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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “a self-synchronizing mechanism” in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-4, 6-11, 13-16, and 18-23 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.
Claim 1 recites the limitations “flow generally parallel to the probe”. Since “the probe” is a multi-dimensional structure, it is not clear what part of the probe is parallel to the flow.
Also, the limitation “generally parallel” renders the claims vague and indefinite. It is not clear how far they could deviate from parallel and still be considered in “generally” parallel. The limitation "generally" is subjective and therefore makes the claim scope unclear.
Moreover, the limitation “the vessel walls are at a distance” does not define the other reference point from “the vessel walls”. Thus, it is not clear what “a distance” is referred to.
Furthermore, it is not clear what “a diameter of a smallest diameter” is regarded.
Appropriate correction/clarification is required.
Claim 6 recites the limitation “a self-synchronizing mechanism”, which is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Upon reviewing the instant specification, it merely states that sonotrode 104 may be configured with a self- synchronizing mechanism which allows sonotrode 104 to control the temperature and pressure of the disclosed system (paragraph [0055]). However, the instant application does not provide any detailed structures regarding “a self- synchronizing mechanism” or disclose any equivalent/corresponding structures to perform the claimed functions. Therefore, it is not clear what “a self- synchronizing mechanism” is regarded.
Due to the dependency to the parent claim, claims 2-4, 6-11, 13-16, and 18-23 are rejected.
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.
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.
Claims 1-4, 10-11, 13-16, and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Janajreh et al (PG-PUB US 20190366297) in view of Adnan et al (PG-PUB US 20120083618).
Regarding claim 1, Janajreh et al disclose an ultrasonic generating device for treating reactants (ABSTRACT). The apparatus comprises
(1) a converging housing 10 having at least one inlet 12 and at least one outlet (i.e., a vessel having an inlet … and an outlet …, Figures 1-2, paragraphs [0018] – [0019]);
(2) a sonotrode 14 within the converging housing 10, wherein
(i) the fluid is supplied from the inlet 12 and discharged at the outlet; and
(ii) cavitation bubbles are generated within the converging housing 10 by the sonotrode 14 (i.e., a vibrating probe …, …flow parallel to the probe, …, Figures 1-2, paragraphs [0018], & [0038]).
Janajreh teaches that (i) the converging housing 10 has a top section with a diameter about 100 to 116 mm and a bottom section with a diameter about 25 to 60 mm and (ii) the sonotrode of any size may be used (paragraphs [0019], [0033], [0036], and [0038]), but does not teach the size of sonotrode or the claimed ratio of the gap between the sonotrode and the reactor wall to the diameter of the sonotrode.
However, Adnan et al disclose an ultrasonic generating device for treating reaction mixture (ABSTRACT). Adnan teaches that the reaction mixture can be treated with ultrasonic energy generated from a sonotrode 203 having a diameter about 34 – 40 mm which is commercially available (Figures 2-3, paragraphs [0019], [0023], [0026], [0032], & [0035]).
Since Janajreh taches that the sonotrode of any size may be used (paragraphs [0019] & [0038]), one having ordinary skill in the art would have realized to utilize a sonotrode having a diameter about 34 to 40 mm as suggested by Adnan in order for the device of Janajreh to properly operate with a readily available sonotrode.
As such, the device of Janajreh/Adnan has a ratio of the gap between the sonotrode and the reactor to the sonotrode diameter in a range of 0.2 – 1.2.
It should be noted that the limitation of “to induce the formation of nano-sized bubbles” is a result of operating the device, which does not differentiate the apparatus claim from the prior art (MPEP 2114). Furthermore, “a/the processing liquid” is material worked upon the device which does not limit the apparatus claim from the prior art (MPEP 2115).
Moreover, since the device of Janajreh/Adnan comprises substantially the same/similar structures as claimed, it must have the same outcome (e.g., to induce formation of nano-sized bubbles).
