DETAILED ACTION
Election/Restrictions
Claims 1-13 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 9, 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 § 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 17 and 19-25 is 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 17 recites the limitation "the predetermined reduction in filtration efficiency" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the examiner is interpreting claim 17 to be dependent upon claim 15.
Claims 19-25 are recited to variously depend from claim 13, an unelected claim drawn to a method. For the purposes of examination, the examiner is interpreting these claims to depend from claim 14.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 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/b), the at least one feed chamber having a delivery pipe (from REF 440a/b 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 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); and
At least one product water outlet for removal of the product water stream (REF 140, ¶ 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).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779
Prosecution Insights