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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 NOVEMBER 2025 has been entered.
Claim Status
Rejected Claims: 12 and 14-20
Cancelled Claims: 1-11 and 13
Response to Amendment
The amendment filed on 12 NOVEMBER 2025 has been entered.
In view of the amendment to the claims, the amendment of claims 12 and 14 has been acknowledged.
In view of the amendment to claim 12, the rejections under 35 U.S.C. 103 have been modified.
Response to Arguments
Applicant’s arguments filed on 12 NOVEMBER 2025 have been fully considered.
Applicant argues that Murtha, JR. et al (US Patent Application No. 20170129788 A1) hereinafter Murtha does not teach the instant limitations of claim 1 and that the combinations with Murtha would render Murtha inoperable (Arguments filed 12 NOVEMBER 2025, Page 7, Paragraphs 2-3 and Page 9, Paragraph 2 to Page 10, Paragraph 3).
Applicant argues that Zeren et al (US Patent Application No. 20140339169 A1) hereinafter Zeren does not teach the limitation of a lift line containing a tensile member and a hollow tube extending through the lift line connector and into the internal cavity to permit injection or withdrawal of air (Arguments filed 12 NOVEMBER 2025, Page 7, Paragraph 4 to Page 8, Paragraph 1).
Applicant argues that the combination of Murtha, Zeren, and Barbaro (US Patent No. 4906381 A) hereinafter Barbaro do not in combination teach the filter box and its specific details as outlined in claim 1 (Arguments filed 12 NOVEMBER 2025, Page 8, Paragraphs 2-3).
Applicant argues that “under ambient hydrostatic pressure at a deployed depth under the surface of the body of water” is a limiting statement in the instant claim 1 due to the structure including the impervious sidewalls, the open bottom, and the hollow purge tube located on the top of the filter box (Arguments filed 12 NOVEMBER 2025, Page 8, Paragraph 4 to Page 9, Paragraph 1).
Applicant argues, regarding the claims 14-20, that these claims depend upon claim 12 and claim 12 is allowable, thus claims 14-20 are allowable (Arguments filed 12 NOVEMBER 2025, Page 10, Paragraphs 4-6).
The Examiner respectfully disagrees.
Applicant’s arguments with respect to claim 1 and the use of Murtha as prior art have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Applicant’s arguments against Zeren, Barbaro teaches the need of an air relief line to remove trapped air and Zeren teaches that having an open air line on the accumulator, which is the equivalent of the filtered water space at the top of the filter box, is useful to control the pressure of the water flowing through the filter to prevent excessive turbulence. Furthermore, Zeren teaches the connectivity of cable rope systems to multiple locations of the system, including the lines that are open to atmosphere. Grimsley teaches that sand filters can be used as a submerged water filter and held in place using cables. It is obvious to one of ordinary skill in the art to combine these features to include a cable rope attached to the air line and then to the filter box because then the entire system can be adjusted to the correct depth and removed if needing to clean the system or move it to another location.
Regarding Applicant’s arguments that Murtha, Zeren, and Barbaro do not teach the elements of the filter box of claim 1, the combination of Barbaro in view of Grimsley in view of Zeren teach these elements. Barbaro teaches the overall structure with the walls, bottom with distributed holes, air relief, and filtered water outlet in an up-flow configuration. Grimsley teaches that is known to use sand filters in a submerged system and to hang them at a specified depth with cables. Zeren teaches the specific placement of the cables and their use for lifting the filter to the surface and placing the filter in the correct location, while choosing a depth based on the necessary static water pressure required to flow water through the filter. All the elements of claim 1 are made obvious by Barbaro in view of Grimsley in view of Zeren.
Regarding Applicant’s arguments that “under ambient hydrostatic pressure at a deployed depth under the surface of the body of water” is a limiting statement, is persuasive due to the inclusion of the additional structure of the required hollow tube, added in the amendment of claim 1, which withdraws air from the inside of the filter box. Without such structure there may be an air lock that prevents ambient hydrostatic pressure from establishing flow through the filter. The statement has been withdrawn from the rejection of claim 12 below.
