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 Status
Claims 1-6 are pending. Applicant’s election without traverse of Group I, claims 1-5 in the reply filed on 13 July 2026 is acknowledged; claim 6 is withdrawn.
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 4 and 5 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.
With respect to claim 4, it is unclear to the Examiner what is meant by the term “osmosis water side of the semi-permeable membrane”, as osmosis describes the action of the water as it traverses from the feed solution to the more concentrated draw solution. For the purposes of examination, the Examiner will consider these limitations to be met by an input through which concentrated liquid is received.
Regarding claim 5, it is rejected for being dependent on a rejected base claim.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2021094519 A (Applicant-provided translation and original document Figures relied upon); hereinafter “JP (‘519)”.
With respect to claim 1, teaches an apparatus comprising: a semipermeable membrane module 1 (“concentration unit”) that concentrates water by forward osmosis using a flat semi-permeable membrane 10 (“film”) (Paragraphs [0026, 0027, 0040]; Fig. 1).
With respect to the limitations “carbonate production” and “water to be treated containing carbon dioxide and alkaline earth metal ions”, these limitations are considered to be intended use limitations which are not limiting on the recited apparatus. Since the semi-permeable membrane module 1 is a concentration unit embodied as forward osmosis (see Paragraph [0035]) according to dependent claim 4, the semipermeable membrane module 1 of JP (‘519) is capable of carbonate production via concentration of water to be treated containing carbon dioxide and alkaline earth metal ions.
Regarding apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
With respect to claim 2, teaches wherein the concentration unit performs concentration by osmosis in multiple steps of a first step and a second step, the first step includes a first concentration step of concentrating stock solution (seawater) via reverse osmosis module 2 to produce a first concentrated raw liquid, and the second step includes a second concentration step of concentrating the first concentrated raw liquid to produce a second concentrated liquid via forward osmosis (see Paragraphs [0023, 0025-0027]; Fig. 1).
With respect to claims 3-5, teaches wherein the semipermeable membrane module 1 is embodied as a forward osmosis concentration unit and includes a first flow path through first chamber 11 which has an input that receives seawater and a second flow path through second chamber 12 partitioned via the semi-permeable membrane 10 (“film”), the first flow path and the second flow path are connected to each other such that the water to be treated passes through the first flow path and then passes through the second flow path, and the water to be treated is concentrated in the first flow path (concentrated first target liquid is discharged from first chamber 110 (see Paragraphs [0022, 0023, 0025-0027]; Fig. 1).
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020058972 A (Applicant-provided translation and original document Figures relied upon); hereinafter “JP (‘972)”.
With respect to claim 1, JP (‘972) teaches water to be treated and an attractant/draw solution having a higher concentration than the water to be treated which are brought into contact with each other through a positive osmosis membrane of a forward osmosis unit, which concentrates the water to be treated and produces a diluted draw solution (see Claim 1). JP (‘972) teaches a single stage forward osmosis unit or a plurality of forward osmosis units/stages connected in series (see Paragraph [0047]).
With respect to the limitations “carbonate production” and “water to be treated containing carbon dioxide and alkaline earth metal ions”, these limitations are considered to be intended use limitations which are not limiting on the recited apparatus. Since the semi-permeable membrane module 1 is a concentration unit embodied as forward osmosis (see Paragraph [0035]) according to dependent claim 4, the semipermeable membrane module 1 of JP (‘519) is capable of carbonate production via concentration of water to be treated containing carbon dioxide and alkaline earth metal ions.
Regarding apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
With respect to claims 2-5, JP (‘972) teaches a reverse osmosis unit (“first concentration step”) which precedes the forward osmosis unit(s) (“second concentration step”) (see Paragraphs [0056-0059]), wherein the RO retentate stream is fed into the forward osmosis unit via an input on the primary side (see Fig. 2; Paragraph [0065). JP (‘972) teaches that the treated FO water is embodied as seawater (see Paragraph [0050]), and teaches a first and second fluid path separated by the semi-permeable membrane (see Paragraphs [0065, 0066]), wherein the water to be treated is concentrated in the first flow path to form a second concentrated liquid (the “FO retentate” discussed in Paragraph [0069]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 23 September 2026
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