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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-14 in the reply filed on 6/11/2026 is acknowledged.
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 4-6, 10-12, and 14 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.
In claims 4 and 10 in line 1, the phrase “the membrane” lacks antecedent basis.
In claims 6 and 12, the phrases “the inside” and “the outside” lack antecedent basis
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) 1-4, 7-10, and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 07-275896.
Regarding claim 1, JP ‘896 teaches an ammonia recovery process and apparatus (Title) using electrodialysis with two chambers (Fig. 2), including a bi-polar membrane and an anion exchange membrane (Paragraph [0011]; Fig. 3). The treated solution may be an ammonium salt solution (Paragraph [0006]). The process recovers ammonia water (Figure 1) and acid (Paragraph [0006]).
Regarding claim 2, and 8, the process of JP ‘896 contacts an ammonia containing solution with an acid (Figure 1, Items a and b) before the electrodialysis.
Regarding claims 3-4, and 9-10, the mixture of the ammonia containing solution and the acid may be passed to a hollow fiber membrane filter (Paragraph [0006]-[0007], Figure 1, 3), which would be part of the “contacting” under the broadest reasonable interpretation of the claims.
Regarding claim 7, and 13, the ammonia recovered from the electrodialysis may be distilled (Paragraph [0006], [0013]), and Fig. 1, item 6). The residue may be returned to the ammonia containing solution (Fig. 1, Item w).
Regarding claim 14, NaOH may be added to the stream before distillation (Paragraph [0013], Fig. 1, Item j).
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.
Claim(s) 5 and 11, is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 07-275896 as applied to claim 4 and 10 above, and further in view of JP 2016-190220.
Regarding claims 5, and 11, JP ‘896 does not expressly state that the average pore diameter of the porous hollow fiber membrane is 0.02 µm to 0.5 µm, the pore size distribution as the ratio of the maximum pore diameter with respect to the average pore diameter is 1.2 to 2.5, and the porosity of the porous hollow fiber membrane is 60% to 90%.
JP ‘220 teaches a porous hollow fiber membrane having an average pore diameter of 0.2 microns or more, which overlaps the range of 0.2 to 0.5 microns (Paragraph [0017]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). JP ‘220 also teaches that the porosity may be between 60 and 90 percent (Paragraph [0019]).
JP ‘220 does not expressly state the pore size distribution as the ratio of the maximum pore diameter with respect to the average pore diameter is 1.2 to 2.5. However, “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112.
At the time of invention, it would have been obvious to the person having ordinary skill in the art to form the porous membrane of JP ‘896 have the characteristic of the porous hollow fiber membrane is 0.02 µm to 0.5 µm, the pore size distribution as the ratio of the maximum pore diameter with respect to the average pore diameter is 1.2 to 2.5, and the porosity of the porous hollow fiber membrane is 60% to 90% in view of JP ‘220. The suggestion or motivation for doing so would have been to provide a suitable membrane with appropriate filtering characteristic, which was required in JP ‘896 but not disclosed.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 07-275896 as applied to claim 4 above, and further in view of Sparrow WO 2019109139.
Regarding claim 6, JP ‘896 teaches the mixture of the ammonia containing solution and the acid may be passed to a hollow fiber membrane filter (Paragraph [0006]-[0007], Figure 1, 3), but does not teach the treatment liquid is flowed inside the contact and the acid is flowed outside the membrane contactor.
Sparrow teaches an ammonia recovery process and apparatus (Title) using flow-electrode capacitive deionization (Fig. 2), including a bi-polar membrane and an anion exchange membrane (Abstract). In Sparrow the ammonia solution and acid are contacted with a membrane contactor, wherein the treatment liquid is flowed inside the contact and the acid is flowed outside the membrane contactor (Fig, 4a).
At the time of invention is would have been obvious to the person having ordinary skill in the art to perform the contacting of JP ’896 wherein the treatment liquid is flowed inside the contact and the acid is flowed outside the membrane contactor in view of Sparrow. The rationale for doing so would have been to the provide a use of a known technique to improve similar methods in the same way. See MPEP 2143.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 07-275896 in view of JP 2016-190220 as applied to claim 11 above, and further in view of Sparrow WO 2019109139.
Regarding claim 12, JP ‘896 teaches the mixture of the ammonia containing solution and the acid may be passed to a hollow fiber membrane filter (Paragraph [0006]-[0007], Figure 1, 3), but does not teach the treatment liquid is flowed inside the contact and the acid is flowed outside the membrane contactor.
Sparrow teaches an ammonia recovery process and apparatus (Title) using flow-electrode capacitive deionization (Fig. 2), including a bi-polar membrane and an anion exchange membrane (Abstract). In Sparrow the ammonia solution and acid are contacted with a membrane contactor, wherein the treatment liquid is flowed inside the contact and the acid is flowed outside the membrane contactor (Fig, 4a).
At the time of invention is would have been obvious to the person having ordinary skill in the art to perform the contacting of JP ’896 and JP’220 wherein the treatment liquid is flowed inside the contact and the acid is flowed outside the membrane contactor in view of sparrow. The rationale for doing so would have been to the provide a use of a known technique to improve similar methods in the same way. See MPEP 2143.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731
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