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 .
Specification
The disclosure is objected to because of the following informalities:
Applicant provided an amended specification but a marked up copy of the specification was not provided so as to ascertain how the specification was amended.
Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 2 and 2a.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 13 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 13 recites a separation aid tank connected such that a separation aid from the separation aid tank is added to the contaminated oil. The recitation of the separation aid being added to the contaminated oil is a process limitation and the claim is directed to an apparatus. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). For examination purposes the claim is assumed to recite a separation aid is capable of being added to the contaminated oil.
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) 9 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gregoli et al. US 4,978,365.
Claim 9, Gregoli teaches a system comprising: a mixing system including an inlet (50) for receiving a fluid and an outlet (110), a separation device (300) including an inlet (123) fluidly connected to the outlet of the mixing system, wherein the mixing system includes at least two mixers (108a, 108b) connected in parallel and at least one valve (134, 136) configured to be controlled to allow fluid to enter one or more of the mixers, the mixing system further including a pressure measuring device (106) positioned in the mixing system to measure a pressure difference over the mixing system (fig. 1, 2, col. 10, lines 31-33). Gregoli does not teach at least two pressure sensors to measure the pressure difference over the mixing system. Providing two pressure sensors, one at the inlet of the mixing system and one at the outlet of the mixing system, would have been an obvious alternative configuration to one of ordinary skill in the art as a way to measure the pressure difference over the mixing system. Providing two pressure sensors upstream and downstream of a system to measure the pressure drop over that system is a very common technique in the art and would have been well within the normal capabilities of one of ordinary skill in the art. The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). The recitation of the system being an oil purification system and the mixing system being for receiving contaminated oil to be purified is a recitation of an intended use of the system and does not provide any further structural limitations to the claims system.
Claim 13, Gregoli further teaches a tank (64) connected in the system such that a material from the tank can be added to the fluid before it enters the mixing system (fig. 1). The recitation of the tank being a separation aid tank and separation aid being added to the contaminated oil is a recitation of intended use and does not provide any further structural limitations to the system.
Claim 14, Gregoli further teaches the mixers being static inline mixers (fig. 1, col. 10, lines 31-40).
Claim 15, Gregoli teaches a separation device but does not teach a centrifugal separator. Gregoli teaches the separation can be accomplished by any suitable means (col. 16, lines 32-51). Centrifugal separation is a very common separation technique to separate oil and water and would have been well within the normal capabilities of one of ordinary skill in the art as a suitable means. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant’s arguments with respect to claim(s) 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 1-8 and 20-22 are allowed.
Claims 10-12 and 16-17 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 an examiner’s statement of reasons for allowance:
Regarding claim 1, Gregoli teaches a method for purification of contaminated oil where contaminated oil is provided into a mixing system (at 105) including at least two mixers (108a, b) connected in parallel and at least one valve (134, 136) configured to be controlled to allow contaminated oil to enter one or more of the mixers, mixing the contaminated oil in the mixing system, forwarding the mixed contaminated oil from the mixing system to a separation device (300) and separating the contaminated oil in the separation device, wherein the step of mixing comprises: measuring a pressure difference over the mixing system (fig. 1, 2, col. 10, lines 31-33). Gregoli does not teach controlling the at least one valve in the mixing system depending on the measured pressure difference nor would it have been obvious to one of ordinary skill in the art to modify the prior art to arrive at the claimed invention.
Regarding claim 10, Gregoli teaches as obvious the system of claim 9 but does not teach a control system configured to control the at least one valve depending on the measured pressure difference over the mixers nor would it have been obvious to one of ordinary skill in the art to modify the prior art to arrive at the claimed invention.
The additional claims are allowable as depending from claim 1 or 10.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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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.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
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