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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/590,805 application filed on February 28, 2024. Claims 1-16 are pending. Claims 1-10, 15 and 16 are examined, on the merits, in this Office action. The examined claims are directed to an apparatus.
Election/Restrictions
Without Traverse:
Applicant’s election without traverse of Group I, claims 1-10, 15 and 16, in the reply filed on July 29, 2026 is acknowledged. Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 11 is objected to because of the following informality: It appears the definite article ‘the’ before ‘fan’ was inadvertently left undeleted although it was replaced with the indefinite article ‘a.’
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Appropriate correction is required.
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.
Case: 13/151,192 – Chester Barry (See folder # 197)
Per claim 1, the so-called "point of novelty" appears to be the rate at which the valve opens as the device shifts from service to backwash stage insofar as all required elements of claim 1 are admitted as being old, or described by Gruett. Accordingly, a reasonably precise and/or objective standard of distinguishing a valve which "slowly" releases fluid from those which do not release fluid sufficiently slowly to meet the claim 1 limitations is required. The disclosure as filed does not appear to provide such an objective standard or criterion of distinction. Claims 2 - 7 are rejected on this basis as well.
The above appears to be a method of using a 112(b) for suggesting or forcing more structural language or cancellation of the term, rather than simply stating that the term is relative. In a sense, it is similar to the below type rejections for functional language with insufficient structure.
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Claims 1, 4-6, 8, 9, 12, 14, 15, 19 and 23-26 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 pre-AIA the applicant regards as the invention.
As noted in the Claim Interpretation section above, each of at least claims 1, 12 and 19 refer to a bromine detection device, a chloride ion detection device and a separation device. However, the claims do not describe the interaction of each of the aforementioned devices with other components in a way that imparts structure. Moreover, the specification does not disclose structure corresponding to the above three functions recited in the claims. This is particularly so with respect to the ‘chloride ion detection device’ which is not mentioned in the Specification.
Thus, the noted claims are invalid for indefiniteness because the specification does not disclose adequate structure (or material or acts) for performing the recited function. It is not enough for an Applicant to state or to later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function. Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing that structure. Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953 (Fed. Cir. 2007).
Alternatively or in addition, claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements and/or essential structural cooperative relationships of elements and/or essential steps, such omission amounting to a gap between the necessary structural connections, essential elements or essential steps. See MPEP § 2172.01.
Claims 1, 5 and 19, or portions thereof, follow, with the underlined portions either causing or intended to assist in an understanding of the indefiniteness rejection. The other formatting is in accordance with the Claim Interpretation section above and the formatting described therein.
Claims 4-6, 8, 9, 14, 15 and 23-26 depend on claims 1, 12 and 19.
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Claim 19 states: A method for treating water in a reservoir, the method including the steps of:
placing at least one apparatus as claimed in claim 1 in the reservoir; and
adjusting a flow rate of water through the funnel based on signals received from one or more sensors.
Regarding claim 19, the omitted structural cooperative relationships are: According to the specification, the noted one or more sensors must at least be connected to a controller or control system to control the speed of a motor in response to signals received by sensors ([0015]). Although the language is recited as optional, it is unclear how one would otherwise control the flow rate. That is, there must be some ability to control the movement of water through the funnel prior to adjusting its flow rate, and such control is achievable via the described but unclaimed control system/controller.
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The phrase ‘in particular’ is similar to “especially” or ‘particularly’ and implies ‘for a particular purpose,’ or ‘to an extent or degree deserving of special interest.’ Although more specific, it is nevertheless exemplary language similar to ‘such as’ or ‘for example.’ It is therefore unclear whether certain language following this term is a required claim limitation or merely an exceptional example or a preferred embodiment of the invention, but still an optional feature. The use of ‘preferably’ in claim 5 presents a similar issue.
One may also view the specified examples as a narrower range or limitation associated with the prior entity. For example, anions and cations are examples of ions. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989). See MPEP § 2173.05(c).
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Claims 26 and 37 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 pre-AIA the applicant regards as the invention.
Claims 26 and 37, or portions thereof, follow with the underlined portions either causing or intended to assist in an understanding of the indefiniteness rejection. The other formatting is in accordance with the Claim Interpretation section above / in the OA of _______ and the formatting described therein.
Claim 26 states “The system of claim 1 wherein a reverse osmosis membrane in the reverse osmosis module includes membrane spacers configured to compensate a decreasing volumetric flow rate of the feed water.
