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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on August 10, 2022. It is noted, however, that applicant has not filed a certified copy of the JP-2022-127698 application as required by 37 CFR 1.55.
Election/Restrictions
Newly submitted claims 8-11 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 1 and Claim 8 are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case
The process as claimed can be practiced by another and materially different apparatus. For example, one that does not include “a regeneration gas flow rate control unit”.
The apparatus as claimed can be used to practice another and materially different process. For example, one does not include the step of “controlling a degree of opening of a second waste gas control valve in the second waste gas pipe on the basis of the lower of the compared values, thereby adjusting the second waste gas flow rate”
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-11 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Such claim limitation(s) is/are:
a pre-purification unit in claim 1. For purposes of examination: this term is interpreted as comprising a first adsorption column and a second adsorption column arranged in parallel with the first adsorption column (See Applicant Specification [0029]) and its equivalents.
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the term “unit” is a generic placeholder,
(B) the generic placeholder is modified by functional language (e.g. “pre-purification”), and
(C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
a first flow rate control unit in claim 1. For purposes of examination: this term is interpreted as
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the term “unit” is a generic placeholder,
(B) the generic placeholder is modified by functional language (e.g. “first flow rate control”), and
(C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
a) no corresponding structure is described in the specification as a corresponding structure for a first flow rate control unit, while circle F7 connecting to pipe L22 is shown in the drawings and disclosed in Application specification [0007] as being a first flow rate control unit, no specific structure is described as to what a first flow rate control unit actually entails, see 112b rejection below.
a regeneration gas flow rate control unit in claim 1. For purposes of examination: this term is interpreted as
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the term “unit” is a generic placeholder,
(B) the generic placeholder is modified by functional language (e.g. “a regeneration gas flow rate control”), and
(C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
a) no corresponding structure is described in the specification as a corresponding structure for a regeneration gas flow rate control unit, while circle F8 connecting to L20 is shown in the drawings and disclosed in Application specification [0045] as being a regeneration gas flow rate control unit, no specific structure is described as to what a regeneration gas flow rate control unit actually entails, see 112b rejection below.
“a control unit” in claim 1. For purposes of examination: this term is interpreted as
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the term “unit” is a generic placeholder,
(B) the generic placeholder is modified by functional language (e.g. “control”), and
(C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
a) no corresponding structure is described in the specification as a corresponding structure for a first flow rate control unit, while box 80 connecting to first flow rate control unit F7, regeneration gas flow rate control unit F8, valve V7 and valve V71 is shown in the drawings and disclosed in Applicant’s Specification Publication [0047-0049] as being a control unit, no specific structure is described as to what a control unit actually entails, see 112b rejection below.
means for sending air to be purified in the pre-purification unit in claim 1. For purposes of examination: this term is interpreted as a pipe for sending air to be purified in the pre-purification unit (See Applicant Fig. 1) and its equivalents
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the claim limitation uses the term “means” or “step”
(B) the term “means” is modified by functional language linked by the transition word “for” (e.g., “means for”)
(C) the term “means” is not modified by sufficient structures, material or acts for performing the claimed function.
means for sending purified air from the pre-purification unit to the main heat exchanger to be cooled in claim 1. For purposes of examination: this term is interpreted as a pipe for sending purified air from the pre-purification unit to the main heat exchanger to be cooled (See Applicant Specification Publication Fig. 1, [0027], and [0032]) and its equivalents.
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the claim limitation uses the term “means” or “step”
(B) the term “means” is modified by functional language linked by the transition word “for” (e.g., “means for”)
(C) the term “means” is not modified by sufficient structures, material or acts for performing the claimed function.
means for sending cooled air from the main heat exchanger to the rectification column in claim 1. For purpose of examination: For purposes of examination system: this term is interpreted as a pipe for sending cooled air from the main heat exchanger to the rectification column (See Applicant Specification Publication Fig. 1, [0027] and [0038]) and its equivalents.
