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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-13, drawn to a method.
Group II, claims 14-26, drawn to an apparatus.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the reasons described below.
The question of Unity of Invention was addressed based on the provided Information Disclosure Statements (IDSs).
The inventions of groups I and II lack unity of invention because even though the inventions of these groups require shared technical features, these technical features are not special technical features as they do not make a contribution over the prior art in view of Kaczur (US Pat. Pub. 2007/0251831 A1).
It will be noted that, as currently drafted, many of the limitations of claims 1 and 14 are unclear e.g., the meaning of each of the limitations that invoke 35 U.S.C. § 112(f), and the term “decomposition rate”. For the purposes of identifying the shared technical features of claims 1 and 14, the specification was consulted to identify a reasonable interpretation of such limitations.
The common technical features shared by groups I and II are considered to be: an apparatus for producing an aqueous solution of sodium hypochlorite comprising:
an electrolyzer comprising an anode and a cathode, with an ion-exchange membrane disposed therebetween, that receives a solution of secondary salt water comprising aqueous sodium chloride;
a reaction tank into which the anolyte and catholyte are introduced after the electrolysis;
the formation of sodium hypochlorite in the reaction tank by reaction of the anolyte and catholyte;
a primary salt water generation section of the apparatus that dissolves raw salt comprising sodium chloride in purified water to generate a primary salt water;
a chelating section comprising a chelating resin that receives the primary salt water and generates the secondary salt water supplied to the electrolyzer, wherein
the sodium chloride is converted to product(s) with a yield between 80 and 95%.
Kaczur teaches an apparatus for producing an aqueous solution of sodium hypochlorite (title) comprising:
an electrolyzer (“electrolyzer 34” para. 32 and Fig. 2) comprising an anode and a cathode, with an ion-exchange membrane disposed therebetween (“cation ion exchange membrane 37, which separates the cell anolyte compartment 35 containing an anode from catholyte compartment 36 containing a cathode” para. 32 and Fig. 2), that receives a solution of secondary salt water comprising aqueous sodium chloride (“electrolyzer(s) 34 (typically a plurality thereof) converts softened brine stream 22 into chlorine, sodium hydroxide, and hydrogen” para. 32 and Figs. 1 and 2);
a reaction tank into which the anolyte and catholyte are introduced after the electrolysis (“Sodium hypochlorite conversion tank 68” para. 40 and Fig. 2), wherein
sodium hypochlorite is formed in the reaction tank by reaction of the anolyte and catholyte (para. 37 and see Fig. 2, see also Fig. 3);
a primary salt water generation section (“process module A” para. 27 and Fig. 1) of the apparatus that dissolves raw salt comprising sodium chloride in purified water to generate a primary salt water (“Sodium chloride salt 2 is added to briner tank 1 and softened (or deionized) water 3 is used to dissolve the salt to produce saturated brine solution 5.” Id.);
a chelating section (“process module C” para. 30 and Fig. 1) comprising a chelating resin that receives the primary salt water and generates the secondary salt water (“the heated brine stream 15 enters the two column ion exchange system 16, which uses commercially available chelating ion exchange resins designed to remove hardness from brine solutions.” para. 31 and Fig. 1) supplied to the electrolyzer (“The purified brine solution exits the columns as stream 21 and is split into stream 22, which goes to the electrolyzer module in Process Module D” para. 31 and Figs. 1-2), wherein
the sodium chloride is converted to product(s) with a yield of at least 90%, a range overlapping the claimed range (para. 15). A range in the prior art overlapping a claimed range establishes a prima facie case of obviousness (MPEP § 2144.05(I)).
Thus, each of the shared technical features of groups I and II are rendered obvious by Kaczur. Therefore, none of the shared technical features of groups I and II are shared special technical features. As the inventions of groups I and II do not share any special technical features, the inventions of groups I and II, taken as a whole, lack unity of invention.