The underlined language is unclear. Applicants have corrected the previous antecedent basis issue but have not adequately addressed the other indefiniteness issue.
The underlined portion constitutes functional language because it recites either a manner of operating an apparatus, a material that the apparatus works upon, or the result of a previously claimed structure rather than clearly imposing any additional structure. The boundaries of this functional language is unclear, first, because the meaning of ‘compensate’ in this context is not defined in either the claim or in the original specification. Additionally, even with such a description, the claim does not provide a discernible boundary regarding what provides the functional characteristic. That is, does the mere placement of membrane spacers inherently ‘compensate' a decreasing volumetric flow rate, or is there a specific structural configuration of these spacers that would accomplish this function? The specification, at [0086], mentions that the spacers can include a mesh and additional structure. Is such additional structure required to achieve the recited function?
The presence of a mesh is also mentioned in Applicants remarks, but Examiner notes that such features are not claimed. Since there are different types of membrane spacers, Examiner cannot import specific limitations from Applicant’s specification into the claims. Since this is an apparatus claim functional features must have support from recited structures. Examiner suggests that Applicant amend the claim to specify how the membrane spacers ‘compensate the decreasing volumetric flow rate of the feed water, provided such an amendment is supported by the original specification. MPEP §§2173.02, 2173.05(g).
Claim 37 reads in part “a feed water inlet configured to receive softened water blended with hard water to maximize sustainable recovery with minimal upstream softening . . . ”
The underlined portion constitutes functional language and is unclear. It is unclear because it merely recites an intended use and a result of previously claimed structure but does not impose any additional structure that could achieve the intended result.
In this case, softened water blended with hard water is still water. This is an apparatus claim where water is merely a potential material contained within or worked upon by the apparatus. As such, the boundaries of this functional language are unclear since it does not appear that the recited functional characteristic clearly follows from the structure recited in the claim. As such, it is unclear whether the claim requires some other structure that would provide the functional characteristic.
Applicants remark that one of ordinary skill in the art would understand the specific structure that achieves the recited function, “e.g., through the use of various valves and conduits, . . . including the various flow paths depicted in the drawings.” Obviously, there can be different types of inlets. Without a specific description of an inlet in Applicant’s specification, where all inlets must be structured as such, Examiner is again unable to import any particular inlet structure, including one with particular valves, conduits and flow paths, as perhaps described in Applicants specification, into the claims.
Additionally the concepts of “‘maximizing’ sustainable recovery” and “’minimal’ upstream softening” are relative and are not adequately defined in either the claims or the original specification.
As such, the particular additional structure, if any, associated with an inlet ‘configured to receive softened water blended with hard water to maximize sustainable recovery with minimal upstream softening’ is unclear. At this juncture and without any additionally claimed structure, it appears that any inlet would be ‘set up,’ ‘designed to,’ ‘capable of,’ and thus ‘configured to’ receive any water, including softened water blended with hard water, where such prior blending may inherently maximize sustainable recovery with minimal upstream softening.
Examiner suggests that Applicant amend the claim to specify how the claimed inlet achieves the recited function, where said inlet receives softened water blended with hard water and can maximize sustainable recovery with minimal upstream softening, provided such an amendment is supported by the original specification. MPEP §§2173.02, 2173.05(g).
Claims __ depend on claim __ and do not remedy the indefiniteness of the parent claim.
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From 17/477,567:
Each of the claims are improperly formatted since there are multiple periods and capitalizations. This format renders the claim language unclear. The present Office practice is for each claim to be the object of a sentence, however long, that begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. MPEP 608.01(m).
Due to the structure of the claims, it is also unclear how the various components are connected. The structure which goes to make up the apparatus must be clearly and positively specified and must be organized and correlated in such a manner as to present a complete operative device.
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With respect to functional language in the context of Claim Interpretation and Definiteness Under 35 U.S.C 112(b), one can find an chemical arts related example of a USPTO’s internal training on this issue at https://www.uspto.gov/sites/default/files/documents/112b_example2_answer.pdf. Although the example relates to a product, similar issues often arise in the context of apparatus claims because product and apparatus claims are analogous.
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§2173.03 Correspondence Between Specification and Claims
In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971)
The court found the claim language inherently inconsistent with the summary of the description, definitions and examples set forth in the specification. The court further stated that “[n]o claim may be read apart from and independent of the supporting disclosure on which it is based,” and “[t]he result is an inexplicable inconsistency within each claim requiring that the rejection under 35 U.S.C. 112 on grounds of indefiniteness be sustained.”
