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 17 March 2026 has been entered; claims 1-4, 8, 9, 12-14, 16-21, 24, 25, 27, and 28 remain pending.
Response to Arguments
Applicant’s arguments, see Pages 7-8 of the Remarks, filed 17 March 2026, with respect to the 112(b) rejections of claims 1-4, 8, 9, 12-14, 16-21, 24, 25, 27, and 28 have been fully considered and are persuasive. The 112(b) rejections of claims 1-4, 8, 9, 12-14, 16-21, 24, 25, 27, and 28 have been withdrawn in light of Applicant’s amendments to the claims.
Applicant’s arguments, see Pages 8-14 of the Remarks, filed 17 March 2026, with respect to the rejection of claims 1-4, 8, 9, 12-14, 16, 18, 24, and 25 under 35 USC 102(a)(1) over Cowley and claims 17, 19-21, 27, and 28 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC 103 over Cowley in view of KR # 100902493 B1, as necessitated be amendment and discussed below in detail. A similar change to the Double Patenting rejection was made below in view of KR # 100902493 B1, which is maintained below.
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 1-4, 8, 9, 12-14, 16-19, 24, 25, 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 KR 100902493 B1 (machine translation provided and replied upon as well as the Figures of the original document), hereinafter “Cowley” and “KR (‘493)”.
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), filter 501 removably locatable within vessel 102 (see Column 6, lines 14-15; Fig. 5); 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), wherein circulating fluid outlet port 106 is located with respect to the removable filter 501 such that when in use as a circulating fluid outlet port, the circulating fluid outlet port 106 is downstream of removeable filter 106 (see Figs. 1, 2; Column 4, lines 1-27), 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 can also act as a drain “combined drain and water inlet port” (see Column 3, lines 51-59 for connection to drain conduit 205).
Cowley does not teach wherein the combined drain and water inlet port is separate from the circulating fluid outlet port.
KR (‘493) teaches a water treatment apparatus comprising a filter, filtrate outlet 84, and backwashing drainage port 89 (“combined drain and water inlet port”) coupled to an injection header coupling port 88 provided in communication with water supply port and a drain pipe 156a for draining backwash water (see Fig on Page 17; Page 9, large paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the backwashing drainage port of KR (‘493) to vessel 102 of Cowley in order to gain the advantage of having a separate port for removing backwashing water, which the ordinary artisan would recognize would be more contaminated than filtrate leaving the circulating fluid outlet port 106 of Cowley. KR (‘493) teaches a drain pipe 156a for draining backwash water, which is distinct from the filtrate water outlet pipe 154 (see KR (‘493): Page 9, large paragraph), as filtrate water outlet pipe 154 has a check valve which prevents the operation of the filtration unit from being stopped or back flowed through the filtration water outlet pipe 154 at the time of backwashing (Page 9, last paragraph of (KR (‘493)). It is further noted that both Cowley and KR (‘493) are directed to filtration of water in circulating water systems in cooling towers (see KR (‘493): Page 2, Paragraphs 2 and 6, and see Abstract of Cowley).
The above modification places the combined drain and water inlet port (backwashing drainage port 89 of KR (‘493) upstream of the filter when used as a drain port or water inlet port.
Since the all the structural limitations of claim 1 have been met by Cowley in view of KR (‘493), 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 in view of KR (‘493) teaches wherein the removeable lid 108 comprises a dosing port 109 and an air vent port 110 (see Cowley: Column 3, lines 12-13; Figs. 1, 2).
With respect to claim 3, Cowley in view of KR (‘493) teaches wherein the removeable lid 108 is securable to the vessel 102 by mechanical fixings 11 (see Cowley: Column 3, lines 14-18; Fig. 1).
With respect to claim 4, Cowley in view of KR (‘493) teaches a permanent magnet collector 112 locatable within vessel 102 (see Cowley: Column 3, lines 19-22; Fig. 1).
With respect to claim 8, Cowley in view of KR (‘493) teaches wherein the vessel comprises a bracket 301 for mounting the vessel 102 to a wall (see Cowley: Column 5, lines 10-14; Fig. 3).
