DETAILED ACTION
Status of Claims:
Claims 1-3, 5-15 and 17-20 are pending.
Claims 4 and 16 are canceled.
Claims 1-3 and 12 are amended.
This Action is Made Final.
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 Arguments
Applicant’s arguments, see Remarks, filed 4/20/2026, with respect to the rejection(s) of claim(s) 1-3, 5-15, and 17-20 under 35 USC 102 and 103 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 Therefore, the rejection has been withdrawn.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 in view of the previously cited prior art, and further in view of Zhang et al (EP 3551310). The applicant argues that the previously cited prior art does not teach the fluid pressure differential between the anode and cathode compartments. This argument is persuasive, however Zhang (newly cited) teaches maintaining a pressure differential on either side of a membrane to prevent total dissolved solids creep (see para. 0022, 0003). The applicant argues that the prior art does not show brine having a TDS content greater than 100 ppm and filtered water having TDS of 1 ppm to 10 ppm. This argument is not persuasive because the brine is untreated sea water which would inherently have a TDS content of greater than 100 ppm and the filtered water is treated by the same method as the instant invention (reverse osmosis) the same treatment method would inherently have the same result, therefore the TSD of the filtered water would inherently be between 1 and 10 ppm. Further no significance has be shown with respect to the specific total dissolved solids content.
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 1-3, 5-15 and 17-20 and rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,434,985. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claims 1 and 12:
The claims of the patent disclose process for ionizing water, the process comprising: forming an ionization chamber having a cathode compartment and an anode compartment with a proton exchange membrane separating the cathode compartment from the anode compartment (ionizer having a first compartment and second compartment) (see claims 2, 5 and 6); introducing a filtered water (permeate) at a first pressure into the cathode compartment, the filtered water having a total dissolved solids content of one part per million to ten parts per million; introducing a brine at a second pressure into the anode compartment, the brine having a total dissolved solids content of greater than one hundred parts per million (see claim 1), wherein the first pressure is greater than the second pressure, wherein an osmotic pressure differential is between the cathode compartment and the anode compartment (see claim 9); applying an electrical charge to the anode compartment and to the cathode compartment such that ions from the brine in the anode compartment flow through the proton exchange membrane to the filtered water in the cathode compartment; and removing the ionized filtered water from the cathode compartment (hydrogen ions migrate). The claims of the patent do not explicitly disclose the TDS concentration of the filtered water and brine, however as the same process is being used to produce the brine and filtered water (reverse osmosis) the same concentrations would be inherent or obvious. Regarding Claim 12, the process of the claims of the patent requires the corresponding structure.
Regarding Claims 2-3, 5-15 and 17-20:
All limitations are disclosed or inherent in the claims of the patent. Regarding Claim 7, the power supply is inherent as a positive charge is applied to the second conductor, and a negative charge is applied to the first conductor (see claim 6).
Claims 12, 13, 15, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9, 15 of copending Application No. 18/531,882 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 12:
The claims of the copending application disclose the apparatus for the ionization of water, the apparatus comprising: an ionization chamber having a cathode compartment and an anode compartment with a proton exchange membrane therebetween (ion exchange membrane), the cathode compartment having a filtered water therein (first filtered water chamber), the filtered water having a total dissolved solids content of one part per million to ten parts per million, the anode compartment having a brine therein (first brine chamber) (see claim 1), the brine having a total dissolved solids content of greater than one hundred per million, the filtered water having a pressure greater than a pressure of the brine, wherein an osmotic pressure differential exists between the anode compartment and the cathode compartment (the TDS and pressure of each chamber is a process limitation, not a structural limitation because the liquid is what is being acted upon by the system, as the copending claims disclose the same apparatus it would be capable of the same process limitations) , each of the cathode compartment and the anode compartment having an electrode therein (first electrode and second electrode) (see claim 1); a power supply connected to the electrodes of the cathode compartment and the anode compartment so as to apply an electrical charge thereto such that the hydrogen ions from the brine in the anode compartment flow through the proton exchange membrane into the filtered water in the cathode compartment (see claim 9); an outlet connected to the cathode compartment of said ionization chamber and adapted to allow ionized filtered water to be discharged from the cathode compartment (first egress) (see claim 1); and a reverse osmosis filter in communication with said ionization chamber, said reverse osmosis filter adapted to filter tap water in order to form a permeate and the brine, the reverse osmosis filter having a first outlet connected to the cathode compartment so as to pass the filtered water into the cathode compartment, said reverse osmosis filter having a second outlet connected to the anode compartment so as to pass the brine into the anode compartment (see claim 15).
