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 .
Election/Restrictions
Applicant's election with traverse of claims 1-7 and 11-18 in the reply filed on 6/5/26 is acknowledged. The traversal is on the ground(s) that claims of group use the membrane group I. This is not found persuasive because, as pointed out in the restriction requirement, the membrane has other materially different uses, and the two inventions require separate searches and considerations.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-7 and 11-18 are rejected under 35 U.S.C. 103 as unpatentable over CN115639333A.
This reference has a 102(a1) date, published less than one year prior to the application’s priority date. However, it has a different inventive entity, and therefore, is a prior art without a 102(b1) exception.
PNG
media_image1.png
485
659
media_image1.png
Greyscale
Claims are drafted in the product-by-process form.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Therefore, the construction method steps recited in claim 1-3, 6, 14, inorganic salts in claims 11-13, flow rates in claim 17 and temperature in claim 18 are all unpatentable process elements.
Structural elements are shown in Figure 1 of CN. The reference teaches: “Figure 1 is a schematic diagram of ammonia nitrogen detection in Example 1. In the figure, 1 is a river, lake or sewage treatment plant water sample, 2 is a culture solution, 3 is a three-way valve ①, 4 is a microbial culture system, 5 is a peristaltic pump ①, 6 is the aeration pump, 7 is the three-way valve ②, 8 is the three-way valve ③, 9 is the peristaltic pump ②, 10 is the microbial film hanging device – spiral polyurethane tube, 11 is the constant temperature water bath, 12 is the dissolved oxygen measuring instrument, 13 is a signal workstation.[Sic]”
This reference also teaches specific microbials being loaded to form the membrane compared to the generic microbials in the claims.
While CN is silent on the length, ID and wall thickness of the tube used, these are only dimensional details that one of ordinary skill in the art could design, and not patentable unless otherwise shown. See MPEP 2144.04:
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
The term, “plug-flow” only represents what kind of flow is there through the reactor, which is an intended use limitation.
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)
Claim(s) 1-7 and 11-18 are rejected under 35 U.S.C. 35 U.S.C. 103 as unpatentable over Liu et al., (US 2014/0326617)
PNG
media_image2.png
537
790
media_image2.png
Greyscale
This Liu reference also appears to belong to the applicant, and was submitted in an IDS by the applicant. Figure 1 is copied herein, which teaches the structural details in the claimed invention. Paragraph [0094] gives detailed description of Fig. 1. Membrane 8 is tubular and is made of glass – see [0032], [0033] and example 1. BOD, DO, pH etc. taught in paragraphs [0096] – [0103].
The tube materials and dimensions are in [0095]. ID 1-4 mm, length 75-150 cm. Liu does not appear to teach the wall thickness, but this is only a dimension required to hold the mechanical strength required, and would have been obvious to design. Applicant mentions the wall thickness only once, and the tube in the working example is 3 mm ID and 110 cm long, no wall thickness is mentioned. The microbes grown are environmental microbes from various water sources – see [0037]
As pointed out in rejection 1, all the other elements recited in the claims are directed at the process of making, and not patentable in a product claim.
“Plug-flow” is only an intended use as shown in rejection 1.
Response to Arguments
Applicant's arguments filed 9/28/26 have been fully considered but they are not persuasive. Claims are directed to a membrane reactor wherein generic microbes are grown on the wall of the tubular reactor. The references teach that. Claims are also directed at product by process, which is not patentable as shown. The claims or the disclosure contain no specificity about the microbes.
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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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, Prem Singh can be reached at 5712720579. 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.
/KRISHNAN S MENON/ Primary Examiner, Art Unit 1771
