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
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive. On 8-9 of the response the applicant argues that Colagiovanni does not disclose that the one or more waste gas inlets are “positioned upstream of the reaction chamber” (claim 1), or “upstream of an inlet of the reaction chamber” (claim 16) as required by the amended independent claims. The examiner respectfully disagrees. With respect to both versions of the limitation the waste gas inlet is located as shown in the annotated Fig. below along with the flow path for VOC laden effluent into the reaction chamber. Note that the inlet is located upstream of the burners and is therefore upstream of any portion of 32 where oxidation of the VOC laden effluent might take place. For these reasons the rejections are maintained.
PNG
media_image1.png
391
730
media_image1.png
Greyscale
The applicant’s amendments overcome the 35 U.S.C 112(b) rejections presented in the Non-Final rejection dated 05/28/2025. Therefore, those rejections are withdrawn.
Claim Rejections - 35 USC § 102
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, 6, and 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Colagiovanni (US 5,297,954).
With respect to claim 1 Colagiovanni discloses a system comprising a regenerative thermal oxidizer, wherein the regenerative thermal oxidizer comprises: at least a first transfer chamber [the chamber including reference character 26] and at least a second transfer chamber [the chamber including reference character 28], wherein the first transfer chamber comprises a first bed [reference character 26] and the second transfer chamber comprises a second bed [reference character 28]; at least one reaction chamber [reference character 32] in fluid flow communication with the first transfer chamber and with the second transfer chamber; and one or more first waste gas inlets [see annotated Fig. below and column 3 lines 54-50] through which at least a first portion of waste gas can be introduced into the regenerative thermal oxidizer, wherein the first waste gas inlets are positioned upstream of the reaction chamber [see annotated Fig. presented in the response to arguments].
PNG
media_image2.png
788
781
media_image2.png
Greyscale
With respect to claim 6 Colagiovanni discloses a first waste gas tube [see annotated Fig. above] for connecting a waste gas source [reference character 14] with at least a second waste gas tube [see annotated Fig. above], wherein the second waste gas tube connects the first waste gas tube with the regenerative thermal oxidizer; an oxygen-containing gas tube [see annotated Fig. above] for connecting an oxygen-containing gas source [reference character 24] with the regenerative thermal oxidizer; and a controller [reference character 56]; wherein the controller is configured to: direct at least the first portion of waste gas via the first waste gas tube and via the second waste gas tube to the regenerative thermal oxidizer [column 4 lines 11-18], such that the first portion of the waste gas enters the regenerative thermal oxidizer downstream of at least a portion of the first bed and/or downstream of at least a portion of the second bed, wherein the waste gas includes at least one oxidizable compound [air]; and direct oxygen-containing gas via the oxygen-containing gas tube to the regenerative thermal oxidizer, such that the at least one oxidizable compound is oxidized in the reaction chamber [column 4 lines 11-33].
With respect to claim 9 Colagiovanni discloses a third waste gas tube [see annotated Fig. below] for connecting the waste gas source with the first transfer chamber and/or with the second transfer chamber, wherein the controller is configured to: direct the first portion of waste gas via the second waste gas tube to the regenerative thermal oxidizer; and direct at least a second portion of waste gas via the third waste gas tube through the first bed and/or through the second bed to the reaction chamber, such that the second portion of the waste gas is preheated by the first bed and/or by the second bed [column 3 line 51 to column 4 line 10].
PNG
media_image3.png
359
564
media_image3.png
Greyscale
With respect to claim 10 Colagiovanni discloses that the controller is configured to direct the oxygen- containing gas via the oxygen-containing gas tube through the first bed and/or through the second bed to the reaction chamber, such that the oxygen-containing gas is preheated by the first bed and/or by the second bed [column 3 line 51 to column 4 line 10].
Claim(s) 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Colagiovanni (US 5,297,954).