Regarding Applicant’s arguments for claims 14-20, claim 12 is not allowable and so claims 14-20 are also not allowable.
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 12, 14-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Barbaro (US Patent No. 4906381 A) hereinafter Barbaro in view of Grimsley (US Patent No. 4238335 A) hereinafter Grimsley in view of Zeren et al (US Patent Application No. 20140339169 A1) hereinafter Zeren.
Regarding Claim 12, Barbaro teaches a multi-media modular filtration unit with a water tight cabinet (i.e., said filter box including a rigid, watertight wall enclosure, the enclosure including one or more sidewalls, a bottom wall, and a top wall, the one or more sidewalls being impervious to fluid flow) in an up-flow operation mode (i.e., wherein the arrangement of the one or more sidewalls establishes an upward flow path; Col. 1, Line 55 to Col. 2, Line 5) wherein the inlet side, which would be the bottom side in an up-flow operation mode, of the module contains a frame section (Fig. 2, #20) having a plurality of circular openings (i.e., the bottom wall defining a plurality of discrete, downward facing apertures providing fluid communication between the internal cavity and the water as an ingress path, the downward apertures being regularly spaced across the bottom wall to distribute inflow; Fig. 2, #21; Col. 2, Line 64 to Col. 3, Line 19) wherein the multi-media modular filtration unit contains variously sized sand, anthracite, plastic or glass beads, garnet, activated carbon, ion exchange resins, or mixtures thereof (i.e., a filter disposed within the internal cavity and positioned proximate the bottom wall; Col. 1, Line 55 to Col. 2, Line 5) with a separate air relief valve (i.e., a lift line connector; Fig. 1, #16A) located on the top of the cabinet which permits the escape of trapped air during start-up or stoppage of the filtration process (i.e., mounted to the top wall and defining a first aperture extending through the lift line connector and the top wall, the first aperture being in fluid communication with the internal cavity; Col. 2, Lines 57-63) where the cabinet has an outlet conduit (i.e., a filter line connector; Figs 1 and 3) located on a side at the bottom of the cabinet (Col. 2, Lines 23-35), which would be proximate the top if the device were shown in the up-flow configuration (i.e., positioned proximate the top wall and defining a second aperture through one of the one or more sidewalls at an elevation higher than an upper surface of the filter, the second aperture configured to channel filtered water from the internal cavity; the lift line including a hollow tube extending through the lift line connector and into the internal cavity, the hollow tube configured to inject or withdraw air from the internal cavity, purging air therefrom and admitting water through the downward facing apertures).
Barbaro does not teach the filter box being configured to be placed under a surface of a body of water and a tensile member.
However, Grimsley teaches a submarine sand filter (i.e., the filter box being configured to be placed under a surface of a body of water; Abstract) that can be dangled from cables to suspend it at any depth (i.e., a tensile member; Col. 4, Line 67 to Col. 5, Line 9) with a submerged pump that increases the pressure head available to the filter and the submerged design allows for the weight problem of sand filters to be lessened or eliminated entirely (Col. 4, Lines 29-46).
Grimsley is analogous to the claimed invention because it pertains to a submarine sand filter (Abstract). It would have been obvious to one of ordinary skill in the art to modify the multi-media modular filtration unit as taught by Barbaro to operate underwater, suspended by cables as taught by Grimsley because the underwater configuration would increase head pressure available to the filter and would lessen or eliminate the issue of the large weight of a standard sand filter.
Barbaro in view of Grimsley does not teach a filter lift, a lift line attached to the filter lift, a filter box coupled to the lift line, the lift line including a tensile member and a hollow tube extending through the life line connector, wherein the arrangement of the one or more sidewalls, the downward facing apertures, and the hollow tube establishes a hydrostatic upward flow path through the filter under ambient hydrostatic pressure at a deployed depth under the surface of the body of water.
