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 .
Claim Status
The Preliminary Amendment filed on 21 March 2023 has been entered; claims 1-4, 8, 9, 12-14, 16-21, 24, 25, 27, and 28 remain pending.
Claim Interpretation
Regarding claim 13, the Examiner acknowledges that the means for regulating a flow of fluid within the vessel as recited in claim 13 are defined as including at least one magnetic filtering means, at least one housing for housing at least one magnetic member, at least one elongate shaft, and a baffle plate (see Paragraphs [0068-0070, 0112, 0119]). Additionally, with respect to claims 20 and 21, the means for removing dissolved solids is defined as a container comprising a filter media configured to remove dissolved metal (see Paragraphs [0074, 0075]), further exemplified by a basket filter for removing dissolved metal from a fluid (Paragraph [0154]).
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 1-4, 8, 9, 12-14, 16-21, 24, 25, 27, and 28 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.
With respect to claim 1, the preamble limitations recite limitations regarding the fluid to be treated including a “fluid circuit”, “a fluid supply connector”, and “heating and/or cooling system”; however, it is unclear whether these components are required by the apparatus. For the purposes of examination, the Examiner will consider the required components of the apparatus to be those recited in the body of the claim.
With continued reference to claim 1, it is unclear to the Examiner how the fluid is treated by the apparatus of claim 1, which comprises a vessel with a lid, a circulating fluid inlet port, a circulating fluid outlet port, and a combined drain and water inlet port. The apparatus of claim 1 is met by a teaching of vessel with a lid and 3 ports; no water treatment components, media, or structures appear to be recited. For the purposes of examination, the Examiner will consider the required components of the apparatus to be those recited in the body of the claim.
With respect to claim 4, the limitations “another suitable shape for collecting debris” renders the claim indefinite, as debris is not necessarily magnetic, according to the claim language, and the size of the debris is not defined. As such, the scope of shapes pertaining to suitability of debris removal is unclear to the Examiner.
With respect to claim 20, the limitations “the means for removing dissolved metal” lack antecedent basis in the claim language. Additionally, the scope of “means for removing dissolved solids” is unclear in situations where the dissolved solids are not dissolved metal. Clarification is respectfully requested.
Regarding claims 2, 3, 8, 9, 12-14, 16-19, 21, 24, 25, 27, and 28, they are rejected for being dependent on or otherwise incorporating the limitations of a rejected base claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 8, 9, 12-14, 16, 18, 24, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cowley et al. (U.S. Patent # 10,001,305), hereinafter “Cowley”.
With respect to claim 1, Cowley teaches an apparatus for treating fluid in a fluid circuit of a heating and/or cooling system (see Abstract; Column 1, lines 49-51; Column 3, lines 5-6; Fig. 1), wherein the apparatus comprises a vessel 102 comprising an open upper end 103 (Column 3, lines 7-8; Fig. 1), a removable lid 108 (Column 3, lines 11-12), a circulating fluid inlet port 104 in a sidewall 105 of the vessel (Column 3, lines 8-9; Fig. 1), a circulating fluid outlet port 106 in a lower end 107 of the vessel (Column 3, lines 10-11; Fig. 1), and a combined drain and water inlet port (106) in the lower end 107 of the vessel (Column 3, lines 10-11; Fig. 1), wherein the circulating fluid outlet port 106 is capable of acting also as a combined drain and water inlet port (see Column 3, lines 51-59 for connection to drain conduit 205).
Since the all the structural limitations of claim 1 have been met by Cowley, it is submitted that the apparatus of Cowley is capable of treating both existing fluid and fluid when initially introduced into an empty fluid circuit via a temporary fluid connection from a fluid supply connector as recited in the preamble.
With respect to claim 2, Cowley teaches wherein the removeable lid 108 comprises a dosing port 109 and an air vent port 110 (see Column 3, lines 12-13; Figs. 1, 2).