During a telephone conversation with Atty. Mary Anne Armstrong on July 2nd, 2026 a provisional election was made without traverse to prosecute the invention of Group II, claims 14-26. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 line 2 recites “apparatus comprising”, but should recite “apparatus comprising:” to be grammatically correct.
Appropriate correction is required.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) 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) because the claim limitations use 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 limitations are: “a primary salt water generation section that dissolves raw salt containing sodium chloride as a main component in purified water to generate primary salt water”, and “a chelating section that chelates the primary salt water to generate the secondary salt water” in claim 14.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) they 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) applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Furthermore, this application includes one or more claim limitations that use the word “means” or “step” but are nonetheless NOT being interpreted under 35 U.S.C. 112(f) because the claim limitation recites sufficient structure, materials, or acts to entirely perform the recited function.
Such claim limitation is: “a primary salt water generation step of dissolving raw salt containing sodium chloride as a main component in purified water to generate primary salt water” in claim 1.
Because this claim limitation is not being interpreted under 35 U.S.C. 112(f) it is not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this limitation interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation to remove the structure, materials, or acts that perform the claimed function; or (2) present a sufficient showing that the claim limitation does not recite sufficient structure, materials, or acts to perform the claimed function.
Specifically, the following limitations are being interpreted under 35 U.S.C. § 112(f) based on their current drafting:
“a primary salt water generation section that dissolves raw salt containing sodium chloride as a main component in purified water to generate primary salt water” in claim 14 is considered to invoke § 112(f), but no corresponding structure, materials, or acts could be identified in the specification; and
“a chelating section that chelates the primary salt water to generate the secondary salt water” in claim 14 is considered to invoke § 112(f), but no corresponding structure, materials, or acts could be identified in the specification;
“a first switching means that switches whether or not the anolyte in the anode chamber is introduced from the anode chamber into the reaction tank between the anode chamber and the reaction tank” in claim 16 is interpreted as “a valve” and equivalents thereof based on p. 19 of the specification;
“a second switching means that switches whether or not the chlorine gas generated in the anode chamber is introduced from the anode chamber into the reaction tank between the anode chamber and the reaction tank” in claim 17 is interpreted as “a valve” and equivalents thereof based on p. 19 of the specification.
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.
Claims 14-26 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 14, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “decomposition rate” in claim 14 appears to be used by the claim to mean “the total amount of salt converted to product,” while the accepted meaning is “the rate at which salt is converted to product.” The term is indefinite because the specification does not clearly redefine the term.
Furthermore, claim limitations “a primary salt water generation section that dissolves raw salt containing sodium chloride as a main component in purified water to generate primary salt water”, and “a chelating section that chelates the primary salt water to generate the secondary salt water” invoke 35 U.S.C. 112(f) as currently drafted. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, the specification only describes these sections using functional language, and no specific associated structures could be identified. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claims 15-24 and 26, these claims depend from claim 14, and therefore inherit the indefinite language of claim 14. These claims are therefore indefinite.
Regarding claim 25, the term “in the vicinity of a facility where a sodium hypochlorite solution is used” in claim 25 is a relative term which renders the claim indefinite. The term “vicinity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Specifically, the specification describes the apparatus as being in “the vicinity” of “a facility”, but does not describe or give examples of how close the apparatus would need to be to a facility to be considered in “the vicinity” of said facility.
Furthermore, claim 25 depends from claim 14, and therefore inherits the indefinite language of claim 14. Claim 25 is therefore indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 14, 17-22, and 24-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaczur (US Pat. Pub. 2007/0251831 A1).
Regarding claim 14, claim 14 has been interpreted as though the limitations “a primary salt water generation section that dissolves raw salt containing sodium chloride as a main component in purified water to generate primary salt water” and “a chelating section that chelates the primary salt water to generate the secondary salt water” did not invoke 35 U.S.C. § 112(f), and the limitation “decomposition rate” has been interpreted as “conversion yield”.
