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 .
Response to Amendment
The amendment filed 05/06/2026 has been entered. Claims 13-15 are cancelled. Applicant’s amendments to claims have overcome each and every 112(b) rejection previously set forth in the non-final office action mailed 02/11/2026. Claims 1-12 are rejected under 35 U.S.C. 103.
Response to Arguments
Applicant's arguments filed 05/06/2026 have been fully considered but they are not persuasive.
Applicant argues that “Neither Anderson nor Mohr discloses a structure that includes both the plurality of partitions disposed in a direction perpendicular to the flow direction of the water and oil, and the plurality of support members disposed at a rear end of the plurality of partitions, allowing the coupled structures to prevent collected oil from being re-discharged due to eddy current generated by fluid flowing into structure. Applicant submits that the mobile oil platform of Derenoncourt, the washing tank of Anderson, and the coagulation system of Mohr are devices for completely different purposes and environments, and thus, there is no explicit motivation or teaching in the cited references that the eddy current preventing structure unique to the present invention can be derived by simply mechanically combining the cited references. Therefore, a person skilled in the art would not have been motivated, absent impermissible hindsight gleaned from the present application, to combine the fragmentary components extracted from the cited references into the oil control robot of the present invention. Applicant notes that "[i]t is impermissible to use the claimed invention as an instruction manual or 'template' to piece together the teachings of the prior art so that the claimed invention is rendered obvious. . . 'One cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.' In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988)). Rather, such a modification would be tantamount to picking and choosing from each cited reference only so much of it as would support the Examiner's position, to the exclusion of other parts necessary to fully appreciate what the cited reference fairly suggests to one of ordinary skill in the art. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965).”
However, MPEP § 2144 discusses supporting a rejection under 35 U.S.C. 103, with MPEP § 2144(I) specifically noting that the rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In the previous Office Action, the examiner has provided the motivation that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Moon 2021’s hydrophilic filter to comprise an intake port configured to pass the water and oil; and a discharge port configured to discharge the water to the outside of the oil control robot as taught by Derenoncourt, a plurality of partitions configured to prevent the oil from being discharged to the outside of the oil control robot as taught by Anderson, a plurality of support members disposed in a direction parallel to a flow direction of the water and oil, wherein the plurality of support members are disposed at a rear end of the plurality of partitions as taught by Mohr, because oil-water separation systems commonly use intake and discharge ports, internal partitions, and support members aligned with the flow direction to control fluid flow, prevent oil escape, and support separation components and combining these known features according to their established function would have yielded predictable separation performance and to modify Moon 2021’s filter to comprise a plurality of partitions disposed in a direction perpendicular to the flow direction of the water and oil as taught by Anderson to prevent oil collected inside the robot from being re-discharged and to prevent channeling of the oil-water mixture and to thus promote separation of oil and water therapy improving separation efficiency and yielding predictable results (see Anderson, Col. 1, lines 61-63).
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 (i.e., changing from AIA to pre-AIA ) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1-3 and 8 is rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 20210316237 A1) herein known as Moon 2021, in view of Moon et al. (US 20190161368 A1) herein known as Moon 2019, and further in view of Derenoncourt (US 2015/0166150 A1) herein known as Derenoncourt, Anderson et al. (US 4064054 A) herein known as Anderson, and Mohr (US 5,068,035) herein known as Mohr.
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(Derenoncourt, Fig. 7B)
Regarding claim 1, Moon 2021 discloses a filter for filtering oil in an oil control robot ([0002], [0010]), comprising hydrophilic material (12) ([Abstract]; [0002], [0013], [0014], [0018], [0052]; FIG. 16), configured to absorb water and oil (1), discharge the absorbed water (3), and filter the absorbed oil (6) ([0064]; [0065]; Fig.1).
Moon 2021 discloses a filter for filtering oil floating in oceans or rivers in an oil-water separator such as oil skimmers ([0002], [0010]).
Moon 2021 does not explicitly disclose the hydrophilic material is nanofibers.
Moon 2019 discloses hydrophilic nanofibers filter (11) ([0054]; Fig. 1).