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Claim Scope: Not commensurate with Specification
Regarding claims 1, 3 and 4, this apparent inconsistency between the claim language and the specification renders the claim language indefinite. There should be correspondence between the specification and claims so that the meaning of terms and phrases may be ascertainable by reference to the specification. That is, claims that are inconsistent with their supporting specification or the prior art cannot be considered reasonably particular and distinct, even though the terms of the claims may seem definite. MPEP §2173.03.
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Mixing Apparatus and Method of Use – Sample Language
From 16/192759:
Claims 25 and 30 are also unclear because they appear to be reciting method steps or in particular a method of using the apparatus, and one of ordinary skill would be unclear what additional structure is required. The claim does mention a drip line but claim 17 already introduced “drip line exit points.” It is unclear how drip line exit points would exist without a drip line. Additionally, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite. MPEP 2173.05 (p).
From 16/029,575:
Regarding the ‘creating’ and being directed, these appear to be manipulative steps associated with a process of use, or a method claim, rather than a specific structure, unless Applicant can show otherwise. That is, Appellant appears to impermissibly mix an apparatus claim with a method of use claim, which is indefinite according to MPEP 2173.05(p). For example, one can direct the nozzle of a can of aerosol air freshener product in a specific direction, and one can spray its content to create a fragrance or odor-abating aerial environment, but these steps appear to be different that the product itself, which is the can under pressure, specifically designed nozzle, tube, and the liquid contents.
Since the system is described largely by its functionality, rather than the structure of the nozzle, or the contents of the storage compartment, the boundaries of what constitutes the associated structure remain unclear due to the manner in which it is described.
From 15/777,634:
These claims appear to be a mixture of product and process claims, which may be confusing. That is, based on the claim language, it is unclear whether these claims are directed to the product or the process. Claims 27 and 30, for example, are intended use product claims where the product is used in treating a human or animal subject. However, claims 28, 29, 31 and 32 recite manipulative steps.
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 (MPEP §2173.05(p)).
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Finally, some of the clarity issues, such as in claims 10 and 11, may also involve informalities such as grammar issues, spelling inconsistencies and typos. For example, if there is no difference between a 'lightfield' and a 'light field' in claims 10 and 11 respectively, Applicants should use consistent spelling. Also, several abbreviations, such as W, J and e were not introduced. While many terms, phrases and abbreviations may be 'terms of art,' the claims should still be sufficiently clear to avoid confusion.
Although Examiner did not include claim objections in this Office action since a proper correction of the above indefiniteness issues are expected to also address related informalities, Examiner suggests that Applicant also carefully review the claim language for both clarity and readability issues.
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Please carefully review the claim language. Perhaps some unclarity/indefiniteness may also result, in part, from the chosen punctuation or lack thereof in the sentence structure.
The meaning of every term or phrase used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. See MPEP §2173.05(a). According to MPEP §2173, "The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent . . . If the language of a claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112, second paragraph, would be appropriate. See Morton Int 'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993). See MPEP §2173.02.
In the patentability analysis, the Office has applied the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification were not read into the claims. See MPEP §§2111, 2173.01 I.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8-10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 recites “The method of claim 1, wherein the monitoring comprises monitoring the indicator via an implantable sensor,” however an implantable sensor is already included in base claim 1. As such, claim 8 does not further limit claim 1. Claims 9 and 10 depend on claim 8.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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Below are Examiner’s suggested claim amendments in view of the above Claim Objections and one or more portions of the noted 112 issues. Of course, one or more additional amendments may be appropriate in view of any other noted issues.
Proposed Objection/Claim-Related Amendments (Claim 1)
1. (Currently Amended) A method for treating a hexavalent chromium-containing aqueous solution, comprising:
a step (a) of adding catalyst particles to the aqueous solution;
a step (b) of reducing hexavalent chromium by irradiating the aqueous solution with ultravioler light having a wavelength in a range between 200 nanometers and 400 nanometers, both inclusive, while stirring the catalyst particles in the aqueous solution; and
a step (c) of stopping the stirring in the step (b) and separating the catalyst particles from the aqueous solution by sedimentation,
wherein each catalyst particle is composed only of a titanium dioxide particle and a zeolite particle, the titanium dioxide particle is adsorbed on an outer surface of the zeolite particle, the zeolite particle has a silica/alumina molar ratio of 10 or more, and the catalyst particles are contained in the aqueous solution at a concentration in a range between 0.4 grams/liter and 16 grams/liter, both inclusive, and
a laser light transmittance of the aqueous solution changes by 20 % or more during a sedimentation duration of 30 minutes in the step (c).
