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 of Group I, claims 1-13, in the reply filed on January 13, 2026 is acknowledged.
Claims 14-20 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on January 13, 2026.
Claim Interpretation
Claim 1 recites “a water passage, the water passage being a pathway for delivering an aqueous solution” and “the inner tubing being a pathway for remediation gas”, “configured to selectively permit remediation gas flow into an aqueous solution stream comprising at least a portion of the aqueous solution flowing within the outer tubing to thereby facilitate dissolution of the remediation gas within the aqueous solution” and “configured to deliver the solution of dissolved remediation gas in the aqueous solution stream”.
Regarding the limitations aqueous solution, remediation gas, aqueous solution stream, the solution of dissolved remediation gas in the aqueous solution stream, as recited in claim 1, are directed towards materials acted upon by the presently claimed system. It is noted that neither the manner of operating a disclosed system, device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a “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” if the prior art apparatus teaches all the structural limitations of the claim.
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 1-13 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.
Claim 1 recites “a plurality of chambers and a plurality of diffusion membranes disposed proximate or within the chambers, wherein the diffusion membranes are configured to … .”. Claim 1 is deemed indefinite. First, it is unclear if “the diffusion membranes “ of the “plurality of diffusion membranes” is some or all of the membranes. Second, the relationship between each of the diffusion membranes with each of the chambers is unclear. That is, the claimed “a plurality of chambers and a plurality of diffusion membranes disposed proximate or within the chambers” limitation is unclear because it is unclear if the plurality of membranes are proximate/within each or some or all of the chambers or some other configuration.
Claims 2-13 are also rejected by virtue of the claim dependency.
Claim 3 recites “a membrane unit comprises a portion of the outer tubing and the plurality of membrane units are connected in series between adjacent chambers”. Claim 3 is deemed indefinite. First, the claimed “a membrane unit” is being defined in terms of itself “the plurality of membrane units”. Second, there is insufficient antecedent basis for “the plurality of membrane units” in the claim. Third, it is unclear if “a membrane unit” is a new feature or defining an element of the claimed system or is defining the combination of the claimed outer tubing and one, some or all of the claimed plurality of diffusion membranes or some other feature. Fourth, it is unclear if what element(s) are being connected in series, for example a) each of the plurality of membrane units to one another, b) a membrane unit or diffusion membrane and a portion of the outer tubing, c) a portion of the outer tubing to one, some or all of the plurality of membrane units or diffusion membranes or d) some other feature.
For the sake of compact prosecution, claim 3 is understood as a portion of the outer tubing and one membrane of the plurality of diffusion membranes are connected in series to another membrane of the plurality of diffusion membranes.
Claim 5 recites “the diffusion membranes”. Claim 5 is deemed indefinite because it is unclear if it is some or all of the plurality of diffusion membranes.
Claim 11 recites “the formation conduit comprises an unlined portion of the wellbore at a downhole end of the formation conduit”. Claim 11 is deemed indefinite because the formation conduit is being defined in terms of itself.
Claim 12 recites “the unlined portion of the wellbore”. Claim 12 is deemed indefinite. Claim 12 is dependent upon claim 1, which does not recite an unlined portion of the wellbore. Claim 11 recites an unlined portion of the wellbore. Claim 13 is deemed indefinite for similar reasoning. For the sake of compact prosecution, claims 12 and 13 are understood as being dependent upon claim 11.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-4 and 6-11 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN-113277577-B (hereinafter CN 577).
Regarding claim 1, CN 577 discloses system for groundwater remediation in a geological formation (see CN 577 abstract, figure 1, claim 1; page 2, 2nd paragraph; all of page 4 – 1st paragraph of page 5).
Statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
CN 577 discloses a wellbore disposed within the geological formation, the geological formation comprising an aquifer (see CN 577 groundwater/soil and figure 1 shows the formation of a wellbore from ground level into the geological formation containing groundwater; figure 1; page 2 – page 4/3rd paragraph ).
CN 577 discloses a casing disposed within the wellbore (see CN 577 well casing figure 1; page 4 3rd paragraph;
CN 577 discloses an inner tubing centrally disposed within the wellbore and extending downhole a depth within the wellbore, the inner tubing being a pathway for remediation gas (see CN 577 gas injection pipe figure 1; page 4 3rd paragraph – page 5 continuing paragraph; page 10 last paragraph – page 11 continuing paragraph).
CN 577 discloses a water passage, the water passage being a pathway for delivering an aqueous solution (see CN 577 the flow pattern of the ground water/in-situ circulating figure 1 or the chemical injection line figure 1; page 4 3rd paragraph – page 5 continuing paragraph; page 8 paragraph 3rd full paragraph; page 13 1st full paragraph).
