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 1-10 in the reply filed on January 7, 2026 is acknowledged. Election was made without traverse in the reply filed on January 7, 2026.
Claim Numbers
The numbering of claims is not accordance with 37 CFR 1.126, which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Claims 10-20 are misnumbered due to missing claim 9.
Appropriate correction is requested in the next response.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the
Control valve
Seal assembly
Regeneration flow path direction control assembly
First regeneration flow path
Second regeneration flow path
must be shown or the feature(s) canceled from the claim(s). It is noted that the Drawings illustrate a motor-actuated valve but do not identify an element that corresponds to the claimed control valve. It is noted that the Drawings illustrate several internal ports and the piston but do not identify an element that corresponds to the claimed seal assembly. The Drawings do not identify an element that corresponds to the claimed regeneration flow path direction control assembly, first regeneration flow path and/or second regeneration flow path. No new matter should be entered. It is noted that figures 4-9 are directed towards “the water treatment system valve body”, which is understood as being separate and distinct from the claimed control valve.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show
The flow path of water, brine or any other fluid through the system and how that flow path changes due to changes in the claimed control valve.
as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
The seal assembly (44) (see as-originally filed specification paragraph 0034).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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 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 1-10 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 control valve fluidly coupled to the softening tank … comprising a seal assembly … a piston”. Claim 1 is deemed indefinite because it is unclear what element(s) the valve controls and/or how the valve has a control function.
Claim 1 recites “a control valve comprising a piston slidably mounted in the elongated bore, the piston having recesses formed at spaced apart locations that create annular flow paths around the piston when aligned with the one or more internal ports”. Claim 1 is deemed indefinite. It is unclear if the control valve is controlling the movement of the piston within the elongated bore, that the piston is a component of the valve, such as a “piston valve” structural element” or some other structural configuration.
Claim 1 recites “a regeneration flow path direction control assembly”. Claim 1 is deemed indefinite. The plain meaning of the term “assembly” is a grouping of two or more structural elements. The claimed “assembly” does not comprise any structural elements. It is unclear how it is an “assembly”.
Claims 2-10 are also rejected by virtue of the claim dependency.
Claim 4 recites “a drive mechanism”. Claim 4 is deemed indefinite because it is unclear what a “drive mechanism” is. The as-originally filed specification does not define the term “drive mechanism”.
Claims 5 and 6 are also rejected by virtue of the claim dependency.
Claim 7 is deemed indefinite because the scope of the claim language “such that” is unclear. Claim 7 recites “second, opposite end”. Claim 7 is deemed indefinite because the effect of the comma renders the claim unclear.
Applicant may consider amending claim 7 as follows:
the distributor tube comprises a first end fluidly coupled to the elongated bore and a second, which is opposite to the first end and is fluidly coupled to the softening tank,
wherein flowing in the second regeneration flow path flows from the control valve and bypasses
Claim 10 recites “system automatically detects the orientation” and “automatically adjust a position of the piston”. Claim 10 is deemed indefinite because it is unclear what structural element or device is capable of automatically detecting the position/orientation of the filter, brine injector and/or plug and automatically adjusting the position of the piston
Claim Interpretation
Claim 1 is directed towards a water softening system. The claimed system comprises a softening tank including a resin bed, a hard-water inlet port, an outlet port, and a drain port; a control valve fluidly coupled to the softening tank, the control valve comprising a seal assembly disposed within an elongated bore and defining one or more internal ports at spaced apart locations; a piston slidably mounted in the elongated bore, the piston having recesses formed at spaced apart locations that create annular flow paths around the piston when aligned with the one or more internal ports; and a regeneration flow path direction control assembly.
The “annular flow path” is a path that only forms during the use of the apparatus, i.e. “the piston having recesses … create annular flow paths around the piston when aligned with the one or more internal ports”. The “annular flow path” is only present in the claimed apparatus at specific points of use of the claimed apparatus.
The claimed language “which allows the control valve to create a first regeneration flow path where regenerant flows around a distributor tube in through a top of the resin bed and out through the distributor tube from a bottom of the resin bed and a second regeneration flow path where regenerant flows through the distributor tube to the bottom of the resin bed and out around the distributor tube” is directed towards different states of the claimed apparatus during use of the claimed water softening system. That is, “a first regeneration flow path” and “a second regeneration flow path” are not structural elements of the claimed apparatus.
Claim 3 recites “the control valve creates the first regeneration flow path when the removable filter is in the first orientation, the removable brine injector is installed in the first orifice, and the removable plug is installed in the second orifice” and recites “the second regeneration flow path when the removable filter is in the second orientation, the removable brine injector is installed in the second orifice, and the removable plug is installed in the first orifice”. The claim language is directed towards the state of the apparatus and structural elements of the apparatus during the use of the claimed water softening system. The created “the first regeneration flow path” and “the second regeneration flow path” are not structural elements of the claimed apparatus.
