DETAILED ACTION
Election/Restrictions
Claims 14-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 26, 2026.
Claim Objections
Claim 1 recites “returning the concentrated feed stream…to at least one osmotically assisted reverse osmosis (OARO)”. It is unclear whether the word “membrane” or “stage” should follow “osmotically assisted reverse osmosis (OARO)”.
Claim Rejections - 35 USC § 112
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 1-13 and 26-29 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.
Claims 1 and 26 each utilize language drawn to multiple alternative embodiments (i.e. “selected from the group consisting of”) and combinations of those alternative embodiments (i.e. “and any combination thereof”). While this language is supported by the specification, it is unclear whether the literal embodiment of each possible combination can be supported by the specification or contemplated/working embodiments provided in the submitted drawings.
According to one possible embodiment of claim 1, a concentrated feed stream originating from a membrane passes through a desaturation unit where the desaturation unit is positioned “before delivering the feed water to the at least one feed chamber”. However, if the desaturation unit is positioned prior to passage of feed water to the feed chamber, it cannot simultaneously be treating a concentrated feed stream downstream from the feed chamber.
Another possible embodiment of claim 1 recites a concentrated feed stream originating from a membrane passing through an OARO stage, where the OARO stage is positioned “prior to passage of the feed water…through at least one membrane”. In this case, if the OARO stage is positioned prior to passage of feed water through at least one membrane, the concentrated feed stream cannot simultaneously be positioned upstream and downstream of the membrane.
The embodiments described above are provided as examples of the unclear/unworkable methods contemplated by claim 1 and should not be considered as an exhaustive list of clarity issues. The examiner recommends applicant review the claim language in light of the working examples provided in the specification and the clarity of each contemplated example.
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. MPEP 2173.06 (II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIRK R BASS whose telephone number is (571)270-7370. The examiner can normally be reached 8-4:30 EST Monday-Friday.
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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779
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