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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The limitation “a liquid introducing means for introducing a subject solution with a predetermined pressure into the first flow path from the first flow-path-inlet connection part” in claim 1 is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation uses term “a liquid introducing means” that is modified by functional language “for introducing a subject solution with a predetermined pressure into the first flow path from the first flow-path-inlet connection part”, wherein the term “a liquid introducing means” is not modified by sufficient structure, material, or acts for performing the claimed function. It/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tominaga (JPH06-106036A, refer attached English language machine translation for claim mapping).
Regarding claim 1, Tominaga teaches a concentration device comprising a membrane module (1) having a first flow path (through lumen of hollow fiber membrane) and a second flow path (outside of hollow fiber membrane) that are separated by a semipermeable membrane (hollow fiber membranes 3),
wherein the membrane module includes a U-shaped tube in which the semipermeable membrane is disposed (refer fig. 1),
a first flow-path-inlet connection part (refer 8 on either one of the two shown in fig. 1) and a first flow-path-outlet connection part (refer 8 on other of the two) that are an inlet and an outlet of the first flow path respectively (claim is directed to an apparatus, use of ports 8 as inlet or outlet does not structurally differentiate device of Tominaga from the claimed device), and
a second flow-path-inlet connection part (refer part 9 with inlet arrow) and a second flow-path-outlet connection part (refer part 9 with outlet arrow) that are an inlet and an outlet of the second flow path respectively, and
the concentration device includes a liquid introducing means (refer port 9) (the limitation “for introducing a subject solution with a predetermined pressure into the first flow path from the first flow-path-inlet connection part” is reciting intended use of the liquid introducing means without imparting additional structure”), separating the subject solution into a concentrate and a permeate through the semipermeable membrane, passing the permeate through the second flow path, draining the concentrate from the first flow-path-outlet connection part.
The limitation “introducing the subject solution with a pressure lower than the predetermined pressure into the second flow path from the second flow-path-inlet connection part, and draining a diluent, which is diluted with the permeate, from the second flow-path-outlet connection part” is reciting a manner of operating the device without imparting additional structure. "[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). A claim containing 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. Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate. See In re Translogic Technology, Inc., 504 F.3d 1249, 1258, 84 USPQ2d 1929, 1935-1936 (Fed. Cir. 2007).
Regarding claim 2, Tominaga teaches limitations of claim 1 as set forth above. Tominaga further teaches that the semipermeable membrane is a hollow-fiber membrane (refer fig. 1, paragraph [0012]), the hollow-fiber membrane being charged in a U-shape into the U-shape tube (refer fig. 1),
the U-shaped tube has hollow-fiber membrane support parts on both ends of the U-shaped tube, the hollow-fiber membrane being fixed with opened hollow-fiber ends to the U-shaped tube in a fluid-tight state by the hollow-fiber membrane support parts (refer fig. 1, paragraphs [0012]-[0018]),
the first flow-path-inlet connection part and the first flow-path-outlet connection part are configured to communicate with an external passage of the hollow-fiber membrane that is the first flow path (refer fig. 1, paragraph [0023]), and
the second flow-path-inlet connection part and the second flow-path-outlet connection part are configured to communicate with an internal passage of the hollow-fiber membrane that is the second flow path (refer fig. 1, paragraph [0022]).
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(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga (JPH06-106036A), in view of Inoue (US 2022/0387935).
Regarding claim 3, Tominaga teaches limitations of claim 2 as set forth above. Tominaga does not teach that a contact surface between the U-shaped tube and the hollow-fiber membrane support part is subjected to roughening.
Inoue teaches a filtration module comprising hollow fiber membranes (refer abstract, fig. 1), wherein a contact surface between hollow fiber membrane support part (5) and cap (3) roughened (refer grooves 330) to increase surface area, thereby enabling reinforced adhesion between membrane support part and contact surface (Refer [0056], fig. 4).
It would have been obvious to one of ordinary skill in the art to modify the device of Tominaga to roughen a contact surface between the U-shaped tube and the hollow-fiber membrane support part to increase surface area, thereby enabling reinforced adhesion between membrane support part and contact surface as taught by Inoue.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga (JPH06-106036A), in view of Fujiwara et al. (WO 2018084246A1).