Claim Rejections - 35 USC § 101 / 112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 1-3 and 12 are rejected under 35 U.S.C. 101 or alternately under 35 U.S.C 112(b), because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101 and/or 35 U.S.C 112. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Although the claims do not mention the term ‘use,’ applicant is merely using the underlying described device, without reciting any particular process steps. Also see MPEP 2173.05(q).
Claim Rejections - 35 USC § 101 {Will need Revision in view of 2019 Updates}
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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Claims 1-3 and 12 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). Although the claims do not mention the term ‘use,’ applicant is merely using the underlying described device, without reciting any particular process steps. Also see MPEP 2173.05(q).
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility.
All of applicant’s claims require the use of a ‘quantum field generator’ and claims 3 and 8-14, as well as the description on pages 3-4 of the disclosure, provide the unit components of such an apparatus. The recited apparatus comprises: a primary power supply; a variable voltage generator, a high-voltage conversion unit, and a voltage multiplying rectifier circuit unit.
Applicant has not redefined the term ‘quantum field generator.’ Examiner construes such a device to emanate from discussions of quantum field theory.
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The claimed invention is not directed to patent eligible subject matter. Claim(s) 1-5, 7-14, 16, 17, 19-22, 24, 28-34, 36 and 37 are rejected under 35 USC § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Based upon an analysis with respect to the claims as a whole, claims 1-5, 7-14, 16, 17, 19-22, 24, 28-34, 36 and 37 do not recite something significantly different than a judicial exception. The rationale for this determination is explained below:
Claims 1-5, 7-14, 16, 17, 19-22, 24, 28-34, 36 and 37 are directed to a method for reducing the concentration of heavy metals in an aqueous solution via contact of a sorbent media with the solution, and to a sorbent media composition for accomplishing this task. The composition largely comprises calcium carbonate particles that incorporate a minor proportion of magnesium carbonate aggregates and a binder. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because Applicants are essentially claiming a calcium carbonate composition with a specific structure or with particles of a certain size and density. A calcium carbonate composition or particles of calcium carbonate may be either synthetic or natural (see Conclusion). If the composition or particles are products of nature or natural products, they comprise the natural phenomenon judicial exception.
In the context of the claims, a binder or cement is a material that holds or draws other materials together to form a cohesive whole mechanically, chemically, or as an adhesive. There are many natural binders including calcium, limestone, clay, sodium silicate that one may naturally find in the presence of calcium carbonate particles. Some limestone particles, for example, will naturally bind to each other, implying the presence of a binder.
The composition and claimed features and steps, such as contacting the composition with an aqueous solution or potentially dispersing the natural composition of calcium carbonate into a liquid, such as a water body, and allowing it to interact with and adsorb the heavy metals already included therein or already populating the water body, do not add significantly more to the judicial exception and/or do not demonstrate that the judicial exception is in fact markedly different from what exists in nature.
Moreover, the recited structure of the sorbent media, and the recited elements and steps in the referenced claims, which are in addition to the judicial exception, impose no meaningful limit on the performance of the claimed product or method. For example, calcium carbonate and magnesium carbonate composites exist in nature such as in some forms of natural limestone. Natural calcite and dolomite, for example, includes magnesium carbonate (see claim 1 analysis).
Additionally, the recited treating agent or sorbent media or a substantially identical composition, can naturally exist in a body of water (Conclusion). The adsorption of heavy metals on such composition and subsequent removal or separation from the solution by such composition, are inherent to the underlying interaction and environment, which can include a natural reservoir (see Claim Interpretation). In the method claim, for example, the claim’s preamble merely recites a purpose for the provided steps, which purpose is to remove heavy metals, and as such it does not add to the their patentability ((MPEP §§2103 I. C. and 2144 IV)).
As recited in the referenced claims, the claimed invention would impermissibly cover every substantial practical application of, and thereby preempt all use of a natural product.
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Claims 19-27, 35, 39 and 40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 19-27, 35, 39 and 40 are directed to a method for calculating, estimating or approximating new values (i.e., numbers) associated with or representing at least two patient-related parameters using the mathematical technique of interpolating or extrapolating prior known values, as well as using an unspecified mathematical relationship between the parameters, to determine the new value. This claim recitation is determined to be directed toward the abstract idea of conveying only mathematical concepts such as mathematical algorithms, mathematical relationships, mathematical formulas and/or mathematical calculations.