Moon 2021 is silent to the filter further comprising: an intake port configured to pass the water and oil; a plurality of partitions configured to prevent the oil from being discharged to the outside of the oil control robot; a plurality of support members disposed in a direction parallel to a flow direction of the water and oil; and a discharge port configured to discharge the water to the outside of the oil control robot.
Moon 2021 is silent to the plurality of support members are disposed at a rear end of the plurality of partitions .
Derenoncourt is directed to a mobile oil platform. The mobile oil platform has a separator configured to separate oil/water mixture (Abstract; [0013]; [0052]).
Derenoncourt discloses the filter further comprising: an intake port (55) configured to pass the water and oil; and a discharge port (59) configured to discharge the water to the outside of the oil control robot, a plurality of partitions. wherein the plurality of partitions are disposed in a direction perpendicular to the flow direction of the water and oil. (Fig.7b; [0052], [There is a mechanical filter 53 between the valve 59 and the tanks 32. In one embodiment the filter extends to the top of the separator 50, and creates an oil free zone 49]).
Anderson is directed to a wash tank for separating an oil-water mixture and utilizes a plurality of baffle sections to assist in separating oil and water (Abstract) and to prevent channeling of the oil-water mixture and to thus promote separation of oil and water therapy improving separation efficiency (Col. 1, lines 61-63).
Anderson discloses a plurality of partitions configured to prevent the oil from being discharged to the outside of the oil control robot (Fig.1; Col.3, line 15-67).
Mohr is directed to a coalescing plate packing system for use in separating immiscible components of different densities mixed in a fluid (Abstract).
Mohr discloses a plurality of support members (52,54,56,58) disposed in a direction parallel to a flow direction of the water and oil (Fig.1; Col.4 line 18-68).
Mohr discloses the plurality of support members (52,54) are disposed at a rear end of the plurality of partitions (Fig.1; Col.3, line 15-67).
Moon 2021 is silent to the plurality of partitions are disposed in a direction perpendicular to the flow direction of the water and oil.
Anderson discloses plurality of partitions (30,34,36) are disposed in a direction perpendicular to the flow direction of the water and oil (Col. 3, line15-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Moon 2021’s hydrophilic filter to include the hydrophilic nanofibers filter taught by Moon 2019 because nanofiber filter media were known substitution for conventional hydrophilic filter materials and one of ordinary skill in the art would select the nanofibers of Moon 2019 because nano-sized fibers provide increased surface area for oil water separation. In addition, Moon 2019 states that such a hydrophilic material maximizes oil collection efficiency (Abstract), and to modify the filter of Moon 2021 to comprise an intake port configured to pass the water and oil; and a discharge port configured to discharge the water to the outside of the oil control robot as taught by Derenoncourt, a plurality of partitions configured to prevent the oil from being discharged to the outside of the oil control robot as taught by Anderson, a plurality of support members disposed in a direction parallel to a flow direction of the water and oil, wherein the plurality of support members are disposed at a rear end of the plurality of partitions as taught by Mohr, because oil-water separation systems commonly use intake and discharge ports, internal partitions, and support members aligned with the flow direction to control fluid flow, prevent oil escape, and support separation components and combining these known features according to their established function would have yielded predictable separation performance and to modify Moon 2021’s filter to comprise a plurality of partitions disposed in a direction perpendicular to the flow direction of the water and oil as taught by Anderson to prevent oil collected inside the robot from being re-discharged and to prevent channeling of the oil-water mixture and to thus promote separation of oil and water therapy improving separation efficiency and yielding predictable results (see Anderson, Col. 1, lines 61-63).
Regarding claims 2-3, claim 2 recites the filter of claim 1, wherein the filter has a filtration capacity with a water and oil separation rate of 166 l/min. or higher. Claim 3 recites the filter of claim 1, wherein the filter has a filtration capacity with a water and oil separation rate between 275 l/min. and 285 l/min.
The limitations recited in claims 2-3 which are directed to a manner of operating disclosed filter for filtering oil in an oil control robot, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
The filter of Moon 2021 in view of Moon 2019 is capable of being operated at the water and oil separation rates recited above.
