DETAILED CORRESPONDENCE
Acknowledgements
This office action is in response to the communication filed 8/27/2025.
Claims 11-20 are pending, Claims 19-20 is withdrawn, and Claims 11-18 have been examined.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, Claims 11-18, in the reply filed on 8/27/2025 is acknowledged. The traversal is on the ground(s) that inventions have a special technical feature and that BABA-697 does not disclose a flocculation aid into the main volume flow having one or more mixing zone containers. This is not found persuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, BABA-937 is cited for teaching a main volume flow (see fig. 1 ref. 5, B1, B2, B3, B4) having a deposition device (refs. 9, 13, 19 as part of circuit tank refs. 6, 7, 8) for the specific purpose of aggregation and sediment removal (¶ [0065]) and Examiner highlights BABA-937 teaches in the Abstract “removed by flocculation and settlement”. BABA-697 is cited for teaching the idea that it is known to add a flocculation aid via ref. 38 to a reaction vessel 36 into a volume flow in series with a coagulation sedimentation type separation tank ref. 37 [equivalent to BABA-937’s deposition device]. It thus follows that one of ordinary skill in the art would find it obvious to improve the flocculation of BABA-937 by adding a flocculation aid before one or each of the deposition devices in the main flow of BABA-937, for the exact purpose of enhancing flocculation and then coagulation sedimentation removal.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19-20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/27/2025.
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 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.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s Admitted Prior Art (AAPA) in view of BABA et al. (JP 2005298937 A) (“BABA-937”) (previously cited) and BABA et al. (JP 2005200697 A) (“BABA-697) (previously cited).
Re claim 11, AAPA teaches a device for depositing undissolved silicon compounds from a pickling fluid in a pickling plant having at least one pickling circuit (see figs. 1-2 ¶¶ [0040]-[0043], ref. 8), the pickling circuit comprising:
a pickling tank (ref. 11, ¶ [0040]) of the pickling plant for pickling metal strips;
a return line (ref. 3, ¶ [0040]) between the pickling tank and a circuit tank (ref. 20);
a pressure line (ref. 4) between the circuit tank and the pickling tank;
a circulation pump (ref. 2) having a maximum pump capacity of from 500 to 600 cubic meters per hour (¶ [011], for circulating a main volume flow of pickling fluid; and
a heating device (ref. 24) arranged in the pressure line for heating the main volume flow to a process temperature; and
wherein the device comprises:
a deposition device (ref. 28) configured to deposit undissolved silicon compounds directly from the main volume flow (see fig. 2 ¶ [0043]).
A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. See MPEP 2152.03, 2129.
AAPA does not explicitly disclose a flocculation device having one or more mixing zone containers configured to introduce at least one flocculation aid into the main volume flow and the deposition device arranged in the circulation tank.
Regarding the deposition device, BABA-937 teaches an apparatus for depositing undissolved silicon compounds (¶ [0017]) from a pickling fluid with a deposition device (see fig. 1 refs. 9, 13, 17) arranged in the circulation tank (refs. 6, 7, 8) in the main volume flow (refs. 5, B1, B2, B3, B4).
Regarding the flocculation device, BABA-697 teaches an apparatus for depositing undissolved silicon compounds (see figs. 1-4), wherein a flocculation device (see figs. 1-4 ref. 38, 36) can be used for introducing a flocculation aid into a volume flow of the pickling fluid (¶¶ [0042]-[0044]) and the flocculation device in series the volume flow into a deposition device (ref. 37) used for coagulation-precipitation separation, such that unnecessary SIO2 components separated in the coagulation sedimentation type separation tank are discharged (¶ [0042]).
At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the apparatus of the AAPA to further include the deposition device arranged in the circulation tank in the main volume flow, as suggested by BABA-937, in order to remove silicon compounds from the circulation path to prevent poor circulation (BABA-937 ¶ [0007]); and to further include a flocculation aid in series before the deposition device, as suggested by BABA-697, in order to assist in flocculation of fine silicon particles (BABA-937 abstract) and so that foreign matters can be effectively removed to promote stable pickling (BABA-697 ¶ [0025]).
