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 .
Claim Rejections - 35 USC § 112(b)
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 1–3 and 6 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 recites:
1. A pipe insert for generating nano-bubbles as an insert inserted and installed into a plumbing pipe in a longitudinal direction, comprising:
a body of the insert comprising either or both of dividing walls configured to divide a fluid path space of the pipe, and space dividers protruding into the fluid space to increase a friction surface of a gas-liquid mixed fluid for generating nano-bubbles in the pipe;
a main wall surrounding the body of the insert in a closed form; and
one or more spacer protrusions formed continuously around the main wall in the longitudinal direction of the pipe to maintain a gap between the main wall and an inner wall of the pipe,
wherein a flow of the fluid is physically separated by the main wall into an inner flow path passing through an inside of the main wall and an outer flow path passing between an outside of the main wall and the inner wall of the pipe. Emphasis added.
Claim 1 is indefinite because it is unclear whether—“to increase a friction surface of a gas-liquid mixed fluid for generating nano-bubbles in the pipe”—limits only the “space dividers” or whether it also limits the “dividing walls.”
Claim 1 is also indefinite because it is a single claim that claims both an apparatus and method steps of using the apparatus. Specifically, claim 1 is to an apparatus because it describes a “pipe insert.” But the claim also includes method steps of using the apparatus in the limitation—“wherein a flow of the fluid is physically separated by the main wall into an inner flow path passing through an inside of the main wall and an outer flow path passing between an outside of the main wall and the inner wall of the pipe.” The claim is indefinite because it is unclear whether infringement would occur when a pipe insert is created that allows the fluid to flow in the claimed manner, or whether infringement requires that fluid actually flows in the manner as claimed. See MPEP 2173.05(p), subsection II (a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite).
To overcome these rejections, claim 1 could be amended to read (assuming written description support):
1. A pipe insert for generating nano-bubbles as an insert inserted and installed into a plumbing pipe in a longitudinal direction, comprising:
a body of the insert comprising either or both of dividing walls configured to divide a fluid path space of the pipe to increase a friction surface of a gas-liquid mixed fluid for generating nano-bubbles in the pipe, and space dividers protruding into the fluid space to increase a friction surface of a gas-liquid mixed fluid for generating nano-bubbles in the pipe;
a main wall surrounding the body of the insert in a closed form; and
one or more spacer protrusions formed continuously around the main wall in the longitudinal direction of the pipe to maintain a gap between the main wall and an inner wall of the pipe,
wherein the pipe insert is configured to separate a flow
Claims 2, 3 and 6 are indefinite because they depend from claim 1.
Also, claim 3 recites:
3. The pipe insert of claim 1, further comprising one or more sub bodies separately manufactured and physically inserted into the sectional spaces longitudinally,
wherein the sub bodies comprise either or both of dividing walls configured to divide the fluid path space of the pipe, or space dividers configured to protrude into the fluid path space. Emphasis added.
Claim 3 is indefinite because “the sectional spaces” lacks antecedent basis as this limitation is introduced in claim 2 instead of claim 1.
Claim 3 is also indefinite because it is unclear if the “dividing walls” and “space dividers” refer to the “dividing walls” and “space dividers” of claim 1 (or to different dividing walls and space dividers). Further clarification is required.
Claim Rejections - 35 USC § 102
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 1–3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ellis et al., US 3,957,931.
Regarding claim 1, Ellis teaches a packing element, which reads on the claimed “pipe insert.” See Ellis Fig. 22, col. 2, ll. 61–63. Note that the preamble limitations indicating that the pipe insert is—“for generating nano-bubbles as an insert inserted and installed into a plumbing pipe in a longitudinal direction”—fails to patentably distinguish over the prior art because it describes the intended use rather than the structure of the apparatus. See MPEP 2111.02, subsection II (where the preamble merely states the purpose or intended use of the invention and the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention, the preamble is not considered a limitation and is of no significance to claim construction).