Regarding Claims 13, 15, and 17-20, the limitations are disclosed by the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-3, 7-9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 100850378 B1, hereinafter ‘378 in view of Zhang et al (EP 3551310).
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As for claims 1 and 7, ‘378 teaches a process for ionizing water (see “III. Producing reducing alkaline ionized water of the English Translation”), the process comprising:
forming an ionization chamber (1) having a cathode compartment 3 and an anode compartment 2 with a proton exchange membrane 6 separating the cathode compartment from the anode compartment;
introducing a filtered water into the cathode compartment (filtered water from the second reverse osmosis filtration is sent to the cathode compartment 3) the filtered water having a total dissolved solids content of one part per million to ten parts per million (water is treated through reverse osmosis (see Abstract) therefore the same TDS will be achieved);
introducing a brine into the anode compartment (deep seawater is supplied to anode compartment 2), the brine having a total dissolved solids content of greater than one hundred parts per million (sea water has a TDS greater than 100 ppm);
applying an electrical charge to the anode compartment 2 and to the cathode compartment 3 such that ions from the brine in the anode compartment flow through the proton exchange membrane to the filtered water in the cathode compartment (direct current is applied from the rectifier 7 to the electrolysis device having an anode chamber and a cathode chamber. A rectifier is a power supply that delivers direct current to the electrodes of an electrolysis cell, thereby inherently supplying electrical energy of opposite polarities to the anode and cathode electrodes to drive oxidation and reduction reactions [as in claim 7]); and
removing the ionized filtered water from the cathode compartment (ionized water from the cathode compartment 3 is sent to mineral adjusting tank 8) [as in claim 1].
‘378 does not teach that the first pressure of the cathode compartment is greater than the second pressure of the anode compartment.
Zhang teaches placing the low TDS compartment at a higher pressure than the high TDS compartment (see para. 0003, 0022).
‘378 and Zhang are analogous inventions in the art of membrane separation chambers. It would have been obvious to one skilled in the art before the effective filing date of the invention to place the filtered water (low TDS) chamber of ‘378 at a higher pressure than the brine (high TDS) chamber of ‘378, as disclosed by Zhang because it prevents total dissolved solids creep between the chambers (see Zhang para. 0002-0003).
As for claims 2 and 8-9, because of the difference in salt concentration between the cathode and anode chambers described above, an osmotic difference exists between the chambers and a portion of the filtered water from the cathode compartment would necessarily flow through the proton exchange membrane and into the anode compartment, wherein hydrogen gas is produced in the filtered water of the cathode compartment as indicated in the “Cathode Chamber (2) Reaction” of the English translation of ‘378.
As for claims 3-4, the water passing through the first reverse osmosis filter is considered to be equivalent to tap water, that is then passed to the second reverse osmosis filter and into the cathode compartment, wherein permeate from the second reverse osmosis filter would have the solids removed to the within the same claimed range of claim 4.
As for claim 11, mineral is added to the water that passed from the second reverse osmosis filter to the cathode chamber in tank 8 (see the “Ⅳ. Second pH adjustment and mineral adjustment stage” section of the English Translation of ‘378).
Claims 1-3, 5-12, and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 105923858, hereinafter ‘858 in view of Zhang et al (EP 3551310).
