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 .
DETAILED ACTION
Summary
The Amendment filed 12/01/25 has been entered and fully considered
Claim(s) 1,2,3,4,5,6,7,8,9,10,11,12,13,14,15,16,17,18,19,20 are pending,
Claim(s) 13,14,15,16,17,18,19, non-elected/withdrawn
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 12/01/2025 is acknowledged.
Applicant argues at page(s) 6, particularly “the purported basis for the restriction requirement is MPEP § 806.0S(h) which requires that:"
page(s) 6, particularly “(A) the process of using as claimed can be practiced with another materially different product; or (B) the product as claimed can be used in a materially different process.
page(s) 6, particularly “The burden is on the examiner to provide an example, but the example need not be documented.
page(s) 6, particularly “If the applicant either proves or provides a convincing argument that the alternative use suggested by the examiner cannot be accomplished, the burden is on the examiner to support a viable alternative use or withdraw the requirement.
page(s) 6, particularly “Perhaps because claim 13 recites all elements of claim 1,
page(s) 6, particularly “ the Office did not allege that the process of claim 13 could be practiced by a product that is materially different from the product recited by claim 1. The Office also did not allege that the process of claim 13 could be practiced by a product that is materially different from the product recited by claim 20. Instead, the Office alleged that:
page(s) 6, particularly “the product as claimed can be used in a materially different process of using that product, such as a process without,
page(s) 6, particularly “a. providing a liquid flow that includes an initial level of entrained gas; b. delivering the liquid flow to a permeate device, wherein the permeate device includes (i) at least one non-porous, gas permeable element configured for direct
page(s) 7, particularly “contact with a liquid flow, the non-porous, gas permeable element configured to support gas phase reduction of the liquid flow; and (ii) at least one porous element fabricated at least in part from a porous material, the porous element configured to provide structural support to the non-porous, gas permeable element and permit gas flow therethrough; c. applying a negative pressure to the permeate device to draw entrained gas through (i).
page(s) 7, particularly “Restriction Requirement at 2-3 (emphasis in original).
page(s) 7, particularly “The Office failed to provide a proper example of how the product of claims 1-12 and 20 could be used in a process that is materially different from that of claim 13. The aforementioned text provided by the Office does not include an example of a materially different process, just a bare allegation that the product could be used in a process that does not include any of the functional features of claim 13. The Office provided no explanation of what the purported materially different process actually is, only what it is not. Simply stating that the product could be used in a process that is not the same as claim 13 does not meet the aforementioned burden required by MPEP § 806.0S(h).
In response, respectfully, the Examiner does not find the argument persuasive. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case,
the product as claimed can be used in a materially different process of using that product, such as a process without,
a. providing a liquid flow that includes an initial level of entrained gas; b. delivering the liquid flow to a permeate device, wherein the permeate device includes (i) at least one non-porous, gas permeable element configured for direct contact with a liquid flow, the non-porous, gas permeable element configured to support gas phase reduction of the liquid flow; and (ii) at least one porous element fabricated at least in part from a porous material, the porous element configured to provide structural support to the non-porous, gas permeable element and permit gas flow therethrough; c. applying a negative pressure to the permeate device to draw entrained gas through (i).
With regard to applicants allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. Further, while there may be some overlap in the searches of the two inventions, there is not reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
The Applicant has not provided a convincing argument that an alternative use cannot be accomplished.
Even if some claim language is similar, it is not necessarily treated the same in an apparatus claim, during examination; such as apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim (see MPEP § 2114 & § 2173.05(g))
Applicant argues at page(s) 7, particularly “To support a restriction, the Examiner must also show that "[t]here would be a serious search and/or examination burden on the examiner if restriction is not required." MPEP § 803(1)(B). Here, the same prior art classes/subclasses are relevant to both apparatus and method claims: vacuum degassing modules, permeable membrane devices, porous structural supports, and related processing methods. A single search addresses both sets of claims. Conversely, the Restriction Requirement fails to articulate any separate search burden beyond a conclusory assertion of distinct inventions. As mentioned above, claim 13 recites all features of claim 1 and therefore there is no additional search and examination burden with respect to at least claims 13-19 and claims 1-12. Amended claim 20 now recites all of the features of claims 1, 8, and 9."
page(s) 8, particularly “Rejoinder
page(s) 8, particularly “Should the Examiner be unpersuaded, Applicant requests support for the assertions traversed herein. Namely, Applicant requests at least one example and identification of diverse search categories.
page(s) 8, particularly “In the event the restriction requirement is not withdrawn, claims 13-19 should be rejoined because claims 13-19 recite all of the features of allowable claim 1.
page(s) 7, particularly “Therefore, claim 20 adds no additional search burden.
