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 amendment to claim 1 is clearly sufficient to overcome the anticipation rejection set forth in the prior Office action based upon Shinoyama et al (JP 2000-265289 A).
Applicant’s amendments to the claims have eliminated all instances of the term “means” such that the claims are no longer considered to invoke 35 U.S.C. 112(f).
Applicant's arguments filed 9 February 2026 have been fully considered but they are not persuasive. Applicant has argued that the combination of Shinoyama et al with Dukes et al do not teach controlling the migration of hydroxide ions through the separator and generation of chlorine by-products.
In response, the Office notes that the asserted features are the intended result of using the claimed structure. However, the intended use of the apparatus of claim 1 does not impart patentability to the claims. Apparatus claims must be structurally distinguished from the prior art. See MPEP § 2114. The rejection grounds below are clarified with respect to the new claim limitations presented in Applicant’s amendment, in particular with respect to the interpretation of the instant claims and the required structural elements.
The Office also points to MPEP §2145.II. A prima facie case of obviousness is not rebutted by merely recognizing additional advantages present, but not recognized in, the prior art. Here, the instant specification teaches that the control of the concentration gradient of hydroxide ions across the separator was achieved by control of the temperature and the prior art practices control of the temperature. The claimed result of controlling the concentration gradient of hydroxide ions is considered to be inherently achieved by the temperature control taught by Dukes et al.
However, the Office notes that the amendment to claim 1 provide additional details of the raw water treatment unit and salt water treatment unit that were not considered in the finally rejected claims. Further search was conducted in view of the new features resulting in the new grounds of rejection presented below.
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.
Claims 1, 3-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shinoyama et al (JP 2000-265289) in view of Scoville (US 4,329,215 A) and Dukes et al (WO 2018/165127, an English language equivalent of JP 2020-510136 cited by Applicant).
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Shinoyama et al teach (see fig. 1, reproduced herein, paragraph [0010]) a sodium hypochlorite producing system. The system included a salt tank (9 & 11) configured to store solid-phase salt, an electrolysis unit (electrolytic cell (2)), which included an anode chamber (5) and a cathode chamber (3) which are partitioned by a separator (1). The anode chamber accepts saturated salt water (produced in 11) and the cathode chamber accepts water (15). The system of Shinoyama et al included a hypochlorite reaction unit (20) which reacted the entire amount of the anodic product with the entire amount of the cathodic product to form sodium hypochlorite and hydrogen gas. The reaction unit (20) of Shinoyama et al was both downstream of, and formed as an integral unit with, the electrolysis unit. Lastly, Shinoyama et al teach (see paragraph [0008]) that the separator (1) was a cation exchange membrane which prevented the movement of hydroxide anions from the cathode chamber to the anode chamber.
Thus, Shinoyama et al fail to teach (1) a raw water treatment unit and a salt water treatment unit and (2) a “material balance control unit”.
Regarding (1), Scoville teaches (see abstract, figs. 1 and 2, col. 2, line 40 to col. 4, line 18) in the field of electrolytic production of sodium hypochlorite, providing water to the divided electrolysis cell via which has first been subjected to a softening treatment in a raw water treatment unit (10) for removal of calcium and magnesium cations. The system provided a portion of the softened water to the cathode chamber (44) via a line (34) and another portion of the softened water to a salt tank (11) for formation of a saturated brine which is provided to the anode chamber (43) via a line (31). The system further included a salt water treatment unit (filter 33) for treatment of the salt water.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated the water softening unit, salt tank, and salt treatment unit taught by Scoville in the apparatus of Shinoyama et al to permit the production of sodium hypochlorite even from a source of water that possessed high hardness (calcium and magnesium content).
Regarding (2), in the same field of endeavor of the electrolytic production of sodium hypochlorite solutions, Dukes et al teach (see abstract, p. 9, lines 11-32, p. 13, line 29 to p. 14, line 4, p. 19, line 25 to p. 20, line 7, and p. 28, line 32 to p. 29, line 26) that the temperature inside the electrolytic cell, may be measured and utilized by a controller as result effective variables for maximizing the production of the hypochlorite product. The suitable temperature range was taught as being -2°C to 45°C. The controller, when controlling the temperature based upon a measured temperature, may control a heat exchanger in response to the measured temperature.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added the temperature sensor and the heat exchanger combined with the controller as taught by Dukes et al to the system of Shinoyama et al because Dukes et al teach that the temperature was a result effective variables effecting the production rate and/or concentration of the hypochlorite product. Further, since the suitable temperature range taught by Dukes et al included a maximum temperature (45°C), Dukes et al clearly suggest that the controller be configured to provide cooling when the measured temperature exceeded a threshold value.
With respect to the claim limitation “a material balance control unit”, the name of the unit relates to the intended use of the claimed structure and fails to impart additional structural limitations.
With respect to the “material balance control unit” being “configured to prevent the sodium hydroxide or hydroxide ions (OH-) of the cathode product, or a combination thereof from moving to the anode chamber through the separator to control a concentration gradient of hydroxide ions (OH-) between the anode chamber and the cathode chamber of the electrolysis unit”, such limitation does not appear to impart any structure to the claimed system and appears to be entirely related to the intended use of the structure. As noted above, Dukes et al teach the structural elements of the material balance control unit, the temperature sensor, heat exchanger, and controller that produced a signal to the heat exchanger to lower the temperature if the temperature measured by the temperature sensor exceeded a threshold value.
Regarding claims 3-6, as noted with respect to claim 1 above, the separator of Shinoyama et al was a cation exchange membrane that had permeability to cations and which included cation-exchange functional groups throughout the membrane, including on the surface as required by claim 5.
Regarding claim 10, the system of Shinoyama et al also provided a gas-liquid separation unit (23) for separating and discharging hydrogen gas from the mixture as claimed.
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 HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner can normally be reached M-F 9:30am -6:00pm.
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/HARRY D WILKINS III/Primary Examiner, Art Unit 1794