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As for claims 1-2, 7-12, 14, 15, and 17, ‘858 teaches a system wherein raw water enters a pretreatment unit 8 and then flows to the inlet of a reverse osmosis membrane unit 9. Filtered water from outlet 10 of unit 9 then flows into the cathode chamber of the ionization chamber 16 via ionizer inlet 15, and concentration water from outlet 11 of unit 9 flows into the anode chamber of the ionizer 16 via return unit 5 and ionizer inlet 14. The difference in salt concentrations between the cathode and anode chambers would naturally produce an osmotic pressure differential. The ionizer 16 includes a membrane 17 between the chambers and upon a power supply applied to the electrodes to produce a voltage therebetween delivering electrical energy of different polarities to the respective electrode of the cathode and anode chamber, hydrogen ions and minerals pass through the membrane 17 and into the cathode chamber to create mineralized hydrogen water that exits the cathode chamber via outlet 1 and the resulting acidic water from anode chamber exits via outlet 2. The total dissolved solids content of the filtered water and the brine are considered to be equivalent to that claimed as the water is treated with the same method (reverse osmosis) and the same treatment would inherently have the same results.
‘858 does not teach that the first pressure of the cathode compartment is greater than the second pressure of the anode compartment.
Zhang teaches placing the low TDS compartment at a higher pressure than the high TDS compartment (see para. 0003, 0022).
‘858 and Zhang are analogous inventions in the art of membrane separation chambers. It would have been obvious to one skilled in the art before the effective filing date of the invention to place the filtered water (low TDS) chamber of ‘858 at a higher pressure than the brine (high TDS) chamber of ‘858, as disclosed by Zhang because it prevents total dissolved solids creep between the chambers (see Zhang para. 0002-0003).
As expanded above, ‘858 teaches the limitations of claims 3, 5 and 6 except the reference doesn’t specify the raw water being tap water or the pretreatment unit 8 being an activated carbon filter or a sediment filter. However as shown in figure 1 and in the description thereof, Applicant’s admitted prior art teaches tap water 10 first entering a pretreatment in stage 1 of an activated carbon filtration that is used with a sediment filter [0009]. It is considered that it would have been obvious to one ordinarily skilled in the art before the effective filing date of the invention to have the tap water and pretreating step of activated carbon filtration and/or sediment filtration of Applicant’s admitted prior art in the invention of ‘858 since the prior art teaches such is conventional in the art for producing hydrogenated water [0009].
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over ‘858 and Zhang et al (EP 3551310) in view of WO 2009/125966 A2, hereinafter ‘966.
‘858 doesn’t specify that the filter unit and ionization chamber are placed within a housing. But such is taught by ‘966. ‘966 teaches a casing including both a filter unit 40 and an electrolyzer tank (abstract) [as in claim 13]. It is considered that it would have been obvious to one ordinarily skilled in the art before the effective filing date of the invention to have the reverse osmosis filter and electrolysis chamber of ‘858 within the case of ‘966, since ‘858 teaches the benefits of providing a compact integrated water treatment appliance suitable for consumer use, reduce installation complexity, and protect internal component and for reasons given in the abstract. Also, combining known elements according to known methods to yield predictable results would have been obvious.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over ‘858 as modified in the rejection of claim 13 above and in further view of Applicant’s admitted prior art of figure 1. As shown above in the rejections of claims 3-6, Applicant’s admitted prior art teaches tap water 10 first entering a pretreatment in stage 1 of an activated carbon filtration that is used with a sediment filter [0009]. It is considered that it would have been obvious to one ordinarily skilled in the art before the effective filing date of the invention to have the tap water and pretreating step of activated carbon filtration and/or sediment filtration of Applicant’s admitted prior art in the invention of ‘858 since the prior art teaches such is conventional in the art for producing hydrogenated water [0009].
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 CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 8/31/2026
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