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 .
Response to Amendment
The examiner acknowledges the following amendments submitted by the applicant on 04/16/2026:
Claims 18-19 are cancelled
Claims 1, 5, 6-8, 11, 13-17 amendments
In regards to the applicants’ amendments of claims 5 and 17 in reference to the examiners claim objection, the amendments have been entered and overcome the claim objection. The objections of claims 5 and 17 have been withdrawn.
Response to Arguments
In regards to the applicant’s arguments referring to the rejection of claims 1-7, 12-13, 15, 17, and 19, wherein the applicant argues that Toshiba does not teach the claimed first mixture because Toshiba teaches the first mixture is made “pure water” and an amine compound/solution while the amended claim states that the treated water comprises water and a solute. Applicant’s arguments regarding this issue have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made of Toshiba, in light of Ren, in view of Kimberlin.
For clarity of the record, the examiner would like to note the usage of Ren, prior to the rejection mapping, as Ren is being used as an evidentiary reference in light of the teachings of Toshiba and the applicant’s arguments regard “pure water” taught by Toshiba. In Toshiba, paragraph 15 states that a cellulose acetate (CA) membrane can be used in regards to the osmosis membrane disclosed in the first treatment container that separates the two chambers. Specifically, Toshiba discloses a membrane manufactured by HTI in one of their examples that were used during their experimentation. Ren similar carries out a study on the effectiveness of a CA membrane, manufactured by HTI {Ren, abstract}, and comparing the results to a newer membrane that was also manufactured by HTI. Their study shows, as seen in figure 4 of the study that this CA membrane does not have a 100% salt rejection rate, meaning that while the membrane may filter a majority of the salt (in this case ~93-94%) in a salt water solution, some of the salt, or solute, will exit the other side of the membrane. This is important in regards to the applicant’s argument for the inability to use Toshiba in the rejection of the instant application. Given the teachings of Ren, it can be concluded, that the cellulose acetate forward osmosis membrane of Toshiba may still have solute in what Toshiba describes as “pure water”, thus Toshiba would still read on the amended claims language of “treated water comprising water and solute”. The full details of this rejection will be discussed below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 does not further limit the subject matter over claim 1, as claim 1 already limits the first mixture separation temperatures of inclusively between 3°C and 40°C. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 does not further limit the subject matter over claim 13, as claim 13 already limits the first mixture separation temperatures of inclusively between 3°C and 40°C. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toshiba (IN201844033942A), in light of Ren (NPL, “Thin film composite membrane for forward osmosis…”), and in view of Kimberlin (US3177139A). *Note the dependance on Ren, can be understood in the Response to Arguments section of this office correspondence.
In regards to claim 1, Toshiba teaches a water treatment system comprising: {Paragraph 4, "water treatment system"} an element that introduces treated water comprising water and a solute into a first container; {Paragraph 8, "a first treatment container … a first chamber 13 accommodating water to be treated A"} an element that introduces an amine solution into the first container to obtain a first mixture in which treated water and the amine solution are mixed; {Paragraph 8, "a first treatment container … a second chamber 14 accommodating draw solution B" draw solution B contains the amine compound and paragraphs 9-10, "water to be treated A … permeates through the osmosis membrane 12 and moves to the draw solution B in the second chamber … draw solution B is separated from water when heated" implying they had to have been mixed after permeation through the membrane} and an element that separates a supernatant phase and a concentrated phase of a second mixture in which the first mixture is phase-separated, {Paragraph 19, "heating means" and paragraph 10, "draw solution B is separated from water when heated … this the draw solution B is concentrated"} wherein the amine solution includes one or more tertiary amine compounds represented by a chemical formula (1) or/and a chemical formula (2), {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" and compounds (2) and (1)} R1 in the chemical formula (1) is a linear alkyl chain having 2 or more and 4 or less carbon atoms, {Paragraph 5, "R4 in chemical formula …(2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} R2 in the chemical formula (2) is a linear alkyl chain having 2 or more and 4 or less carbon atoms, {Paragraph 5, "R1 … in chemical formula (1) … each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} R3 in the chemical formula (2) is a linear alkyl group having 1 or more and 4 or less carbon atoms or a branched alkyl group having 3 or 4 carbon atoms, {Paragraph 5, "R2 … in chemical formula (1) … each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} and R4 in the chemical formula (2) is a linear alkyl group having 1 or more and 4 or less carbon atoms or a branched alkyl group having 3 or 4 carbon atoms, {Paragraph 5, "R3 … in chemical formula (1) … each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} the one or more tertiary amine compounds in the first mixture dissolve in the treated water. {Paragraph 22, "when the temperature of the draw solution B decreased … the solubility of the amine compound in water is increased, and the draw solution B becomes an aqueous solution of a single phase}