In response, respectfully, the Examiner does not find the argument persuasive. The traversal is on the ground(s) that the restricted inventions are not independent inventions and that examination of both claimed invention together would not present a serous burden on the U.S. Patent and Trademark Office. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41 has been adequately addressed in MPEP §802.01. Therein, it is stated that the legislative intent was to maintain the substantive law on the subject of restriction practice prior to enactment of 35 USC 121. Such practice permitted restriction between distinct, albeit dependent inventions. If the intent had been otherwise, then only the term “independent” would have been used. Thus, restriction between the distinct inventions set forth in this application is proper even thought these inventions are clearly related.
With regard to applicants allegation that joinder of these distinct inventions would not present a serious burden to the U. S. Patent and Trademark Office, such allegations relied on the unsupported assumption that the search and the examination of both the invention would be coextensive. Further, while there may be some overlap in the searches of the two inventions, there is not reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case,
the product as claimed can be used in a materially different process of using that product, such as a process without,
a. providing a liquid flow that includes an initial level of entrained gas; b. delivering the liquid flow to a permeate device, wherein the permeate device includes (i) at least one non-porous, gas permeable element configured for direct contact with a liquid flow, the non-porous, gas permeable element configured to support gas phase reduction of the liquid flow; and (ii) at least one porous element fabricated at least in part from a porous material, the porous element configured to provide structural support to the non-porous, gas permeable element and permit gas flow therethrough; c. applying a negative pressure to the permeate device to draw entrained gas through (i).
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 13,14,15,16,17,18,19 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation (in an alternative)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
"a. at least one non-porous, gas permeable element configured for direct contact with a liquid flow, the non-porous, gas permeable element configured to support gas phase reduction of the liquid flow" in claim 1 drawn to Instant specification [0042] The at least one non-porous, permeable element, structure or layer functions as a membrane that supports gas phase reduction;
“the non-linear flow path comprises one of a sinusoidal flow path, a zig-zag flow path, spiral flow path and a tortuous flow path,” in claim 7 drawn to instant specification para 56 "the first element, structure or layer may define a substantially serpentine or tortuous path within the vacuum chamber"
"a combination of at least one non-porous, gas permeable element configured for direct contact with a liquid flow, the non-porous, gas permeable element configured to support gas phase reduction of the liquid flow" in claim 20 drawn to Instant specification [0042] The at least one non-porous, permeable element, structure or layer functions as a membrane that supports gas phase reduction;
“providing at least one of a sinusoidal flow path, a zig-zag flow path, a spiral flow path and a tortuous flow path,” in claim 20 drawn to instant specification para 56 "the first element, structure or layer may define a substantially serpentine or tortuous path within the vacuum chamber"
"wherein at least one of the combination is configured to sealingly engage a source of negative pressure for reducing gas entrained in the liquid flow" in claim 20 drawn to Instant specification [0042] The at least one non-porous, permeable element, structure or layer functions as a membrane that supports gas phase reduction;
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1,2,3,4,5,6,7,8,9,10,11,12,20 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(s) 1 has the phrase, “a. at least one non-porous, gas permeable element configured for direct contact with a liquid flow, the non-porous, gas permeable element configured to support gas phase reduction of the liquid flow,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Claim limitation 1 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim has insufficient structure for preforming recited function; which is contradicted by the instant specification stating para 107 states "No functional language used in claims appended herein is to be construed as invoking 35 U.S.C. § 112(f) interpretations as ‘means-plus-function’ language unless specifically expressed as such by use of the words ‘means for’ or ‘steps for’ within the respective claim.” The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim(s) 4 has the phrase, “the sealing engagement,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Particularly, it is unclear if the phrase refers to something previously mentioned (albeit without proper antecedent basis), OR if this phrase is setting forth a new element
Claim(s) 4 has the phrase, “wherein the sealing engagement is provided in the absence of an epoxy or potting material,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Particularly, unclear if the claim excludes from the permeate device epoxy; unclear if the claim excludes from the permeate device potting material