However, Zeren teaches a filter assembly comprising a surface operated cable-rope pulley system (i.e., a filter lift; a lift line attached to the filter lift; Fig. 3, #31) which enables the filter system to be removed to the sea surface for purposes such as cleaning or moving to a different location (Paragraphs 0055 and 0069). Zeren further teaches a balancing tank (Fig. 3, #25) which may be open to atmospheric pressure (Fig. 3, #19) which is located above the accumulator (Fig. 3, #7) and attached to the cable-rope pulley system (i.e., the lift line including a tensile member and a hollow tube extending through the life line connector; Fig. 3, #31; Paragraph 0061) for the purpose of improving permeate quality and production rate by controlling the pressure differential across the filter to reduce the turbulence of water flow (Paragraph 0061) and that necessary pressures for the operation of the filter can be provided by the static pressure of the water itself where a pump is used downstream to simply maintain the minimum pressure differential required across the filter to continue fresh water generation (i.e., wherein the arrangement of the one or more sidewalls, the downward facing apertures, and the hollow tube establishes a hydrostatic upward flow path through the filter under ambient hydrostatic pressure at a deployed depth under the surface of the body of water; Paragraph 0014).
Zeren is analogous to the claimed invention because it pertains to a sub-sea filter system (Abstract). It would be obvious to one of ordinary skill in the art to modify the multi-media modular filtration unit made obvious by Barbaro in view of Grimsley with the cable-rope pulley system as taught by Zeren because the cable-rope pulley system would enable the filter to be removed from the body of water for cleaning or to be moved to a different location in the body of water and it would have been obvious to one of ordinary skill in the art to modify the multi-media modular filtration unit made obvious by Barbaro in view of Grimsley with the air relief open to ambient air and tank attached to the cable-rope pulley system because the extra tank and air relief open to ambient air would improve the permeate quality and production rate by reducing the turbulence of water flow through the filter.
Regarding Claim 14, Barbaro in view of Grimsley in view of Zeren makes obvious the underwater filter system of claim 12. Barbaro further teaches where the cabinet has an outlet conduit (i.e., a filter line attached to the filter line connector and coupled in fluid communication with the internal cavity via the second aperture; Figs 1 and 3). Grimsley further teaches that connecting means for the filter outlet (Fig. 2, #53) are preferably flexible, such as a hose (Col. 4, Lines 3-13). Zeren further teaches that a conduit (i.e., a filter line; Fig. 3, #24) comes out of the side of the balancing tank (Fig. 3, #25) and carries permeate (Paragraph 0061) where the underwater conduits are made of flexible, bendable hoses or pipes (i.e., said filter line comprising a hollow flexible line configured to channel filtered water out of the internal cavity; Paragraph 0033) for the purpose of improving permeate quality and production rate (Paragraph 0061).
Regarding Claim 15, Barbaro in view of Grimsley in view of Zeren makes obvious the underwater filter system of claim 14. Grimsley further teaches that sand filters are well known to be precursors to water treatment and oil well reservoir injections (Col. 1, Lines 9-17). Zeren further teaches that the filtered water can be directed to a surface pumping station (i.e., a pumping facility; Fig. 1, #12) for the purpose of distributing the water to various onshore locations such as residential buildings (Fig. 1, #33) or industrial complexes (i.e., said filter line being in fluid communication with the pumping facility; Paragraphs 0056 and 0065).
It would have been obvious to one of ordinary skill in the art to modify the multi-media modular filtration unit made obvious by Barbaro in view of Grimsley in view of Zeren to connect the filtered water to a pumping station as taught by Zeren so that the water can be distributed to various onshore locations.
Regarding Claim 17, Barbaro in view of Grimsley in view of Zeren makes obvious the underwater filter system of claim 12. Zeren further teaches that the underwater filter comprises a reverse osmosis membrane units because they can be create a low cost and low energy consumption water storage system (i.e., said filter comprising a reverse-osmosis filter; Paragraph 0028).
It would have been obvious to one of ordinary skill in the art to modify the multi-media modular filtration unit made obvious by Barbaro in view of Grimsley in view of Zeren to be a reverse osmosis filter as taught by Zeren because it would be a low cost and low energy consumption alternative to the sand filter, that produces a better quality of permeate.
