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 .
Specification
Examiner suggests applicant to update the status of parent U.S Patent Application No. 17/253,495 filed 01/19/2021 as U.S. Patent No. 11,779,904 before paragraph [0001] of the specification.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 45-64 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,779,904. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The claim comparison table discusses claims and relevant difference below.
The corresponding claims of U.S Patent No. 11,779,904 that anticipate/obviate the claims of instant application as shown in comparison table below. In general, claims of the U.S Patent No. 11,779,904 differ from the instant application in the requirement that the claims 61 and 64 require a filter pad and the claims 62-63 require an upwardly extending inlet whereas the claim 6/1 of U.S Patent No. 11,779,904 does not. However, dependent claim 5 of U.S Patent No. 11,779,904 sets forth such disclosure. It would have been obvious to a person of ordinary skill in the art to modify the claim 6/1 of U.S Patent No. 11,779,904 to further include a filter pad from claim 5 for the purpose of trapping particles and further include an upwardly extending inlet for the purpose of delivering water above salt in the salt canister.
Claims of
Application No. 18/244,967
Claims of
U.S Patent No. 11,779,904
Comparison
45
1
Narrow claim 1 anticipates broad instant claim 45 and contains all the limitations of claim 45.
46
6/1
Narrow claim 6/1 anticipates broad instant claim 46 and contains all the limitations of claim 46.
47
7/1
Narrow claim 7/1 anticipates broad instant claim 47 and contains all the limitations of claim 47.
48
8/1
Narrow claim 8/1 anticipates broad instant claim 48 and contains all the limitations of claim 48.
49
8/1
Narrow claim 8/1 anticipates broad instant claim 49 and contains all the limitations of claim 49.
50
7/1
Narrow claim 7/1 anticipates broad instant claim 50 and contains all the limitations of claim 50.
51
9/1
Narrow claim 9/1 anticipates broad instant claim 51 and contains all the limitations of claim 51.
52
9/1
Narrow claim 9/1 anticipates broad instant claim 52 and contains all the limitations of claim 52.
53
9/1
Narrow claim 9/1 anticipates broad instant claim 53 and contains all the limitations of claim 53.
54
1
Narrow claim 1 anticipates broad instant claim 54 and contains all the limitations of claim 54.
55
10/1
Narrow claim 10/1 anticipates broad instant claim 54 and contains all the limitations of claim 54.
56
2/1
Narrow claim 2/1 anticipates broad instant claim 56 and contains all the limitations of claim 56.
57
3/1
Narrow claim 3/1 anticipates broad instant claim 57 and contains all the limitations of claim 57.
58
4/1
Narrow claim 4/1 anticipates broad instant claim 58 and contains all the limitations of claim 58.
59
4/1
Narrow claim 4/1 anticipates broad instant claim 59 and contains all the limitations of claim 59.
60
6/1
Narrow claim 6/1 anticipates broad instant claim 60 and contains all the limitations of claim 60.
61
6/1 and 5
It would have been obvious to a person of ordinary skill to further include a filter pad from claim 5 into the salt canister of claim 6/1 for the purpose of trapping particles.
62
6/1 and 8
It would have been obvious to a person of ordinary skill to further include an upwardly extending inlet from claim 8 into the salt canister of claim 6/1 for the purpose of delivering water above salt in the salt canister.
63
6/1 and 8
It would have been obvious to a person of ordinary skill to further include an upwardly extending inlet from claim 8 into the salt canister of claim 6/1 for the purpose of delivering water above salt in the salt canister.
64
6/1 and 5
It would have been obvious to a person of ordinary skill to further include a filter pad from claim 5 into the salt canister of claim 6/1 for the purpose of trapping particles.
. Claims 45, 54 and 56-57 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-7 of U.S. Patent No. 11,801,487. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The corresponding claims of U.S. Patent No. 11,801,487 anticipates the claims of instant application as shown in comparison table below. The only difference is a salt canister versus a salt bag.
Claims of
Application No. 18/244,967
Claims of
U.S Patent No. 11,801,487
Comparison
45
1
Narrow claim 1 anticipates broad instant claim 45 and contains all the limitations of claim 45.
54
1
Narrow claim 1 anticipates broad instant claim 54 and contains all the limitations of claim 54.
