow channel member”, for which there IS antecedent basis. In addition to correcting the antecedent issue, the latter limitation should be amended back to its original form.
Claim 1 recites “the first and second backpressure tubing are configured so the first and second regenerant flow channels have a consistent regenerant flow rate…”. The scope of the claimed configuration is indefinite. The claim attributes the ability of the first and second regenerant flow channels to achieve the claimed consistent regenerant flow rate to the back pressure tubing. However, it is unclear how the claimed consistent flow rate can be attributed to tubing (i.e. does the claimed tubing have a certain shape or features that inherently produce the claimed flow rate regardless of initial flow rate?). As indicated above (see new matter rejection above), the specification does not provide any clarity on this matter. Due to lack of disclosure directed to how the first and second back pressure tubing are “configured so that the first and second regenerant flow channels have a consistent regenerant flow rate…”, the recitation is being interpreted as conveying tubing having regular shape/dimensions (e.g. constant diameter, linear shape) such that with precisely-controlled pumping at a flow rate falling in the claimed range, “consistent” flow can be achieved in the first and second regenerant flow channels over a period of 1 hour.
Claim 2 still recites “the…ion exchange members”. There is no antecedent basis for the limitation. It appears that the limitation “members” should be “membranes”.
Claims not explicitly rejected are rejected due to dependency.
Claim Rejections - 35 USC § 103
Claims 1, 4, 5, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (US 2020/0132639 A1).
With respect to claim 1, Sakamoto discloses an ion exchange device comprising (see Fig. 8):
a primary channel member 60 including a primary channel 76 extending through the primary channel member 60, the primary channel member 60 having a primary channel inlet port 13e and a primary channel outlet port 11f, wherein the primary channel member is configured for an eluent to flow from the primary channel inlet port, through the primary channel, and then to the primary channel outlet port (see [0035]);
a first regenerant flow channel member 13 including a first regenerant flow channel 73 extending through the first regenerant flow channel member, the first regenerant flow channel 73 having a first regenerant flow inlet port 13c1 and a first regenerant flow outlet port 13c2, wherein the first regenerant flow channel member 13 is configured for a first regenerant to flow from the first regenerant inlet port, through the first regenerant flow channel, and then to the first regenerant flow outlet port (see [0046]);
a second regenerant flow channel member 11 including a second regenerant flow channel 71 extending through the second regenerant flow channel member, the second regenerant flow channel 71 having a second regenerant flow inlet port 11c1 and a second regenerant flow outlet port 11c2, wherein the second regenerant flow channel member is configured for a second regenerant to flow from the second regenerant inlet port, through the second regenerant flow channel, and then to the second regenerant flow outlet port (see [0046]);
a first ion exchange membrane 48 configured to pass ions of only one charge (see [0042]) and of blocking bulk liquid flow, the first ion exchange membrane 48 disposed between the primary channel 76 and the first regenerant flow channel 73;
a second ion exchange membrane 46 configured to pass ions of only one charge (see [0042]) and of blocking bulk liquid flow, the second ion exchange membrane 46 disposed between the primary channel 76 and the second regenerant flow channel 71; and
a first electrode 23 and a second electrode 21 disposed in the first regenerant channel 73 and the second regenerant channel 71, respectively.
The device taught by Sakamoto differs from the claimed invention in that Figure 8 of Sakamoto does not disclose the source of the regenerants. In other words, Figure 8 does not disclose the claimed back-pressure member. However, Figure 1 illustrates a schematic diagram of an exemplary suppressor-type ion chromatograph comprising an ion exchange device 1 (see Figure 1 and [0032]), which is analogous to the device illustrated in Figure 8. Based on the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented the ion exchange device illustrated in Figure 8 into a chromatograph as illustrated in Figure 1. If the ion exchange device of Figure 8 is implemented according to Figure 1, then the chromatograph would comprise a back-pressure member including a flow splitter 80 and first and second back pressure tubing 83 and 81 (see Fig. 1);
wherein the flow splitter 80 has a flow splitter inlet port (left end) and first and second flow splitter outlet ports (up and down arrows connected to end of 80), wherein the flow splitter inlet port is in fluidic connection with both the first and second flow splitter outlet ports;
wherein the first flow splitter outlet port is in fluidic connection with the first back pressure tubing 83 which is in fluidic connection with the first regenerant flow inlet port (see connection into channel 73), and wherein the second flow splitter outlet port is in fluidic connection with the second back pressure tubing 81 which is in fluidic connection with the second regenerant flow inlet port (see connection into channel 71). Moreover, because the tubing 81 and 83 are straight, they are deemed to be “configured so the first and second regenerant flow channels have a consistent regenerant flow rate…” as recited at the end of claim 1.
With respect to claim 4, because the first and second regenerant flow channels 71 and 73 have identical dimensions, the device is configured so the flow rate in the first regenerant flow channel is the same as the flow rate in the second regenerant flow channel, assuming application of equal pressure to the channels.
