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 .
Election/Restrictions
Applicant's election with traverse of group II, claims 15-16, 18 and 20-27 in the reply filed on 12/19/2025 is acknowledged. The traversal is on the ground(s) that:
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This is not found persuasive because claim 15 recites that the second permeate stream from first NF system is directed to the feed stream which is taught by Herron. The limitation of directing third permeate stream from 2nd NF system and mixing with first retentate is an alternative limitation.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-3, 5, and 7-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/19/2025.
Claim Objections
Claim 22 is objected to because of the following informalities: The limitations “a third high-pressure nanofiltration” in line 2 and “the third high-pressure system” in line 3 should be amended to use consistent equipment identifier. Appropriate correction is required.
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 15-16, 18, 20-27 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.
Regarding claim 15, the limitation “one or more element trains in parallel having multiple elements in series” in line 8 on page 5 and line 2 on page 6 renders the claim indefinite because it is unclear if there is only one element train present then what is it in parallel with?
Regarding claim 22, the limitation “one or more element trains in parallel having multiple elements in series” in line 2 renders the claim indefinite because it is unclear if there is only one element train present then what is it in parallel with?
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(s) 15, 22, 24 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herron et al. (US 2015/0014248A1).
Regarding claim 15, Herron teaches a system (fig. 1) for concentrating nanofiltration permeate, the system comprising:
a feed tank configured to receive at least an initial solution having an initial concentration of a solute;
a reverse osmosis (RO) system (102) configured to receive the initial solution and dewater the initial solution to form a first retentate (116) (the limitation “having a first concentration of the solute that is greater than the initial concentration of the solute” is inherent feature of RO system which produces a permeate and a retentate);
a first high-pressure nanofiltration system (104) having an element train having multiple elements in series ([0048] discloses up to eight spiral elements), the first high-pressure nanofiltration system configured to receive the first retentate (116) pumped from the first RO system (fig. 1 does not disclose a pump, however, [0056] indicates that pump(s) is/are provided to provide varying amount of pressure needed for filtration) and form:
a second permeate stream (118) (“having a concentration of the solute approximately equal or within a predetermined range of the initial concentration of the solute fed into the RO system” would be inherent to the third permeate stream since nanofiltration membrane would permit more solute than RO membrane); and
a second retentate (120) having a second concentration of the solute greater than the first concentration of the solute output by the RO system;
a second high-pressure nanofiltration system (106) having an element train having multiple elements in series ([0048] discloses up to eight spiral elements), the second high-pressure nanofiltration system configured to receive the second retentate (120) pumped from the first high-pressure nanofiltration system (fig. 1 does not disclose a pump, however, [0056] indicates that pump(s) is/are provided to provide varying amount of pressure needed for filtration) and form:
a third permeate stream (122) (the limitation “having a concentration of the solute approximately equal to or within a predetermined range of the first concentration of the solute output by the RO system” would be inherent to the third permeate stream since nanofiltration membrane would permit more solute than RO membrane); and
a third retentate (124) having a third concentration of the solute greater than the second concentration of the solute output by the first high-pressure nanofiltration system (the third retentate would inherent have higher concentration than second concentration of solute because of filtration of the second retentate by the 3rd NF system); and
a line directing the second permeate stream from the first high-pressure nanofiltration system to the feed tank to mix the second permeate stream with an additional initial solution having approximately the initial concentration of the solute before the additional initial solution is fed into the RO system (refer 118 supplied to the feed of RO system 102 via 130 and 112).
Herron does not disclose a feed tank from which the initial solution (110) is supplied, however, providing a tank/reservoir/vessel to hold the initial solution is well known in the art and therefore, would have been obvious to one of ordinary skill in the art.
Regarding claim 22, Herron teaches limitations of claim 15 as set forth above. Herron further teaches that the system further comprising a third high-pressure nanofiltration (108) having an element train having multiple elements in series ([0048] discloses up to eight spiral elements), the third high-pressure system configured to receive the third retentate (124) having the third concentration of the solute from the second high-pressure nanofiltration system (106) and form: a fourth permeate stream (126); and a fourth retentate (128) (“having a fourth concentration of the solute greater than the third concentration of the solute” is inherent because the third concentrate is being further concentrated by the third NF system).
