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 .
Status
Claims(s) 1-4, 6-10, is/are filed on 06/18/2026 are currently pending. Claim(s) 10 is/are withdrawn without traverse, 1-4, 6-9 is/are rejected.
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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 pre-AIA 35 U.S.C. 103(a) 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) 1-4, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAMAKOSHI (JP H0440292 A) in view of CHOI (Choi, J. "Effect of dissolved oxygen on efficiency of TOC reduction by UV at 185 nm in an ultrapure water production system," Water Research, Vol. 154, pp. 21–27, available online February 1, 2019).
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Claims 1-4, 6-9 are directed towards apparatus claims. Please note: "[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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).“The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.” Id.at 580.
Regarding claim 1, YAMAKOSHI teaches a pure water production apparatus comprising: an ultraviolet ray radiation apparatus (1 and 2) that irradiates water to be treated with ultraviolet rays; a TOC acquisition unit (5) and a dissolved oxygen concentration acquisition unit (6) that are provided upstream of the ultraviolet ray radiation apparatus; and a controller (organic matter concentration adjusting means 7 and dissolved oxygen concentration adjusting means 8, operated on the basis of the measurement results of meters 5 and 6) configured to control the concentration of dissolved oxygen in the water to be treated that is supplied to the ultraviolet ray radiation apparatus such that a mass ratio of the dissolved oxygen concentration acquired by the DO meter to the TOC acquired by the TOC meter is 1 or more and 7 or less. YAMAKOSHI measures both the organic-matter (TOC) concentration and the DO concentration in the raw water and, based on those measurements, adjusts the organic-matter concentration to 10–100 ppb and the DO concentration to 10–100 ppb "to a predetermined concentration ratio," identifying the "most desirable" operating point as an organic-matter concentration of 50 ppb and a DO concentration of 50 ppb — i.e., a DO/TOC mass ratio of 1, which falls within the claimed range of 1 to 7 (p. 3–4). YAMAKOSHI's disclosed operating envelope (DO 10–100 ppb over TOC 10–100 ppb) further spans DO/TOC ratios that overlap and encompass the claimed range, rendering that range prima facie obvious (In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003); MPEP 2144.05).
YAMAKOSHI does not teach that the controller controls the dissolved oxygen concentration such that a consumption rate of dissolved oxygen is 93% or more and 96% or less.
CHOI in the same field of endeavor (TOC reduction by low-pressure ultraviolet (185 nm) oxidation in an ultrapure-water production system), teaches the consumption of dissolved oxygen as the operative, quantified variable governing organic/TOC removal. CHOI reports that ultraviolet irradiation of the water removed 15%–90% of the dissolved oxygen in control tests, and that in the runs in which organic matter was actually being oxidized, the degradation efficiency improved with increasing dissolved-oxygen concentration, with more than 90% dissolved-oxygen consumption. CHOI further establishes that the dissolved-oxygen consumption rate and the resulting TOC removal are governed by two controllable variables — the DO concentration in the feed water and the UV dose — with the maximum TOC removal observed at the highest DO concentration (100 μg/L) and the highest UV dose tested. CHOI therefore identifies the dissolved-oxygen consumption rate as a recognized result-effective variable, disclosing an operating range ("more than 90%" consumption) that overlaps and encompasses the claimed 93%–96% band.
It would have been obvious to one of ordinary skill in the art before the effective filing date, in the apparatus of YAMAKOSHI, to configure the controller (7, 8) to control the dissolved oxygen concentration so as to operate at a dissolved-oxygen consumption rate falling within 93%–96%, in view of CHOI, in order to maximize the oxidative decomposition of TOC in the low-pressure UV oxidizer while limiting the residual dissolved-oxygen load carried downstream. Because CHOI expressly teaches that the dissolved-oxygen consumption rate is a result-effective variable tied to TOC-removal efficiency and controllable through the DO concentration and UV dose, arriving at the specific closed sub-range of 93%–96% amounts to no more than the routine optimization of a recognized result-effective variable (In re Aller, 220 F.2d 454 (CCPA 1955); MPEP 2144.05(II)). Moreover, because the recited consumption rate is a functional consequence of operating a low-pressure UV oxidizer at the very DO/TOC ratio that YAMAKOSHI teaches, one of ordinary skill would reasonably expect a consumption rate in the claimed vicinity to result from the combination (MPEP 2112).
