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 Arguments
The Amendment filed 13AUG2025 has been entered. No new matter has been entered. Applicant's arguments filed 13AUG2025 have been fully considered but they are not persuasive.
Regarding KIMOTO, see L163-164 for teaching of two RO units in series. Also see the EDI #3 of Fig. 3 as being immediately downstream of the second reverse osmosis membrane (in series). See also ISHIKAWA teaching two RO units, one downstream the other.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant further argues that the Office Action appears to rely on a piecemeal reconstruction of the claimed invention. All the elements of the claims are known in the prior art in the technological environment of water filtration and pure water production and thus would be obvious to one having ordinary skill in the art to provide for the combination of claimed features, absent persuasive explanation as to why it is not obvious and/or provides unexpected results. The office action provides motivations and rationales as to why a particular feature would be obvious. For example, KIMOTO teaches that an electrodeionization device allows for removal of boron (L421-422), which is arranged downstream of a RO unit. It is also known to place a UV sterilier (e.g. Fig. 1 #137) downstream RO units (LEE Fig. 1 #135). See also UV sterilier at Fig. 1 #166 arranged downstream of a RO unit at Fig. 1 #156. ISHIKAWA teaches a chemical supplier (Fig. 1 #23) at the RO units. Thus it is obvious to provide for a chemical supplier capable of supplying a pH regulator to an ultraviolet sterilizer. Note that the rearrangement of parts is an obvious engineering design choice that does not change the operation of the device as a whole and thus one having ordinary skill in the art would have found it obvious (see MPEP 2144.04(VI)(C)).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4,7-11 are rejected under 35 U.S.C. 103 as being unpatentable over ISHIKAWA (JP H06328070) in view of KIMOTO (JP 2021102200).
Regarding claims 1-2, ISHIKAWA teaches a recovery of purified water from drained water produced by cleaning semiconductor (title, Figs., see translation) comprising:
a first tank (Fig. 1 #1);
a plurality of reverse osmosis membranes (Fig. 1 #6,8,9) sequentially arranged downstream of the first tank, the plurality of reverse osmosis membranes comprising a first reverse osmosis membrane (Fig. 1 #6) and a second reverse osmosis membrane (Fig. 1 #8) downstream of the first reverse osmosis membrane;
a second tank (Fig. 1 #7) downstream of the first reverse osmosis membrane;
a first ultraviolet (UV) sterilizer downstream of the second tank (UV sterilizer in a subsequent stage; par. [0026]);
an ion exchange resin tower (IEX; mixed bed ion exchanger in a subsequent stage; par. [0026]); and
a chemical supplier (pipe, Fig. 1 #23) arranged between the plurality of reverse osmosis membranes and upstream of the first UV sterilizer, and capable of supplying a pH regulator (e.g. NaOH) to treatment-target water flowing from the second tank.
ISHIKAWA does not teach an electrodeionization device (EDI) or an IEX filled with a boron selective resin. However, KIMOTO teaches an ultrapure water producing system (title, Figs., see translation) comprising:
a plurality of reverse osmosis membranes (e.g. Fig. 3 #2), the plurality of reverse osmosis membranes comprising a first reverse osmosis membrane, and a second reverse osmosis membrane downstream of the first reverse osmosis membrane (two RO devices in series; L163-164);
a first ultraviolet (UV) sterilizer (Fig. 3 #22);
an electrodeionization device (Fig. 3 #3) arranged immediately downstream of the second reverse osmosis membrane;
an ion exchange resin tower (Fig. 2 #23; L211-213) arranged downstream of the electrodeionization device and filled with a boron selective resin (L197-198).
KIMOTO teaches the boron selective resin is capable of selectively adsorbing boron (L206-207) and the EDI removes salts, carbonic acid and boron (L171-174) for providing ultrapure water.
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine/modify the system of ISHIKAWA with the EDI and IEX with a boron selective resin of KIMOTO in order to efficiently remove contaminants in water. The references are combinable, because they are in the same technological environment of water filtration. See MPEP 2141 III (A) and (G).
Regarding claim 3, the limitation “pH value” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
See also ISHIKAWA par. [0012].
Regarding claim 4, ISHIKAWA’s modified device teaches each of the first reverse osmosis membrane and the second reverse osmosis membrane comprises a low pressure reverse osmosis membrane (KIMOTO L154-155; a RO device known in the prior art can be used without limitation; L147-148).
Regarding claim 7, ISHIKAWA’s modified device teaches the ion exchange resin tower is further filled with a mixed bed ion exchange resin (KIMOTO L197).