Regarding claim 2, Janajreh teaches that the converging housing 10 has a top section with a diameter about 100 to 116 mm and a bottom section with a diameter about 25 to 60 mm for treating reactants with different flow rates (paragraphs [0033] & [0036] – [0037]). Adnan teaches that the reaction mixture with different flow rates can be treated with ultrasonic energy generated from a sonotrode having a diameter about 34 – 40 mm which is commercially available (Figures 2-3, paragraphs [0007], [0019], [0022] - [0023], [0026], [0032], & [0035]).
Furthermore, the variation in the ratio may result in the dimension changes of the reactor and/or the probe. However, it has been 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 (MPEP 2144).
It should be noted that “a flow rate” is a process-limiting parameter which does not differentiate the apparatus claim from the prior art (MPEP 2114). Moreover, “a/the processing liquid” is material worked upon the device, which does not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claim 3, Janajreh teaches a sonotrode 14 (Figures 1-2, paragraph [0018]). Adana teaches a sonotrode 203 (Figures 2-3, paragraphs [0019]).
Regarding claim 4, Adana teaches that the sonotrode 203 may have conical tip (Figures 2-3, paragraphs [0019]).
Regarding claim 10, Adana teaches that valves are provided along the ultrasonic flow cell for controlling the flow rate (Figure 6, paragraph [0036]).
Regarding claim 11, it should be noted that “the residence time” is not a structural limitation, rather a process-limiting parameter which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Regarding claim 13, Adana teaches ultrasonic frequency in a range of 15 to 500 kHz (paragraph [0033]). Furthermore, it should be noted that “a frequency” is not a structural limitation, rather a process-limiting parameter which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Regarding claim 14, Adana teaches an amplitude in a range of 1 to 1000 microns (paragraph [0031]). Furthermore, it should be noted that “an amplitude” is not a structural limitation, rather a process-limiting parameter which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Regarding claim 15, Janajreh teaches that the converging housing 10 has a top section with a diameter about 100 to 116 mm and a bottom section with a diameter about 25 to 60 mm while the sonotrode of any size may be used (paragraphs [0019], [0033], [0036], and [0038]). Adnan teaches that the reaction mixture can be treated with ultrasonic energy generated from a sonotrode 203 having a diameter about 34 – 40 mm which is commercially available (Figures 2-3, paragraphs [0019], [0023], [0026], [0032], & [0035]). As such, the device of Janajreh/Adnan has a ration of the gap between the sonotrode and the reactor to the sonotrode diameter in a range of 0.2 – 1.2
Regarding claim 16, “the nano-sized bubbles” are a result of operating the device, which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Furthermore, since the device of Janajreh/Adnan comprises substantially the same/similar structures as claimed, it must have the same outcome (e.g., the nano-sized bubbles).
Regarding claim 18, Janajreh teaches that reactants are supplied to the reactor through the inlet 12 (figures 1-2, paragraphs [0005], & [0019]). Adnan teaches that the effluent flows into the reactor (Figure 3, paragraph [020]).
It should be noted that “an oxidizer and/or a catalyst” is material worked upon the device, which does not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claims 19-20, it should be noted that “hydrogen peroxide” and “acidic medium” are materials worked upon the device, which do not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claim 21, it should be noted that “acetic acid” is material worked upon the device, which does not limit the apparatus claim from the prior art (MPEP 2115)
Regarding claim 22, “the cavitation zones produced by the probe” is not a structural limitation, rather a result of operating the device which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Furthermore, since the device of Janajreh/Adnan comprises substantially the same/similar structures as claimed, it must have the same outcome
Regarding claim 23, “the processing liquid” is material worked upon the device, which does not limit the apparatus claim from the prior art (MPEP 2115).
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 1-4, 10-11, 13-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims1, 5-7, 13-14, and 16-19 of copending Application No. 18/558,940 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus comprising substantially the same structures as that of the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-4, 6-11, 13-16, and 18-23 are rejected.
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/XIUYU TAI/Primary Examiner, Art Unit 1795
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