Regarding claim 8, Moon 2021 in view of Moon 2019 is silent to the filter is configured to filter microplastics having a size of 5 μm or greater.
Moon 2019 discloses the filter is configured to filter microplastics having a size of 5 μm or greater. Since Moon 2019 discloses a hydrophilic porous filter portion (11) having an average diameter of about 10 nanometers to about 500 micrometers [0054]. The disclosed pore-size range necessary includes pore size smaller than 5 μm, particulate contaminants having a size of 5 μm or greater, including microplastics, would be retained by the porous substrate as an inherent and expected result.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Moon 2021’s filter in view of Moon 2019 to be configured to filter microplastics having a size of 5 μm or greater as taught by Moon 2019, because removal of particulate contaminates such as microplastic from water was a well-known objective in filtration systems, and configuring a porous filter to retain particles above a target size represented a predictable use of the filter’s known pore-size characteristics.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 20210316237 A1) herein known as Moon 2021, in view of Moon et al. (US 20190161368 A1) herein known as Moon 2019, and further in view of Derenoncourt (US 2015/0166150 A1) herein known as Derenoncourt, Anderson et al. (US 4064054 A) herein known as Anderson, and Mohr (US 5,068,035) herein known as Mohr., as applied to the claim 1 above, and further in view of Doucouré et al. (US 20160303498 A1) herein known as Doucouré.
Regarding claim 4, Moon 2021 and Moon 2019 teaches all the limitations in the claims as set forth above.
Moon 2021 and Moon 2019 are silent to the filter comprises a cellulose acetate material that is laminated on a binder.
Doucouré discloses the filter (10) comprises a cellulose acetate material that is laminated on a binder ([0016]; [0121]; [0127]; [0144]; [0149]; Figs. 1A-1C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Moon 2021 and Moon 2019’s filter to comprises a cellulose acetate material that is laminated on a binder as taught by Doucouré, to filter oil effectively using the hydrophilic cellulose acetate while having a high permeability and being structurally stable [0013], yielding nothing more than predictable results.
Claim 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 20210316237 A1) herein known as Moon 2021, in view of Moon et al. (US 20190161368 A1) herein known as Moon 2019, and further in view of Derenoncourt (US 2015/0166150 A1) herein known as Derenoncourt, Anderson et al. (US 4064054 A) herein known as Anderson, Mohr (US 5,068,035) herein known as Mohr, and Doucouré et al. (US 20160303498 A1) herein known as Doucouré, as applied to the claim 4 above, and further in view of Yang Jiao et al. (CN 103551055 A, machine translation) herein known as Yang.
Regarding claim 5-7, Moon 2021, Moon 2019 and Doucouré teaches all the limitations in the claim 4 as set forth above.
For Claim 5, the instant specification shows that the thickness of a laminated cellulose acetate material at which the water and oil separation rate of the filter is not hindered as “about 50 microns to about 120 microns” (Page 8, lines 9-11).
For Claim 6, The instant specification shows that the thickness of a laminated cellulose acetate material at which deviations of a minimum size and a maximum size of pores of the laminated cellulose acetate material are uniform is at “about 100 microns or greater”.
Moon 2021, Moon 2019, and Doucouré are silent to the laminated cellulose acetate material has a thickness at which the water and oil separation rate of the filter is not hindered (claim 5), the laminated cellulose acetate material has a thickness such that deviations of a minimum size and a maximum size of pores of the laminated cellulose acetate material are uniform (claim 6) and thickness of the laminated cellulose acetate material is 90 μm to 110 μm (claim 7).
Yang discloses the laminated cellulose acetate material has a thickness at which the water and oil separation rate of the filter is not hindered, the laminated cellulose acetate material has a thickness such that deviations of a minimum size and a maximum size of pores of the laminated cellulose acetate material are uniform including defined minimum and maximum pre sized within a controlled range (about 0.2-1.0 μm), and thickness of the laminated cellulose acetate material cellulose acetate membranes having thickness values including about 100 μm and 140 μm which overlap the claimed thickness range of 90 μm to 110 μm ([0004], [0013], [0028], [0077]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the invention to modify Doucoure’s filter wherein the laminated cellulose acetate material has a thickness at which the water and oil separation rate of the filter is not hindered, the laminated cellulose acetate material has a thickness such that deviations of a minimum size and a maximum size of pores of the laminated cellulose acetate material are uniform and thickness of the laminated cellulose acetate material is 90 μm to 110 μm as taught by Yang, to avoid the reduction in retention rate caused by fine particles clogging the membrane pores, significantly improve the backwashing performance of the membrane [0006], yielding predictable results.