Lastly, “it is noted that neither the manner of operating a disclosed 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 § 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(s) 1 and 4-8 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by US 10822251 B1 (hereinafter US 251) (US 251 was filed on July 23, 2019, is a continuation-in-part of application No. 15/973,911, filed on May 8, 2018, now Pat. No. 10,494,268, and provisional application No. 62/713,222, filed on Aug. 1, 2018, and was issued on November 3, 2020).
Regarding claim 1, US 251 discloses a water softening system (see US 251 abstract, figures 1-8, 10, 42-43).
US 251 discloses a softening tank including a resin bed, a hard-water inlet port, an outlet port, and a drain port and a control valve fluidly coupled to the softening tank (see US 251 figures 1-8, 10, col 1 lines 55-59, col 4 lines 24-53; col 5 line 42 – col 6 line 5; col 28 lines 32 -47).
US 251 discloses a seal assembly disposed within an elongated bore and defining one or more internal ports at spaced apart locations (see US 251 figures 1-8, 10; resilient seal, walls of the valve body/longitudinal flow cavity/piston; longitudinal flow cavity 38/bore 32; annular flow cavities 44; col 4 line 56 – col 5 line 15; col 5 lines 16-29).
US 251 discloses a piston slidably mounted in the elongated bore, the piston having recesses formed at spaced apart locations that create annular flow paths around the piston when aligned with the one or more internal ports (see US 251 figures 1-8, 10, piston 34; recessed annular flow cavities 36; longitudinal flow cavity 38/bore 32; col 4 lines 53-65; col 5 lines 16-29, 35-37 (US 251 discloses “valve controller is operative to selectively longitudinally move the actuator bracket and the piston rod so as to selectively position the piston to provide different flow conditions” see US 251 col 5 lines 35-37).).
US 251 discloses a regeneration flow path direction control assembly which allows the control valve to create a first regeneration flow path where regenerant flows around a distributor tube in through a top of the resin bed and out through the distributor tube from a bottom of the resin bed and a second regeneration flow path where regenerant flows through the distributor tube to the bottom of the resin bed and out around the distributor tube (see US 251 figures 1-8, 10, 11-12, 36-38, 39-41, 43-45).
As noted above, the “regeneration flow path direction control assembly” is deemed indefinite. It is unclear what structural elements are a part of the claimed assembly. Herein, it is understood that “assembly” is understood to be any element of the apparatus of US 251 that assist with controlling the flow of liquid through said apparatus, as disclosed in figures 1-8, 10, 11-12 and 37-41 of US 251, including the injector (71/171), screen (67/167), plug (61/174), the valve (64), plunger (P), as well as the control, bypass and shutoff valve(s).
As noted above in the Claim Interpretation section, “a first regeneration flow path” and “a second regeneration flow path” are not structural elements of the claimed apparatus. “[i]t is noted that neither the manner of operating a disclosed 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.”
Nevertheless, US 251 discloses several flow paths formed by the interactions of the various valve elements of the apparatus:
Some exemplary valves in such different states may cause the liquid water treatment device with which the valve is operatively connected to carry out different functions depending on the type of the liquid treatment device. For example, a water softener type of valve in different configurations/states may place the water softener in different operational conditions such as a service condition to soften water from a supply and deliver the treated water to a connection to a water network; a shut off condition to prevent water to flow from either a supply of untreated water or softened water; one or more regeneration conditions to regenerate the water softener, a bypass condition and/or carry out other actions. In exemplary arrangements, regeneration of the water softener may be in several different positions/states of the valve in order to carry out the different operations included in a regeneration process (e.g., flushing resin beads in a resin tank with a brine solution, backflushing the resin tank, and/or other actions that enable the softener to improve its operation softening water). It should also be noted that the master controller may be configured to send wireless communications to the slave controller which cause the valve to change the water softener between these different operational conditions.
(see US 251 col 28 lines 9-31).
Regarding claim 4 and claim 5, US 251 discloses the invention as discussed above in claim 1. Further, US 251 discloses a drive mechanism operably coupled to the piston and a controller operably coupled to the drive mechanism, as recited in claim 4, and discloses the drive mechanism is an electric motor, as recited in claim 5 (see US 251 figures 9, 37, 38, 55; claim 1; motor/actuator; col 12 lines 20-30; col 14 line 58 -col 15 line 16; col 28 lines 32 -47; col 40 lines 50-64; col 43 lines 9-19 & 43-55; col 9 lines 48-55; col 40 lines 52-64; col 44 lines 1-8; col 51 line 67 – col 52 line 3).
US 251 discloses a controller operably coupled to the drive mechanism, as recited in claim 4 (see US 251 figures 8, 13-14, 20-23, 30, 31; claims 1, 21; col 2 lines 42-44; col 5 lines 34-37; col 6 lines 56-60; col 18 lines 51-60; col 20 lines 3-20 & 44-49).
Regarding claim 6, US 251 discloses the invention as discussed above in claim 4. Further, US 251 discloses, during regular operation, the controller positions the piston to selectively allow liquid to flow from the hard-water inlet port, through the resin bed, and to the outlet port through the annular flow paths between the piston and the seal assembly (see rejection of claims 1, 4; see US 251 col 4 line 59 – col 5 line 25; col 8 lines 44-59;;). Claim 6 is directed towards the apparatus during use. “[i]t is noted that neither the manner of operating a disclosed 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.”