Kaczur teaches a production apparatus of a sodium hypochlorite solution (e.g., title), the apparatus being an apparatus comprising:
an electrolyzer (“electrolyzer(s) 34” para. 32 and Fig. 2) comparted into an anode chamber and a cathode chamber by an ion-exchange membrane (“cation ion exchange membrane 37, which separates the cell anolyte compartment 35 containing an anode from catholyte compartment 36 containing a cathode” para. 32 and Fig. 2) and supplied with secondary salt water as an aqueous sodium chloride solution(“electrolyzer(s) 34 (typically a plurality thereof) converts softened brine stream 22 into chlorine, sodium hydroxide, and hydrogen” para. 32 and Figs. 1 and 2), and
a reaction tank into which products in the anode chamber and the cathode chamber after electrolysis are introduced (“Sodium hypochlorite conversion tank 68” para. 40 and Fig. 2), and producing a sodium hypochlorite solution by a reaction in the reaction tank (“chlorine is reacted with the co-produced sodium hydroxide to produce sodium hypochlorite (e.g., high strength NaOCl)” para. 37 and see Fig. 2, see also Fig. 3),
characterized in that the apparatus comprises a primary salt water generation section (“process module A” para. 27 and Fig. 1) that dissolves raw salt containing sodium chloride as a main component in purified water to generate primary salt water (“Sodium chloride salt 2 is added to briner tank 1 and softened (or deionized) water 3 is used to dissolve the salt to produce saturated brine solution 5.” Id.), and
a chelating section (“process module C” para. 30 and Fig. 1) that chelates the primary salt water to generate the secondary salt water (“heated brine stream 15 enters the two column ion exchange system 16, which uses commercially available chelating ion exchange resins designed to remove hardness from brine solutions. The purified brine solution exits the columns as stream 21 and is split into stream 22, which goes to the electrolyzer module in Process Module D” para. 31 and Figs. 1-2), and
the apparatus is operated at a conversion yield of salt ranging from 80 to 95% (see below).
The limitation “the apparatus is operated at a conversion yield of salt ranging from 80 to 95%”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, Kaczur teaches the system is capable of operating at salt conversion yields of up to 98% (“conversion of feed brine NaCl to chlorine and NaOCI in the amounts including (a) at least 90, 91, 92, 93, 94, 95, 96, 97, or 98%, and (b) at least 95%.” para. 15). Therefore, the system of Kaczur is capable of being operated to conversion yields of 80 to 95% of the supplied salt.
Because the system of Kaczur is capable of being operated at a conversion yield of salt ranging from 80 to 95%, the system Kaczur anticipates the limitation “the apparatus is operated at a conversion yield of salt ranging from 80 to 95%”.
Regarding claim 17, Kaczur further teaches a second switching means (valve or equivalent thereof) that switches whether or not the chlorine gas generated in the anode chamber is introduced from the anode chamber into the reaction tank between the anode chamber and the reaction tank (“control of the relative flow streams of chlorine via lines 41a … can be accomplished by in a number of ways. For example one can use proportional control valves … which can control the relative mass flow of chlorine … for the production of sodium hypochlorite” para. 42 and Fig. 2).
Regarding claim 18, Kaczur anticipates the limitations of claim 14, as described above.
Kaczur further teaches two or more of the electrolyzers (“electrolyzer(s) 34 (typically a plurality thereof)” para. 32 and “The present system is designed to allow individual electrolyzers to be isolated from the plurality of electrolyzers present in an electrolyzer module.” para. 56 and see Fig. 3), and a chlorine gas feed path (“Stream 89” para. 44 and Fig. 3, see also “stream 41c” para. 42 and Fig. 2) for feeding chlorine gas obtained from one or more of the electrolyzers to a facility where chlorine gas is used (“chlorine gas is drawn off at one or more chlorine process application points, shown as 98, 99, and 100, which are drawn through chlorine flow controllers 95, 96, and 97 respectively” para. 44 and Fig. 3).
Regarding claim 19, Kaczur anticipates the limitations of claim 14, as described above.