Regarding claim 8, ISHIKAWA’s modified device teaches a degasifier arranged downstream of the ion exchange resin tower (KIMOTO L496-498).
Regarding claim 9, ISHIKAWA’s modified device teaches the degasifier comprises a membrane degasifier (KIMOTO L496).
Regarding claim 10, ISHIKAWA’s modified device teaches a circulation unit comprising a first sub-reverse osmosis membrane (KIMOTO Fig. 3 #RO2),
wherein the circulation unit is capable of treating concentrated water of the plurality of reverse osmosis membranes (KIMOTO Fig. 3 #2, which may be a two-stage RO membrane device; L163-164) and circulate the concentrated water to the first tank (recycle to the preceding stage; L82/83; of course it is obvious to provide the first tank to store recycled water to combine influent flows to reduce waste).
Regarding claim 11, ISHIKAWA’s modified device teaches the first sub-reverse osmosis membrane comprises a low pressure reverse osmosis membrane (KIMOTO L154-155; a RO device known in the prior art can be used without limitation; L147-148).
Claim(s) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over ISHIKAWA (JP H06328070) in view of KIMOTO (JP 2021102200) evidenced by El-Sheikh 2017 “Recovery of vanadium and rare earth elements from the processed mineralized dolostone, GabalAllouga, Southwestern Sinai, Egypt”.
Regarding claims 5-6, KIMOTO teaches the boron-selective ion exchange resin includes e.g. Amberlite (L208), which has the claimed structure as evidenced by El-Sheikh (Fig. 2).
Claim(s) 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over LEE (KR 100626373) in view of KIMOTO (JP 2021102200), ISHIKAWA (JP H06328070), and ORT (US 3780471)
Regarding claim 12, LEE teaches a system making DI water (title, Fig., see translation) including:
a first tank (Fig. 1 #102);
a heat exchanger arranged downstream of the first tank (Fig. 1 #104);
a first filter (Fig. 1 #112) and a second filter (Fig. 1 #116), which are sequentially arranged in the stated order downstream of the heat exchanger;
a first reverse osmosis membrane (Fig. 1 #135) arranged downstream of the second filter;
a circulation unit comprising a first sub-tank (Fig. 1 #144), the circulation unit being capable of circulating the water to the first tank;
a second tank (Fig. 1 #142) arranged downstream of the first reverse osmosis membrane;
a first ultraviolet sterilizer (Fig. 1 #152) arranged downstream of the second tank;
a third filter (Fig. 1 #154) arranged downstream of the first ultraviolet sterilizer;
a second reverse osmosis membrane (Fig. 1 #156) arranged downstream of the third filter;
a third tank (Fig. 1 #162);
a second ultraviolet sterilizer (Fig. 1 #166) arranged downstream of the third tank;
an ion exchange resin tower (Fig. 1 #168) arranged downstream of the second ultraviolet sterilizer; and
a degasifier (Fig. 1 #118).
LEE does not teach a circulation unit comprising a sub-reverse osmosis membrane, an electrodeionization device, or a boron selective resin. However, KIMOTO teaches an ultrapure water producing system (title, Figs., see translation) comprising:
a plurality of reverse osmosis membranes (Fig. 3 #2, which may be a two-stage RO membrane device; L163-164);
a circulation unit comprising a first sub-reverse osmosis membrane (Fig. 3 #RO2), wherein the circulation unit is capable of treating concentrated water of the plurality of reverse osmosis membranes and circulating the concentrated water to a tank (recycle to the preceding stage; L82/83).
KIMOTO teaches and/or makes obvious that such a circulation unit allows for removal of impurities and reuse of concentrate to reduce waste (L344-357,363-367).
KIMOTO teaches further an electrodeionization device (Fig. 3 #3) arranged immediately downstream of the second reverse osmosis membrane.
KIMOTO teaches that the electrodeionization device allows for removal of boron (L421-422).
KIMOTO teaches further an ion exchange resin tower (Fig. 3 #23) arranged downstream of the electrodeionization device and UV device (Fig. 3 #22) and filled with a boron selective resin (L197-198,213,445-454).
KIMOTO teaches that the boron selective resin allows for removal of boron (L197-198) and in the case of a mixed bed may remove low molecular weight ionic components (L447-448).
KIMOTO teaches further a degasifier arranged downstream of the ion exchange resin tower (L496-498).