A patent-eligible process must either be "tied to a particular machine or apparatus" or transformed into a different state or thing, (i.e., the "machine-or-transformation test"). DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Dec. 2014). However, satisfying the machine-or-transformation test, by itself, is not always sufficient to render a claim patent-eligible, because not all transformations or machine implementations infuse an otherwise ineligible claim with an "inventive concept." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1301 (2012).
"If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory." Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). In that light, the above-noted claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The rationale for this determination is explained below:
Conceptually, claim 19 appears to recite the idea of organizing data or information through mathematical correlations via using an unstated but assumedly known mathematical formula relating to unexpressed patient parameters. Interpolation and extrapolation are mathematical concepts. They involve observing patterns and comparing known data or information and using application-specific rules to create additional data points. In at least claim 19, the recited parameters themselves appear intangible. The overall method is basically a mathematical procedure or predictive model for converting one form of numerical representation or result to another, where the intended effect is ostensibly managing patient treatment via the claimed method and thereby gaining an improved blood treatment outcome. In that sense, examiner views claim 19 as an abstract idea.
Here, the ostensible purpose of the claim 19 invention is to operate a device to perform treatment on a patient’s blood via controlling said device. This generic blood treatment device appears to be the only structural feature of the recited claim. Moreover, the claim provide no specific structure associated with said device. And, adding a generic computer, which will typically incorporate a communication or control system, to otherwise conventional steps does not make an invention patent-eligible. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2353 (2014). Also, nearly every computer will include at least a communications controller (i.e, a control system) and data storage unit capable of performing a basic calculation such as interpolation and/or extrapolation required by the method claim. Id. at 2355. In this case, no computer is even mentioned in claim 19, although the claim broadly refers to “controlling a device,” perhaps alluding to the use of a computer.
Therefore, the above-noted claim is not tied to any particular novel machine or apparatus. In summary, when considered separately and in combination, the above-recited additional elements including the generically recited “controlling a device, which merely alludes to without even reciting a computer, does not add a meaningful limitation to the abstract idea because it would be routine in any computer implementation and does not add significantly more to the judicial exception.
The dependent claims (claims 20-27, 35, 39 and 40) are also abstract because none of them include additional elements that are sufficient to amount to significantly more than the judicial exception. They appear to only recite methods of essentially fine tuning the unstated mathematical relationship or calculations using additional known mathematical techniques, the vague notion of employing the method with an unspecified albeit implied device or devices during blood treatment therapy, or specific purposes associated with the claimed method.
Claim Rejections - 35 USC § 102
AIA :
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ambrius et al. (EP0073888) (IDS of 10/26/2015).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure.
Regarding claims 1 and 2, Ambrius et al. (Ambrius) discloses . . .
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Pre-AIA :
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
(f) he did not himself invent the subject matter sought to be patented.
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
Claims 1, 2, 4, 8 and 9 are rejected under pre-AIA 35 U.S.C. 102(b), or alternately under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(e), as being anticipated by Lu et al. (Lu; US20110111490; published May 12, 2011) (the effective filing date (EFD) of the present 14/118255 application is 05/17/2012 based on the PCT/CA2012/050323 application filed on that date; it does not appear that the disclosure of the 61/457710 provisional application in continuity chain, filed on May 17, 2011, properly supports the current claim set because Examiner could not find a discussion of a ‘charge carrier generation layer’ in either the specification or the claims of that provisional; in the event that Applicants can show that there is adequate support in the provisional, Lu would still qualify as prior art at least under 102(a) and 102(e), with respect to the current claim set, based on its domestic EFD of 02/04/2010). MPEP §§706.02 VI & (f)(1)). {If possible, this simple narrative may in some cases replace an extended Priority section}.
Claims 1-3, 5-9 and 19 are rejected under pre-AIA 35 U.S.C. 102(b) as anticipated by Sumita et al. (US20110198236, published 08/18/2011; see IDS; the effective filing date (EFD) of the present 13/627,440 application is 09/26/2012 since the foreign priority date (10/05/2011) does not necessarily affect the U.S. EFD for pre-AIA applications; MPEP §706.02 VI).
Claims 1, 2, 6 and 7 are rejected under pre-AIA 35 U.S.C. 102(a) and 102(e) as being anticipated by Theivendran et al. (US20110226706) (using priority date of 3/22/2010 for provisional application no. 61/316,202 in continuity chain; the provisional’s disclosure has full support for the later disclosure; see MPEP §§706.02 VI & (f)(1)).