With respect to claim 16 Colagiovanni discloses A method of operating a regenerative thermal oxidizer, the method comprising the steps of: directing at least a first portion of waste gas to a reaction chamber [reference character 32] of the regenerative thermal oxidizer, such that the first portion of waste gas enters the regenerative thermal oxidizer downstream of at least a portion of a first bed of the regenerative thermal oxidizer and upstream of an inlet of the reaction chamber [see annotated Fig. presented in the response to arguments], wherein the waste gas includes at least one oxidizable compound [air]; and directing oxygen-containing gas through the first bed of a first transfer chamber of the regenerative thermal oxidizer to the reaction chamber of the regenerative thermal oxidizer, such that the oxygen-containing gas is preheated by the first bed [column 3 line 51 to column 4 line 10].
With respect to claim 17 Colagiovanni discloses directing at least a second portion of waste gas through the first bed, such that the second portion of the waste gas is preheated by the first bed [see rejection for claim 3].
With respect to claim 18 Colagiovanni discloses directing the first portion of waste gas to the reaction chamber of the regenerative thermal oxidizer, such that the first portion of waste gas enters the regenerative thermal oxidizer downstream of at least a portion of the first bed; directing the oxygen-containing gas through the first bed to the reaction chamber of the regenerative thermal oxidizer; and directing the second portion of waste gas through the first bed of the regenerative thermal oxidizer; and during a second cycle, the steps of: directing the first portion of waste gas to the reaction chamber of the regenerative thermal oxidizer, such that the first portion of waste gas enters the regenerative thermal oxidizer downstream of at least a portion of a second bed of the regenerative thermal oxidizer; directing the oxygen-containing gas through the second bed to the reaction chamber of the regenerative thermal oxidizer, such that the oxygen-containing gas is preheated by the second bed; and directing the second portion of waste gas through the second bed of the regenerative thermal oxidizer, such that the second portion of waste gas is preheated by the second bed [column 3 line 51 to column 4 line 10].
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.
Claim(s) 7-8, and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Colagiovanni (US 5,297,954).
With respect to claim 7 Colagiovanni discloses directing the oxygen-containing gas via the oxygen-containing gas tube through the first bed and/or through the second bed to the reaction chamber [via the inlets connected through 34, 36, and 38], such that the oxygen-containing gas is preheated by the first bed and/or by the second bed [column 3 line 51 through column 4 line 10].
Colagiovanni does not disclose that the direction of the oxygen containing gas is controlled by the controller, however, Colagiovanni does disclose that valves 34, 36, and 38 are controlled [column 3 line 51 through column 4 line 10].
However, since integrating the various controllers taught by Colagiovanni [reference characters 56, 50, 20, 22, 60, and the aspects of valve control discussed in column 3 line 51 through column 4 line 10] into a single controller would involve only routine skill in the art, therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify the system taught by Colagiovanni by integrating all of the control functions into a single controller, since “ ‘…the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice’ ” [MPEP §2144.04] without producing any new and unexpected results In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
With respect to claim 8 Colagiovanni discloses that the system further comprises a bypass tube [one of the tubes connected from the regenerative thermal oxidizer and the heat exchanger through valves 40, 42, and 44] for connecting a heat exchanger with the regenerative thermal oxidizer.
Colagiovanni does not disclose that the controller is configured to direct gas from the regenerative thermal oxidizer to the heat exchanger such that the gas is cooled by the heat exchanger, however, Colagiovanni does disclose that valves 40, 42, and 44 are controlled [column 3 line 51 through column 4 line 10].