The packing element comprises a “main body,” which is the structure of the packing element seen in Fig. 22. The main body comprises ribs 3, which read on the “dividing walls configured to divide the fluid path space of the pipe.” See Ellis Fig. 22, col. 3, ll. 15–10. The limitation of “to increase a friction surface of a gas-liquid mixture fluid for generating nano-bubbles in the pipe” fails to patentably distinguish over the prior art because it describes the intended use rather than the structure of the apparatus. See MPEP 2114 (manner of operating the device does not differentiate apparatus claim from the prior art).
The packing element also comprises a cylindrical member 1, which reads on the “main wall surrounding the body of the insert in a closed form.” See Ellis Fig. 22, col. 3, ll. 15–19.
The packing element further comprises ribs 3b (the “one or more spacer protrusions”) formed continuously around the cylindrical member 1 in the longitudinal direction, as claimed, as seen in Fig. 22. The limitation of “to maintain a gap between the main wall and an inner wall of the pipe” fails to patentably distinguish over the prior art because it describes the intended use rather than the structure of the apparatus, while the “pipe” is not a positively recited structural element of the claim. See MPEP 2114 (manner of operating the device does not differentiate apparatus claim from the prior art); MPEP 2115 (a claim is only limited by positively recited elements).
The limitation of—“a flow of the fluid is physically separated by the main wall into an inner flow path passing through an inside of the main wall and an outer flow path passing between an outside of the main wall and the inner wall of the pipe”— fails to patentably distinguish over the prior art because it describes the intended use rather than the structure of the apparatus, while the “pipe” is not a positively recited structural element of the claim. See MPEP 2114 (manner of operating the device does not differentiate apparatus claim from the prior art); MPEP 2115 (a claim is only limited by positively recited elements).
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Regarding claim 2, Ellis teaches that the body of the packing element is formed such that a plurality of the ribs 3 (the “dividing walls”) intersect each other to divide the inner flow path into a plurality of sectional spaces, as claimed, as seen in Fig. 22.
Regarding claim 3, Ellis teaches that the packing element further comprises ribs 3a (the “one or more sub bodies”) that comprise “space dividers” configured to protrude into the fluid path space, as claimed, as seen in Fig. 22.
Note that the limitation indicating that the one or more sub bodies are “separately manufactured and physically inserted into the sectional spaces longitudinally” fails to patentably distinguish over the prior art because it describes the process of making the apparatus with there being no evidence that the process steps impart structure. See MPEP 2113 (the patentability of a product does not depend on its method of production).
Claim Rejections - 35 USC § 103
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ellis et al., US 3,957,931 in view of Kerfoot, US 2012/0085530 A1.
Regarding claim 6, Ellis teaches a sewage treatment apparatus comprising the packing element of Fig. 22. See Ellis col. 1, ll. 11–34.
Ellis differs from claim 6 because it is silent as to the sewage treatment apparatus being a nano-bubble generator.
But Kerfoot teaches an apparatus for treating sewage effluent where nanobubbles are generated and introduced into the sewage. See Kerfoot [0027]–[0029]. The nanobubbles are beneficial because they aid in paraffin reduction. Id. at [0027].
It would have been obvious for the sewage treatment apparatus to have a mechanism for introducing nanobubbles into the sewage to aid in paraffin reduction. With this modification, the sewage treatment apparatus reads on the “nano-bubble generator” because it contains a mechanism for generating nanobubbles.
Response to Arguments
35 U.S.C. 112(b) Rejections
The Examiner withdraws the prior 35 U.S.C. 112(b) rejections in light of the amendments.
35 U.S.C. 102 & 103 Rejections
Applicant’s arguments with respect to the rejection of claims 1–3 under 35 U.S.C. 102 over Couture, US 5,779,886 and the 35 U.S.C. 103 rejection of claim 6 over Flournoy et al., US 2007/0102354 A1 in view of Couture, US 5,779,886 and in further view of Nelson, US 2009.0206497 A1 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Ellis et al., US 3,957,931.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tanaka et al., JP 2012-187549 A (degassing tube comprising interior divided by core 10 and rib portions 12); Tussy et al., US 2015/0053298 A1 (tubing 100 with projections 140 that can extend the along the entire outer surface of the tubing 100 in an axial direction).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
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