Re claims 12, Regarding “the circuit tank has a volume from 2 to 3 times greater than the pickling tank in the pickling circuit”, the mere optimization of size/volume is prima facie obvious to one of ordinary skill in the art in order to enable sufficient flocculation and sediment removal. See MPEP 2144.04(IV)(A) Changes in Size/Proportion. See MPEP 2144.05(II) Routine Optimization. (See also BABA-937 fig. 1 appearing to have a volume (volume of refs. 6, 7, 8) approximately at least 2 to 3 times greater than the volume of the pickling tank (ref. 3). BABA-937 further discloses the deposition device comprises at least a settling zone (see fig. 1 ref. 9), a sedimentation zone (ref. 13), and a reception zone (ref. 17); a first overflow is arranged between the settling zone and the sedimentation zone; and a second overflow is arranged between the sedimentation zone and the reception zone (see fig. 1 overflows via B2, B3).
Re claim 13, Regarding “wherein the flocculation device has at least two mixing zone containers configured to add at least two different flocculation aids into the main volume flow”, the mere duplication of flocculation aid part is prima facie obvious to one of ordinary skill in the art. See MPEP 2144.04(VI)(B) Duplication of Parts. BABA-637 further discloses at least two mixing zone container and two flocculation aids (in different volume flows) and setting the flocculant addition amount according to the silicon content (¶ [0044]), such that it would be obvious to include additional mixing zone container and flocculation aids at different points of the main flow depending on the remaining silicon content, e.g. between the deposition devices of BABA-937.
Re claim 14, Regarding “wherein a sum of volumes of all of the mixing zone containers is from 8 to 25 cubic meters”, the mere change in size and optimization of the volume of the mixing zone container is prima facie obvious to one of ordinary skill in the art for purposes of sufficient contact time between flocculant and fluid. See MPEP 2144.04(IV)(A) Changes in Size/Proportion. See MPEP 2144.05(II) Routine Optimization.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s Admitted Prior Art (AAPA) in view of BABA et al. (JP 2005298937 A) (“BABA-937”) (previously cited) and BABA et al. (JP 2005200697 A) (“BABA-697) (previously cited), as applied above, and further in view of KAWAUCHI (JPS51123961A) (cited by Applicant) (machine translation attached).
Re claim 15, AAPA/BABA-937/BABA-697 disclose as shown above but does not explicitly disclose wherein the deposition device is configured as a lamella separating device comprising a multiplicity of mutually parallel flow channels. However, Kawauchi teaches a deposition device (ref. 2) configured as a lamella separating device comprising a multiplicity of mutually parallel flow channels (ref. 15) (see figs. 1-6). At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the deposition device of AAPA/BABA-937/BABA-697 to further include a lamella separating device, as suggested by Kawauchi, in order to improve separation efficiency by stably keeping gaps and uniform distribution flow.
Re claim 16-18, Kawauchi further discloses wherein the flow channels are inclined at an angle relative to a vertical (see fig. 1 and 6). Regarding “consist of an acid-resistant and heat-resistant material which permanently withstands temperatures of at least 90°C”, the selection of material suitable for pickling fluid application, including acid and heat is prima facie obvious to one of ordinary skill in the art. See MPEP 2144.07 Art Recognized Suitability for an Intended Purpose. wherein the angle is 15-60 (see figs. 1 and 6). Regarding “wherein a normal distance between neighboring flow channels is at least 50 mm”, the mere change in size/dimensions and optimization of flow channel spacing is prima facie obvious to one of ordinary skill in the art, further Kawauchi teaching “minimize the hydraulic turbulence and to remove the factors the prevent the sedimentation…by increasing the equivalent surface finger….”. See MPEP 2144.04(IV)(A) Changes in Size/Proportion. See MPEP 2144.05(II) Routine Optimization.
Conclusion
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KEVIN G. LEE
Examiner
Art Unit 1711
/KEVIN G LEE/Examiner, Art Unit 1711