In regards to claim 2, Toshiba teaches the water treatment system according to claim 1, wherein R2 in the chemical formula (2) is a linear alkyl chain having 2 or more and 4 or less carbon atoms, {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} and R3 and R4 are the same and are linear alkyl groups each having 1 or more and 4 or less carbon atoms or branched alkyl groups each having 3 or 4 carbon atoms. {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" This teaching allows for both R3 and R4 to have the same structure}
In regards to claim 3, Toshiba teaches the water treatment system according to claim 1, wherein R2 in the chemical formula (2) is a linear alkyl chain having 2 or 3 carbon atoms, {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} and R3 and R4 are the same and are linear alkyl groups each having 1 or more and 3 or less carbon atoms or branched alkyl groups each having 3 or 4 carbon atoms. {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" This teaching allows for both R3 and R4 to have the same structure}
In regards to claim 4, Toshiba teaches the water treatment system according to claim 1, wherein R2 in the chemical formula (2) is a linear alkyl chain having 2 or 3 carbon atoms, {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} and R3 and R4 are the same and are linear alkyl groups each having 1 or more and 3 or less carbon atoms or branched alkyl groups each having 3 carbon atoms. {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" This teaching allows for both R3 and R4 to have the same structure}
In regards to claim 5, Toshiba teaches the water treatment system according to claim 1, wherein R2 in the chemical formula (2) is a linear alkyl chain having 3 carbon atoms, {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms"} and R3 and R4 are the same and are linear alkyl groups each having 1 or more and 3 or less carbon atoms. {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" This teaching allows for both R3 and R4 to have the same structure}
In regards to claim 6, Toshiba teaches the water treatment system according to claim 1, wherein the amine compound of the chemical formula (1) is one or more compounds selected from a group consisting of a tertiary amine compound of the chemical formula (1-1), a tertiary amine compound of the chemical formula (1-2), and a tertiary amine compound of the chemical formula (1-3). {Paragraph 5, "R4 in chemical formula …(2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" and chemical formula (2)}
In regards to claim 7, Toshiba teaches the water treatment system according to claim 1, wherein the amine compound of the chemical formula (2) is one or more compounds selected from the group consisting of a tertiary amine compound of the chemical formula (2-1), a tertiary amine compound of the chemical formula (2-2), and a tertiary amine compound of the chemical formula (2-3). {Paragraph 5, "R1, R2, R3 … in chemical formula …(2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" and chemical formula (1)}
In regards to claim 9, Toshiba teaches the water treatment system according to claim 1, wherein where the volume of the treated water is 1, the volume of the amine solution is 4 or more and 100 or less. {Paragraph 29, "Usually the concentration of the amine compound is the draw solution is adjusted" and "When inconveniences occur … the concentration is regulated" These teaching of Toshiba disclose that the concentration of the amine compound in the solution can vary depending on the content of the solute within the water stream. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to utilize the parameters set by the applicant in claims 9-10 through a process of routine optimization, as there was no evidence of the criticality of the claimed ranges.}
In regards to claim 10, Toshiba teaches the water treatment system according to claim 1, wherein where the volume of the treated water is 1, the volume of the amine solution is 4 or more and 25 or less. {Paragraph 29, "Usually the concentration of the amine compound is the draw solution is adjusted" and "When inconveniences occur … the concentration is regulated" These teaching of Toshiba disclose that the concentration of the amine compound in the solution can vary depending on the content of the solute within the water stream. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to utilize the parameters set by the applicant in claims 9-10 through a process of routine optimization, as there was no evidence of the criticality of the claimed ranges.}