KIMOTO teaches that the degasifier allows for removal of dissolved oxygen (L496-498).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the system of LEE with the features (a circulation unit, electrodeionization device, ion exchange resin tower with boron selective resin, and degasifier) of KIMOTO in order to provide the benefits known in the art and thereby improve water separations/filtration. The references are combinable, because they are in the same technological environment of water filtration. See MPEP 2141 III (A) and (G).
LEE does not teach a chemical supplier capable of supplying a pH regulator to treatment-target water flowing from the second tank to the first ultraviolet sterilizer. However, ISHIKAWA teaches a recovery of purified water from drained water produced by cleaning semiconductor (title, Figs., see translation) comprising:
a first tank (Fig. 1 #1);
a plurality of reverse osmosis membranes sequentially arranged downstream of the first tank (Fig. 1 #6,8,9); and,
a chemical supplier (pipe, Fig. 1 #23) arranged between the plurality of reverse osmosis membranes and configured to supply a pH regulator (e.g. NaOH) to treatment-target water.
ISHIKAWA teaches that under weak alkaline conditions in the second and third RO membrane separation devices, CO2 in the feed water is efficiently removed (par. [0012-0013]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine/modify the system of LEE with the chemical supplier of ISHIKAWA in order to efficiently remove CO2. The references are combinable, because they are in the same technological environment of water filtration. See MPEP 2141 III (A) and (G).
Regarding the placement of the chemical supplier, ORT teaches water reclamation-algae production (title, Figs.) and that a high pH with ultraviolet light results in significant reduction in coliforms (C4/L44,48-49).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to place the chemical supplier of LEE’s modified system before the UV device in order to significantly reduce coliforms as is known in the art. The references are combinable, because they are in the same technological environment of water treatment. See MPEP 2141 III (A) and (G).
Regarding claim 13, LEE’s modified device teaches and/or suggests each of the reverse osmosis membranes comprise low pressure reverse osmosis membranes (KIMOTO L154-155; a RO device known in the prior art can be used without limitation; L147-148).
Regarding claim 14, the limitations “NaOH”, “pH value” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
See also ISHIKAWA par. [0012].
Regarding claim 15, LEE’s modified device teaches and/or suggests the ion exchange resin tower is further filled with a mixed bed ion exchange resin (KIMOTO L197).
Regarding claim 16, LEE teaches the first ultraviolet sterilizer irradiates ultraviolet light having a wavelength of 254 nm (or 253 nm; L109), and
wherein the second ultraviolet sterilizer irradiates ultraviolet light having a wavelength of 185 nm (or 184.9 nm). While the wavelengths are not anticipatory, they are very close so as to essentially be equivalent (or obvious) for all intents and purposes.
Claim(s) 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over LEE (KR 100626373) in view of KIMOTO (JP 2021102200), ISHIKAWA (JP H06328070).
Regarding claim 17, LEE teaches a system making DI water (title, Fig., see translation) including:
a pre-treatment facility, which comprises:
a first tank (Fig. 1 #102),
a first reverse osmosis membrane (Fig. 1 #135) arranged downstream of the first tank, and
a circulation unit (Fig. 1 #145b), the circulation unit being capable of circulating water to the first tank;
a first make-up facility, which comprises:
a second tank (Fig. 1 #142),
a second reverse osmosis membrane (Fig. 1 #156) arranged downstream of the second tank,
a second make-up facility, which comprises:
a third tank (Fig. 1 #158),
an ion exchange resin tower (Fig. 1 #138), and
a first degasifier (Fig. 1 #118); and
a polishing facility, which comprises:
a fourth tank (Fig. 1 #162),
a first polisher (Fig. 1 #168) arranged downstream of the fourth tank,
a second degasifier (Fig. 1 #136),
a second polisher (Fig. 1 #170), and
an ultrafiltration membrane (Fig. 1 #172) arranged downstream of the second polisher.
LEE does not teach a circulation unit comprising a sub-reverse osmosis membrane, an electrodeionization device, or a boron selective resin. However, KIMOTO teaches an ultrapure water producing system (title, Figs., see translation) comprising:
a plurality of reverse osmosis membranes (Fig. 3 #2, which may be a two-stage RO membrane device; L163-164);
a circulation unit comprising a first sub-reverse osmosis membrane (Fig. 3 #RO2), wherein the circulation unit is capable of treating concentrated water of the plurality of reverse osmosis membranes and circulating the concentrated water to a tank (recycle to the preceding stage; L82/83).
KIMOTO teaches and/or makes obvious that such a circulation unit allows for removal of impurities and reuse of concentrate to reduce waste (L344-357,363-367).