Claims 1, 2, 6 and 7 are further rejected under pre-AIA 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. For example, the present application names three inventors although at least the noted claims, as recited, may have been derived solely from Bernard Duesel (the common inventive entity). As such, Applicant should view the 102(f) as an inventorship inquiry.
The applied reference has a common (inventor or assignee) with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not the invention “by another,” or by an appropriate showing under 37 CFR 1.131(a).
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Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure. The analysis considers the alternate concepts of the various potential embodiments in a particular reference, where alternate embodiments address the respective claimed feature.
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Apparatus, Product, System Claims: In the patentability analysis of device/apparatus/product claims, aspects or limitations Examiner interprets as functional are generally italicized whereas aspects interpreted as positively structural components, or as related to structure, are normally bolded. See Claim Interpretation section in OA of September 25, 2014, which Examiner applies herein. The below patentability analysis will provide one or more interpretations and claim mappings of the claimed structures and limitations although other interpretations may be possible.
In the patentability analysis, the Office has applied the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification were not read into the claims. See MPEP §§2111, 2173.01 I.
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Method Claims: In the patentability analysis below, the bolded portions represent structural aspects of the claim. The italicized portions represent one or more portions of the manipulative steps. If a prior art device, in its normal and usual operation necessarily performs a manipulative step or the method claimed, then Examiner will consider the particular manipulative step to be disclosed by the prior art device. That is, when the prior art device is the same as a device described in Applicant’s specification for carrying out the claimed method, one may assume that the device will inherently perform the claimed process. MPEP §2112.02.
See Claim Interpretation section in OA of September 25, 2014, which Examiner applies herein. The below patentability analysis will provide one or more interpretations and claim mappings of the claimed structures and limitations although other interpretations may be possible.
In the patentability analysis, the Office has applied the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification were not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
Regarding claims 1, 2, 4, 6, 7 and 8, Merai discloses or suggests
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Additional Disclosures Included: Claim 37: Claim 37 is an independent apparatus claim but includes many of the same or similar major elements as those recited in claim 33, except claim 37 further includes an outlet end and a pressure valve. However, an outlet end is implicitly disclosed in claim 33. As such, in the interest of convenience and brevity, Examiner applies at least portions of the claim 33 analysis and rationale herein, without repeating all text and/or claim mapping in their entirety.
Therefore, regarding claim 37, _______ discloses . . . .
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Additional Disclosures Included: Claim 21: Claim 21 is an independent apparatus claim that includes several of the same major elements recited in claim 1 and former claim 4, as also noted on page 6 of Applicants 11-18-2016 remarks. Former claim 4 included a second ion exchange membrane, which is already disclosed in DiMascio. As such, the same obviousness rationale that applies to claim 1 will apply to claim 21, since the missing element is the same. Therefore, in the interest of convenience and brevity, Examiner applies at least portions of the claim 1 analysis and rationale herein, without repeating the text/claim mapping in its entirety.
Therefore, regarding claim 21, DiMascio and Davis combined discloses or suggests . .
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Claim Rejections - 35 USC § 102/103
Claims 6 and 10 are rejected under pre-AIA 35 U.S.C. 102(a, b or e) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over Nelson et al. (US 4,816,177).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure. The analysis considers the alternate concepts of the various potential embodiments in a particular reference.
Regarding claims 6 and 10, Nelson et al. (Nelson) discloses or suggests
In the alternative, at the time of the invention a person of ordinary skill in the art would have…
Additional Disclosures Included: Claim 2:
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Claim Rejections - 35 USC § 103
AIA :
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
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Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ambrius et al. (EP0073888), as applied to claim 1 above, in view of Sorenson. et al. (US4033345) (IDS of 10/25/2015).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure. The analysis considers the alternate concepts of the various potential embodiments in a particular reference.
Regarding claims 3 and 4, Ambrius discloses the system of claim 1, except wherein said substrate is positioned in-line in a blood transfusion system.
Additional Disclosures Included: Claim 4:
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Pre-AIA :
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the Examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the Examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
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Claim 3 is rejected under pre-AIA 35 U.S.C. 103(a) as unpatentable over Merai (DE10153806) (English Machine Translation referenced below) (reference of record), as applied to claim 1, in view of Meir (US4497386) (newly applied reference).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure. The analysis considers the alternate concepts of the various potential embodiments in a particular reference.