Claim 9-10 and 12 is rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 20210316237 A1) herein known as Moon 2021, in view of Moon et al. (US 20190161368 A1) herein known as Moon 2019, and further in view of Derenoncourt (US 2015/0166150 A1) herein known as Derenoncourt, Anderson et al. (US 4064054 A) herein known as Anderson, and Mohr (US 5,068,035) herein known as Mohr, as applied to the claim 1 above, and further in view of Wright et al. (US 7823635 B2) herein known as Wright.
Regarding claim 9, Moon 2021 and Moon 2019 teaches all the limitations in the claim 1 as set forth above.
Moon 2021 discloses a final filter structure (100-1), the final filter structure comprising: an upper frame (150-1) and a lower frame (110-1); the filter of claim 1 disposed between the upper frame (150-1) and the lower frame (110-1) ([Abstract]; [0041]; Figs. 1-2).
Moon 2021 and Moon 2019 are silent to mesh cover disposed between each of the upper and lower frames and the filter and configured to protect the filter.
Wright discloses an oil and water separator comprising a water-selective membrane (Abstract). Wright discloses mesh cover (170) disposed between each of the upper and lower frames and the filter (166) and configured to protect the filter (Column 6, lines 13-25; Fig 4B).
.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Moon 2021’s filter structure to have mesh cover disposed between each of the upper and lower frames and the filter and configured to protect the filter as taught by Wright, because mesh covers were commonly used in filtration systems to protect filter media from mechanical damage and debris while allowing fluid flow, thereby improving durability and service life of the filter and yielding nothing more than predictable results.
Regarding claim 10, Moon 2021, Moon 2019 and Wright teach all the limitations in the claim 9 as set forth above.
Moon 2021 discloses the filter are exposed to an outside of the final filter structure through the upper frame (151-1) and the lower frame (111-1) ([0041]; Figs. 1-2).
Accordingly, when the mesh cover taught by Wright is incorporated in to the filter structure taught by Moon 2021, the mesh cover and the filter are exposed to an outside of the final filter structure through the upper frame and the lower frame.
Regarding claim 12, Moon 2021 discloses the upper frame (150-1) is configured to pass the water and oil (1), and the lower frame (110-1) is configured to pass the water (3) and discharge the water to an outside of the oil control robot ([Abstract], [0041], Figs. 1-2).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Moon et al. (US 20210316237 A1) herein known as Moon 2021, in view of Moon et al. (US 20190161368 A1) herein known as Moon 2019, and further in view of Derenoncourt (US 2015/0166150 A1) herein known as Derenoncourt, Anderson et al. (US 4064054 A) herein known as Anderson, Mohr (US 5,068,035) herein known as Mohr, and Wright et al. (US 7823635 B2) herein known as Wright, as applied to the claim 9 above, and further in view of Hard (US 2003/0042213 A1) herein known as Hard.
Regarding claim 11, Moon 2021, Moon 2019, and Wright teach all the limitations in the claim 9 as set forth above.
Moon 2021 in view of Moon 2019 and Wright are silent to the mesh cover is made of a steel material.
Hard discloses highly efficient Water/oil separator (Abstract; [0010]); Hard discloses the mesh cover is made of a steel material (7) ([0015]; Fig 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the mesh cover of Moon 2021 in view of Moon 2019 and Wright to be made of a steel material as taught by Hard, to ensure rigidity.
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 MAHMOUD MOTAZ ABDEL LATIF whose telephone number is (571)272-6535. The examiner can normally be reached Monday-Friday 8:30-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAHMOUD MOTAZ ABDEL LATIF/Examiner, Art Unit 1773 /EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773
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