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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/147,954 application filed on December 29, 2022. Claims 1-20 are pending. Claims 1-12 are examined, on the merits, in this Office action. The examined claims are directed to an apparatus or system.
Election/Restrictions
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant elected Group I, claims 1-12 and timely traversed the restriction (election) requirement in the reply filed on November 20, 2025.
Answer (Response) to Arguments
The election traversal is on the ground(s) that the subject matter involves a single general inventive concept and that it would not impose an undue burden to consider all claims in a single application. This is not found persuasive because Examiner has shown that the inventions are distinct whether or not there is overlapping subject matter. The inventive concept is subject to interpretation as was not highlighted by Applicant. As such, absent a full Examination, at the outset, Examiner considers all the words of the independent claims as the general inventive concept. The apparatus and methods claims are also interpreted differently since, for example, the method claims require distinct operations and manipulative steps that are not necessary for the apparatus claims.
With respect to the concept of undue burden, this allegation appears to rely on the unsupported assumption that the search and the examination of both the inventions would be coextensive. As noted earlier, while there may be some overlap in the searches of the two inventions, there is no reason to believe that the searches would be identical. Also, searching is only one of many requirements for a full consideration of the claims. There is also claim interpretation and writing a related Office action with additional claims. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is clearly proper.
The restriction requirement is thus still deemed proper and is therefore made FINAL.
Accordingly, claims 13-20 are withdrawn as directed to the non-elected invention.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 7/10/2023 and 09/25/2023. Please refer to the signed copy of the PTO-1449 form attached herewith. All references were considered except for those lined through. Examiner could not locate the Taiwanese Office Action of September 6, 2023, or its translation, among the submitted references for this application.
Claim Interpretation
The examined claims are apparatus/system claims requiring only the positively recited structural components, although structured with physical features that can perform the stated functions or accomplish the intended uses. Functional limitations state either an intended use or operation, a manner of operating a device, apparatus or system, or what the apparatus/system does. Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Also, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Of course, in the patentability analysis of these apparatus/system claims, functional features are considered/not ignored and Applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP §§ 2114, 2173.05(g)).
The recited liquid containing sulfate ions appears to be a material potentially contained within, transient or passing through, generated or produced, or otherwise worked upon by the apparatus/system rather than a structural component of the apparatus.
According to the MPEP §2115 [R-2], a material or article worked upon does not limit apparatus claims: Expressions relating an apparatus to contents thereof during an intended operation are of no significance in determining patentability of apparatus claims. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
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.
Claims 1-12 are 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 pre-AIA the applicant regards as the invention.
He claim states that “the desulfurization bacteria culture tank produces a liquid containing sulfate ions, and the liquid containing sulfate ions is introduced into the processing unit to control the pH value of the processing unit, so that the pH value of the processing unit is between 5.5 and 6.5.”
It is unclear how the tank can produce a liquid containing sulfate ions.
Also, the claims appears to be missing structure associated with introducing the liquid into the processing unit. Alternately, the claim has included one or more process or manipulative steps into an apparatus claim, without making it clear which structure is necessary for carrying out the noted step(9). A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite. MPEP 2173.05 (p).
The entire above claim portion is functional because it recites either a manner of operating the apparatus, a material that the apparatus works upon, or the result of a previously claimed structure rather than clearly imposing any additional structure. The claim does not provide a discernible boundary regarding what provides the functional characteristics. Is it the bacteria alone? As such, the boundaries of this functional language is unclear.
Examiner suggests that Applicant amend the claim to specify how the membrane spacers ‘compensate the decreasing volumetric flow rate of the feed water, provided such an amendment is supported by the original specification. MPEP §§2173.02, 2173.05(g).
The notion of a pH value of the desulfurization bacteria culture tank is unclear. Is this the pH of materials within the tank?
Claims 2-12 depend on claim 1.
The meaning of every term or phrase used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. See MPEP §2173.05(a). According to MPEP §2173, "The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent . . . If the language of a claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112, second paragraph, would be appropriate. See Morton Int 'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993). See MPEP §2173.02.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over Tee et al. (US 20220241724; Tee) in view of Stetter et al. (US6,217,766), Nguyen et al. (Removal of trace organic contaminants by an MBR comprising a mixed culture of bacteria and white-rot fungi, Bioresource Technology, Vol. 148, 2013, pages 234-241; Nguyen) and Zahmatkesh et al., (Bioremoval of humic acid from water by white rot fungi: exploring the removal mechanisms," AMB Express, Vol. 6, No. 118, 2016, pages 1-13; Zahmatkesh)(latter 2 documents are from the IDS of 7-10-2023).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure.
Regarding claims 1-5 and 9-12, Tee discloses a biological wastewater processing system (Abstract, Fig. 1), comprising:
a processing unit ([0002], [0006]) for removing humic acid or color from wastewater (this is an intended use and a capability of the system giving the use of similar or identical components), the processing unit comprising a plurality of porous carriers ([0027]),
wherein desulfurization bacteria are immobilized on the plurality of porous carriers ([0027], [0035], [0036]); and
a desulfurization bacteria culture tank for cultivating desulfurization bacteria ([0006], [0007], [0021]),
wherein the desulfurization bacteria culture tank is connected to the processing unit;
wherein the desulfurization bacteria culture tank produces a liquid containing sulfate ions, and the liquid containing sulfate ions is introduced into the processing unit to control the pH value of the processing unit ([0004], [0044], [0045], [0048], [0052], [0053], where production of oxidized sulfate and sulfate ions is noted; Examiner interprets this functionality as the microorganisms rather than the tank producing the liquid).