Apparatus, Product, System Claims: In the patentability analysis of device/apparatus/system claims, aspects or limitations Examiner interprets as functional are generally italicized whereas aspects interpreted as structural components, or as related to structure, are normally bolded. See Claim Interpretation section in OA of September 25, 2014, which Examiner applies herein. The below patentability analysis will provide one or more interpretations and claim mappings of the claimed structures and limitations although other interpretations may be possible.
In the patentability analysis, the Office has applied the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification were not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
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Method Claims: In the patentability analysis below, the bolded portions represent structural aspects of the claim. The italicized portions represent one or more portions of the manipulative steps. If a prior art device, in its normal and usual operation necessarily performs a manipulative step or the method claimed, then Examiner will consider the particular manipulative step to be disclosed by the prior art device. That is, when the prior art device is the same as a device described in Applicant’s specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. MPEP §2112.02. The below patentability analysis will provide one or more interpretations and claim mappings of the claimed structures and limitations although other interpretations may be possible.
In the patentability analysis, the Office has applied the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification were not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application. See Claim Interpretation section in OA of September 25, 2014, which Examiner applies herein.
Regarding claim 3, Merai discloses or suggests
Claim 37 is an independent apparatus claim but includes many of the same major elements recited in claim 33, except claim 37 further includes an outlet end and a pressure valve. However, an outlet end is implicitly disclosed in claim 33. As such, in the interest of convenience and brevity, Examiner applies the claim 33 analysis herein, without repeating the text in its entirety.
Additional Disclosures Included: Claim 2:
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 claims at issue 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); and 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.
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For Patents:
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. US 9,718,708. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent and application recite the same or similar limitations relating to an acoustophoretic enhanced method for use in tanks, where a bioreactor is a type of tank, and a method of accelerating separation in such tank/bioreactor.
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For Pending Applications:
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 13/378225 (225-application). Although the claims at issue are not identical, they are not patentably distinct from each other because the applications recite the same or similar limitations relating to the suspension of adsorbent material within either biological reaction zones or a biological reactor, associated with a wastewater treatment system. One of ordinary skill in the art would have understood that a first and second biological reaction zone is tantamount to either a single biological reactor/vessel with at least two stages/ zones/sections (as in claim 2 of the present invention) or a plurality of biological reactors. Although the 225-application does not claim a first and second ‘biological reaction zone,’ this concept is addressed in its specification (see Figs. 3-5 and [44], [62], [115], [116], [121], [122], [124] & [125] of the original 225-application disclosure). The other differences are as follows:
The copending 225-application’s separation subsystem is “constructed and arranged to maintain adsorbent material in the biological reactor with a mixed liquor.” However, this aspect is functional since this language is merely stating an intended use for the reactor with the material being worked upon. The separation subsystem of the present invention is capable of maintaining adsorbent material in a biological reactor with a mixed liquor. Expressions relating an apparatus to contents thereof during an intended operation are of no significance in determining patentability of an apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Also, a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP §§2114 & 2115.
In the present invention, the separation subsystem is “constructed and arranged to maintain an adsorbent material in the second biological reaction zone with the effluent from the first biological reaction zone,” which is the same as the capability to maintain adsorbent in a latter section of a staged biological reactor. The specific reactor zone, whether first or second, is still equivalent to a segmented portion of a unitary biological reactor or the first or second in a series of reactors.
In the present application, the first and second biological reaction zones are “constructed and arranged to support biological oxidation,” however this is a functional limitation and the biological reactor of the 225-application is capable of supporting biological oxidation.
In the present application, the wastewater treatment system further comprises an anoxic zone upstream of the first biological reaction zone, which is not claimed in the 225-application. However, upstream anoxic zones 331, 531 are described in the specification of that application (see Figs. 3 and 5 and [21], [111], [123], [124] of 225-application) and a staged biological reactor may already comprise an upstream anoxic or low oxygen zone. As such, it would have been obvious to one of ordinary skill in the art at the time the invention was made that a staged biological reactor may comprise an anoxic zone upstream of a biological reaction zone to facilitate the denitrification process (see [126], [127] of 225-application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim [ 1 ] is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [ 2 ] of prior U.S. Patent No. [ 3 ]. This is a statutory double patenting rejection.
Terminal Disclaimer
An oral request for a terminal disclaimer based on a potential rejection of instant claims 15-29 on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,162,168, along with a request to amend the Specification, was made in an Examiner Interview. Applicants agreed to file and have electronically filed the requested terminal disclaimer.
