DETAILED ACTION
Applicant’s response filed July 13, 2026 is acknowledged. Claims 14, 17, 19, 21-23, and 25 are amended and claims 1-13 and 26 are withdrawn from consideration. Claims 14-25 and 27 are pending and further considered on the merits.
Response to Amendment
In light of applicant’s amendment, the examiner withdraws the previously recited 35 U.S.C. 112 second paragraph rejections and maintains all other rejections provided in the office action filed May 19, 2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14-25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11890577. Although the claims at issue are not identical, they are not patentably distinct from each other because the granted patent claims each component provided in the current claims and would anticipate the current claims in a species/genus style rejection.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 14-21, 23-25, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oklejas, US 2009/0173691 (Oklejas, IDS) in view of Al-Samadi, US 6113797 (Al-Samadi, IDS).
Regarding claim 14, Oklejas discloses a system for cleaning feed water of variable quality (abstract, fig. 12), the system comprising:
An inlet (REF 324a/b) for selectively delivering feed water to at least one feed chamber (REF 440a) and at least one other feed chamber (REF 440b), the at least one feed chamber having a delivery pipe (from REF 440a to REF 500) for delivering feed water to at least one membrane (REF 410, ¶ 0070);
At least one pump (REF 310, ¶ 0066) to deliver the feed water from the at least one feed chamber through the delivery pipe to the at least one membrane (see “by using a centrifugal pump 310, the pump is always discharging at high pressure alternatively into one of the brine tanks”, ¶ 0072) to create a concentrated feed stream (REF 432) and a product water stream (REF 140);
At least one return pipe connected to the at least one feed chamber and at least one other return pipe connected to the at least one other feed chamber (conduit from REF 510 to REF 440a/b) for selectively returning the concentrated feed stream to the at least one feed chamber for delivery through the at least one membrane (¶ 0070);
At least one product water outlet for removal of the product water stream (REF 140, ¶ 0068); and
Means (REF 510, ¶ 0070) for switching the delivery of the concentrated feed stream between the at least one return pipe and the at least one other return pipe upon detection of a predetermined reduction in filtration efficiency in the at least one feed chamber (see “a particular concentration of brine is achieved”, ¶ 0068).
Oklejas does not disclose a system comprising a desaturation unit positioned in one of the recited locations. However, Al-Samadi discloses a reverse osmosis water treatment method and system (abstract, fig. 1) where after feed water has passed through a reverse osmosis membrane (REF 7, 11), the feed water is passed through a desaturation unit (REF 17) after passage through the reverse osmosis membrane, the desaturation unit adapted to remove minerals therefrom and to form a supernatant (C4/L31-39).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the system of Oklejas to include the desaturation unit described in Al-Samadi in order to remove scale forming cations from the concentrate stream prior to recirculation through a reverse osmosis unit, thereby extending the life of the reverse osmosis unit (Al-Samadi, C10/L15-25).
Regarding claim 15, Oklejas (in view of Al-Samadi) discloses a system further comprising switching mechanisms, i.e. valves (REF 132a, 132b, 500, 510, ¶ 0070-0071) for switching delivery of the concentrated feed stream between at least one return pipe and another return pipe connected to at least one other feed chamber upon detection of a predetermined reduction in efficiency in the at least one feed chamber (see “a particular concentration of brine is achieved”, ¶ 0068).
Regarding claim 16, Oklejas (in view of Al-Samadi) discloses a system wherein the switching mechanisms are configured to enable the delivery of feed water from the at least one feed chamber (REF 440a) through the delivery pipe to the at least one membrane (REF 410) and recycled through a return pipe to the at least one feed chamber (via 460, 510, ¶ 0070) until the predetermined reduction in efficiency is detected in said chamber (¶ 0068), whereupon the switching mechanism enables feed water to be delivered from the at least one other feed chamber (REF 440b) through a second delivery pipe to the at least one membrane to be recycled through at least another return pipe to the at least one other feed chamber until the predetermined reduction in efficiency is detected in the second chamber (¶ 0068-0071).
Regarding claim 17, Oklejas (in view of Al-Samadi) discloses a system wherein the switching mechanisms (via REF 132a/b) are configured to enable removal of the concentrated feed stream from the at least one feed chamber upon detection of the predetermined reduction in efficiency in the at least one feed chamber (¶ 0068) and delivery of fresh feed water to the at least one membrane (¶ 0071).
Regarding claim 18, Oklejas (in view of Al-Samadi) discloses a system wherein the switching mechanisms are configured to deliver fresh feed water to at least one feed chamber following the removal of the concentrated feed stream from the at least one chamber (¶ 0070-0071).
Regarding claim 19, Al-Samadi further discloses a desaturation unit (REF 17) positioned in a return pipe (REF 12) between at least one membrane (REF 11) and at least one feed chamber (REF 2).
Regarding claim 20, Al-Samadi further discloses the desaturation unit being an ion exchanger (REF 17, fig. 1).
Regarding claim 21, Oklejas (in view of Al-Samadi) discloses a system further comprising an open loop system (fig. 12) wherein the pressure of the concentrated feed stream in the at least one return pipe is reduced by passing the concentrated feed stream through the open loop system (via REF 134).
Regarding claims 23-24, Oklejas (in view of Al-Samadi) discloses a system further comprising a pre-treatment unit for pre-treating the feed water prior to its delivery to the at least one membrane, the pre-treatment unit comprising a filter unit (REF 21, fig. 1, ¶ 0010).
Regarding claim 25, Oklejas (in view of Al-Samadi) discloses a system wherein the at least one membrane is a reverse osmosis membrane (REF 412, fig. 11, ¶ 0063).
Regarding claim 27, Al-Samadi further discloses a system comprising at least one return pipe (REF 18) for circulating supernatant from the desaturation unit (REF 17) to at least one membrane (REF 7).
Response to Arguments
Applicant's arguments filed July 13, 2026 have been fully considered but they are not persuasive.
Applicant’s request for reconsideration of the double patenting rejection is not found persuasive since a terminal disclaimer has not been filed for the current application. Additionally, applicant has not provided persuasive evidence that the current claims and those found in US 11890577 are distinct.
In response to applicant’s argument that the prior art does not disclose a system which can detect a treatment efficiency and switch delivery of a concentrated feed stream in response to the detection, the examiner directs applicant’s attention to the rejections set forth above in addition to applicant’s disclosure.
As an initial matter, applicant’s disclosure (¶ 0015 of the printed publication) recites:
“The reduction in efficiency of the RO or NF process may be detected in a variety of ways. Preferably, detection of a predetermined maximum salt concentration in the chamber causes switching of the return delivery to the at lest one other feed chamber.”
Oklejas discloses the water treatment process “continues until an amount of permeate or a particular concentration of brine is achieved” (¶ 0068), where “as a given body of saline solution is processed by the reverse osmosis membrane, the concentration of the solution is increased” (¶ 0006) and “at some point, it is no longer practical to recover permeate from the solution” (¶ 0006). Oklejas solves the problem of increasing osmotic pressure/brine concentration (¶ 0005) via switching means (REF 510) for batch processing between two feed chambers (REF 440a/b, see “three-way valves allow the first brine tank 440a or the second brine tank 440b to be used during batch processing”, ¶ 0070). In light of Oklejas’ disclosure detailing batch processing, switching means, and maximum brine concentration triggering switching means between two feed tanks, the examiner maintains that Oklejas discloses those features provided in claim 14.
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 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby Ramdhanie can be reached on (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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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779
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