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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 6/8/2026.
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.
Claim 18 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 18 recites the limitation "the cooling fluid." There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites that the metal processing plant comprises rolling mills or casting machines but claim 17 recites the metal processing plant rolling mills or casting machines, quenching or tempering machines, pre- finishing or finishing machines. As such, claim 17 broadens the scope of claim 1 and thus fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3-7, 9-10, 13, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao (CN 208632262 in IDS with translation) in view of Eijt et al. (US 2007/0256964 in IDS) and Weiss (GB 2275210).
Regarding claim 1, Tao teaches a water treatment line comprising: (a) a device for removing suspended solids from liquids comprising: (a-1) a sedimentation tank (4) with a solids collection sector (bottom of tank); (a-2) in said tank a lamellar pack filter (4.1) with sedimentation surfaces inclined with respect to the bottom of said tank; (a-3) in said tank a system for conveying the solids leaving said lamellar pack filter into said collection sector; and (a-4) a device configured to extract the solids from said solids collection sector (sloped bottom and valves at bottom of tank), (b) upstream of said sedimentation tank one or more pre-treatment tanks (2 3) for separating solids by gravity, and(c) metal processing plants (steel rolling workshop), wherein said metal processing plants feed said water treatment line and are located upstream of said device for the removal of suspended solids from liquids and of said one or more pre-treatment tanks (Pages 1-3 of the provided translation).
Tao fails to teach the lamellar pack filter comprises a plurality of adjacent, essentially parallel and inclined tubular profiles. Eijt teaches that sloped plate lamellar packing can come in a variety of different shapes as claimed and provide optimized flow conditions for separation (Figs. 2-4 and [0018]-[0024]). Therefore, it would have been obvious to modify the sloped plates of Tao to the plurality of adjacent, essentially parallel and inclined tubular profiles of Eijt as they provide more desirable flow conditions.
It is noted that Tao teaches a filter tank (5) that has rare earth ceramic balls therein. It is unclear based on the Tao description if the filtration media is used to separate solids or if the filter is used for adsorption, ionic, or coalescing purposes so it is unclear if the tank after the sedimentation tank would read on the claimed exclusion of filter media for separating of solids. Weiss teaches a similar apparatus where the tank after the sedimentation tank includes a tank (B) lacking filter media for separation of solids (Fig. 2). As such, one skilled in the art would have found it obvious to replace the filter tank of Tao with the coalescence tank of Weiss as such designs are known and would efficiently treat water/liquid from similar sources with similar oil and solid particles to a requisite degree without the need for filtration media.
Regarding claim 3, Eijt teaches that the hydraulic diameter ranges from 1-10 cm overlapping the range claimed (claim 3).
Regarding claim 4, Tao and Eijt do not explicitly state the sedimentation surface but changing the size/proportion would have been an obvious matter to one skilled in the art to fit the desired treatment capacity and space requirements (In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
Regarding claim 5, Tao and Eijt do not teach any magnetic elements or surfaces and therefore meets the claim limitation.
Regarding claim 6, Tao teaches that a common contaminant is oil but fails to teach a skimmer arranged in the upper part of the sedimentation tank. Weiss teaches a similar apparatus for separating various contaminants from waste water/degreasing fluid from a metal plant wherein the apparatus comprises a sedimentation basin (A) with lamellar packing (12) wherein at the top of the sedimentation basin skimmers are used to remove oil and grease floating on the top of the liquid being treated (pages 7-8). As such, one skilled in the art would have found it obvious to provide oil skimmers as claimed in order to efficiently remove any oil and grease at the top of the liquid being treated in the sedimentation basin.
Regarding claim 7, it is submitted that the lamellar pack portion would either be integral or modular and one skilled in the art would have found such configurations obvious (In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice."); but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.). In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.").
Regarding claim 9, it is submitted that tank (5) or the unlabeled end tank in Fig. 1 of Tao would read on the claim limitations.
Regarding claim 10, both Tao and Weiss both teach a settling tanks, lamella clarifiers, and further treatment means without the inclusion of sand filters.