Kaczur further teaches a purified water introduction path (“softened water stream 47” para. 34 and Fig. 2) for introducing purified water into the reaction tank (Fig. 2 shows “stream 47” is fluidly connected to “sodium hypochlorite conversion tank 68” and “Lower strength NaOCI solutions are prepared in the system by the measured addition of water into the sodium hypochlorite tank solution based on the production rate.” para. 57).
Regarding claim 20, Kaczur anticipates the limitations of claim 14, as described above.
The limitation “for use in production of a sodium hypochlorite solution having an available chlorine concentration of 8% or more”, as currently drafted, is a recitation of intended use i.e., it defines the apparatus by how it is intended to be used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a recitation of intended use is an apparatus capable of performing the recited use (MPEP § 2114).
In the instant case, Kaczur teaches the system is capable of generating a hypochlorite concentration of up to about 15% (“sodium hypochlorite product solution in concentrations ranging from about 2-15% trade NaOCI” para. 14). As will be understood by a person having ordinary skill in the art, hypochlorite contributes an approximately equal amount to the free available chlorine (FAC) concentration e.g., 15% NaOCl contributes about 15% to the total FAC concentration. Therefore, because the system of Kaczur is capable of producing a sodium hypochlorite solution with a concentration of up to about 15%, it is necessarily also capable of producing a sodium hypochlorite solution having an available chlorine concentration of up to about 15%.
As the system of Kaczur is capable of producing a sodium hypochlorite solution having an available chlorine concentration of about 15%, the system of Kaczur anticipates the limitation “for use in production of a sodium hypochlorite solution having an available chlorine concentration of 8% or more”.
Regarding claim 21, Kaczur anticipates the limitations of claim 14, as described above.
Kaczur further teaches a cation exchange treatment section (“process module B” para. 29 and Fig. 1) that treats raw material water with a cation-exchange resin to generate the purified water (“A commercially available alternating two column water softener 6 uses a pressurized potable water source 7, which is passed through the cation ion exchange resin beds to produce low hardness water 10,” para. 29 and Fig. 1 and “softened (or deionized) water 3 is used to dissolve the salt to produce saturated brine solution 5)” para. 27 and Fig. 1).
Regarding claim 22, Kaczur further teaches the cation exchange treatment second comprises a water softener (“A commercially available alternating two column water softener 6” para. 29 and Fig. 1).
Regarding claim 24, Kaczur anticipates the limitations of claim 17, as described above.
Kaczur further teaches the second switching means (valve or equivalent thereof) is formed to be operable by a switching operation (“proportional control valves” para. 42, proportional control valves are necessarily operable by a switching operation. See also paras. 44, 46, and 57).
Regarding claim 25, Kaczur anticipates the limitations of claim 14, as described above.
The limitation “the apparatus is placed in the vicinity of a facility where a sodium hypochlorite solution is used and used for production of a sodium hypochlorite solution on-site”, as currently drafted, is a functional recitation i.e., it defines the apparatus by where it is used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, Kaczur teaches the system is intended to be used at a facility that uses sodium hypochlorite on-site (e.g., “for on-site generation of elemental chlorine gas and sodium hypochlorite” para. 16). The system of Kaczur is therefore capable of being placed in the vicinity of a facility where a sodium hypochlorite solution is used and used for production of a sodium hypochlorite solution on-site.
Therefore, Kaczur anticipates the limitation “the apparatus is placed in the vicinity of a facility where a sodium hypochlorite solution is used and used for production of a sodium hypochlorite solution on-site”.
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kaczur (US Pat. Pub. 2007/0251831 A1) in view of Okura (WO 2013/065797 A1).
Regarding claim 15, Kaczur anticipates the limitations of claim 14, as described above in the rejection under 35 U.S.C. § 102(a)(1), incorporated herein by reference.
Kaczur does not teach the ion-exchange membrane is a bilayer membrane configured from a sulfonic acid layer and a carboxylic acid layer.
