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 .
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 21-23, 27 and 28 are 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 21, the limitation “wherein: the device is provided with five sealable outlets, four recycling outlets, and one residue outlet” renders the claim indefinite because it is unclear whether the claim is reciting that the device comprises total of five sealable outlet, wherein the five sealable outlets comprise four recycling outlets and one residue outlets; or that the device comprises a total of 10 outlets: five sealable outlets + four recycling outlets + one residue outlet. Examiner has interpreted the limitation as total of five sealable outlets. This interpretation is supported by instant fig. 3 which discloses four recycling outlets (5a) and one residue outlet (5b).
Claim 21 recites the limitation "the distance A" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the controller" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites the limitation "the return pipes" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 10, 12, 13, 16, 25, 26 and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen et al. (CN 101381674A).
Regarding claim 1, Shen teaches a device (refer fig. 1) comprising a tank (2) with a digestion space (interior of tank) and an inlet (11), the tank having a conical bottom (refer fig. 1), at least two sealable outlets (refer 3 and 6), wherein one of the at least two sealable outlets is recycling outlet (refer outlet 6 connected to a conduit returning back to the tank) and at least one of the at least two sealable outlets is a residue outlet (refer 3), the residue outlet (3) is located on a lower level than the recycling outlet (6) (refer fig. 1), and wherein the device comprises a mixing pump (5) mixing organic material to be digested with at least partially digested material (Refer fig. 1 indicating mixing of organic material from tank 1 with material from outlet 3 of tank 2 using mixing tank 4 and pump 5).
PNG
media_image1.png
372
434
media_image1.png
Greyscale
Regarding the limitations “wherein the digestion space of the tank is divided into: a zone B in which organic material to be digested and/or at least partly digested material is present with a lower concentration of elements with high density than on average in the digestion space, and a zone C with at least partly digested organic material with a higher concentration of elements with high density than on average in the digestion space, and wherein the zone C is in the conical bottom of the tank, and wherein the one or more recycling outlets are located approximately on a level of a transition between the zone B and the zone C located in the conical bottom of the tank”, it should be noted that the claim is directed to a device, i.e. an apparatus. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). 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).
The tank of Shen comprises a conical bottom wherein first outlet (3) is at bottom of the conical shape and second outlet (6) is on angled wall of conical bottom. Space/interior of tank below the second outlet (6) is interpreted as zone C and space/interior of tank above the second outlet (6) is interpreted as zone B.
Regarding claim 10, Shen teaches limitations of claim 1 as set forth above. The limitation “wherein anaerobic digestion is used for processing organic material” is reciting a manner of operating the device without imparting additional structure. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Shen discloses performing anaerobic digestion in the device (Refer abstract, claim 1).
Regarding claim 12, Shen teaches limitations of claim 1 as set forth above. Shen teaches that the device is provided with a return pipe which form a connection between the mixing pump and one or more recycling pipes (refer fig. 1).
Regarding claim 13, Shen teaches a method (refer abstract, fig. 1) for processing organic material and separating indigestible elements with high density using a device according to claim 1 (refer rejection of claim 1 above), the method comprising the following steps:
Providing the device (refer fig. 1);
Supplying organic material via inlet (11) to the digestion space (refer fig. 1);
Digesting the organic material in the digestion space (refer abstract, disclosure on page 4);
Extracting at least partly digested material via recycling outlet (refer outlet 6 connected to a conduit recycling material from a lower part of the tank 2 to upper part of the tank);
Discharging at least a part of elements with high density via residue outlet (Refer outlet 3 discharging material, outlet 3 is at a lower position than outlet 6 resulting in material with higher density to be removed from outlet 3 due to gravity);
Whereby before supplying the organic material to the digestion space, the organic material is mixed with at least partly digested material (refer mixing tank 4 mixing organic material with at least partly digested material).
Regarding claim 16, Shen teaches limitations of claim 13 as set forth above. Shen teaches discharging digested material from outlet 3 and that a control valve is provided (refer fig. 1), therefore, it is implied that discharging occurs regularly, either continuously or discontinuously.