Regarding claim 7, US 251 discloses the invention as discussed above in claim 1. Further, US 251 discloses the distributor tube includes a first end fluidly coupled to the elongated bore and a second, opposite end fluidly coupled to the softening tank (see US 251 figures 1-8, 10) such that untreated water from the control valve flows in the second regeneration flow path from the control valve through the distributor tube to the bottom of the softening tank, bypassing the resin bed (see rejection of claim 1; see US 251 figures 3, 10, claim 18; 10; col 16 lines 24-34 & 39-53; col 18 lines 11-21 & 31-41).
Regarding claim 8, US 251 discloses the invention as discussed above in claim 1. Further, US 251 discloses the regenerant is a brine solution (see US 251 col 6 lines 67-46; col 8 lines 4-15).
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 2, 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 251.
Regarding claim 2, US 251 discloses the invention as discussed above in claim 1. Further, US 251 discloses the regeneration flow path direction control assembly further comprises a filter configured to be coupled to the control valve in either a first orientation or a second orientation (see rejection of claim 1; see US 251 figures 1-7, 10 and 11-12;
Herein, the term “first orientation” and “second orientation” is understood as being orientated to a liquid flowing through the apparatus. The screen achieves at least two different orientations based on the flow of raw water, brine and/or the water/brine solution flowing throughout the apparatus, i.e. liquid flowing through the screen and liquid not flowing through the screen (see US 251 figures 1-7 and 10). The screen achieves a first orientation and a second orientation in relation to the flow of liquid through the system.
US 251 does not disclose that the screen is removable. However, 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 apparatus of US 251 by making the screen removable because it would assist with the cleaning and/or replacing of the screen when it become clogged and/or damaged (see also MPEP 2144.04 V,C).
US 251 discloses a removable brine injector configured to be installed on the control valve in either a first orifice or a second orifice (see rejection of claim 1; see US 251 abstract, figures 11-12; ; injector (71/171); col 6 lines 61-67; col 7 line 60 – col 8 line 8; col 9 lines 27-36; col 16 line 30 – col 18 line 2; col 18 lines 31-42; col 18 lines 45 col 19 line 35).
US 251 discloses a removable plug configured to be installed on the control valve in either the first orifice or the second orifice (see rejection of claim 1; see US 251 abstract, figures 11-12 plug (61/174; col 7 lines 1-3 col 7 lines 1-3; col 7 line 60 – col 8 line 8; col 16 line 30 – col 18 line 2; col 18 lines 31-42; ; col 18 line 65 – col 19 line 8).
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 US 251 is substantially identical to the claimed a) removable filter, b) removable brine injector andr c) removable plug of the present application, and therefore, the structure of US 251 is presumed inherently capable of a) being coupled to the control valve in either a first orientation or a second orientation; b) being installed on the control valve in either a first orifice or a second orifice and c) being installed on the control valve in either the first orifice or the second orifice.
Regarding claim 3, US 251 discloses the invention as discussed above in claim 2. Further, US 251 discloses the control valve creates the first regeneration flow path when the removable filter is in the first orientation, the removable brine injector is installed in the first orifice, and the removable plug is installed in the second orifice, and the second regeneration flow path when the removable filter is in the second orientation, the removable brine injector is installed in the second orifice, and the removable plug is installed in the first orifice (see rejection of claims 1 and 2).
As noted above, the claim language is directed towards the state of the apparatus and structural elements of the apparatus during the use of the claimed water softening system. The created “the first regeneration flow path” and “the second regeneration flow path” are not structural elements of the claimed apparatus.
Nevertheless, US 251 discloses “As can be appreciated, the method for configuring the exemplary valve for either up flow or downflow regeneration includes removing the cover 176 to access the chamber 169. The injector 171 and the plug 174 are positioned in the passages 170, 172 in the manner appropriate for the regeneration approach desired for the unit” (see US 251 col 18 lines 45-50), which would necessarily include a change in the orientation of the screen/filter.
Regarding claim 10 (due to missing claim 9), US 251 discloses the invention as discussed above in claim 1. Further, US 251 discloses the water softening system automatically detects the orientation of the removable filter and the positions of the removable brine injector and the removable plug, and automatically adjusts a position of the piston according to the detected orientation and positions (see US 251 col 33 lines 19-30).
As noted above, claim 10 is deemed indefinite because it is unclear what structural element(s) or device(s) are capable of the automating limitation. Herein, claim 10 is understood as a controller that can” automatically detects the orientation of the removable filter and the positions of the removable brine injector and the removable plug, and automatically adjusts a position of the piston according to the detected orientation and positions
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 US 251 is substantially identical to the claimed water softening system of the present application, and therefore, the structure of US 251 is presumed inherently capable of automatically detects the orientation of the removable filter and the positions of the removable brine injector and the removable plug, and automatically adjusts a position of the piston according to the detected orientation and positions.
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).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ben Lebron can be reached on 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BERNADETTE KAREN MCGANN/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773