However, Okura teaches an electrochemical sodium hypochlorite generation system (abstract), wherein chlorine gas (“chlorine (Cl2) gas 7” Fig. 1 and p. 15) and alkali metal hydroxide (“alkali metal hydroxide aqueous solution 8” Id.) are produced in a membrane cell (“an electrolytic cell 10, which is divided into an anode chamber 2 and a cathode chamber 3 by an ion exchange membrane 1” Id.), wherein the membrane is a bilayer ion-exchange membrane comprising a sulfonic acid layer and a carboxylic acid layer (“a sulfonic acid-carboxylic acid bilayer membrane” p. 22), which provides the predictable benefit of enabling the generation of high concentrations of hypochlorite while maintaining high current efficiency (“Examples of such ion exchange membranes for generating high-concentration caustic alkali include, for example, two-layer membranes containing a carboxylic acid layer, such as a sulfonic acid-carboxylic acid bilayer membrane” Id.) by better inhibiting hydroxide transport through the membrane relative to monolayer sulfonic acid membranes (“when using a cation exchange membrane having a sulfonic acid-based ion exchange group … in order to achieve a high current efficiency of 90% or more, it is necessary to maintain the sodium hydroxide concentration at a low concentration of 10% by mass or less” p. 21, see also p.19-20 bridging para.).
As Kaczur and Okura each teach systems for the production of hypochlorite by mixing electrolytically produced chlorine gas and alkali metal hydroxide, Kaczur and Okura are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Kaczur, such that the ion-exchange membrane is a bilayer membrane comprising a sulfonic acid layer and a carboxylic acid layer, as taught by Okura. A person having ordinary skill in the art would have been motivated to make this modification because Okura teaches bilayer ion-exchange membranes comprising a sulfonic acid and a carboxylic acid layer provide improved current efficiency relative to monolayer sulfonic acid ion-exchange membranes. Furthermore, simple substitution of one known element for another to achieve predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(B)). Furthermore, use of a material known in the art as suitable for a purpose establishes a prima facie case of obviousness (MPEP § 2144.07).
Claims 16 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kaczur (US Pat. Pub. 2007/0251831 A1) in view of Peters (US Pat. No. 8394253 B2).
Regarding claim 16, Kaczur anticipates the limitations of claim 14, as described above in the rejection under 35 U.S.C. § 102(a)(1), incorporated herein by reference.
Kaczur does not teach a first switching means (valve or equivalent thereof) that switches whether or not the anolyte in the anode chamber is introduced from the anode chamber into the reaction tank between the anode chamber and the reaction tank.
However, Peters teaches a system for the electrolytic production of hypochlorite (abstract) by mixing chlorine gas and alkali metal hydroxide (“mixing a portion of the anodic gases with the reductive alkaline fluid to produce a hypochlorite solution;” abstract) produced in a chlor-alkali cell (“electrolytic cell units 132” col. 6 line 58 – col. 7 line 10 and Fig. 1) in a reaction tank (“mixing unit 144” Id.), wherein anolyte from the anode chamber may be introduced into the reaction tank (“oxidative acidic fluid 1026, 1114 are also blended into the bleach solution to bring the pH down to between 8-9,” col. 17 lines 56-59 and Fig. 10) via a valve or equivalent thereof located between the anode chamber and the reaction tank (“mixing unit 144 may include meters, valves, and/or pumps 150” col. 6 line 58 – col. 7 line 10 and Fig. 1), which enables the system to control the pH of the produced hypochlorite (“oxidative acidic fluid 1026, 1114 are also blended into the bleach solution to bring the pH down to between 8-9,” col. 17 lines 56-59 and Fig. 10).
As Kaczur and Peters each teach systems for the production of hypochlorite by mixing chlorine gas and alkali metal hydroxide formed in an electrolytic chlor-alkali cell, Kaczur and Peters are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Kaczur, by adding a valve or equivalent thereof that switches whether or not the anolyte in the anode chamber is introduced into the reaction tank between the anode chamber and the reaction tank, as taught by Peters. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of allowing the pH of the produced hypochlorite solution to be controlled. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 23, modified Kaczur further teaches, via Peters, the first valve is formed to be operable by a switching operation (valves are necessarily operable by a switching operation) or an external signal via an automatic control apparatus communicable with the exterior of a production facility (“remote units that communicate via wired or wireless technology” col. 11 lines 32-46).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Kaczur (US Pat. Pub. 2007/0251831 A1) in view of Lynn (US Pat. No. 4308123).