Regarding claim 25, Shen teaches limitations of claim 1 as set forth above. Shen teaches that the inlet is provided at top of the tank (Refer fig. 1).
Regarding claim 26, Shen teaches limitations of claim 1 as set forth above. Shen teaches that the device further comprises an extraction system configured to remove the elements with high density from the digestion space, and wherein the residue outlet is connected to the extraction system by a residue pipe (refer the pipes and conduits connected to the outlet 3).
Regarding claim 30, Shen teaches limitations of claim 1 as set forth above. Shen teaches that the tank is provided with a gas outlet (12).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 4-8, and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 101381674A), in view of Brown et al. (US 2019/0185355A1).
Regarding claims 4, Shen teaches limitations of claim 1 as set forth above. Shen does not teach that the device is provided with one or more recycling pipes which form a connection between the recycling outlets and the mixing pump.
Brown teaches a device for digestion of sludge (Refer abstract, fig. 4, [0011]), wherein digested sludge from different zones are discharged and a portion of which are returned to the device (Refer fig. 4 indicating recycle pump returning solids). Brown also teaches a flow meter (FM3) and a control system (refer [0050]-[0056]). Brown discloses that solids retention time, hydraulic retention time, recycle rate, temperatures, pH and concentrations can all be optimized via monitoring systems and/or controllers (Refer [0049], table A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of Shen to include one or more recycling pipes which form a connection between the recycling outlets and the mixing pump to control and optimize recycle rate and concentrations as taught by Brown.
Regarding claim 5, modified Shen teaches limitations of claim 4 as set forth above. Brown further teaches that the device comprises a controller or software platform that provides a user or system to select a mode for a desired hydraulic retention and/or solids retention time, as a result, use of the system provides significant user flexibility. The limitation “configured to determine a ratio of organic material to be digested to recycled at least partly digested material” is reciting a manner of operating the device without imparting additional structure to the device. A claim containing 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). 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).
Brown also teaches recycling conduit enabling recycling of sludge from different zones of the device and having valves, pump, and a flow meter (Refer fig. 4 disclosing FM3, recycle pump and valves).
Regarding claim 6, modified Shen teaches limitations of claim 4 as set forth above. The limitations “configured to add fluid with a lower viscosity than a viscosity of the material in the digestion space such that the viscosity of the material in the digestion space can be adjusted to thus accelerate the discharge of elements with high density from the residue outlet” is reciting a manner of operating the device without imparting additional structure to the device. A claim containing 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). 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).
Regarding claims 7-8, modified Shen teaches limitations of claim 4 as set forth above. Brown further teaches that the device comprises a controller or software platform that provides a user or system to select a mode for a desired hydraulic retention and/or solids retention time, as a result, use of the system provides significant user flexibility. Brown also teaches recycling conduit enabling recycling of sludge from different zones of the device and having valves, pump, and a flow meter (Refer fig. 4 disclosing FM3, recycle pump and valves). Brown discloses that solids retention time, hydraulic retention time, recycle rate, temperatures, pH and concentrations can all be optimized via monitoring systems and/or controllers (Refer [0049], table A). Controlling the valves based on user configuration to control flow through the selected conduits would have been an obvious matter of choice to one of ordinary skill in the art to optimize solids retention time, hydraulic retention time, recycle rate, temperatures, pH and concentrations.
Regarding claim 27, modified Shen teaches limitations of claim 13 as set forth above. Shen does not disclose that the device comprises a controller and that the controller is configured to control the mixing pump or one of more discharge pumps at regular or predefined times to pump at least a part of the mixed mass or at least a part of the at least partly digested waste.
Brown teaches a device for digestion of sludge (Refer abstract, fig. 4, [0011]), wherein digested sludge from different zones are discharged and a portion of which are returned to the device (Refer fig. 4 indicating recycle pump returning solids). Brown also teaches a flow meter (FM3) and a control system (refer [0050]-[0056]). Brown discloses that solids retention time, hydraulic retention time, recycle rate, temperatures, pH and concentrations can all be optimized via monitoring systems and/or controllers (Refer [0049], table A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of Shen to include controller to control and optimize recycle rate and concentrations as taught by Brown.