Regarding claim 13, Eijt teaches that the flow channels have an inclination of at least 50 degrees (claim 4).
Regarding claims 15-16, see claim 6 above for the inclusion of oil skimmers in Tao for gravity based separation tanks. As the pretreatment tanks in Tao also operate as gravity separators similar to Weiss, one skilled in the art would have found it obvious to provide oil skimmers on all gravity based separation tanks in order to aid in the removal of oil from the gravity based separation tanks.
Regarding claim 17, Tao teaches the metal processing plant is a rolling mill.
Regarding claim 18, it is noted that the claim is directed to how a fluid is being used and does not limit that apparatus claim as the same apparatus could be perform the claimed operation depending on user control.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao (CN 208632262 in IDS with translation) in view of Eijt et al. (US 2007/0256964 in IDS) and Weiss (GB 2275210) and further in view of Marggraff et al. (EP 0559056 in IDS with translation).
Regarding claim 2, Tao in view of Eijt teach the lamellar packing shape can be chosen from a variety of options of shapes and sizes ([0018]-[0021]) but does not specifically state the tubular profile is a V shape. One skilled in the art would have found that due to the variety of shapes considered, the specific shape could not be considered significant based on the teachings of Eijt especially as Marggraff teaches the specific V shape claimed for a honeycombed shaped separator package for settling/sedimentation systems (Figs. 1-2). Therefore, modifying the shape of the lamellar pack filter to V shape would have been an obvious change in shape of known options.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao (CN 208632262 in IDS with translation) in view of Eijt et al. (US 2007/0256964 in IDS) and Weiss (GB 2275210) and further in view of Schimion et al. (US 5,534,155).
Regarding claim 8, Tao fails to teach a magnetic device for separation as claimed. Schimion teaches that for purification of liquids/water from metal rolling mills, the water can be prepurified via a magnetic device in order to remove metal particles from the water (C2/L29-56). Therefore, it would have been obvious to provide a magnetic device in order to separate metal particles from the water from a metal processing plant.
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive. The above rejection has been modified to address the added claim limitation to claim 1.
In response to applicant's argument that the main point of the present invention is directed to eliminating sand filters, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is further noted that Tao does not teach the use of sand filters so the benefit of eliminating sand filters is already realized in Tao, though not explicitly stated. Further, Weiss teaches that no filter using filter media is necessary when treating a liquid with similar contaminants (oil and solid particles).
In response to applicant's argument that Weiss is nonanalogous art due to the fluid being treated is different, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Weiss teaches that the fluid being treated is a degreasing fluid for a metal processing plant. It is noted that known degreasers include water based degreasers and Weiss teaches in more than instance that water/oil separation is performed. Additionally, both Tao and Weiss teach separating solids and oils from a liquid using gravity/sedimentation separators and lamellas while Tao teaches the use of rare earth balls as the step after solid separation and Weiss teaches a media free means as a treatment after the solids separation step. Since so many similarities are present in both the source of the liquid to be treated, the function of the liquid to be treated, the contaminants in the liquid to be treated, and the means of treatment for upstream units, one skilled in the art would have found Weiss to be in the field of the inventor’s endeavor and reasonably pertinent to the particular problem with which the inventor was concerned.
Applicant argues that the rare earth balls are used to separate solids. Examiner notes that no such disclosure is present, only that the rare earth ball filter media is provided. All other solid separation means in Tao provide a solids outlet but no outlet is provided for the filter media tank. Further, rare earth balls could provide many other benefits, such as adsorption, ionic, coalescing, or microbial benefits, that have nothing to do with solids separation. Further, no reason is given for the inclusion of rare earth balls in Tao. Rare earth balls would be significantly more expensive than other similar shaped balls/sand of cheaper materials that would provide the same basic filtration argued but at a fraction of the price. Lastly, Weiss provides a basis that a filtering media after the gravity based separation of solids is not needed for a similar fluid making the replacement of the filter media with a different alternative means capable of providing a further treatment step obvious.
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 PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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/PETER KEYWORTH/Primary Examiner, Art Unit 1776
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