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the claim limitation uses the term “means” or “step”
(B) the term “means” is modified by functional language linked by the transition word “for” (e.g., “means for”)
(C) the term “means” is not modified by sufficient structures, material or acts for performing the claimed function.
means for delivering a first waste gas from the rectification column to the main heat exchanger to be warmed in claim 1. For purpose of examination: this term is interpreted as a pipe for delivering a first waste gas from the rectification column to the main heat exchanger to be warmed (See Applicant Specification Publication Fig. 1 and [0017]) and its equivalents.
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the claim limitation uses the term “means” or “step”
(B) the term “means” is modified by functional language linked by the transition word “for” (e.g., “means for”)
(C) the term “means” is not modified by sufficient structures, material or acts for performing the claimed function.
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 1-2 and 5-7 is 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 re Claim 1, as stated above the limitation “a first flow rate control unit”, “a regeneration gas flow control unit”, and “a control unit” invokes 35 U.S.C. 112(f). 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. No corresponding structure is described in the specification as corresponding structure for the “a first flow rate control unit”, “a regeneration gas flow control unit”, and “a control unit”. For purposes of examination: in order to expedite prosecution, the terms are defined as:
“a first flow rate control unit” is a structure that measures a gas flow rate in the first waste gas pipe (See Applicant Specification publication [0007]) and its equivalents;
“a regeneration gas flow control unit” is a structure that measures the gas flow rate in a regeneration gas pipe (See Applicant Specification publication [0007]) and its equivalents; and
“a control unit” is a structure the controls the first flow rate control unit, regeneration gas flow rate control unit, a first waste control valve and a second waste gas control valve and its equivalents.
Claims 2 and 5-7 are rejected at least by virtue of their dependency.
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 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.
Claims 1, 2, and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mikawa (US 3912476 A) in view of Kong (US 200170276428 A1) and Lady (US 3210950 A).
In re Claim 1, Mikawa discloses an air separation unit (Fig. 1) comprising:
a rectification column (4/5);
a main heat exchanger (2);
means for sending air (21) to the main heat exchanger (2) to be cooled;
means for sending cooled air (22) from the main heat exchanger (2) to the rectification column (4/5);
means for delivering a first waste gas (27) from the rectification column (4/5) to the main heat exchanger (2) to be warmed (9; See Col 2: 42-44: cold is transferred from 9, i.e., the first waste gas stream is warmed);
means for delivering a second waste gas (28) from the rectification column (4/5) to the main heat exchanger (2) to be warmed (8; See Col 2: 42-44: cold is transferred from 8, i.e., the second waste gas stream is warmed);
a first waste gas control valve (45) which is provided in the first waste gas pipe (29) downstream of a main heat exchanger (2), a degree of valve opening thereof being adjustable (See Col 3:51-55);
a first waste gas flow rate control unit (16) configured to measure a gas flow rate (44: flowmeter) in the first waste gas pipe (29) downstream of the main heat exchanger (2), and to adjust the degree of opening of the first waste gas control valve (45) so that a measured value which has been measured reaches a preset first waste gas flow rate set value (Col 10: 40-45: the opening degree of a valve as a target value, i.e., preset value, so as to bring the opening degree of respective valve in coincidence with the value obtained by calculation; See also Col 3:51-55);
a second waste gas control valve (control valve for nitrogen product gas stream; See Col 3:51-55: flow rate of product gases is controlled by the opening degree of a valve provided in a passage, which degree is determined by comparison of a target value of product gases with an actual measurement thereof) which is provided in a second waste gas pipe (28) downstream of the main heat exchanger (2| See Fig. 1 nitrogen stream 28 leaving heat exchanger 2), a degree of valve opening thereof being adjustable (See Col 3:51-55);
a control unit (20) configured to control the degree of opening of the second waste gas control valve (valve of nitrogen stream 28) on the basis of the lower of the values, and then further configured to adjust the second waste gas flow rate (See Col 3:51-55).
However, Mikawa does not explicitly teach, delivering a regeneration gas for a regeneration process in a pre-purification unit, the pre-purification unit; means for sending air to be purified in the pre-purification unit; means for sending purified air from the pre-purification unit to the main heat exchanger to be cooled; a first waste gas pipe configured to send warmed at least part of the first waste gas from the main heat exchanger to a mixing point; a second waste gas pipe configured to send at least part of the warmed second waste gas from the main heat exchanger to the mixing point; a regeneration gas pipe configured to send a mixture of the at least part of the first waste gas and the at least part of the second waste gas as regeneration gas to the pre-purification unit.