CN 577 discloses an outer tubing in fluid communication with and disposed about the inner tubing, the outer tubing comprising a plurality of chambers and a plurality of diffusion membranes disposed proximate or within the chambers, wherein the diffusion membranes are configured to selectively permit remediation gas flow into an aqueous solution stream comprising at least a portion of the aqueous solution flowing within the outer tubing to thereby facilitate dissolution of the remediation gas within the aqueous solution (see CN 577 air flow clapboard with at least two chambers/portions, each having a permeable sieve pore; figures 1-3; page 4 3rd paragraph – page 5 continuing paragraph; page 5 paragraph 3rd paragraph; page 11 last paragraph-page 12 continuing paragraph (CN 577 discloses that the clapboard is comprised of multiple layers, each with a sieve pore (see CN 577 figure 3 and page 4 last paragraph – continuing paragraph of page 5; page 5 3rd paragraph; page 8 3rd paragraph).
In the alternative, if CN 577 does not disclose a “the outer tubing comprising a plurality of chambers and a plurality of diffusion membranes disposed proximate or within the chambers, wherein the diffusion membranes are configured to selectively permit remediation gas flow into an aqueous solution stream comprising at least a portion of the aqueous solution flowing within the outer tubing to thereby facilitate dissolution of the remediation gas within the aqueous solution”, then this feature is nonetheless rendered obvious by CN 577.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system of CN 577 by forming at least two separate and distinct portions along the length of the clap board, each with a sieve pore section, since it has been held that mere duplication of an element of an apparatus involves only routine skill in the art. MPEP 2144.04.VI.B. Like the apparatus at issue in In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). One of ordinary skill in the art would be motivated to modify the clap board of CN 577 because it would assist with controlling the flow of water interacting with the wellbore/casing and/or remediation system. There is no patentable significance of modifying the clapboard of CN 577 to form at least two separate and distinct portions along the length of the clap board, each with a sieve pore section, because it would predictable provides one of ordinary skill in the art with additional control of the flow of fluid and/or bubbling in the system, and does not produce any new and/or unexpected results.
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of CN 577 is substantially identical to the claimed diffusion membranes of the present application, and therefore, the structure of CN 577 is presumed inherently capable of selectively permit remediation gas flow into an aqueous solution stream comprising at least a portion of the aqueous solution flowing within the outer tubing to thereby facilitate dissolution of the remediation gas within the aqueous solution.
CN 577 discloses a formation conduit in fluid communication with the aquifer, configured to deliver the solution of dissolved remediation gas in the aqueous solution stream to the aquifer for groundwater remediation (see CN 577 hole in the formation in which the well casing is formed within a geological formation forming a formation conduit in fluid communication with the geological formation, which would necessarily include an aquifer; figure 1; page 4 3rd paragraph- page 5 continuing paragraph;).
Additionally, regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the structure of CN 577 is substantially identical to the claimed formation conduit of the present application, and therefore, the structure of CN 577 is presumed inherently capable of delivering the solution of dissolved remediation gas in the aqueous solution stream to the aquifer for groundwater remediation.
Regarding claim 2, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses the outer tubing is positioned within the casing disposed within the wellbore (see rejection of claim 1; see CN 577 figures 1-2).
Regarding claim 3, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses membrane unit comprises a portion of the outer tubing and the plurality of membrane units are connected in series between adjacent chambers (see rejection of claim 1; see CN 577 figures 1-2). As noted above, claim 3 is deemed indefinite and for the sake of compact prosecution, claim 3 is understood as a portion of the outer tubing and one membrane of the plurality of diffusion membranes are connected in series to another membrane of the plurality of diffusion membranes.
Regarding claim 4, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses the diffusion membranes are disposed along an outer surface of the chambers adjacent the water passage (see rejection of claim 1; see CN 577 figure 1).
Regarding claim 6, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses the water passage is disposed proximate an interior surface of the wellbore and extending downhole a depth within the wellbore (see rejection of claim 1; see CN 577 figure 1).
Regarding claim 7, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses an aqueous solution source within the aquifer in fluid communication with the water passage (see rejection of claim 1).
Regarding claim 8, CN 577 discloses the invention as discussed above in claim 8. Further, CN 577 discloses a water pump disposed between the aqueous solution source and the water passage (see CN 577 chemical injection pump figure 1 and page 5 last paragraph – continuing paragraph page 6; page 10 first paragraph; page 13 first paragraph).
Regarding claim 9, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses a gas pump in communication with the inner tubing (see CN 577 air compressor figure 1;
Regarding claim 10, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses a gas return passage disposed between the outer tubing and a surface of the geological formation, the gas return passage being a pathway for undissolved gases in the outer tubing to reach the surface of the geological formation (see CN 577 gas recycling pipe, flow sensor and pressure sensor, the pollutant concentration/polluted gas reaction chemical and/or active carbon adsorption column, figure 1 ; page 6 second paragraph; page 8 third paragraph – page 9 continuing paragraph; page 10 second paragraph; page 12 third paragraph).
Regarding claim 11, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses the formation conduit comprises an unlined portion of the wellbore at a downhole end of the formation conduit.
Because CN 577 does not disclose the circulating well casing extends the entire length of the downhole/wellbore, a plain reading of CN 577 would deem the formation conduit comprises an unlined portion of the wellbore at a downhole end of the formation conduit.