Regarding claim 26, Kaczur anticipates the limitations of claim 14, as described above in the rejection under 35 U.S.C. § 102(a)(1), incorporated herein by reference.
Kaczur further teaches an anolyte reservoir that reserves anolyte (“anolyte tank 25” para. 33 and Fig. 2) and a catholyte reservoir that reserves catholyte (“sodium hydroxide head tank or header 43” para. 34 and Fig. 2), wherein the bottom of the catholyte reservoir is disposed above a position at half the height of the electrolyzer (Fig. 2 shows “43” is disposed above “34”).
Kaczur does not teach the bottom of the anolyte reservoir is disposed above a position at half the height of the electrolyzer.
However, Lynn teaches a system for the production of hypochlorite by mixing the chlorine gas and alkali hydroxide formed in a chlor-alkali electrolyzer (abstract), wherein the bottom of the anolyte reservoir (“anolyte feed tank 3” col. 6 lines 45-62 and Fig. 1) is disposed above a position at half the height of the electrolyzer to allow the electrolyzer to be filled by gravity (Anolyte thus feeds by gravity from the anolyte feed tank through the conduit 27, through the lower end portion 28 of the anolyte surge tank and from there downwardly by gravity through the conduit 33 and into the interior of the anode chamber 17” Id.).
As Kaczur and Lynn each teach systems for the production of hypochlorite by mixing chlorine gas and alkali metal hydroxide formed in an electrolytic chlor-alkali cell, Kaczur and Lynn are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the system of Kaczur, such that the bottom of the anolyte tank is disposed above a position at half the height of the electrolyzer, as taught by Lynn. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of allowing the electrolytic cell to be fed by gravity, as taught by Lynn. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
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 14-15, 20-22, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 11, or 12 of U.S. Patent No. 12209321 B2 (the reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 14, claim 8 of the reference patent recites a production apparatus of a sodium hypochlorite solution (“A production apparatus of a sodium hypochlorite solution,” lines 1-2), the apparatus being an apparatus comprising:
an electrolyzer comparted into an anode chamber and a cathode chamber by an ion-exchange membrane (“an electrolyzer comparted into an anode chamber and a cathode chamber with an ion-exchange membrane,” lines 2-4) and supplied with secondary salt water as an aqueous sodium chloride solution (“to which secondary salt water as an aqueous sodium chloride solution is to be fed” lines 4-5), and a reaction tank into which products in the anode chamber and the cathode chamber after electrolysis are introduced (“and a reaction tank into which products in the anode chamber and the cathode chamber after electrolysis are to be introduced” lines 5-7), and
producing a sodium hypochlorite solution by a reaction in the reaction tank (“and producing a sodium hypochlorite solution on-site by reaction in the reaction tank” lines 9-11), characterized in that the apparatus comprises
a primary salt water generation section that dissolves raw salt containing sodium chloride as a main component in purified water to generate primary salt water (“a primary salt water generation section for generating primary salt water by dissolving raw salt containing sodium chloride as a main component in the purified water” lines 16-19), and
a chelating section that chelates the primary salt water to generate the secondary salt water (“a chelating section for performing chelating of the primary salt water” lines 20-21), and
the apparatus is operated at a decomposition rate of salt ranging from 80 to 95% (see below).
The limitation “the apparatus is operated at a conversion yield of salt ranging from 80 to 95%”, as currently drafted, is a functional recitation i.e., it defines the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
In the instant case, claim 8 of the reference patent recites each of the structural features recited in claim 14. It is therefore considered that the apparatus recited in claim 8 of the reference patent is capable of being operated at a conversion yield of salt ranging from 80 to 95%.
