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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the Republic of Korea on 10/04/2023. It is noted, however, that applicant has not filed a certified copy of the KR10-2022-0126271 application as required by 37 CFR 1.55.
See the PD.RETR.FAIL letter dated 03/04/2025; it appears that an attempt to retrieve the appropriate priority document via the Priority Document Exchange program has failed. See MPEP 215.01 for further discussion of the Priority Document Exchange program.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/526,990 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application recites the same structure for its agitation activator (200) as required by the instant claimed invention, with the same requirements i.e. housing, copper pipe, and four treatment members in sequence including copper, zinc, PTFE, and copper, with appropriately positioned magnets.
Reference claim 5-8 similarly matches the subject matter of instant claims 2-5 respectively.
Examiner notes that the instant application and the reference application are understood to have the same effective filing date; see MPEP 804 I.B.1.(b)(ii); “If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
No claims may be indicated allowable until the double patenting rejection above is overcome.
However, as best understood, claims 1-5 are free from the prior art.
The closest prior art is represented by Keum (KR 101961120 B1 – original copy disclosed by applicant, machine translation provided with this action) which teaches a generally similar ion scale management device employing a tubular housing, inner copper tube (120), and similar treatment members with two-stage structure and arranged in facing manner to force fluid flow in the desired directions e.g. between a core and a circumferential space [Figs. 1-2]. However, Keum does not teach or fairly suggest the specific combination of materials employed by the instant invention for the specific members; Keum teaches members (130) which are a zinc/fluororesin composite, member (150) made from fluororesin, and members (140) and (160) made as zinc blocks. Similar to the instant invention, Keum does teach the presence of magnets (170) positioned in the tubular housing surrounding the device; however, Keum does not teach employing a member which is made of copper, and therefore does not teach providing a region in which a copper member faces a zinc member, or to production of a magnetic field in this specific region as a result.
The prior art as a whole does not remedy the deficiencies of Keum. Additionally relevant prior art is taught by Two ECO (DE 20 2017 103 743 U1) which teaches an ion-polarizing unit for water treatment which includes a tube of dielectric material with at least two polarizing electrodes having different types of conductive material within [Abs], with examples being aluminum, brass, zinc, copper, silver, titanium, platinum, and alloys thereof [Abs]; Two ECO generally teaches providing several different units in series with all being different materials. In view of this, one of ordinary skill in the art would recognize that copper might be a useful material for forming an appropriate treatment member in a device such as Keum’s. However, there is no teaching or suggestion in Two ECO of providing the specific order of materials required by the instant invention, or of the particular relationship between a copper member and a zinc member and having a specific magnetic field generated therebetween. As such, even if one of ordinary skill in the art were motivated in view of Two ECO to consider different materials for the members taught by Keum, there would not have been motivation to provide the specific arrangement required by the instant claimed invention absent impermissible hindsight.
As such, the instant claimed invention would not have been obvious to one of ordinary skill in the art in view of the prior art, alone or in combination, and the inventions of claims 1-5 are therefore free from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at (571)270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1777