With respect to claim 3, Cowley teaches wherein the removeable lid 108 is securable to the vessel 102 by mechanical fixings 11 (see Column 3, lines 14-18; Fig. 1).
With respect to claim 4, Cowley teaches a permanent magnet collector 112 locatable within vessel 102 (see Column 3, lines 19-22; Fig. 1).
With respect to claim 8, Cowley teaches wherein the vessel comprises a bracket 301 for mounting the vessel 102 to a wall (see Column 5, lines 10-14; Fig. 3).
With respect to claim 9, Cowley teaches wherein vessel 102 comprises filter 501 removably locatable within vessel 102 (see Column 6, lines 14-15; Fig. 5).
With respect to claim 12, Cowley teaches wherein the vessel 102 comprises a removable baffle plate 504 (see Column 6, lines 25-26; Fig. 5).
With respect to claim 13, Cowley teaches wherein the vessel 102 comprises a removable baffle plate 504 (see Column 6, lines 25-26; Fig. 5), which is identified as a “means for regulating a flow of fluid within the vessel” in Paragraphs [0067, 0112] of the Specification.
With respect to claim 14, Cowley teaches that the magnetic collector 112 comprises a plurality of tubular housings 401, each housing a permanent magnetic 402 (“at least one magnetic member”) (see Fig. 4; Column 5, lines 33-42), meeting the limitations “means for regulating the flow of fluid” according to Paragraph [0069] of the Specification.
With respect to claims 16 and 18, Cowley teaches a filter 711 comprising spigot 715 (“at least one elongate shaft”; “means for regulating the flow of fluid” which is “removably located within vessel 102 as a part of removable filter 711)) located within the fluid outlet port 106 of vessel 102 (Figs. 7, 8; Column 7, lines 42-54).
With respect to claim 24, Cowley teaches a filter comprising the apparatus of claim 1 (see Fig. 1; Column 3, lines 23-29). The limitations “side-stream” are considered to be met as all limitations of claim 1 met; therefore, the filter of Cowley is capable of filtering a side stream, which is merely an intended use of the filter of Cowley.
With respect to claim 25, Cowley teaches a method of installing the apparatus of claim 1 (see Fig. 2; Column 3, lines 30-67).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Cowley et al. (U.S. Patent # 10,001,305) in view of Stifter et al. (U.S. Patent Publication # 2013/0306562), hereinafter “Cowley” and “Stifter”.
With respect to claims 17 and 19, Cowley teaches a filter 711 comprising a hollow central core 713 (Figs. 7, 8; Column 7, lines 42-54), but does not teach an elongate shaft as claimed.
Stifter teaches a cartridge filter comprising a perforated tube (an “elongate shaft” comprising a “plurality of apertures”).
It would have been obvious to one of ordinary skill in the art to add the perforated tube of Stifter to the hollow central core 713 of the filter 711 of Cowley because Cowley teaches that filter 711 is a cartridge filter (see Column 7, lines 46-48) comprising any suitable filtration media (see Column 7, lines 61-62), and Stifter teaches that the perforated tube provides the advantages of supporting the filter media to avoid tearing or crushing of the media, and reduces pressure on the filter media in applications wherein the filtering takes place at a higher temperature (see Paragraph [0049]). This modification results in placing the perforated tube within an aperture in the central core of the filtering media of Cowley, meeting the limitations “configured to receive the elongate shaft”.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Cowley et al. (U.S. Patent # 10,001,305) in view of Taboada-Serrano et al. (U.S. Patent Publication # 2010/0155335), hereinafter “Cowley” and “Taboada-Serrano”.
With respect to claims 20 and 21, Cowley does not specifically teach a means for removing dissolved solids/metals as recited.
