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 Amendment
Acknowledgment is made to Applicant’s claim amendments received 12 June 2026. Claims 1-17 are currently pending, of which claims 11-16 are withdrawn from consideration.
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.
Claims 1-4, 6-10 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0069176 A1 to Liu et al. (Liu).
As to claims 1 and 2, Li teaches an electrolytic eluent generator system comprising a first reservoir (302) and a second reservoir (402) connected in series with the series flow forming a flow through eluent generating zone comprising an inlet and an outlet, the first reservoir (302) comprising a second electrode (306) and configured to hold a first ion source, the second reservoir (402) comprising a third electrode (406) and configured to hold a second ion source, a first ion exchange connector (308) disposed between a first region of the first reservoir (302) and the flow through eluent generating zone wherein the first ion exchange connector substantially presents liquid flow and transports ions only of the same charge as said first ions, a second ion exchange connector (408) disposed between the second reservoir (402) and a second region of the eluent generation zone wherein the second ion exchange connector substantially presents liquid flow and transports ions only of the same charge as said second ions, the second ion exchange connector of opposite charge to the first ion exchange connector, the first region and second region spaced apart. Liu further that the flow through eluent zone further comprises electrodes (310) and (410) each individually connected with a power supply, thus a first and second current source, respectively with the second electrode (306) and the third electrode (406) for generating acids and bases in the eluent zone, Liu specifically teaches that the eluent zone can be configured such that the reservoirs respectively generate acid then base, base then acid, acid then acid and base then base, thus teaching embodiment wherein the electrodes (310) and (410) both operate grounded and thus can be considered to be a two part first electrode (Paragraphs 0027, 0028, 0037, 0041, 0044, 0045, 0048 and 0049; Figures 1, 3, 4).
As to claim 4, Liu teaches the apparatus of claim 1. Liu further teaches that the apparatus comprises a pump (102) and a degasser (110) (Paragraph 0027; Figure 1).
As to claims 6, 7, 8, 9 and 17, Liu teaches the apparatus of claim 1. Liu further teaches that the apparatus comprises a source of deionized water in fluid communication with the inlet of the eluent generating zone (Paragraph 0028).
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.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 1 above, and as further discussed below.
As to claim 3, Liu teaches the apparatus of claim 1. Liu describes the first reservoir and second reservoir as part of a single eluent generating device (103) (Paragraph 0029). However, Liu is silent as to specifically if this device is configured with a housing/chamber/cartridge that encloses it. However, locating the two reservoirs within a single housing would have been obvious to one of ordinary skill in the art as a mere design choice on the arrangement of parts, absent narrowing limitations (MPEP 2144.04 VI C).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 1 above, and further in view of US 2010/0307919 A1 to Liu et al. (Liu 919).
As to claim 5, Liu teaches the apparatus of claim 1. However, Liu fails to further teach that the apparatus comprises an electrolytic pH modifier. However, Liu 919 also discusses electrolytic eluent generators and teaches that the apparatus should further comprise a pH modifier in fluid communication with the outlet of the eluent in order to allow for the modification of the eluent pH (Paragraph 0069). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the apparatus of Liu with a pH modifier in fluid communication with the output of the eluent generation zone in order to allow for modification of the eluent pH as taught by Liu 919. Liu 919 further teaches that the pH modifier comprises a pH modifier flow channel (340), a pH modifier barrier (344/362) adjacent to said pH modifier flow channel (340) substantially preventing liquid flow and transporting ions of one charge only, and first (348) and second (364) spaced electrodes disposed on opposite sides of the pH modifier barrier (344/362) (Paragraphs 0074-0076; Figure 22).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 1 above, and further in view of US 2018/0172621 A1 to Cheng et al. (Cheng).
As to claim 10, Liu teaches the apparatus of claim 1. However, Liu fails to teach what material the electrodes are made of. However, Cheng also discusses electrolytic eluent generation and teaches that an effective material of the working electrode includes platinum (Paragraphs 0012 and 0022). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize platinum for at least one of the electrodes of Liu with the reasonable expectation of forming the electrode to perform the desired eluent generation as taught by Cheng.
Response to Arguments
Applicant’s arguments with respect to the claims 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.
Conclusion
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 CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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