With respect to claim 5, the first electrode 23 is a cathode (see [0064]).
With respect to claim 9, the ion exchange device is a suppressor (see [0064]).
With respect to claim 10, the device is configured so the flow of the eluent in the primary channel 76 is in the opposite direction as the flow of the first and second regenerants (see Fig. 8 illustrating arrows of fluid flow).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto as applied to claims 1, 4, 5, 9 and 10 above, and further in view of Sasabe et al. (“Sasabe”) (US 2017/0057848 A1).
With respect to claim 2, while Sakamoto discloses that the first and second ion exchange membranes can be cation exchange membranes or anion exchange membranes that respectively allow cations and anions to permeate therethrough (see [0014] and [0041]-[0042]), Sakamoto does not disclose that the membranes are configured to pass ions of opposite charges. However, ion exchange applications in which both cations and anions are suppressed are well known in the art. For example, Sasabe discloses an ion exchange application in which water is passed through a suppressor comprising both a cation exchange composition and an anion exchange composition in order to treat the water (see abstract and [0001]). In light of the disclosure of Sasabe, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the device taught by Sakamoto with membranes configured to pass, and thus exchange, ions of opposite charges.
Claims 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto in view of JP 6768033 B2 (“’033”).
With respect to claim 22, Sakamoto discloses a salt converter device, specifically an ion exchange device, the device comprising (see Fig. 8):
a primary channel member 60 including a primary channel 76 extending through the primary channel member 60, the primary channel member 60 having a primary channel inlet port 13e and a primary channel outlet port 11f, wherein the primary channel member is configured for an eluent to flow from the primary channel inlet port, through the primary channel, and then to the primary channel outlet port (see [0035]);
a first regenerant flow channel member 13 including a first regenerant flow channel 73 extending through the first regenerant flow channel member 13, the first regenerant flow channel 73 having a first regenerant flow inlet port 13c1 and a first regenerant flow outlet port 13c2, wherein the first regenerant flow channel member 13 is configured for a first regenerant to flow from the first regenerant inlet port, through the first regenerant flow channel, and then to the first regenerant flow outlet port (see [0046]);
a second regenerant flow channel member 11 including a second regenerant flow channel 71 extending through the second regenerant flow channel member, the second regenerant flow channel 71 having a second regenerant flow inlet port 11c1 and a second regenerant flow outlet port 11c2, wherein the second regenerant flow channel member is configured for a second regenerant to flow from the second regenerant inlet port, through the second regenerant flow channel, and then to the second regenerant flow outlet port (see [0046]);
a first ion exchange membrane 48 configured to pass ions of only one charge (see [0042] disclosing “only to allow cation permeation”) and of blocking bulk liquid flow (it is a membrane, and hence it blocks bulk fluid flow), the first ion exchange membrane 48 disposed between the primary channel 76 and the first regenerant flow channel 73;
a second ion exchange membrane 46 configured to pass ions of only one charge (see [0042]) and of blocking bulk liquid flow (it is a membrane, and hence it blocks bulk fluid flow), the second ion exchange membrane 46 disposed between the primary channel 76 and the second regenerant flow channel 71; and
a first electrode 23 and a second electrode 21 disposed in the first regenerant channel 73 and the second regenerant channel 71, respectively.
The device taught by Sakamoto differs from the claimed invention in that Sakamoto does not disclose back pressure coil(s) in fluidic communication with the first and second regenerant flow channels.
‘033, like Sakamoto, discloses an ion chromatograph system comprising an ion exchange device 20 downstream of a chromatograph column 18 (see Fig. 1). The ion exchange device 20 is in fluidic communication with a back pressure coil 24 that prevents gas formation (see Fig. 1) so as to reduce noise during detection (see [0030]). In light of the disclosure of ‘033, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided back pressure coils in fluidic communication with the first and second regenerant flow channels of the Sakamoto ion exchange device.
Regarding the recitation “so the first and second regenerant flow channels have consistent flow” at the end of claim 22, the recitation is deemed to be an inherent consequence of back pressure coil(s) being fluidically connected to the first and second regenerant flow channels. In this instance, because the combination of Sakamoto and ‘033 teaches back pressure coil(s) fluidically connected to the first and second regenerant flow channels, the recitation is deemed to be anticipated by the combination.
With respect to claim 23, due to the presence of membranes, which allow fluid to flow therethrough, the first regenerant flow outlet port 13c2 is in fluidic connection with the second regenerant flow inlet port 11c1 (see Fig. 8).
With respect to claim 24, due to the presence of membranes, which allow fluid to flow therethrough, the primary channel outlet port 11f is in fluidic connection with the first regenerant flow inlet port 13c1 (see Fig. 8).
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 PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
Examiner interviews are available via telephone, in-person, and 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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
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