On the other hand, Kong (Fig. 4) teaches delivering a regeneration gas (14) for a regeneration process ([0014]) in a pre-purification unit (10);
the pre-purification unit (10);
means for sending air (2) to be purified in the pre-purification unit (10);
means for sending purified air (12) from the pre-purification unit (10) to the main heat exchanger (heat exchanger of 20) to be cooled;
a first waste gas pipe configured to send warmed at least part of the first waste gas (pipe of 26 carrying warmed oxygen gas) from the main heat exchanger (heat exchanger of 20) to a mixing point (See Fig. 4 connection point of 22/26);
a second waste gas pipe configured to send at least part of the warmed second waste gas (pipe of 26 carrying warmed nitrogen gas) from the main heat exchanger (heat exchanger of 20) to the mixing point (See Fig. 4 connection point of 22/26);
a regeneration gas pipe (pipe of 14) configured to send a mixture of the at least part of the first waste gas and the at least part of the second waste gas (See Fig. 4 and [0077]: nitrogen 22 (e.g., product and/or waste nitrogen) and oxygen 26 coming from the cold box 20 in respective amounts that simulate the composition of air. Valves 21 and 23 can be configured to control the flow rates of the two gases appropriately) as regeneration gas (14) to the pre-purification unit (10);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Mikawa and to have modified them by delivering a regeneration gas for a regeneration process in a pre-purification unit, the pre-purification unit; means for sending air to be purified in the pre-purification unit; means for sending purified air from the pre-purification unit to the main heat exchanger of Mikawa to be cooled as taught by Kong; a first waste gas pipe configured to send warmed at least part of the first waste gas of Mikawa from the main heat exchanger of Mikawa to a mixing point as taught by Kong; a second waste gas pipe configured to send at least part of the warmed second waste gas of Mikawa from the main heat exchanger of Mikawa to the mixing point as taught by Kong; a regeneration gas pipe configured to send a mixture of the at least part of the first waste gas and the at least part of the second waste gas as regeneration gas to the pre-purification unit as taught by Kong, in order to allow pressurized gas to have the same composition as that of air without using any of the purified air coming out of the adsorbers of the purification unit (See Kong [0077]), without yielding unpredictable results.
However, Mikawa as modified does not explicitly teach a regeneration gas flow rate control unit configured to measure the gas flow rate in the regeneration gas pipe for circulating the regeneration gas, and to output a first output value based on a measured value which has been measured and a preset regeneration gas flow rate set value.
On the other hand, Lady teaches a regeneration gas flow rate control unit (89) configured
to measure the gas flow rate (Col 2: 72-75: specifically, automatic monitoring and control of the oxygen content ) in the regeneration gas pipe (75) for circulating the regeneration gas (83), and
to output a first output value (will vary depending upon product requirements ) based on a measured value which has been measured and a preset regeneration gas flow rate set value (Col 5:1-12: determines how much nitrogen or oxygen is in regeneration gas and flow rate based on predetermined and measured value by analyzer).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Mikawa as modified and to have modified them by having a regeneration gas flow rate control unit as taught by Lady configured to measure the gas flow rate in the regeneration gas pipe for circulating the regeneration gas of Mikawa as modified, and to output a first output value based on a measured value which has been measured and a preset regeneration gas flow rate set value as taught by Lady, in order to increase or decrease the amount of oxygen product and prevent excessive amounts of a particular waste gas (See Lady Col 6:39-49), without yielding unpredictable results.
