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 .
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “equipment for injecting sodium hypochlorite into the reaction unit” in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2, 3 and 6 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 2, it is unclear as to why the limitation “Chemical Formula” appears twice and if they intend to refer to the same feature or to separate features.
As to claim 6, the claim limitation “equipment for injecting” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is silent as to what this specific structure corresponds to. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 19908964 A1 to Gerhardt et al. (Gerhardt).
As to claims 1 and 4, Gerhardt teaches a sodium hydroxide production device (1) comprising a first tank (2) specifically configured to store a salt, and thus capable of performing the functional language of “to store a sodium salt including two or more sodium ions in a molecule”; a first electrolysis unit (15) including a first anode chamber (15a) and a first cathode chamber (15b) separated by a membrane for the diffusion of sodium ions (thus a cation exchange membrane); a water supply unit (Frischwasser/4) specifically configured to supply water to the first tank (2) and the cathode chamber (15b), the first tank (2) connected to a pipe (brine supply line (12)) to supply an aqueous salt solution produced in the first tank (2) to the anode chamber (15a), the fist anode chamber (15a) connected to a pipe (brine return line (16)) to supply material produced in the first anode chamber (15a) to the first tank (2), the tank, brine supply line, anode chamber and brine return line constituting a closed loop during at least some time of operating the system (i.e. when replenishment water is not needed, when the bypass line is not in use and when pH adjustment is not occurring) (Paragraphs 0029-0033; Figure 1; MPEP 2114).
As to claims 2 and 3, Gerhardt teaches the apparatus of claim 1. As discussed above, the first tank of Gerhardt is capable of storing any number of sodium salts including sodium carbonate and sodium sulfate. Apparatus claims must be distinguished from the prior art in terms of structure rather than function. Functional limitations do not serve to further limit apparatus claims beyond imparting the limitation that the apparatus is capable of performing the claimed function (MPEP 2114).
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Gerhardt (under a second interpretation) in view of the NPL “Sodium hydroxide production from sodium carbonate and bicarbonate solutions using membrane electrolysis: A feasibility study” to Simon et al. (Simon).
As to claims 1-5, 7 and 8, Gerhardt teaches a sodium hypochlorite production device comprising a sodium hydroxide production device comprising a tank (2) (the second tank of the claims) specifically configured to store a salt, sodium chloride, an electrolysis unit (15) (the second electrolysis unit of the claims) including an anode chamber (15a) (the second anode chamber of the claims) and a cathode chamber (15b) (the second cathode chamber of the claims) separated by a membrane for the diffusion of sodium ions (thus a cation exchange membrane); a reaction unit (23) configured to react an anodic product, chlorine, produced in the second anode chamber and a cathodic product, sodium hydroxide, produced in the second cathode chamber to obtain sodium hypochlorite, a water supply unit (Frischwasser/4) specifically configured to supply water to the second tank (2) and the second cathode chamber (15b), the apparatus capable of supplying the salt water produced in the second tank to the second anode chamber as saturated slat water (Paragraphs 0029-0033; Figure 1; MPEP 2114).
However, Gerhardt fails to specifically teach an additional electrolysis unit, the first electrolysis unit of the claims. However, Simon also discusses the production of sodium hydroxide electrolytically from sodium chloride and teaches that sodium hydroxide can further be produced electrolytically from another abundant source of sodium, sodium carbonate (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art that additional sodium hydroxide product for the generation of sodium hypochlorite could be achieved by providing an additional electrolysis set up for electrolyzing another abundant source of sodium salt, sodium carbonate, thus operating in parallel.
It would have been obvious to one of ordinary skill in the art to form this additional electrolysis set up in the same manner as the sodium chloride set up, thus rendering obvious an additional electrolysis set up comprising a tank (2) (the first tank of the claims) configured to store the sodium carbonate salt, an electrolysis unit (15) (the first electrolysis unit of the claims) including an anode chamber (15a) (the first anode chamber of the claims) and a cathode chamber (15b) (the first cathode chamber of the claims) separated by a membrane for the diffusion of sodium ions (thus a cation exchange membrane); such that the water supply unit (Frischwasser/4) supplies water to the first tank (2) and the first cathode chamber (15b), the first tank (2) connected to a pipe (brine supply line (12)) to supply an aqueous salt solution produced in the first tank (2) to the first anode chamber (15a), the first anode chamber (15a) connected to a pipe (brine return line (16)) to supply material produced in the first anode chamber (15a) to the first tank (2), the tank, brine supply line, anode chamber and brine return line constituting a closed loop during at least some time of operating the system (i.e. when replenishment water is not needed, when the bypass line is not in use) (Paragraphs 0029-0033; Figure 1; MPEP 2114).
As to claim 6, the combination of Gerhardt and Simon teaches the apparatus of claim 5. Gerhardt does not teach any external sources of sodium hydroxide (Figure 1).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Gerhardt and Simon as applied to claim 5 above, and further in view of US 2021/0130966 A1 to Griffis et al. (Griffis).
As to claim 9, Gerhardt teaches the apparatus of claim 5. However, Gerhardt fails to further teach that the apparatus if configured so as to perform the functional language wherein “at least one of the first and second electrolysis units is automatically controlled according to a pH of sodium hypochlorite obtained in the reaction unit”. However, Griffis also discusses the electrolytic generation of sodium hypochlorite (Paragraph 0010) and teaches that the final product pH can be measured with a sensor for feedback control of, for example, the feed composition, flow rate and applied current/voltage in order to achieve a desired final NaOCl concentration (Paragraph 0079). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the apparatus of the combination with structure to perform the function of measuring the pH of the sodium hypochlorite produced in the reaction unit and controlling the first and second electrolysis units via any of feed composition, flow rate and current/voltage in order to allow for achieving a specific final product concentration as taught by Griffis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 5,230,779 to Martin – Specifically discussing sodium sulfate salt utilized for sodium hydroxide production.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794