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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 MARCH 2026 has been entered.
Claim Status
Rejected Claims: 1-9
Withdrawn Claims: 10-14
Response to Amendment
The amendment filed on 23 MARCH 2026 has been entered.
In view of the amendment to the claims, the amendment of claim 1 has been acknowledged.
In view of the amendment to claim 1, the claim objection has been withdrawn.
In view of the amendment to claim 1, the rejections under 35 U.S.C. 103 have been modified.
Response to Arguments
Applicant’s arguments filed on 23 MARCH 2026 have been fully considered.
Applicant argues that Baldoni does not teach a known alternative to the flow meter system for the prediction of biofilm formation as taught by Cosentino, neither prior art teaches the newly amended limitations of instant claim 1, and none of the cited prior art teaches the predictive analysis feature of instant claim 1. Therefore, instant claim 1 is allowable (Arguments filed 23 MARCH 2026, Page 4 to Page 7, Paragraph 2).
Applicant’s arguments with respect to claim 1 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.
Applicant argues that the prior art is not analogous to the claimed invention because Cosentino pertains to a biocide system for a watercraft and Baldoni pertains to a water injection system for enhanced oil recovery while the instant application pertains to biological fouling in cooling towers, membrane systems, and other cooling circuits like chilled water systems and beverage handling systems. Therefore, one of ordinary skill in the art would have no reason to combine these prior art to arrive at the invention of instant claim 1 and so instant claim 1 is allowable (Arguments filed 23 MARCH 2026, Page 7, Paragraph 3 to Page 8, Paragraph 1).
In response to applicant's argument that Cosentino and Baldoni are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the instant claimed invention pertains to any water system in which biofilm formation is desired to be mitigated. Furthermore, Cosentino pertains to treating water to prevent bio-fouling prior to cooling water systems on a watercraft and Baldoni pertains to biocide introduced to prevent biofilm on membranes. These applications are directly related to the cooling towers, membrane systems, and other cooling circuits like chilled water systems and beverage handling systems that Applicant has described and explicitly pertain to the prevention of biofouling in such systems. Therefore, both prior art would be obvious for one of ordinary skill in the art to look into when solving biofouling problems for water systems.
Applicant argues that instant claims 2-9 depend upon instant claim 1 and so instant claims 2-9 are allowable (Arguments filed 23 MARCH 2026, Page 8, Paragraph 2).
Regarding Applicant’s argument, instant claim 1 is not allowable and so the instant claims 2-9 which depend upon instant claim 1 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 1-2, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Baldoni-Andrey et al US Patent Application No. US 20180142537 A1 (hereinafter Baldoni) in view of Asokan et al US Patent Application No. US 20090152207 A1 (hereinafter Asokan), in view of van Kerkhove et al US Patent Application No. US 20210215352 A1 (hereinafter Kerkhove).
Regarding Claim 1, Baldoni teaches a method for controlling the formation of a biofilm on the surface of filtering elements of a water injection system (i.e., a method for mitigating formation of a biofilm in a water system, comprising; Paragraph 0027)
involving the use of a biofilm sensor (Fig. 1, #5) which can be an electrochemical probe (i.e., measuring a biofilm potential in the water system using a biofouling sensor; Paragraph 0041) adapted to transmit information to a distributed control system (i.e., connected to a controller; Paragraph 0089) which measures the biofilm electrochemical signal for real-time and continuous monitoring of bacterial covering at early stages of colonization (Paragraphs 0101-0102) for efficient protection of membranes (Paragraph 0019),
where the biofilm growth response is compared to a reference value and a dose of biocide is injected into the flow of water if the biocide growth response value is higher than the reference value (i.e., predictively analyzing growth of biofilm in the water system using a biofouling potential analyzer connected to the controller; predicting formation of a predetermined amount of biofilm as a function of the comparison; and dosing the water system with biocide using a chemical dosing pump operated by the controller; Paragraphs 0121-0125). Baldoni does not explicitly teach the predictively analyzing growth of biofilm, but the prediction is natural part of the control process. Baldoni measures biofilm potential versus a threshold and then treats the biofilm. When the biofilm potential passes the threshold, the system is predicting greater growth of biofilm and so treats the system with biocide before even more biofilm can form. If there was no prediction of biofilm formation, there would be no reason to dose with biocide.
Baldoni does not teach applying electrical current to the water system, thereby deactivating bacteria and mitigating biofilm formation.
However, Asokan teaches the use of electrical discharge and/or electrical fields to destroy microbes that result in the biofouling of surfaces (i.e., applying electrical current to the water system, thereby deactivating bacteria and mitigating biofilm formation; Paragraph 0008) and to combine the electrical field treatment with chemical treatment for the purpose of reducing lethal field strength or chemical dose rates or reducing overall treatment time to render microbial free feedwater (Paragraph 0011).
Asokan is analogous to the claimed invention because it pertains to the remediation of biofouling in feedwaters prior to membrane, cooling tower, and other heat transfer equipment processes (Paragraph 0007). It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the method as taught by Baldoni to apply an electric field as taught by Asokan because the combination of an electric field with the biocide treatment would reduce the chemical dose rates and/or reduce the overall treatment time to render microbial free feedwater.
Baldoni in view of Asokan does not teach comparing a rate of increase of the biofilm potential against one or more threshold values, using a bacteria deactivator operated by the controller, when the predetermined amount of biofilm is predicted to form.