56
6/1
Narrow claim 6/1 anticipates broad instant claim 56 and contains all the limitations of claim 56.
57
7/1
Narrow claim 7/1 anticipates broad instant claim 57 and contains all the limitations of claim 57.
. Claims 45, 47, 50-54 and 56-58 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6 and 10-13 of U.S. Patent No. 12,208,188. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The corresponding claims of U.S. Patent No. 12,208,188 anticipates the claims of instant application as shown in comparison table below. The only difference is a salt canister versus a salt bag.
Claims of
Application No. 18/244,967
Claims of
U.S Patent No. 12,208,188
Comparison
45
1 or 12
Narrow claim 1 or 12 anticipates broad instant claim 45 and contains all the limitations of claim 45.
47
4/1 or 13/12
Narrow claim 4/1 or 13/12 anticipates broad instant claim 47 and contains all the limitations of claim 47.
50
4/1
Narrow claim 4/1 anticipates broad instant claim 50 and contains all the limitations of claim 50.
51
11/1
Narrow claim 11/1 anticipates broad instant claim 51 and contains all the limitations of claim 51.
52
11/1
Narrow claim 11/1 anticipates broad instant claim 52 and contains all the limitations of claim 52.
53
11/1
Narrow claim 11/1 anticipates broad instant claim 53 and contains all the limitations of claim 53.
54
1 or 12
Narrow claim 1 or 12 anticipates broad instant claim 54 and contains all the limitations of claim 54.
56
5/1
Narrow claim 5/1 anticipates broad instant claim 56 and contains all the limitations of claim 56.
57
6/1
Narrow claim 6/1 anticipates broad instant claim 57 and contains all the limitations of claim 57.
58
10/1
Narrow claim 10/1 anticipates broad instant claim 58 and contains all the limitations of claim 58.
Claims 45, 47, 50, 54 and 56-57 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-17, 24, 27-29 of copending Application No. 19/024,471 (reference application) or US 2025/0235591 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the corresponding claims of copending Application No. 19/024,471 anticipates the claims of instant application as shown in comparison table below. The only difference is a salt canister versus a salt cartridge.
Claims of
Application No. 18/244,967
Claims of copending
Application No. 19/024,471
Comparison
45
14 or 24
Narrow claim 14 or 24 anticipates broad instant claim 45 and contains all the limitations of claim 45.
47
17/14 or 27/24
Narrow claim 17/14 or 27/24 anticipates broad instant claim 47 and contains all the limitations of claim 47.
50
17/14 or 27/24
Narrow claim 17/14 or 27/24 anticipates broad instant claim 50 and contains all the limitations of claim 50.
54
24
Narrow claim 24 anticipates broad instant claim 54 and contains all the limitations of claim 54.
56
28/24
Narrow claim 28/24 anticipates broad instant claim 56 and contains all the limitations of claim 56.
57
29/24
Narrow claim 29/24 anticipates broad instant claim 57 and contains all the limitations of claim 57.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
US 2020/0061269 A1 to Dutta et al. (hereinafter “Dutta”) is considered the closest prior art to a system of claims 45, 54 and 60.
Dutta teaches a system (see Fig. 2; paragraphs [0098]-[103]) comprising:
a mixer (220) fluidly connectable to a sorbent recharger (202);
a salt canister (204) comprising:
an inlet (206) fluidly connectable to a water source;
an outlet (207) fluidly connectable to the mixer (220); and
wherein the salt canister (204) includes at least one sodium salt; and
a control system;
wherein the control system is programmed to:
pump fluid from the water source into the salt canister (204);
deliver the fluid in a first flow path (224) from the outlet (207) of the salt canister (204) to the mixer (220); and
pump acid (203) into the first flow path via a pump (219).
However, Dutta neither teaches not suggests the system of claims 45, 54 and 60 comprising a brine container fluidly connectable to a sorbent charger, a salt canister comprising an outlet fluidly connected to the brine container and a control system programmed to recirculate the fluid in a first flow path from the outlet of the salt canister to the brine container and then to the inlet of the salt canister.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN KIM whose telephone number is (571)272-1142. The examiner can normally be reached Maxi Flex.
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/John Kim/Primary Examiner, Art Unit 1777
JK
3/26/26
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