Claim(s) 7 has the phrase, “the non-linear flow path,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Particularly, it is unclear if the phrase refers to something previously mentioned (albeit without proper antecedent basis), OR if this phrase is setting forth a new element
Claim(s) 7 has the phrase, “the non-linear flow path comprises one of a sinusoidal flow path, a zig-zag flow path, spiral flow path and a tortuous flow path,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Claim limitation 7 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim has insufficient structure for preforming recited function; which is contradicted by the instant specification stating para 107 states "No functional language used in claims appended herein is to be construed as invoking 35 U.S.C. § 112(f) interpretations as ‘means-plus-function’ language unless specifically expressed as such by use of the words ‘means for’ or ‘steps for’ within the respective claim.” The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim(s) 12 has the phrase, “that includes predefined openings configured and dimensioned for gas molecule passage,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Particularly, unclear what this portion refers too
Claim(s) 20 has the phrase, “a combination of at least one non-porous, gas permeable element configured for direct contact with a liquid flow, the non-porous, gas permeable element configured to support gas phase reduction of the liquid flow,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Claim limitation 20 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim has insufficient structure for preforming recited function; which is contradicted by the instant specification stating para 107 states "No functional language used in claims appended herein is to be construed as invoking 35 U.S.C. § 112(f) interpretations as ‘means-plus-function’ language unless specifically expressed as such by use of the words ‘means for’ or ‘steps for’ within the respective claim.” The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim(s) 20 has the phrase, “a combination of at least one non-porous,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Particularly, unclear if "at least one porous element" is "at least one" of the "combination"
Claim(s) 20 has the phrase, “providing at least one of a sinusoidal flow path, a zig-zag flow path, a spiral flow path and a tortuous flow path,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Claim limitation 20 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim has insufficient structure for preforming recited function; which is contradicted by the instant specification stating para 107 states "No functional language used in claims appended herein is to be construed as invoking 35 U.S.C. § 112(f) interpretations as ‘means-plus-function’ language unless specifically expressed as such by use of the words ‘means for’ or ‘steps for’ within the respective claim.” The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim(s) 20 has the phrase, “providing at least one of a sinusoidal flow path, a zig-zag flow path, a spiral flow path and a tortuous flow path,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Particularly, unclear what is "providing" in the claim; para 56 "the first element, structure or layer may define a substantially serpentine or tortuous path within the vacuum chamber"
Claim(s) 20 has the phrase, “wherein at least one of the combination is configured to sealingly engage a source of negative pressure for reducing gas entrained in the liquid flow,” which (in the context of the claim) is unclear what is included and excluded by the scope of claim language;
Claim limitation 20 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim has insufficient structure for preforming recited function; which is contradicted by the instant specification stating para 107 states "No functional language used in claims appended herein is to be construed as invoking 35 U.S.C. § 112(f) interpretations as ‘means-plus-function’ language unless specifically expressed as such by use of the words ‘means for’ or ‘steps for’ within the respective claim.” The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Though one or more of the claim(s) are indefinite, for the sake of compact prosecution, the examiner has done his best to ascertain their meaning for the following 35 USC § 102 and/or 35 USC § 103 rejection(s)
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 3, 4, 5, 6, 7, 9, 12, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 8500960 (herein known as EHRENBERG)
With regard to claim 1, EHRENBERG sufficiently teaches a permeate device, comprising:, especially at abstract
at least one non-porous, gas permeable element (110, in an alternative, a structural equivalent of the membrane) capable of direct contact with a liquid flow 282, especially at fig 14, c5ln35-40, c11ln25-40, c30ln35-50
the non-porous, gas permeable element capable of support "vacuum assisted desalinization" (gas phase reduction of the liquid flow), especially at fig 14, c5ln30-40, c11ln25-40, c30ln35-50
at least one porous element 112 fabricated at least in part from a porous material, especially at abstract, fig 14, c5ln35-40, c21ln30-35, c11ln25-40, c30ln35-50
the porous element capable of providing structural support to the non-porous, gas permeable element and permit gas flow therethrough, especially at abstract, fig 14, c5ln35-40, c21ln30-35, c11ln25-40, c30ln35-50
With regard to claim 2, EHRENBERG sufficiently teaches