In the alternative, if CN 577 does not disclose a “the formation conduit comprises an unlined portion of the wellbore at a downhole end of the formation conduit”, then this feature is nonetheless rendered obvious by CN 577.
The wellbore at the downhole end of the formation conduit could be completely lined/fully lined length or have a portion that is unlined/open hole.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have a portion of the wellbore at a downhole end of the formation conduit that is unlined in the system of CN 577 because the combination of known elements was obvious to try. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have a portion of the wellbore at a downhole end of the formation conduit that is unlined in the system of CN 577 because it would assist the flow of fluid interacting with all parts of the wellbore casing or increasing the surface area exposed to the underground/groundwater or allow interaction at the bottom area of a wellbore casing with the unlined portion of the wellbore downhole and/or because it would assist with reducing the cost by removing a cost of a sealing/additional casing material at the lower end of the casing.
Claim 12 and 13 are rejected under 35 U.S.C. 103 as obvious over CN-113277577-B (hereinafter CN 577).
Regarding claim 12, CN 577 discloses the invention as discussed above in claim 1.
As noted above, claim 12 is deemed indefinite. Claim 12 is understood as being dependent upon claim 11.
Further, CN 577 does not disclose the outer tubing is disposed within the unlined portion of the wellbore.
As discussed above, in CN 577, the wellbore at the downhole end of the formation conduit could be completely lined/fully lined length or have a portion that is unlined/open hole. In CN 577, the outer tubing can be disposed within the unlined portion of the wellbore or disposed within the lined portion of the wellbore.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify CN 577 by have the outer tubing being disposed within the unlined portion of the wellbore because the combination of known elements was obvious to try. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify CN 577 by have the outer tubing being disposed within the unlined portion of the wellbore because it would assist with changing the flow of the gas injected into the underground/groundwater and would assist with injecting gas into water below the casing and/or because it would assist with treatment of underground/groundwater that is below the casing.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify CN 577 by have the outer tubing being disposed within the unlined portion of the wellbore and reasonably expect the resulting apparatus to work as the prior art intended, i.e. inject gas into water.
Regarding claim 13, CN 577 discloses the invention as discussed above in claim 1.
As noted above, claim 13 is deemed indefinite. Claim 13 is understood as being dependent upon claim 11.
Further, CN 577 does not disclose the outer tubing is disposed within both the casing and the unlined portion of the wellbore. Nevertheless, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the system of CN 577, as established above in claims 11 and 12, which would necessarily achieve the outer tubing being disposed within both the casing and the unlined portion of the wellbore.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over CN 577 as applied to claim 1 above, and further in view of CN-113277577-B (hereinafter CN 577).
Regarding claim 5, CN 577 discloses the invention as discussed above in claim 1. Further, CN 577 discloses an air flow clapboard with a permeable sieve portion but does not disclose any material for forming said clapboard.
US 196 discloses a cylindrical silicone rubber gas permeable tube for an injection well in groundwater remediation (see US 196 abstract and figures 1-2). US 196 discloses “suitable rubber or plastic hose, such as a silicone rubber hose, serves very well to oxygenate a contaminated region of anaerobic organisms. The combination of a recovery well and an injection well can be used to induce or assure a flow of water at a suitable rate past the oxygenation hose” (see US 196 col 1 line 64 – col 2 line 4).
US 196 is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. underground/groundwater remediation, injection wellbore system and/or a system for injecting gas into underground.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to form the clapboard of CN 577 with silicone rubber, as disclosed in US 196, because CN 577 discloses a clapboard but does not disclose a material for forming said clapboard and US 196 provides a material for forming said injection/wellbore tubing.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to form the clapboard of CN 577 with silicone rubber, as disclosed in US 196, because it would assist with the flow of gas/liquid.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to form the clapboard of CN 577 with silicone rubber, as disclosed in US 196, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. form tubing for an injection well/wellbore.
Related Prior Art
Prior art made of record and not relied upon is considered pertinent to applicants’ disclosure:
US 2003/0047310 A1 (hereinafter US 310) discloses system for groundwater remediation in a geological formation (see US 310 abstract, claims 1, 24, 34-40; paragraphs 0002, 0009, 0044-0051). US 310 discloses embodiments of a system comprising bundle of tubes within the membrane module and water line 86, which co-mingles with carbon dioxide line 84/85, that transports a gas treatment and an aqueous solution (see US 310 figure 6 and paragraphs 0043-0045, 0053). 310 discloses embodiments of a system comprising a membrane module/tubing string, membrane modules , wherein each module comprises a chamber, with end connectors at each end, having a separation membrane; figures 3-6 and paragraphs 0034-0036; 0042; 0052-0054).
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BERNADETTE K MCGANN whose telephone number is (571)272-5367. The examiner can normally be reached M-F 7:00 am -3:30 pm (EST).
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/BERNADETTE KAREN MCGANN/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773
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