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 Objections
Applicant is advised that should claim 5 be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). In this case, claims 5 and 10 both recite the system of claim 3 wherein the at least two core modules is 6 modules. While claim 4 intervenes between claims 3 and 10, claim 4 simply recites a broader range of core modules, and therefore does not impart any additional limitations to claim 10.
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 1-11 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 and its dependent claims recite a “high voltage generating unit”. It is unclear what voltage qualifies as “high voltage”. Paragraph 55 of the specification discloses that the high voltage generating unit “may comprise” a structure that generates a 6V-32V high voltage, but “may comprise” indicates that this is optional and does not have the force of a definition for voltage indicated by “high voltage”.
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.
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi (KR 20170078525 A).
An English-language machine translation of Choi, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation. Figure 1, also referenced herein, is in the original Korean publication.
In paragraph 1 Choi discloses a processing device for functional oil for automobiles, which applies an alternating voltage of 12000 to 24000 V to promote ionization of water contained therein. Choi depicts the device in Figure 1. The device comprises a flow path for the oil between the oil supply 50 and oil storage container 60 (see paragraphs 37 and 39 of Choi), a magnetic field generating unit 1 (paragraphs 32-35), a high voltage generating unit (constituted by 10, 2, and 30 in figure 1, also see paragraph 31 of Choi), a control unit 20 for supplying and managing power to the magnetic field generating unit and the high voltage generating unit (paragraphs 28 and 31-32). In paragraphs 33 and 36 Choi discloses that the magnetic field is rotating, and in paragraph 35 and figure 1 Choi indicates that the magnetic field generating unit and the cores 4 located therein are radially positioned with respect to the magnetic field in the in the oil flow path. In Figure 1 Choi also indicates that the high voltage generating unit (see 2 and 30 in figure 1) is connected to the magnetic field generating unit 1.
The cores 4 disclosed in Figure 1 and paragraphs 32-35 and 38 of Choi meet the limitations of the core modules recited in claims 2-3, as they comprise at least one core. In paragraph 38 Choi discloses that the control means and magnetic field generating cores can be electrically connected, as recited in claim 2. Figure 1 depicts a magnetic field generating unit with six core modules, meeting the limitations of claims 3-5 and 10.
The storage tank 60 in Figure 1 of Choi receives the emulsion after it flows through the movement path and therefore meets the limitations of the emulsion tank of claim 6.
Carrying out the method performed by the processing device of Choi and described in paragraphs 19-38 meets the limitations of claim 9, since Choi teaches a device meeting the limitations of the claimed device and that the device processes compositions comprising water in oil. Applicant acknowledges in paragraphs 16, 21, and 53 of the current specification that an emulsion is formed from the application of a magnetic field to a water-containing mixture and that the generation of hydrogen, as disclosed in paragraphs 18 and 21-22 of Choi, helps to form an emulsion.
In light of the above, claims 1-6 and 9-10 are anticipated by Choi.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Sun (CN 209093209 U).
The discussion of Choi in paragraph 7 above is incorporated here by reference. Choi discloses a system meeting the limitations of claim 1 and comprising a storage tank meeting the limitations of the emulsion tank of claim 6, but does not further disclose that the storage tank comprises an impeller. Choi discloses that the system can be used to process a functional oil for an automobile, such as an engine oil.
An English-language machine translation of Sun, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraph 9 Sun discloses a lubricating oil stirring device comprising a stirring tank, and in paragraphs 10, 26, and 60 discloses that the stirring device comprises an impeller, meeting the limitations of the stirring impeller of claim 7.
It would have been obvious to one of ordinary skill in the art to include the mixing apparatus of Sun, including an impeller, in the storage tank of Choi, since Sun teaches in paragraphs 26 and 60 that the apparatus provides thorough stirring to a lubricating oil, therefore avoiding the negative impacts of uneven stirring identified in paragraph 5 of Sun.
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 1-6 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/272,415. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘415 application differs from claim 1 of the current application only in that the movement path is for water rather than “an object to be treated”, and in that the preamble recites a system for generating hydrogen-reduced water rather than an emulsion. Since water meets the limitations of “an object to be treated”, and is capable of being incorporated into an emulsion, the structure of the system of claim 1 of the ‘415 application meets the limitations of the structure of the system of claim 1 of the ‘415 application. Additionally, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). The difference in the preamble does not distinguish claim 1 of the current application over claim 1 of the ‘415 application.
Claims 2-5 and 12 of the ‘415 application are analogous to claims 2-5 and 10 of the current application. Claim 6 of the ‘415 application recites a storage tank meeting the limitations of the storage tank of claim 6 of the current application.
Claims 1-6 and 10 of the current application are therefore anticipated by the claims of the ‘415 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 8 and 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art, as exemplified by the Choi and Sun references discussed in the above rejections, do not disclose or provide motivation for one of ordinary skill in the art to include an auxiliary magnetic field generating unit in the storage tank in the system of Choi, where the auxiliary magnetic field generating unit is configured to receive power from the control unit and is connected to the high voltage generating unit. Choi discloses, for example in paragraphs 33-34, that the magnetic field applied in the system of Choi is sufficient to imprint the hydrogen ions into the desired frequency band for a long time, and therefore one of ordinary skill in the art would have no reason to include a separate magnetic field generating unit in the storage tank.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771