However, since integrating the various controllers taught by Colagiovanni [reference characters 56, 50, 20, 22, 60, and the aspects of valve control discussed in column 3 line 51 through column 4 line 10] into a single controller would involve only routine skill in the art, therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify the system taught by Colagiovanni by integrating all of the control functions into a single controller, since “ ‘…the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice’ ” [MPEP §2144.04] without producing any new and unexpected results In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
With respect to claim 11 Colagiovanni discloses direct the first portion of waste gas via the second waste gas tube to the regenerative thermal oxidizer, such that the first portion of waste gas enters the regenerative thermal oxidizer downstream of at least a portion of the first bed; and direct the second portion of waste gas via the third waste gas tube through the first bed to the reaction chamber, such that the second portion of waste gas is preheated by the first bed; and wherein, during a second cycle [column 3 line 51 through column 4 line 10]. Colagiovanni further discloses directing the first portion of waste gas via the second waste gas tube to the regenerative thermal oxidizer, such that the first portion of waste gas enters the regenerative thermal oxidizer downstream of at least a portion of the second bed; and direct the second portion of waste gas via the third waste gas tube through the second bed to the reaction chamber, such that the second portion of waste gas is preheated by the second bed [column 3 line 51 through column 4 line 10].
Colagiovanni does not disclose that the controller controls directing the gas, however, Colagiovanni does disclose that valves 40, 42, and 44 are controlled [column 3 line 51 through column 4 line 10].
However, since integrating the various controllers taught by Colagiovanni [reference characters 56, 50, 20, 22, 60, and the aspects of valve control discussed in column 3 line 51 through column 4 line 10] into a single controller would involve only routine skill in the art, therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify the system taught by Colagiovanni by integrating all of the control functions into a single controller, since “ ‘…the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice’ ” [MPEP §2144.04] without producing any new and unexpected results In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
With respect to claim 12 Colagiovanni discloses directing flue gas, produced by oxidation of the oxidizable compound of the waste gas in the reaction chamber, from the reaction chamber through the second bed, such that the flue gas is cooled by the second bed; and wherein, during the second cycle, the controller is configured to: direct the flue gas from the reaction chamber through the first bed, such that the flue gas is cooled by the first bed [column 3 line 51 through column 4 line 10].
Colagiovanni does not disclose that the controller controls directing the gas, however, Colagiovanni does disclose that valves 40, 42, and 44 are controlled [column 3 line 51 through column 4 line 10].
However, since integrating the various controllers taught by Colagiovanni [reference characters 56, 50, 20, 22, 60, and the aspects of valve control discussed in column 3 line 51 through column 4 line 10] into a single controller would involve only routine skill in the art, therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify the system taught by Colagiovanni by integrating all of the control functions into a single controller, since “ ‘…the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice’ ” [MPEP §2144.04] without producing any new and unexpected results In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
With respect to claim 13 Colagiovanni discloses that the system further comprises a bypass tube [one of the tubes connected from the regenerative thermal oxidizer and the heat exchanger through valves 40, 42, and 44] for connecting a heat exchanger with the regenerative thermal oxidizer.
Colagiovanni does not disclose that the controller is configured to direct gas from the regenerative thermal oxidizer to the heat exchanger such that the gas is cooled by the heat exchanger, however, Colagiovanni does disclose that valves 40, 42, and 44 are controlled [column 3 line 51 through column 4 line 10].
However, since integrating the various controllers taught by Colagiovanni [reference characters 56, 50, 20, 22, 60, and the aspects of valve control discussed in column 3 line 51 through column 4 line 10] into a single controller would involve only routine skill in the art, therefore, it would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify the system taught by Colagiovanni by integrating all of the control functions into a single controller, since “ ‘…the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice’ ” [MPEP §2144.04] without producing any new and unexpected results In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Colagiovanni (US 5,297,954) in view of Mulleder (US 2016/0339382 A1).
With respect to claim 2 Colagiovanni discloses that the one or more first waste gas inlets are positioned between at least a portion of the first bed and at least a portion of the reaction chamber [see annotated Fig. above].
Colagiovanni does not disclose that the regenerative thermal oxidizer comprises one or more second waste gas inlets through which the first portion of waste gas can be introduced into the regenerative thermal oxidizer, wherein the second waste gas inlets are positioned between at least a portion of the second bed and at least a portion of the reaction chamber.