In regards to claim 12, Toshiba teaches the water treatment system according to claim 1, wherein the amine solution includes one or more tertiary amine compounds represented by a chemical formula (1) and a chemical formula (2). {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" and compounds (2) and (1)}
In regards to claim 13, Toshiba teaches a water treatment method comprising: obtaining a first mixture by mixing treated water comprising water and a solute with an amine solution; {Paragraph 9, "water to be treated A … permeates through the osmosis membrane 12 and moves to the draw solution B in the second chamber"} obtaining a second mixture which is phase-separated by phase-separating the first mixture in which the treated water and the amine solution are mixed; {Paragraph 10, "draw solution B is separated from water when heated … this the draw solution B is concentrated"} and separating a supernatant phase and a concentrated phase of the second mixture, {Paragraph 11, "solid-liquid separation or liquid-liquid separation is carried out"} wherein the amine solution includes one or more tertiary amine compounds represented by the chemical formula (1) or/and the chemical formula (2) according to claim 1, {Paragraph 5, "R1, R2, R3, and R4 in chemical formula (1) or (2) each represents a linear or branched alkyl chain having from 1 to 5 carbons atoms" and compounds (2) and (1)} the tertiary amine compounds in the first mixture dissolve in the treated water. {Paragraph 22, "when the temperature of the draw solution B decreased … the solubility of the amine compound in water is increased, and the draw solution B becomes an aqueous solution of a single phase}
In regards to claim 15, Toshiba teaches the water treatment system according to claim 1, further comprising: an element that separates the supernatant phase {Paragraph 19, "heating means"} into an aqueous phase including water which is phase-separated from the one or more tertiary amine compounds in the amine solution and water in the treated water and an organic phase {Paragraph 20, "the amine compound is separated from water"} and recovers the tertiary amine. {Paragraph 24, "the upper phase or the lower phase is collected}
In regards to claim 17, Toshiba teaches the water treatment method according to claim 13, further comprising: separating the supernatant phase into the aqueous phase and organic phase by heating {Paragraph 20, "heated to a temperature higher than or equal to a predetermined temperature, the amine compound is separated from water"} and recovering the tertiary amine, {Paragraph 24, "the upper phase or the lower phase is collected} wherein the supernatant phase separates into the aqueous phase and the organic phase at a higher temperature than the first mixture which separates into phases. {Column 6 lines 15-23, "This temperature [reflux temperature] will be 20 to 80°C … the separation temperature … 5 to 40°C" While these temperatures overlap, the reference also teaches in the area mentioned that the temperature difference between the two is to be kept at a minimum, hence the overlap to allow for some variability/operator adjustment depending on the conditions}
Toshiba does not teach:
Claim 1: Wherein the first mixture is phase separated at a temperature of 3°C or more and 40°C or less due to the dissolving of the one or more tertiary amine compounds in the treated water, the supernatant phase comprises the amine solution and water, and the concentrated phase comprises a precipitation containing the solute, a slurry containing the solute, or a liquid containing the solute in high concentration.
Claim 8: The water treatment system according to claim 1, wherein the amine solution includes 80 wt% or more and 100 wt% or less of the tertiary amine compound of the chemical formula (1) or/and the chemical formula (2).
Claim 11: The water treatment system according to claim 1, wherein a phase of the first mixture separates at 3°C or more and 40°C or less.
Claim 13: Wherein the first mixture is phase-separated at a temperature of 3°C or more and 40°C or less due to the dissolving of the tertiary amine compounds in the treated water, the supernatant phase comprises the amine solution and water, and the concentrated phase comprises a precipitation reaction containing the solute, slurry containing the solute, or a liquid containing the solute in high concentrations.
Claim 14: The water treatment method according to claim 13, wherein a phase of the first mixture separates at 3 °C or more and 40°C or less.
Claim 15: Wherein the supernatant phase separates into the aqueous phase and the organic phase at a higher temperature than the first mixture which separates into phases.
Claim 16: The water treatment system according to claim 15, wherein the supernatant phase is phase-separated into an aqueous phase and an organic phase at 35 °C or more and less than 90 °C.
However, Kimberlin teaches all of the limitations of claim(s) 1, 8, 11, and 13-16 that Toshiba does not teach.