Regarding claims 4 and 5, Tominaga teaches limitations of claim 1 and 2 as set forth above. Tominaga does not teach that the concentration device comprises a plurality of membrane modules, the first flow-path-outlet connection part of the n-th membrane module and the first flow-path- inlet connection part of the n+1-th membrane module are connected to each other, and the second flow-path-outlet connection part of the n+1-th membrane module and the second flow-path-inlet connection part of the n-th membrane module are connected to each other.
Fujiwara teaches a concentration method and concentration device, wherein a plurality of membrane modules are connected in series, each of the plurality of semipermeable membrane modules being semipermeable Membrane, and a first chamber and a second chamber partitioned by the semipermeable membrane (refer page 2 – Summary of invention; Fig. 1). In fig. 1, nth module (11) comprising a first flow path inlet (connected to 30), a first flow path outlet (connected to 31), a second flow path inlet (connected to 32), and a second flow path outlet (connected to 35); and n+1 module (12) a first flow path inlet (connected to 31), a first flow path outlet (connected to 33), a second flow path inlet (connected to 42), and a second flow path outlet (connected to 32); wherein the first flow-path-outlet connection part (connected to 31) of the n-th membrane module (11) and the first flow-path- inlet connection part (connected to 31) of the n+1-th membrane module (12) are connected to each other, and the second flow-path-outlet connection part ( connected to 32) of the n+1-th membrane module (12) and the second flow-path-inlet connection part (connected to 32) of the n-th membrane module (11) are connected to each other.
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the concentration device of Tominaga to include a plurality of membrane modules, the first flow-path-outlet connection part of the n-th membrane module and the first flow-path- inlet connection part of the n+1-th membrane module are connected to each other, and the second flow-path-outlet connection part of the n+1-th membrane module and the second flow-path-inlet connection part of the n-th membrane module are connected to each other as taught by Fujiwara to produce target solution with a higher concentration and generate a plurality of diluted solutions having different concentrations.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga (JPH06-106036A), in view of Inoue (US 2022/0387935) as applied to claim 3 above, and further in view of Fujiwara et al. (WO 2018084246A1).
Regarding claim 3, modified Tominaga teaches limitations of claim 2 as set forth above. Modified Tominaga does not teach that the concentration device comprises a plurality of membrane modules, the first flow-path-outlet connection part of the n-th membrane module and the first flow-path- inlet connection part of the n+1-th membrane module are connected to each other, and the second flow-path-outlet connection part of the n+1-th membrane module and the second flow-path-inlet connection part of the n-th membrane module are connected to each other.
Fujiwara teaches a concentration method and concentration device, wherein a plurality of membrane modules are connected in series, each of the plurality of semipermeable membrane modules being semipermeable Membrane, and a first chamber and a second chamber partitioned by the semipermeable membrane (refer page 2 – Summary of invention; Fig. 1). In fig. 1, nth module (11) comprising a first flow path inlet (connected to 30), a first flow path outlet (connected to 31), a second flow path inlet (connected to 32), and a second flow path outlet (connected to 35); and n+1 module (12) a first flow path inlet (connected to 31), a first flow path outlet (connected to 33), a second flow path inlet (connected to 42), and a second flow path outlet (connected to 32); wherein the first flow-path-outlet connection part (connected to 31) of the n-th membrane module (11) and the first flow-path- inlet connection part (connected to 31) of the n+1-th membrane module (12) are connected to each other, and the second flow-path-outlet connection part ( connected to 32) of the n+1-th membrane module (12) and the second flow-path-inlet connection part (connected to 32) of the n-th membrane module (11) are connected to each other.
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the concentration device of modified Tominaga to include a plurality of membrane modules, the first flow-path-outlet connection part of the n-th membrane module and the first flow-path- inlet connection part of the n+1-th membrane module are connected to each other, and the second flow-path-outlet connection part of the n+1-th membrane module and the second flow-path-inlet connection part of the n-th membrane module are connected to each other as taught by Fujiwara to produce target solution with a higher concentration and generate a plurality of diluted solutions having different concentrations.
Conclusion
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/PRANAV N PATEL/Primary Examiner, Art Unit 1777