Therefore, Tee discloses the claimed invention, except for the inclusion of white-rot fungi with the bacteria, and the result where the pH value of the processing unit is between 5.5 and 6.5.
Stetter discloses a sulfur-reducing bacterium capable of reducing sulfite and sulfate to sulfide and removing sulfur compounds from water, with a specific growth profile, including having optimum growth under certain conditions, including a pH of between 5 and 9 (Abstract).
When the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to experiment with effective and workable pH ranges, including the recited range or above or below such range for optimum microorganism growth and effectiveness in contaminant removal.
Nguyen is a research article about degradation of trace organic contaminants (TrOC) by a white-rot fungus-augmented membrane bioreactor (MBR), where the results show that white-rot fungal enzyme (laccase) coupled with a redox mediator (1-hydroxy benzotliazole, HBT), could degrade TrOC that are resistant to bacterial degradation (Abstract). Overall, the fungus-augmented MBR showed better TrOC removal compared to a system containing conventional activated sludge (Id.). That is, a mixed culture of bacteria and a white-rot fungus (WRF) in a fungus-augmented MBR can achieve better TrOe removal than a system containing fungus or bacteria alone (Conclusion, p. 240, 1st col.).
Zahmatkesh discloses research regarding WRF strains screened on agar plates for their ability to bleach humic acid (HA). HA color removal was compared with changes in concentration and molecular size distribution, and HA removal by WRF was explained by distinguishing the sorped HA from degraded/transformed HA (p. 2, 2nd col.). It was shown that different WRF species have different capabilities for biosorption of HA (p. 12, 2nd col.).
When the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to combine the desulfurization bacteria with white-rot fungi, and to routinely experiment with various workable combination ratios of these microorganisms, and to immobilize the combination on an appropriately configured porous carrier in terms of fill rate, pore size and specific surface area, since it is known that the configuration of the porous carrier will affect the rate, effectiveness and efficiency of contaminant removal, and that WRF will degrade humic acid and can decolorize wastewater, as explained by Zahmatkesh, and because the combination of the noted microorganism has shown a certain synergy for improved removal of organic contaminants compared to using bacteria alone or WRF alone, as evidenced by Nguyen.
Additional Disclosures Included: Claim 2: The biological wastewater processing system as claimed in claim 1, wherein the ratio of desulfurization bacteria to white-rot fungi is between 1:15 and 1:5 (claim 1 analysis); Claim 3: The processing unit further comprises a partition plate disposed therein, and the plurality of porous carriers are disposed in a space formed by the partition plate (Tee, [0023], [0036], [0062]); Claim 4: The partition plate has a plurality of holes whose size is smaller than the size of the porous carriers (Tee, [0023]); Claim 5: The biological wastewater processing system further comprises an aeration device, wherein the aeration device is connected to the bottom of the processing unit and the bottom of the desulfurization bacteria culture tank through a connection part (Tee, [0043]); Claim 9: The biological wastewater processing system wherein the pH value of the desulfurization bacteria culture tank is between 1 and 4 (claim 1 analysis; also, pH of material worked upon is a functional feature not necessarily affecting prior claimed structure); Claim 10: The filling rate of the plurality of porous carriers in the processing unit is between 60% and 90% (Tee, [0037] and claim 1 analysis); Claim 11: The pore size of the plurality of porous carriers is between 200 micrometers and 2000 micrometers (Tee, [0031] and claim 1 analysis); and Claim 12: The specific surface area of the plurality of porous carriers is between 800 m/m3 and 8000 m2/m3 ([0031] and claim 1 analysis).
Regarding claims 6-8, Tee, Stetter, Nguyen and Zahmatkesh combined discloses or suggests the biological wastewater processing system as claimed in claim 1, except further comprising a first inlet for introducing the wastewater containing humic acid or color into the processing unit, wherein the first inlet is disposed at the bottom of the processing unit.
Tee shows an inlet at the bottom of the processing and cultivating tanks, although thee processing tank inlet is for air (Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place inlets and outlets for ingress and egress of the wastewater at suitable locations of the processing unit and it is known that one can place one or more inlets and outlets at either the top, side or bottom of a processing unit depending on suitability for the intended operation or design choice.
Additional Disclosures Included: Claim 7: The biological wastewater processing system further comprises a second inlet for introducing a wastewater containing sulfur into the desulfurization bacteria culture tank, wherein the second inlet is disposed at the bottom of the desulfurization bacteria culture tank (claim 6 analysis); and Claim 8: The biological wastewater processing system further comprises an outlet for exporting the processed wastewater out of the processing unit, wherein the outlet is disposed at the top of the processing unit (claim 6 analysis).
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via 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) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAYDEN BREWSTER/Examiner, AU 1779