a vacuum chamber 290 that surrounds at least an operative portion of (i) the at least one non-porous, gas permeable element, and (ii) the at least one porous element, especially at abstract, fig 14, c5ln35-40, c21ln30-35, c11ln25-40, c30ln35-50
With regard to claim 3, EHRENBERG sufficiently teaches
wherein the vacuum chamber is in fluid communication with a vacuum source 330, especially at abstract, fig 14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
With regard to claim 4, EHRENBERG sufficiently teaches
wherein the vacuum chamber sealingly engages the operative portion of (i) the at least one non-porous, gas permeable element and (ii) the at least one porous element,, especially at abstract, fig 14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
wherein the "SEAL" (sealing engagement) is provided in the absence of an epoxy or potting material., especially at abstract, fig 14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
With regard to claim 5, EHRENBERG sufficiently teaches
wherein the at least one non-porous, gas permeable element defines a flow path for the liquid flow, especially at abstract, fig 14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
With regard to claim 6, EHRENBERG sufficiently teaches
wherein the flow path comprises one of an axial flow path and a non-axial flow path, especially at abstract, fig 14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
With regard to claim 7, EHRENBERG sufficiently teaches
wherein the non-linear flow path comprises a tortuous flow path (in an alternative, structural equivalent), especially at abstract, figs 8,14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
With regard to claim 9, EHRENBERG sufficiently teaches
wherein the at least one porous element is fabricated, in whole or in part, from PTFE (a fluoropolymer material), especially at claim 4, abstract, figs 8,14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
With regard to claim 12, EHRENBERG sufficiently teaches
wherein the at least one porous element is fabricated, at least in part, from a metal, especially at c21ln45-65
With regard to claim 20, EHRENBERG sufficiently teaches a permeate device, comprising:, especially at abstract
a combination of at least one non-porous, gas permeable element (110, in an alternative, a structural equivalent of the membrane) capable of direct contact with a liquid flow 282, especially at fig 14, c5ln35-40, c11ln25-40, c30ln35-50
the non-porous, gas permeable element capable of support "vacuum assisted desalinization" (gas phase reduction of the liquid flow), especially at fig 14, c5ln30-40, c11ln25-40, c30ln35-50
at least one porous element 112 fabricated at least in part from a porous material, especially at abstract, fig 14, c5ln35-40, c21ln30-35, c11ln25-40, c30ln35-50
the porous element capable of providing structural support to the non-porous, gas permeable element and permit gas flow therethrough, especially at abstract, fig 14, c5ln35-40, c21ln30-35, c11ln25-40, c30ln35-50
wherein the combination is disposed in a vacuum chamber providing a tortuous flow path (in an alternative, a structural equivalent), especially at abstract, figs 8,14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
wherein at least one of the combination (in an alternative, a structural equivalent) is capable of "SEAL" sealingly engage a source of negative pressure capable of reducing gas entrained in the liquid flow, especially at abstract, fig 14, c21ln30-35, c11ln25-40, c30ln35-50, c32ln64-67
Claim Rejections - 35 USC § 103
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8500960 (herein known as EHRENBERG) in view of US 20040220416 (herein known as Emsenhuber)
With regard to claim 8, EHRENBERG sufficiently teaches
pervaporation material of polycarbonate, especially at c8ln60-67
EHRENBERG does not specifically teach wherein the at least one non-porous, gas permeable element is fabricated, in whole or in part, from silicone
But, Emsenhuber sufficiently teaches pervaporation material of silicone polycarbonate, especially at claim 8
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to substitute polycarbonate of EHRENBERG with silicone polycarbonate of Emsenhuber because the substitution of one type of membrane for another that are both used for the same purpose (i.e. pervaporation) would be well within the scope of the skilled artisan (See MPEP 2141 III,B)
Claim(s) 10, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8500960 (herein known as EHRENBERG) in view of US 20120240762 (herein known as Gerner)
With regard to claim(s) 10,11 EHRENBERG does not specifically teach one or more sensors positioned in association with the at least one porous element.
EHRENBERG does not specifically teach wherein the one or more sensors are selected from the group consisting of a pressure sensor, a temperature sensor, a refractive index sensor, a gas sensor, and combinations thereof.
But, Gerner sufficiently teaches pressure sensor 70 positioned in association with the element 24, especially at para 35,53, fig 8
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to combine EHRENBERG with pressure sensor 70 positioned in association with the element 24 of Gerner for the benefit of detecting pressure as determined as needed
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY R SHUMATE whose telephone number is (571)270-5546. The examiner can normally be reached on M,T,Th,F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached on (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY SHUMATE/
Primary Examiner, Art Unit 1776