KIMOTO teaches further an electrodeionization device (Fig. 3 #3) arranged immediately downstream of the second reverse osmosis membrane.
KIMOTO teaches that the electrodeionization device allows for removal of boron (L421-422).
KIMOTO teaches further an ion exchange resin tower (Fig. 3 #23) arranged downstream of the electrodeionization device and filled with a boron selective resin (L197-198,445-454).
KIMOTO teaches that the boron selective resin allows for removal of boron (L197-198) and in the case of a mixed bed may remove low molecular weight ionic components (L447-448).
KIMOTO teaches further a degasifier arranged downstream of the ion exchange resin tower (L496-498).
KIMOTO teaches that the degasifier allows for removal of dissolved oxygen (L496-498).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the system of LEE with the features (a circulation unit, electrodeionization device, ion exchange resin tower with boron selective resin, and degasifier) of KIMOTO in order to provide the benefits known in the art and thereby improve water separations/filtration. The references are combinable, because they are in the same technological environment of water filtration. See MPEP 2141 III (A) and (G).
LEE does not teach a chemical supplier capable of supplying a pH regulator to treatment-target water flowing from the second tank to the second reverse osmosis membrane. However, ISHIKAWA teaches a recovery of purified water from drained water produced by cleaning semiconductor (title, Figs., see translation) comprising:
a first tank (Fig. 1 #1);
a plurality of reverse osmosis membranes sequentially arranged downstream of the first tank (Fig. 1 #6,8,9); and,
a chemical supplier (pipe, Fig. 1 #23) capable of supplying a pH regulator (e.g. NaOH) to treatment-target water flowing from the second tank to the second RO membrane.
ISHIKAWA teaches that under weak alkaline conditions in the second and third RO membrane separation devices, CO2 in the feed water is efficiently removed (par. [0012-0013]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine/modify the system of LEE with the chemical supplier of ISHIKAWA in order to efficiently remove CO2. The references are combinable, because they are in the same technological environment of water filtration. See MPEP 2141 III (A) and (G).
Regarding duplication and/or placement of various parts (e.g. an ion exchange resin tower arranged downstream of the third tank, a second degasifier arranged downstream of the first polisher, a second polisher arranged downstream of the second degasifier, the first make-up facility downstream of the pre-treatment facility), duplication of parts has no patentable significance absent persuasive evidence that a new and unexpected result is produced (MPEP 2144.04.VI.B). Furthermore, the rearrangement of parts is an obvious engineering design choice that does not change the operation of the device as a whole and thus one having ordinary skill in the art would have found it obvious (see MPEP 2144.04(VI)(C)). In other words, one having ordinary skill in the art equipped with common parts already widely known in the art of ultrapure water filtration may easily experiment with the number and order of such parts to obtain a device capable of making ultrapure water.
Regarding claim 18, LEE’s modified device teaches and/or suggests each of the reverse osmosis membranes comprise low pressure reverse osmosis membranes (KIMOTO L154-155; a RO device known in the prior art can be used without limitation; L147-148).
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over LEE (KR 100626373) in view of KIMOTO (JP 2021102200), ISHIKAWA (JP H06328070) and evidenced by El-Sheikh 2017 “Recovery of vanadium and rare earth elements from the processed mineralized dolostone, GabalAllouga, Southwestern Sinai, Egypt”.
Regarding claim 19, KIMOTO teaches the boron-selective ion exchange resin includes e.g. Amberlite (L208), which has the claimed structure as evidenced by El-Sheikh (Fig. 2).
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over LEE (KR 100626373) in view of KIMOTO (JP 2021102200), ISHIKAWA (JP H06328070) and MORITA (US 6464867).
Regarding claim 20, LEE teaches the second polisher comprises a mixed bed ion exchange resin tower (Fig. 1 #170; L143-145).
LEE teaches the first polisher comprises an ion exchange resin tower for removing oxidized components from the TOC-UV (L142-143), but is silent as to a catalyst ion exchange resin. However, MORITA teaches apparatus for producing water containing dissolved ozone (title, abstract) and that an oxidation-reduction catalyst ion exchange resin is disposed after irradiating ultrapure water with ultraviolet light in order to remove ions (C4/L1-7;C11/L9-20).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to specify/modify the polisher of LEE with a catalyst ion exchange resin of MORITA in order to efficiently remove oxidized components. The references are combinable, because they are in the same technological environment of water filtration. See MPEP 2141 III (A) and (G).
Telephonic Inquiries
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 LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~8:00~15:00.
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, Benjamin Lebron can be reached at (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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LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1777