Regarding claim 2, YAMAKOSHI in view of CHOI teaches wherein the controller is configured to control the dissolved oxygen concentration such that the mass ratio is 2 or more and 7 or less. YAMAKOSHI's operating envelope (DO 10–100 ppb; TOC 10–100 ppb) yields DO/TOC ratios ranging up to 10, encompassing the claimed 2–7 sub-range (p. 4; MPEP 2144.05).
Regarding claim 3, YAMAKOSHI teaches wherein the TOC in the water supplied to the ultraviolet ray radiation apparatus is 10 μg/L or less; YAMAKOSHI adjusts the organic-matter (TOC) concentration to 10–100 ppb, the lower end of which reads on 10 μg/L (p. 3–4).
Regarding claim 4, YAMAKOSHI in view of CHOI teaches wherein the controller is configured to control the dissolved oxygen concentration such that the mass ratio is 2 or more and 5 or less, for the reasons given for claims 1 and 2 (encompassed by YAMAKOSHI's operating envelope; MPEP 2144.05).
Regarding claim 8, YAMAKOSHI teaches further comprising an oxygen supplier (oxygen gas injection device, provided as the dissolved oxygen concentration adjusting means 8) positioned in the raw water inlet pipe upstream of the ultraviolet ray radiation apparatus (p. 3–4). Positioning the oxygen supplier upstream of the dissolved oxygen concentration acquisition unit (DO meter 6) so that the measured DO reflects the adjusted concentration for feedback control would have been obvious as a matter of routine arrangement of a sensor and its actuator in a control loop.
Regarding claim 9, YAMAKOSHI teaches wherein no oxidizing agent is added to the water to be treated that is supplied to the ultraviolet ray radiation apparatus; YAMAKOSHI adds only oxygen gas and/or organic matter for concentration adjustment, and adds no chemical oxidant to the UV supply water (p. 3–4). CHOI & CHUNG likewise oxidize organic matter using UV irradiation of the ultrapure water without addition of a chemical oxidant to the UV feed (oxidation driven by UV-185 irradiation and dissolved oxygen, without added oxidant).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAMAKOSHI (JP H0440292 A) in view of CHOI (Choi, J. "Effect of dissolved oxygen on efficiency of TOC reduction by UV at 185 nm in an ultrapure water production system," Water Research, Vol. 154, pp. 21–27, available online February 1, 2019) and TOKOSHIMA (JP 2011167633 A).
Regarding claim 6, YAMAKOSHI teaches that the dissolved oxygen concentration adjusting means 8 may be a dissolved-oxygen removal device (a vacuum deaerator, membrane deaerator, or palladium catalyst device) provided upstream of the ultraviolet irradiation device (p. 2–4). TOKOSHIMA likewise teaches a deoxidizer (gas dissolution membrane module 2, evacuated to reduce and adjust dissolved oxygen) positioned upstream of the dissolved oxygen concentration acquisition unit (DO meter 2K, located at the module outlet) and the ultraviolet ray radiation apparatus (low-pressure UV oxidizer 3) ([0045]–[0047]). It would have been obvious to include such a deoxidizer upstream of the DO meter and UV apparatus in YAMAKOSHI's apparatus to accurately set the dissolved-oxygen concentration to the target ratio before UV irradiation.
Regarding claim 7, TOKOSHIMA teaches wherein the deoxidizer is a deaerator apparatus (gas dissolution membrane module 2), and the concentration of dissolved oxygen is controlled by adjusting a degree of vacuum in the deaerator apparatus; the gas-phase chamber 2B is evacuated by a vacuum pump 2P, enabling the dissolved-oxygen concentration to be adjusted to a value lower than that generated upstream ([0046]). It would have been obvious to control the dissolved-oxygen concentration by adjusting the degree of vacuum, as taught by TOKOSHIMA, in the apparatus of YAMAKOSHI in order to achieve accurate, low-concentration (ppb-order) DO control prior to UV oxidation ([0046], [0049]).
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It is noted that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference 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 suggested to one having ordinary skill in the art. See MPEP 2123.
Response to Arguments
Applicant' s arguments with respect to the claims have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Waqaas Ali whose telephone number is (571) 270-0235. The examiner can normally be reached on M-F 9-5 PM.
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/WAQAAS ALI/Primary Examiner, Art Unit 1777
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