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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/279,604 application filed on August 31, 2023. Claims 1, 2, 5, 6, 8-12, 16-18 and 21-28 are pending. Claims 17, 18 and 21-28 are examined, on the merits, in this Office action. The examined claims are directed to an apparatus.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 17, 18 and 21-28, in the reply filed on January 27, 2026 is acknowledged. Claims 1, 2, 5, 6, 8-12, 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Interpretation
The examined claims are apparatus claims requiring only the positively recited structural components, although structured with physical features that can perform the stated functions or accomplish the intended uses. Functional limitations state either an intended use or operation, a manner of operating a device, apparatus or system, or what the apparatus/system does. Apparatus 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). Also, 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Of course, in the patentability analysis of these apparatus/system claims, functional features are considered/not ignored and Applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP §§ 2114, 2173.05(g)).
The recited feed and exhaust gases and wastewater, for example, are considered materials potentially contained within, transient or passing through, generated or produced, or otherwise worked upon by the apparatus rather than structural components of the apparatus.
According to the MPEP §2115 [R-2], a material or article worked upon does not limit apparatus claims: Expressions relating an apparatus to contents thereof during an intended operation are of no significance in determining patentability of apparatus claims. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 17, 18 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Houwelling et al. (WO2019216906; Houwelling)(also published as US20210171375, which is referenced below).
Claims 17, 18 and 21 are rejected under 35 U.S.C. 102((a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Houwelling et al. (WO2019216906; Houwelling)(also published as US20210171375, which is referenced below).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure.
Regarding claims 17, 18, and 21, Houwelling discloses a membrane aerated biofilm reactor for processing wastewater, the reactor comprising
one or more membranes 40 defining a flow path along which a feed gas may be supplied to the membrane for diffusion therethrough and from which an exhaust gas can be extracted downstream of the membrane ([0014], [0020]);
one or more sensors 66, 69 operable to monitor one or more parameters of the wastewater and/or exhaust gas and/or feed gas ([0020]); and
a controller arranged to receive the monitored parameters and modulate the supply of feed gas to the membrane in order to control the composition of the exhaust gas ([0006], where a controller is implicit; “in some examples, the pre-treatment is controlled to remove ammonia to about the point of material alkalinity depletion”).
Alternately, Houwelling discloses the claimed invention, except for a controller arranged to receive the monitored parameters and modulate the supply of feed gas to the membrane in order to control the composition of the exhaust gas.
However, Houwelling mentions as a background that attempts at recovering alkalinity biologically, such as by adding a carbon source to enhance biological denitrification, or by trying to recover alkalinity through an anammox pathway, is difficult to control ([0003]). However, Houwelling also teaches their pre-treatment process is controlled to remove ammonia to about the point of material alkalinity depletion and that one or more parameters such as alkalinity, pH, or membrane exhaust oxygen concentration can be monitored to determine if alkalinity depletion has occurred or is about to occur ([0006]). An increase in membrane exhaust oxygen concentration that is not attributable to a change in oxygen feed rate indicates that microorganisms in the biofilm are being inhibited from oxidizing (i.e. nitrifying) ammonia ([0010]). A continuous MABR process may also be configured to operate at about the point of alkalinity depletion by adjusting one or more process parameters such as feed rate or residence time upon sensing alkalinity depletion (Id.). Also, the exhaust gas from the MABR modules was measured for oxygen concentration to determine the mass transfer of oxygen through the membranes ([0030]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a controller arranged and functioning as claimed, since Houwelling notes the control and monitoring of alkalinity by adjusting process parameters, including feed rates, and it would have been obvious to use a controller for recited control and functionality.
Additional Disclosures Included: Claim 18: The controller is operable to modulate the supply of feed gas to the biofilm in order to control the level of nitrous oxide in the exhaust gas or in order to control the composition of contaminants in the wastewater (this is stating the expected result of the operation of the controller; since there are oxygen and pH sensors and the reactor is geared to reducing high ammonia concentrations, the expected result is implied); and Claim 21: The one or more sensors are operable to monitor one or more parameters selected from the group consisting of dissolved oxygen; oxidation reduction potential; pH and/or temperature; chemical oxygen demand; total organic carbon; ammonia concentration; nitrogen dioxide concentration; nitrate concentration; total nitrogen concentration of the wastewater, biofilm thickness, and oxygen transfer rate; oxygen transfer efficiency; oxygen concentration; and nitrous oxide concentration in the exhaust gas ([0006], [0010], [0020], [0023]-[0025], where at least oxygen, pH and ammonia are measured).
Claim Rejections - 35 USC § 103
Claims 22-28 are rejected under 35 U.S.C. 103 as being unpatentable over Houwelling et al. (WO2019216906) in view of Cote et al. (US20170088449; Cote).
Regarding claims 22-25, 27 and 28, Houwelling discloses a reactor according to claim 17 except comprising an array of hollow fibres the outer surface of which collectively define the membrane.
Although not explicitly mentioned in Houwelling, an array of hollow fibres is traditional in membrane bioreactors and is thus implicit in Houwelling.
Nevertheless, Cote evidences the concept. Cote, for example, discloses a system where wastewater is treated though primary treatment of the water by way of a micro-sieve to produce a primary effluent and primary sludge (Abstract). Cote teaches an MABR using hollow fiber membranes arranged in modules and cassettes deployed in a way similar to immersed hollow fiber filtration membranes used for an MBR, where air is fed down the lumen of hollow fibers and oxygen is transferred to the biofilm growing on the outer surface of the membrane ([0014]). The air feed flow rate and/or pressure can be controlled to achieve a target oxygen transfer efficiency (OTE) value ([0102]). The process can be controlled to achieve the most stringent total nitrogen effluent concentrations (0153]). A control valve is adjusted on the exhaust air side ([01888]). Process control of the technology (e.g., modulation of belt speed) allows for tuning of the organics removal, which is not possible with conventional primary clarification ([0150]).
At the time when the claimed invention was effectively filed, it would have been obvious to an ordinarily skilled artisan to employ a traditional array of hollow fibres, where the outer surface collectively define the membrane, as an effective means of better controlling oxygen transfer and the overall wastewater treatment.
Additional Disclosures Included: Claim 23: Each hollow fibre comprises an internal lumen which collectively define the flow path along which the feed gas may be supplied to the membrane for diffusion therethrough (Cote (claim 22 analysis); Houwelling, [0014], [0020], [0021], where air is supplied from a single source to a first air supply line towards the internal lumen of the one or more membranes (40) and a second air supply line towards the aerator (48), which functions as an air lift mixer, where both air supply lines are provided with a regulation valve); Claim 24: A gas flow control valve on the flow path and operable by the controller to modulate the supply of feed gas to the membrane (Cote, [0089]; claim 23 analysis); Claim 25: The controller is programmed with an algorithm to process the one or more parameters in order to modulate the supply of feed gas to the membrane (feed gas is modulated and in a computerized system with a controller, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an algorithm for this task); Claim 27: A reactor according to claim 17 comprising an air lift mixer (in Houwelling, air is supplied from a single source to a first air supply line towards the internal lumen of the one or more membranes (40) and a second air supply line towards the aerator (48), which functions as an air lift mixer); and Claim 28: A single gas supply for the feed gas and the air lift mixer (claim 23 analysis).
Regarding claim 26, Houwelling and Cote discloses a reactor according to claim 17 except comprising a nitrous oxide scrubber to which the exhaust gas is fed.
However, nitrous oxide is known to be a problematic gas for the environment, and as such it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a structural component, such as a scrubber, for removing that component from the exhaust gas.
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAYDEN BREWSTER/Examiner, AU 1779