However, Kerkhove teaches a control unit adapted to regulate at least one de-bacterization unit of a fluid system (Abstract) wherein a module is programmed to model biofilm growth (Paragraph 0023) with both the parameter and changes of the parameter being measured and taken into account for the models (i.e., comparing a rate of increase of the biofilm potential against one or more threshold values; Paragraph 0021) and driving the at least one de-bacterization unit to reduce the bacterial concentration in the fluid system wherein the at least one de-bacterization unit can comprise an electrochemical or chemical process (i.e., using a bacteria deactivator operated by the controller, when the predetermined amount of biofilm is predicted to form; Paragraph 0086) for the purpose of providing an efficient and safe method of controlling bacterial activity in a fluid distribution system (Paragraph 0006).
Kerkhove is analogous to the claimed invention because it pertains to bacterial control in fluid distribution systems (Paragraph 0001). It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the process made obvious by Baldoni in view of Asokan by using the change of biofilm growth to control the de-bacterization units as taught by Kerkhove because the process would be more efficient and safe for controlling bacterial activity.
Regarding Claim 2, Asokan further teaches that electrical fields are capable of destroying microbial cells (i.e., wherein the deactivation of the bacteria reduces or eliminates reproductive capacity of the bacteria; Paragraphs 0009-0010).
Regarding Claim 4, Baldoni further teaches in Fig. 1 that the mV signal from the biofouling sensor is 550 mV to 1050 mV (i.e., wherein the biofouling potential analyzer detects a voltage between 300 mV and 1200 mV).
Regarding Claim 6, Kerkhove further teaches storing the models in a library (i.e., compiling a library; Paragraph 0110) which uses simulations to predict growth and expansion of biofilm (Paragraph 0091) and previous usage of the fluid distribution system and previous treatments can be taken into account for the simulations (i.e., of past biofouling events to improve recognition of future biofouling events, thereby preventing biofouling in the water system; Paragraph 0179).
Regarding Claim 7, Kerkhove further teaches that the modelling allows for easy compiling of simulation models of different systems which improves the adaptation of the method to different systems and programmability and re-programmability of the control unit (i.e., aggregating past biofouling events from a plurality of water systems to improve recognition of future biofouling events, thereby preventing biofouling in the water system; Paragraph 0159).
Regarding Claim 8, Baldoni further teaches that an alarm is activated when the biofilm covering exceeds a given threshold (i.e., triggering an alarm using the controller, when a biofouling event is predicted to occur; Paragraph 0087) for the purpose of injecting a dose of biocide (Paragraph 0129).
Regarding Claim 9, Baldoni further teaches that water treatment systems typically comprise reverse osmosis filters and nanofiltration (i.e., wherein the water system is selected from the group consisting of reverse osmosis filtration system, nanofiltration system; Paragraph 0005).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Baldoni in view of Asokan in view of Kerkhove as applied to claim 1 above with support from ALVIM, “ALVIM Biofilm Monitoring System”, Saved 06 MAY 2021 on Wayback Machine, Accessed on 21 MAY 2026 https://www.alvimcleantech.com/cms/en/biofilmsensors#moreinfo (hereinafter ALVIM).
Regarding Claim 3, Baldoni further teaches a biofilm sensor (Fig. 7, #5) as an electrochemical probe to determine the extent of biofouling (Paragraph 0101) for the purpose of real-time continuous monitoring of bacterial covering even at early stages of colonization (Paragraph 0102) that will target biofilm formation before conventional detection systems which utilize a pressure drop, and thus an advanced stage of biofilm build-up which is more difficult to remove (Paragraphs 0018-0019) with the probes being from 0.1% to 1% of the working electrode of ALVIM biofilm probes and the range is optimizable based on field experience (Paragraph 0128). ALVIM teaches that the ALVIM real-time on line Biofilm Monitoring system is able to detect bacterial settlement since its first phases, which is as low as 1% of surface covered by microorganisms (i.e., further comprising limiting biofilm coverage level to as low as 5%; Page 1). Baldoni in view of Asokan in view of Kerkhove does not teach the explicit limit of biofilm coverage level being as low as 5% in the instant claim. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have limited the biofilm coverage to a level as low as 5% that corresponds to the claimed range while experimenting with the range taught by Baldoni.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Baldoni in view of Asokan in view of Kerkhove as applied to claim 4 above, and further in view of Building Automation Products, Inc, (BAPI) “Understanding 4-20 mA Current Loops”, 10/05/2006 (hereinafter BAPI).
Regarding Claim 5, Baldoni further teaches that the biofilm sensor is adapted for transmitting information to a distributed control system (Paragraph 0089).
Baldoni in view of Asokan in view of Kerkhove does not explicitly teach wherein the voltage is converted to an amperage between 4 mA and 20 mA to transmit the control system.
However, BAPI teaches that electric controls were made in the 1950’s and switched the industry from a 3-15 psi pneumatic signal to a 4-20 mA current signaling system (i.e., wherein the voltage is converted to an amperage between 4 mA and 20 mA) for the purpose of removing air lines and the required compressor for controlling with air, and utilizing a simpler, more efficient control system (Page 1, Paragraph 2).
BAPI is analogous to the claimed invention because it pertains to control systems and their history (Page 1, Paragraphs 1-2). It would have been obvious to one of ordinary skill in the art to convert the signal from voltage to 4-20 mA because it is common practice in the art to utilize this range for control systems.
Conclusion
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/A.A.G./ Examiner, Art Unit 1777
/IN SUK C BULLOCK/ Supervisory Patent Examiner, Art Unit 1772
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