As a result of the modification, Mikawa as modified supra teaches a control unit (Mikawa 20) configured to use, as a target set value of the flow rate of a second waste gas, a value obtained by subtracting the first waste gas flow rate set value of the first flow rate measuring unit from the flow rate set value of the regeneration gas flow rate1, the control unit (Mikawa 20) further configured to compare the first output value with a second output value (Mikawa Col 5:50-56: Actual measurements or other values measured in respective minor control systems are transmitted to the major control device, while target values, etc. for respective control systems which are obtained through the arithmetic operation performed in the major control device; Col 3:50-58: product oxygen is regulated to control the output of product gases) based on a value obtained by subtracting the measured value of the first flow rate control unit (Mikawa 16) from the measured value of the regeneration gas flow rate control unit (Lady 89).
In re Claim 2, Mikawa as modified teaches the flow rate is adjusted (Kong Mikawa [0077] corresponding to Mikawa Col 9:40-43 where the opening degree of valve 45 is changer to adjust the flowrate of oxygen) so that the first waste gas (Mikawa 28) is primarily utilized (Mikawa Col 8:50-55) as the regeneration gas (Kong 14).
However, Mikawa does not explicitly teach, wherein a pressure of the first waste gas is higher than a pressure of the second waste gas.
On the other hand, Lady teaches the first waste gas (43) can be pumped to a relatively higher pressure (Col 2: 63-64) than a pressure of the second waste gas.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Mikawa as modified and to have modified them by having a pressure of the first waste gas is higher than a pressure of the second waste gas, in order to increase oxygen withdrawn from and reduce the amount of nitrogen withdrawn (See Lady Col 5:1-10), without yielding unpredictable results.
In re Claim 5, the recitation of "using the first waste gas flow rate control unit, a gas flow rate in the first waste gas pipe downstream of the main heat exchanger, and adjusting the degree of opening of the first waste gas control valve so that a measured value which has been measured reaches a preset first waste gas flow rate set value; measuring, using the regeneration gas flow rate control unit, the gas flow rate in the regeneration gas pipe for circulating the regeneration gas, and outputting a first output value based on a measured value which has been measured and a preset regeneration gas flow rate set value; and using, as a target set value of the flow rate of a second waste gas, a value obtained by subtracting the first waste gas flow rate set value of the first flow rate measuring unit from the flow rate set value of the regeneration gas flow rate; comparing the first output value with a second output value based on a value obtained by subtracting the measured value of the first flow rate control unit from the measured value of the regeneration gas flow rate control unit; controlling the degree of opening of the second waste gas control valve on the basis of the lower of the values; and adjusting the second waste gas flow rate." recited in the claim has been considered a recitation of intended use of an air separation unit. The prior art structure as modified supra is capable of performing as intended. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitation. (MPEP 2114)
In re Claim 6, Mikawa as modified teaches the flow rate is adjusted (Kong [0077] corresponding to Mikawa Col 9:40-43 where the opening degree of valve 45 is changer to adjust the flowrate of oxygen) so that the first waste gas (Mikawa 28) is primarily utilized (Mikawa Col 8:50-55) as the regeneration gas (Kong 14).
However, Mikawa as modified does not explicitly teach, wherein a pressure of the first waste gas is higher than a pressure of the second waste gas.
On the other hand, Lady teaches the first waste gas (43) can be pumped to a relatively higher pressure (Col 2: 63-64) than a pressure of the second waste gas.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Mikawa as modified and to have modified them by having a pressure of the first waste gas is higher than a pressure of the second waste gas, in order to increase oxygen withdrawn from and reduce the amount of nitrogen withdrawn (See Lady Col 5:1-10), without yielding unpredictable results.
In re Claim 7, Mikawa as modified teaches wherein the first waste gas (Mikawa 27) is oxygen-rich gas (Mikawa Col 5:39-41: oxygen stream from 5), and the second waste gas (Mikawa 28) is nitrogen waste gas (Mikawa Col 5:37-39: nitrogen stream from 5).
Response to Arguments
The Remarks of September 5, 2025 have been fully considered but are not persuasive for the reasons below.
Applicant argues
On Page 13¶3-Page 15¶2 of the Remarks, that the examiner has not shown that claims 1 is obvious over Mikawa in view of Kong and Lady because there is allegedly no basis in the prior art for a specific two-value comparison and selection for managing waste gas flows for regeneration.