In regards to claim 1, Kimberlin teaches that first mixture is phase separated at a temperature of 3°C or more and 40°C or less due to the dissolving of the one or more tertiary amine compounds in the treated water, {Column 6 lines 17-21, "the separation temperature … can be 5 to 40° Column" While the range taught fails to disclose 3-5°C, there is significant overlap in the claimed range vs the taught range, and the overlap is sufficient to one of ordinary skill in the art to create an expectation of similar results, within the differences of the ranges} the supernatant phase comprises the amine solution and water, and the concentrated phase comprises a precipitation containing the solute, a slurry containing the solute, or a liquid containing the solute in high concentration. {Claim 1, "an extract phase … of said amine and dissolved water, and a raffinate phase … of water and salt" and Column 7 lines 12-13, "The extract phase continues to rise in extractor 4 countercurrently to the descending raffinate phase" wherein the extract is the supernatant and the raffinate is the concentrated phase}
In regards to claim 8, Kimberlin teaches the water treatment system according to claim 1, wherein the amine solution includes 80 wt% or more and 100 wt% or less of the tertiary amine compound of the chemical formula (1) or/and the chemical formula (2). {Figure 2, wherein the figure represents varying concentrations (0-100%) of water in the amine compound, showing that an amine concentration of between 80-100% is a possible embodiment of the solution for this invention}
In regards to claim 11, Kimberlin teaches the water treatment system according to claim 1, wherein a phase of the first mixture separates at 3°C or more and 40°C or less. {Column 6 lines 17-21, "the separation temperature … can be 5 to 40° Column" While the range taught fails to disclose 3-5°C, there is significant overlap in the claimed range vs the taught range, and the overlap is sufficient to one of ordinary skill in the art to create an expectation of similar results, within the differences of the ranges}
In regards to claim 13, Kimberlin teaches that the first mixture is phase-separated at a temperature of 3°C or more and 40°C or less due to the dissolving of the tertiary amine compounds in the treated water, {Column 6 lines 17-21, "the separation temperature … can be 5 to 40° Column" While the range taught fails to disclose 3-5°C, there is significant overlap in the claimed range vs the taught range, and the overlap is sufficient to one of ordinary skill in the art to create an expectation of similar results, within the differences of the ranges} the supernatant phase comprises the amine solution and water, and the concentrated phase comprises a precipitation reaction containing the solute, slurry containing the solute, or a liquid containing the solute in high concentrations. {Claim 1, "an extract phase … of said amine and dissolved water, and a raffinate phase … of water and salt" and Column 7 lines 12-13, "The extract phase continues to rise in extractor 4 countercurrently to the descending raffinate phase" wherein the extract is the supernatant and the raffinate is the concentrated phase}
In regards to claim 14, Kimberlin teaches the water treatment method according to claim 13, wherein a phase of the first mixture separates at 3 °C or more and 40°C or less. {Column 6 lines 17-21, "the separation temperature … can be 5 to 40° Column" While the range taught fails to disclose 3-5°C, there is significant overlap in the claimed range vs the taught range, and the overlap is sufficient to one of ordinary skill in the art to create an expectation of similar results, within the differences of the ranges}
In regards to claim 15, Kimberlin teaches wherein the supernatant phase separates into the aqueous phase and the organic phase at a higher temperature than the first mixture which separates into phases. {Column 6 lines 15-23, "This temperature [reflux temperature] will be 20 to 80°C … the separation temperature … 5 to 40°C" While these temperatures overlap, the reference also teaches in the area mentioned that the temperature difference between the two is to be kept at a minimum, hence the overlap to allow for some variability/operator adjustment depending on the conditions}
In regards to claim 16, Kimberlin teaches the water treatment system according to claim 15, wherein the supernatant phase is phase-separated into an aqueous phase and an organic phase at 35 °C or more and less than 90 °C. {Column 6 lines 15-23, "This temperature will be 20 to 80°C}
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine teachings and experimental parameters of Kimberlin to the invention of Toshiba because both of these inventions appear to utilize the physical properties amine solution to extract water from an aqueous solution. One of ordinary skill in the art prior to the effective filing date of the claimed invention would be motivated to combine the teachings and experimental parameters disclosed above in the mapping section to the invention of Toshiba because invention of Kimberlin can also double as an economic source for due to the recovery of valuable, concentrated salts; and the small volume of discharge brine would mean a lower costs for solvent recovery. {Kimberlin, Column 10 lines 53-61}
Conclusion
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 CONNOR J ROTONDI whose telephone number is (571)272-2058. The examiner can normally be reached M-F 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CONNOR J ROTONDI/Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
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