Taboada-Serrano teaches magnetic activated carbon in combination with a porous filter medium 20 (Paragraphs [0048, 0053, 0055]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the magnetic activated carbon of Taboada-Serrano to the vessel of Cowley and to modify the filter media of filter 711 of Cowley with the porous filter media of Taboada-Serrano because Cowley teaches that the filter media can be any suitable filter media in the fluid filter rating in the range of 5-100 micron (see Column 7, lines 61-63) and that the vessel 102 comprises a dosing port 109 in removeable lid 108 (see Column 3, lines 11-14; which could be used for addition of magnetic activated carbon), and because Taboada-Serrano teaches that the magnetic activated carbon adsorb heavy metal ions (“dissolved metals”) present in the fluid to from aggregates of magnetic activated carbon and sorbed contaminants which are filtered by the porous media 20 (see Paragraphs [0048, 0050-0053]).
In the above modification, the filter 711 is the “container” that comprises the porous media 20 from Taboada-Serrano that removes the aggregated magnetic activated carbon with sorbed heavy metal ions, meeting the limitations “configured to remove dissolved metals”.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Cowley et al. (U.S. Patent # 10,001,305) in view of Saho et al. (U.S. Patent # 5932096), hereinafter “Cowley” and “Saho”.
With respect to claims 27 and 28, Cowley teaches does not specifically teach connecting outlet port 106 (“the combined drain and water inlet port”) to a fluid supply as recited in claim 27, or filling the vessel 102 with a fluid via outlet port 106 (“the combined drain and water inlet port”).
Saho teaches a magnetic filtration device comprising outlet 56b on a bottom surface of magnetic filter 48b connected to backwashing water tank 29 (“fluid supply”) via conduit 58b comprising valve 57b (see Column 8, line 30 through Column 9, line 28; Fig. 9).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the backwash connection and tank of Saho such that it is connected to outlet 106 of Cowley because to the bottom of the vessel of Cowley because both references are directed to magnetic filter vessels comprising outlets in the lower portion thereof and both have valves governing these outlets (see Cowley: Column 3, lines 51-59; Column 4, lines 8-40: outflow port 106 is connected to a circulating fluid return conduit 203 via an associated second isolation valve 204, and is connected to a drain conduit 205 via an associated isolation valve 206, and see Column 8, line 30 through Column 9, line 28; Fig. 9 of Saho), and because Fogel teaches that backwash port 38 allows for periodic backwashing and cleaning of the magnetic filtering apparatus, wherein Cowley also teaches a magnetic collector.
The above modification allows for valve 57b of Saho to connect the magnetic filter vessel in a “temporary” manner to the backwash water supply to fill the vessel with backwashing fluid through outlet 106 of Cowley (“the combined drain and water inlet port”).
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 1-4, 8, 9, 12-14, 16-21, 24, 25, 27, and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,001,305. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of instant claim 1 encompasses the scope of claim 1 of Patent (‘305).
With respect to instant claim 1, Claim 1 of Patent (‘305) teaches an apparatus for treatment of fluid in a fluid circuit of heating or cooling system, said apparatus comprising a vessel defining an open upper end, a removable lid, a circulating fluid inlet port, a circulating fluid outlet port, wherein the circulating fluid outlet port is connected to a both a return conduit of the fluid circuit and a drain conduit, wherein the outlet port is capable of serving as a combined drain/water inlet port.
Since the all the structural limitations of claim 1 have been met by claim 1 of Patent (‘305), it is submitted that the apparatus of claim 1 of Patent (‘305) is capable of treating both existing fluid and fluid when initially introduced into an empty fluid circuit via a temporary fluid connection from a fluid supply connector.
Regarding claim 24, since the all the structural limitations of claim 1 have been met by claim 1 of Patent (‘305), it is submitted that the apparatus of claim 1 of Patent (‘305) is a side stream filter according to instant claim 1, especially considering that claim 1 also recites a permanent magnet collector arranged to collect magnetic particles from circulating fluid.
With respect to instant claim 25, claim 13 of Patent (‘305) teaches a method of installing the apparatus of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/ Primary Examiner, Art Unit 1779 19 November 2025
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