With respect to claim 9, Cowley in view of KR (‘493) teaches wherein vessel 102 comprises filter 501 which collects non-magnetic solids including calcium deposits (Column 6, lines 57-60).
With respect to claim 12, Cowley in view of KR (‘493) teaches wherein the vessel 102 comprises a removable baffle plate 504 (see Cowley: Column 6, lines 25-26; Fig. 5).
With respect to claim 13, Cowley in view of KR (‘493) teaches wherein the vessel 102 comprises a removable baffle plate 504 (see Cowley: 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 in view of KR (‘493) 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 Cowley: 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 in view of KR (‘493) 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 (see Cowley: Figs. 7, 8; Column 7, lines 42-54).
With respect to claims 17 and 19, Cowley in view of KR (’493) teaches elongate shaft 110 comprising nozzles 112 (“apertures”) within filter positioned within filter media 101 (see KR (‘493): Page 9, large paragraph towards the bottom; Figure on Page 17).
With respect to claim 24, Cowley in view of KR (‘493) teaches a filter comprising the apparatus of claim 1 (see Cowley: 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 in view of KR (‘493) is capable of filtering a side stream, which is merely an intended use of the filter of Cowley in view of KR (‘493).
With respect to claim 25, Cowley in view of KR (‘493) teaches a method of installing the apparatus of claim 1 (see Cowley: Fig. 2; Column 3, lines 30-67).
With respect to claim 27 and 28, Cowley in view of KR (‘493) teaches that backwashing drainage port 89 (“combined drain and water inlet port”) is connected to backwash water supply pipe 157 (“fluid supply) which is a temporary connection comprising control valve 160d, which opens to allow backwashing water into the filter apparatus (“filling it”) (see KR (‘493): Page 10: Paragraph 1, and see Figures on Pages 17 and 18), which would have been obvious to add to the vessel 102 of Cowley because it allows for back-spraying of the filter media to desorb contaminants (KR (‘493): Page 9, large paragraph; Page 10, last paragraph).
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 KR (‘493) as discussed above for claim 1, and further in view of Taboada-Serrano et al. (U.S. Patent Publication # 2010/0155335), hereinafter “Cowley”, “KR (‘493)”, and “Taboada-Serrano”.
With respect to claims 20 and 21, Cowley in view of KR (‘493) 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”.
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 in view of KR (‘493). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of instant claim 1 is encompassed by the scope of claim 1 of Patent (‘305).
With respect to instant claim 1, Claim 8 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 removable filter, a circulating fluid outlet port downstream of the filter, 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.
Claim 8 of Patent (‘305) does not teach wherein the combined drain and water inlet port is separate from the circulating fluid outlet port.
KR (‘493) teaches a water treatment apparatus comprising a filter, filtrate outlet 84, and backwashing drainage port 89 (“combined drain and water inlet port”) coupled to an injection header coupling port 88 provided in communication with 87 (see Fig. 3b; Page 9, large paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the backwashing drainage port of KR (‘493) to vessel 102 of claim 8 of Patent (‘305) in order to gain the advantage of having a separate port for removing backwashing water, which the ordinary artisan would recognize would be more contaminated than filtrate leaving the circulating fluid outlet port of claim 1 of Patent (‘305). KR (‘493) teaches a drain pipe 156a for draining backwash water, which is distinct from the filtrate water outlet pipe 154 (see KR (‘493): Page 9, large paragraph), as filtrate water outlet pipe 154 has a check valve which prevents the operation of the filtration unit from being stopped or back flowed through the filtration water outlet pipe 154 at the time of backwashing (Page 9, last paragraph of (KR (‘493)). It is further noted that both Cowley and KR (‘493) are directed to filtration of water in circulating water systems in cooling towers (see KR (‘493): Page 2, Paragraphs 2 and 6, and see Abstract of Cowley).
The above modification places the combined drain and water inlet port (backwashing drainage port 89 of KR (‘493) upstream of the filter when used as a drain port or water inlet port.
Since the all the structural limitations of instant claim 1 have been met by claim 8 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 8 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 of Patent (‘305). It would have been obvious to modify the apparatus of claim 1 with the apparatus of claim 8 comprising the removable filter, as claim 8 directly depends from claim 1 and further defines the apparatus of claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bob Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 20 May 2026
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