Regarding claim 24, Herron teaches limitations of claim 22 as set forth above. Herron teaches that the third high pressure nanofiltration system has one train (refer fig. 1) having a plurality of membrane element ([0048] discloses up to eight spiral elements). Selecting number of elements would have been an obvious matter of design choice to one of ordinary skill in the art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 27, Herron teaches limitations of claim 15 as set forth above. Limitations of claim 27 is reciting material being worked upon by the apparatus without structurally limiting the apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claim(s) 16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herron et al. (US 2015/0014248A1), in view of Zhai et al. (US 2020/0023317A1).
Regarding claims 16 and 18, Herron teaches limitations of claim 15 as set forth above. Herron does not teach that the first high-pressure nanofiltration system has multiple element trains in parallel (claim 16) and the second high-pressure nanofiltration system has multiple element trains in parallel (claim 18).
Zhai teaches a system for concentrating a solute (refer abstract, fig. 1), wherein the system comprising a first stage NF (110) producing a first retentate (113) which is further concentrated by a 2nd stage NF (120) producing a second retentate (123) which is further concentrated by a 3rd stage NF (130) producing a third retentate (133). Zhai also teaches that 1 to 8 membrane elements are installed in series in a pressure vessel (or “shell” or “housing”) to form a membrane module, and multiple membrane pressure vessels connected together in parallel (refer [0003]).
It would have been obvious to one of ordinary skill in the art to modify the NF systems of Herron to include a plurality of vessels in parallel as taught by Zhai because one of ordinary skill in the art would have recognized that additional NF modules in parallel would increase capacity of NF system.
Claim(s) 20 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herron et al. (US 2015/0014248A1), in view of Agnihotri et al. (US 10864481).
Regarding claim 20, Herron teaches limitations of claim 15 as set forth above. Herron does not teach that the second high-pressure nanofiltration system has fewer element trains in parallel than the first high-pressure nanofiltration system, and wherein each element train in parallel in the second high-pressure nanofiltration system has more elements in series than each element train in parallel in the first high-pressure nanofiltration system (as recited in claim 20) and the third high-pressure nanofiltration system has fewer element trains in parallel than the first high- pressure nanofiltration system and the second high-pressure nanofiltration system (as recited in claim 25).
Agnihotri teaches a multi-stage reverse osmosis system wherein the number of pressure vessels in each stage gradually decreases to compensate for reduction in feed-flow (as part of the feed flow is filtered and removed through permeate production) to maintain flow-velocity inside pressure-vessels within an optimum range (refer Col. 4:Lines 41-57).
It would have been obvious to one of ordinary skill in the art to modify the NF systems of Herron to provide the second high-pressure nanofiltration system having fewer element trains in parallel than the first high-pressure nanofiltration system, and wherein each element train in parallel in the second high-pressure nanofiltration system has more elements in series than each element train in parallel in the first high-pressure nanofiltration system, and the third high-pressure nanofiltration system having fewer element trains in parallel than the first high- pressure nanofiltration system and the second high-pressure nanofiltration system to compensate for reduction in feed-flow to maintain flow-velocity inside pressure-vessels within an optimum range as taught by Agnihotri.
Allowable Subject Matter
Claims 21, 23 and 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The cited prior arts fail to teach that the system includes both: the line directing the second permeate stream from the first high-pressure nanofiltration system to the feed tank to mix the second permeate stream with the additional initial solution having approximately the initial concentration of the solute before the additional initial solution is fed into the RO system; and the line directing the third permeate stream from the second high-pressure nanofiltration system to mix with the additional first retentate having approximately the first concentration of the solute before the additional first retentate is fed into the first high-pressure nanofiltration system as recited in claim 21, or the system comprising a line directing the fourth permeate stream from the third high-pressure nanofiltration system to mix with additional second retentate from the first high-pressure nanofiltration system having approximately the second concentration of the solute before the additional second retentate is fed into the second high- pressure nanofiltration system as recited in claim 23, or the system comprising: an initial pump configured to pump the initial solution to the RO system; a first pump configured to pump the third permeate stream to mix with the first retentate from the RO system before entering the first high-pressure nanofiltration system; and a second pump configured to pump the fourth permeate stream to mix with the second retentate from the first high-pressure nanofiltration system before entering the second high- pressure nanofiltration system as recited in claim 26.
Conclusion
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/PRANAV N PATEL/Primary Examiner, Art Unit 1777