Alternatively, because claim 8 of the reference patent recites each of the structural features recited in claim 14, a person having ordinary skill in the art would have found it obvious that the apparatus recited in claim 8 of the reference patent would be capable of being operated at a conversion yield of salt ranging from 80 to 95%.
Claim 8 of the reference patent therefore anticipates or, in the alternative, renders obvious the limitation “the apparatus is operated at a conversion yield of salt ranging from 80 to 95%”.
Thus, claim 8 of the reference patent anticipates or, in the alternative, renders obvious each of the limitations of claim 14. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 15, claim 12 of the reference patent further recites the ion-exchange membrane is a bilayer membrane configured from a sulfonic acid layer and a carboxylic acid layer (“the ion-exchange membrane is a bilayer membrane configured from a sulfonic acid layer and a carboxylic acid layer” lines 2-4).
Thus, claim 12 of the reference patent anticipates or, in the alternative, renders obvious each of the limitations of claim 15. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 20, claim 8 of the reference patent anticipates or renders obvious the limitations of claim 14, as described above.
Claim 8 of the reference patent further recites use in production of a sodium hypochlorite solution having an available chlorine concentration of 8% or more (see below).
The limitation “for use in production of a sodium hypochlorite solution having an available chlorine concentration of 8% or more”, as currently drafted, is a recitation of intended use i.e., it defines the apparatus by how it is intended to be used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a recitation of intended use is an apparatus capable of performing the recited use (MPEP § 2114).
In the instant case, claim 8 of the reference patent recites each of the structural features recited in claim 14. It is therefore considered that the apparatus recited in claim 8 of the reference patent is capable of producing a sodium hypochlorite solution having an available chlorine concentration of 8% or more.
Alternatively, because claim 8 of the reference patent recites each of the structural features recited in claim 14, a person having ordinary skill in the art would have found it obvious that the apparatus recited in claim 8 of the reference patent would be capable of producing of a sodium hypochlorite solution having an available chlorine concentration of 8% or more.
Claim 8 of the reference patent therefore anticipates or, in the alternative, renders obvious the limitation “for use in production of a sodium hypochlorite solution having an available chlorine concentration of 8% or more”.
Thus, claim 8 of the reference patent anticipates or, in the alternative, renders obvious each of the limitations of claim 20. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 21, claim 8 of the reference patent anticipates or renders obvious the limitations of claim 14, as described above.
Claim 8 of the reference patent further recites a cation exchange treatment section that treats raw material water with a cation-exchange resin to generate the purified water (“a cation exchange treatment section for providing purified water by treating raw material water with a cation-exchange resin” lines 13-15).
Thus, claim 8 of the reference patent anticipates or, in the alternative, renders obvious each of the limitations of claim 21. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 22, claim 11 of the reference patent further recites the cation exchange treatment section comprises a water softener (“wherein the cation exchange treatment section comprises a water softener” lines 2-3).
Thus, claim 11 of the reference patent anticipates or, in the alternative, renders obvious each of the limitations of claim 22. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Regarding claim 25, claim 8 of the reference patent anticipates or renders obvious the limitations of claim 14, as described above.
Claim 8 of the reference patent further recites the apparatus is placed in the vicinity of a facility where a sodium hypochlorite solution is used and used for production of a sodium hypochlorite solution on-site (“the apparatus being disposed in the vicinity of a physical plant where a sodium hypochlorite solution is used, and producing a sodium hypochlorite solution on-site by reaction in the reaction tank,” lines 7-11).
Thus, claim 8 of the reference patent anticipates or, in the alternative, renders obvious each of the limitations of claim 21. A rejection on the grounds of non-statutory double patenting is therefore appropriate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. McRae (US Pat. No. 4242185) teaches a system for the electrolytic production of hypochlorite by mixing chlorine and alkali hydroxide produced in a chlor-alkali cell, wherein the feed to the electrolytic cell is purified by a chelating resin and a water softener comprising a cation exchange resin (see e.g., Fig. 1).
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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