Regarding Claim 18, Barbaro in view of Grimsley in view of Zeren makes obvious the underwater filter system of claim 17. Zeren further teaches that suitable commercially available RO filters include thin membrane or thin film materials which block inorganic dissolved solids including salt from passing though (i.e., said reverse-osmosis filter comprising one or more thin film membrane structures comprising a plurality of small micropores that allow only pure water molecules to pass through to the internal cavity; Paragraph 0010).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Barbaro in view of Grimsley in view of Zeren as applied to claim 14 above, and further in view of Murtha, JR. et al (US Patent Application No. 20170129788 A1) hereinafter Murtha.
Regarding Claim 16, Barbaro in view of Grimsley in view of Zeren makes obvious the underwater filter system of claim 14. Barbaro in view of Grimsley in view of Zeren does not teach a water turbine/electric generator component in flow communication with the filter line.
However, Murtha teaches that the pumps (Fig. 1, #13A-B) that pump the filtered sea water into the desalination system modules (Fig. 1, #15; Paragraph 0045) are powered by wave energy captured by articulating barges (Fig. 1, #12A-C; Paragraph 0036) which are known to produce electrical energy in prior art (i.e., a water turbine/electric generator component in flow communication with the filter line; Paragraphs 0008-0009).
Murtha is analogous to the claimed invention because it pertains to a submerged sand filter system (Abstract). It would have been obvious to one of ordinary skill in the art to modify the multi-media modular filtration unit made obvious by Barbaro in view of Grimsley in view of Zeren with the wave energy generation device as taught by Murtha because the wave energy generation device would provide power to the pumps that maintain a pressure differential on the filter.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Barbaro in view of Grimsley in view of Zeren as applied to claim 12 above, and further in view of Al-Samadi (US Patent No. 6416668 B1) hereinafter Al-Samadi.
Regarding Claim 19, Barbaro in view of Grimsley in view of Zeren makes obvious the underwater filter system of claim 12. Barbaro further teaches the use of a combination of a plurality of filtration media in series including sand, anthracite, garnet, and activated carbon (Col. 1, Line 55 to Col. 2, Line 5). Grimsley further teaches the use of charcoal, glass beads, walnut hulls, and anthracite (Col. 1, Lines 48-59).
Barbaro in view of Grimsley in view of Zeren does not explicitly teach said filter comprising a layer filter system, said layer filter system comprising, in serial arrangement upward from the bottom wall: a first layer comprising fractured rock; a second layer comprising fractured rock smaller in size than the fractured rock of the first layer; a third layer comprising gravel; a fourth layer comprising sand; and a fifth level comprising a carbon-based material.
However, Al-Samadi teaches a multi-media filter (i.e., comprising a layer filter system) consisting of a bottom garnet layer (i.e., a first layer comprising fractured rock), followed by up to 3 gravel layers with progressively smaller sizes (i.e., a second layer comprising fractured rock smaller in size than the fractured rock of the first layer; a third layer comprising gravel), followed by a thick layer of sand (i.e., a fourth layer comprising sand) which has granular activated carbon covering the sand (i.e., a fifth level comprising a carbon-based material; said layer filter system comprising, in serial arrangement upward from the bottom wall; Col. 8, Lines 53-67) to provide an economical and efficient water pre-treatment method (Col. 7, Lines 11-21) for removing the suspended solids that are larger than fine particles (Col. 9, Lines 1-6).
Al-Samadi is analogous to the claimed invention because it pertains to a cost effective process for separating contaminants from surface water (Abstract). It would have been obvious to one of ordinary skill in the art to modify the multi-media modular filtration unit made obvious by Barbaro in view of Grimsley in view of Zeren to contain the specific layers taught by Al-Samadi because specific layers would economically and efficiently remove all of the suspended solids larger than fine particles.
Regarding Claim 20, Barbaro in view of Grimsley in view of Zeren in view of Al-Samadi makes obvious the underwater filter system of claim 19. Al-Samadi further teaches that the layer above the sand is granular activated carbon (i.e., wherein the carbon-based material comprises one of activated carbon; Col. 8, Lines 53-67).
Conclusion
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/A.A.G./Examiner, Art Unit 1777
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772