Regarding claims 28 and 29, modified Shen teaches limitations of claim 27 as set forth above. Brown discloses that solids retention time, hydraulic retention time, recycle rate, temperatures, pH and concentrations can all be optimized via monitoring systems and/or controllers (Refer [0049], table A). Adjusting the controls to achieve desired and/or optimized solids retention time, hydraulic retention time, recycle rate, temperatures, pH and concentrations using the controller would have been obvious to one of ordinary skill in the art.
Claim(s) 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN 101381674A), in view of De Baere et al. (US 2012/0064619A1).
Regarding claim 21, Shen teaches limitations of claim 1 as set forth above. Shen discloses one recycling outlet (6) and one residue outlet (3), wherein the residue outlet is located centrally in a tip of conical bottom (Refer fig. 1) and the recycling outlet (6) is located at least at a height from the residue outlet (refer fig. 1 disclosing the outlets to be spaced apart in a vertical direction).
Shen does not disclose that the device comprises four recycling outlets.
De Baere teaches a device for anaerobic fermentation of organic material (Refer abstract). Fig. 2 indicates that the device comprising a tank (1) having three recycling outlets (12) and one residue outlet (9). De Baere in [0047] discloses that at least two but preferably three or more of the recycling outlets 12 are provided. In [0049], De Baere discloses that “Return openings 12 that are adjustable in height can possibly be provided, such that the return openings can be positioned at different locations on the side of the cone, and such that partly fermented material can be recycled after varying residing times”.
It would have been obvious to one of ordinary skill in the art to select desired number of recycling outlet at a desired height in the device of Shen for recycling of material after varying residing times as taught by De Baere.
Regarding claims 22 and 23, modified Shen teaches limitations of claim 21 as set forth above. De Baere discloses (refer [0047]-[0049]) “[0047] According to the invention, the fermentation tank 1 is provided with return openings 12, at least two but preferably three or more, between the top of the cone and the outlet 9 which make a more even extraction of the contents of the fermentation tank possible and make it possible to discharge a fraction of the partly fermented material, situated between the inlet 6 and the extraction outlet 9, from the fermentation tank 1 and carry it via recycling lines 13 to the feed device 3, in this case to the mixing pump 4, where it is mixed with freshly supplied organic material before the thus obtained mixture is put in the fermentation tank 1 via the inlet 6. [0048] In this embodiment, the return openings 12 are situated at a height above the outlet 9 in the conical part of the tank 1, in particular such that the volume occupies one fifth of the total volume of the fermentation tank 1 downstream of the return opening 12. [0049] Return openings 12 that are adjustable in height can possibly be provided, such that the return openings can be positioned at different locations on the side of the cone, and such that partly fermented material can be recycled after varying residing times”. De Baere establishes that number of outlet and height of the outlets are result effective variable. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 24, the limitation “wherein the mixing pump is configured to, at regular intervals, pump at least partly digested material through one or several of the one or more recycling pipes, either in a direction of the digestion space or in a direction of the mixing pump” is reciting manner of operating the pump without imparting additional structure to the device. [A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Response to Arguments
Applicant's arguments filed 07/29/2026 have been fully considered but they are not persuasive.
Regarding rejection of claim 1, applicant argued:
PNG
media_image2.png
226
582
media_image2.png
Greyscale
In Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable. Similarly, claim 1 is directed to a device “for processing organic material”. Material being processed by the device does not limit structure of the device. The claimed Zone B and C are arbitrarily defined zones based on position of the outlets. It should be noted that there is no physical partition that separates the zone, rather it’s the position of the outlets that appear to define the zones. Shen teaches the tank having outlets that are spaced apart in vertical direction, therefore, teaching the claimed zones. It should also be noted that the device of Shen is for processing organic material. The organic material is inherently subject to gravitational force which inherently allows settling of higher density elements of the organic material of the tank to settle towards the bottom of the tank.
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 PRANAV PATEL whose telephone number is (571)272-5142. The examiner can normally be reached M-F 6AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PRANAV N PATEL/ Primary Examiner, Art Unit 1779