The Examiner respectfully disagrees with Applicant’s characterization of the combination of Mikawa in view of Kong and Lady.
First, it should be noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Furthermore, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Contrary to Applicant' s assertion, Mikawa teaches a comparison between a measured value and a target value of gases2, Kong teaches that wastes gases can be used as regeneration gases and discloses a regeneration gas pipe3, and Lady teaches the measurement of the recirculating regeneration gas based on a measured value has been measured and a preset gas flow rate. The combination of these prior art (Mikawa/Kong/Lady) teach the two-value comparison and selection for managing waste gas flows for regeneration.
In light of the above, one of ordinary skill in the art would recognize that the findings of fact outlined in the rationale and motivation for the 103 rejection based on Mikawa, Kong and Lady satisfy the requirements to establish a prima facie case of obviousness. In essence, the fact that Mikawa’s goal to provide a control system that provides a target value from calculations of product gases (i.e. a system in which you can easily add or remove modules; see at least Abstract and Col 5:50-56) provides evidence that the regeneration gas cycle of Kong is indeed compatible with the teachings of Lady.
Moreover, the test for obviousness it not whether the prior art references are within the same field of endeavor as each other, but rather, whether the prior art references are within the same field of endeavor of the claimed invention (see MPEP § 2141.01(a)). Since Mikawa (classified in CPC class F25J3), Kong (classified in CPC class F25J3) and Lady (classified in CPC class F25J3) are within the same field of endeavor as the claimed invention (which contains classifications in F25J3, as evidenced by the cover page of the printed publication: US20240053098A1), the prior art is considered analogous art to the claimed invention, which is explicit evidence that the combination would have been considered by one of ordinary skill in the art. Therefore, the rejection of Claim 1 is maintained.
On Page 13¶3-Page 15¶2 of the Remarks, that the examiner has not shown that claims 1 is obvious over Mikawa in view of Kong and Lady because Kong does not teach or suggest the claimed "regeneration gas pipe configured to send a mixture of the at least part of the first waste gas and the at least part of the second waste gas as regeneration gas to the pre-purification unit," as the gas mixture in Kong is for repressurization, which is distinct from dynamically balancing two internal waste gas streams for regeneration. Applicant appears to suggest that one of ordinary skill in the art would not recognize from the teaching of Kong the regeneration (or cleaning) step, which typically uses waste nitrogen because it is distinguished from repressurization. The is not persuasive.
The Examiner respectfully disagrees with Applicant’s characterization of Kong. Contrary to Applicant' s assertion that regeneration is distinguished from regeneration, Kong explicitly teaches that regeneration may include depressurization, cleaning, and repressurization4. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Therefore, the rejection of Claim 1 is maintained.
On Page 15¶3 and Page 16¶4 of the Remarks, that the examiner has not shown that claims 2 and 6 are obvious over Mikawa in view of Kong and Lady because Lady does not teach the claimed inherent pressure difference between two different waste gases (e.g., oxygen-rich from intermediate pressure and nitrogen from low pressure) as they are supplied for regeneration, nor does it teach this in combination with Applicant's control logic of Claim 1.
Contrary to Applicant' s assertion since the Mikawa/Kong/Lady teach all the limitations of Claim 1 the arguments with respect to Claims 2 and 6 are moot and additional arguments are not presented in regards to Claims 2 and 6.
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 IBRAHIM M ADENIJI whose telephone number is (571)272-5939. The examiner can normally be reached 8:00-5:00 PM.
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/IBRAHIM A. MICHAEL ADENIJI/Examiner, Art Unit 3763
/JIANYING C ATKISSON/Supervisory Patent Examiner, Art Unit 3763
1 The recitation of "use, as a target set value of the flow rate of a second waste gas, a value obtained by subtracting the first waste gas flow rate set value of the first flow rate measuring unit from the flow rate set value of the regeneration gas flow rate," recited in the claim has been considered a recitation of intended use. The prior art structure above is capable of performing as intended. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitation. (MPEP 2114).
2 See Mikawa Col 3:50-55
3 See Kong Fig. 4 and [0077]
4 See Kong [0014]
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