Mulleder discloses process and system for the purification of waste gas where inlets [reference characters 17-18] placed in between both the first and second beds and the reaction chamber [see Fig. 1].
It would have been obvious to one having ordinary skill in the art at the time of the filing date of the invention to provide a second waste gas inlet between the second bed and the reaction chamber, as taught by Mulleder, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St Regis Paper Co. v. Bemis Co., 193 USPQ 8.
With respect to claim 3 Colagiovanni discloses that at least a second portion of waste gas [see annotated Fig. below] is introducible into the regenerative thermal oxidizer to flow through the first bed to the reaction chamber or to flow through the second bed to the reaction chamber.
PNG
media_image4.png
517
761
media_image4.png
Greyscale
With respect to claim 4 Colagiovanni discloses that the regenerative thermal oxidizer comprises at least a third transfer chamber [the chamber including reference character 30], wherein the third transfer chamber comprises a third bed [reference character 30]; the reaction chamber is in fluid flow communication with the third transfer chamber [see Fig. 1].
Colagiovanni does not disclose that the regenerative thermal oxidizer comprises one or more third waste gas inlets through which the first portion of waste gas can be introduced into the regenerative thermal oxidizer, wherein the third waste gas inlets are positioned between at least a portion of the third bed and at least a portion of the reaction chamber.
Mulleder discloses process and system for the purification of waste gas where inlets [reference characters 17-18] placed in between both the first and second beds and the reaction chamber [see Fig. 1].
It would have been obvious to one having ordinary skill in the art at the time of the filing date of the invention to provide a second waste gas inlet between the third bed and the reaction chamber, as taught by Mulleder, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St Regis Paper Co. v. Bemis Co., 193 USPQ 8.
With respect to claim 5 Colagiovanni discloses at least a second portion of waste gas is introducible into the regenerative thermal oxidizer to flow through the first bed to the reaction chamber, or to flow through the second bed to the reaction chamber, or to flow through the third bed to the reaction chamber [see annotated Fig. above in connection with claim 3].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/177,169 (hereinafter, ‘169) in view of Colagiovanni (US 5,297,954).
Claim 1 of ‘169 discloses all of the limitations of claim 1 of the subject application except for one or more first waste gas inlets through which at least a first portion of waste gas can be introduced into the regenerative thermal oxidizer, wherein the first waste gas inlets are positioned between at least a portion of the first bed and at least a portion of the reaction chamber or positioned between at least a portion of the second bed and at least a portion of the reaction chamber.
Colagiovanni discloses a regenerative thermal oxidizer having and one or more first waste gas inlets [see annotated Fig. above in connection with claim 1 and column 3 lines 54-50] through which at least a first portion of waste gas can be introduced into the regenerative thermal oxidizer, wherein the first waste gas inlets are positioned upstream of the reaction chamber [see annotated Fig. presented in the response to arguments].
It would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify the regenerative thermal oxidizer taught by ‘169 by providing one or more first waste gas inlets through which at least a first portion of waste gas can be introduced into the regenerative thermal oxidizer, wherein the first waste gas inlets are positioned between at least a portion of the first bed and at least a portion of the reaction chamber or positioned between at least a portion of the second bed and at least a portion of the reaction chamber, as taught by Colagiovanni, because “…introducing a portion of the VOCs directly into a combustion chamber without regenerative preheating…[lowers the] thermal efficiency of the regenerative thermal oxidizer allow[ing] the exhaust from the regenerative thermal oxidizer to carry more thermal energy. The thermal energy from the exhaust is then transferred to a heat exchanger to heat gasses flowing into the adsorption device” [see Abstract of Calogiovanni].
This is a provisional nonstatutory double patenting rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 VIVEK K SHIRSAT whose telephone number is (571)272-3722. The examiner can normally be reached M-F 9:00AM-5:20AM.
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, Steven B McAllister can be reached at 571-272-6785. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VIVEK K SHIRSAT/Primary Examiner, Art Unit 3762