The terminal disclaimer filed on June 10, 2016 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 9,162,168 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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An oral request for a terminal disclaimer based on a potential rejection of instant claims 1-6 and 9-12 on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 8,980,092, in view of the disclosure of that patent, along with a request to amend the claims, was made in an Examiner Interview.
Obviousness double patenting rejections, based on the noted patent, were previously made of record in this application. Applicants also previously agreed to file a terminal disclaimer upon allowance of the application. In any case, in the interview, Applicants agreed to file the requested terminal disclaimer upon allowance of the claims.
The terminal disclaimer filed on June 24, 2016 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 8,980,092 has been reviewed and is accepted. The terminal disclaimer has been recorded.
I now put a notice in bold in the first and every double patenting rejection referring to this mpep section and say a response to hold the claims in abeyance will result in a notice of non compliance (https://www.reddit.com/r/patentexaminer/comments/1doz2iy/double_patenting_held_in_abeyance/).
Response to Arguments
Applicant’s arguments filed 01-26-2015 have been fully considered but they are not persuasive. The arguments with respect to Chen are moot in light of the modified rejections.
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Applicant’s remarks filed 07-11-2024 have been fully considered. Since Examiner did
not apply prior art, at this juncture, the arguments are viewed as moot.
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Applicant’s arguments filed 03-28-2016 have been fully considered. In view of the claim amendments, Examiner has modified and attempted to clarify the rejections such that one or more arguments may no longer be applicable. Examiner notes that Applicant's arguments and this Examiner’s response apply only to the instant claim set. Applicant may view the arguments as persuasive, except as noted. Examiner will address below the arguments found to be unpersuasive, irrelevant or inapplicable with respect to said amended claims.
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Examiner did not address the claims with prior art at this juncture.
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Examiner appreciates Applicant’s broad arguments concerning the non-anticipation / non-obviousness of the claimed inventions in view of the applied prior art. Although Examiner withdraws the prior art rejections in view of the claim amendments and/or Applicant’s arguments, and did not uncover any more pertinent prior art, in view of the remaining issues, Examiner will not address any potential allowability issues at this juncture.
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Examiner appreciates Applicant’s broad argument, on page 15 of their remarks, that it would not be obvious to one skilled in the art to combine vertically extending filter element cartridges and connect them to a up flow granular media filter as it would take a unique design concept to combine them together in such a way to create a dual-stage system etc. Whether or not this is true, Examiner has instead focused on all the presently claimed structural and functional details in independent claims 1 and 23 and finds that despite the remaining unclarity issues, the prior art of record does not properly address all such limitations.
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The previous 35 USC §102, §103 and 35 USC §112 rejections, other than the issue of the ‘valve means,’ associated with a §112(b) rejection, have been withdrawn in view of amendments to the claims. However, based on current Office policy and guidance, new Claim Interpretations and related §112 rejections are offered.
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With regard to Applicant’s assertion that the amended claim limitation of “heavy metals other than arsenic comprising gold, molybdenum, and/or thallium” overcome the Hong reference, Examiner respectfully disagrees.
As recited, these heavy metals are only an alternate purpose for the claimed step of contacting the sorbent media or composition with an aqueous solution. Hong already discloses that the disclosed composition can reduce the concentration of other heavy metals. Even though these specific heavy metals are not specifically disclosed, Hong does teach a calcium carbonate compound substantially identical to Applicant’s claimed compound. As such, the principles of inherency would dictate that such a compound must act in a substantially identical manner and will therefore reduce the concentration of the recited heavy metals (see Claim Interpretation).
Applicant can, perhaps, understand this rationale more clearly via reference to the newly applied Webb reference, which has three inventors in common with the present application. The same Hong inherency analysis applies to the Webb reference, even if Webb is specifically directed at arsenic, while Applicants independent claims 1 and 32 are specifically directed at heavy metals other than arsenic. This is true because identical chemical compositions cannot have different chemical properties while existing in an identical environment. Both Hong and Webb discuss chemical compounds appearing to be substantially identical to Applicant’s claimed composition. Indeed, Examiner could discern no differences.
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With respect to the amended/modified claims, Examiner has added one or more new references and/or additional or clarified rationales with respect to any new or added/amended limitations. As such, Examiner believes all claim limitations as well as each of Applicant’s relevant arguments are fully and properly addressed either in this section or in the modified patentability analysis above.
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While Examiner appreciates Applicant’s efforts to expedite prosecution of the Application, for the stated reasons, Examiner believes the Hong reference remains pertinent. The Webb reference was already of record, but was not previously applied to the independent claims. After careful consideration, Examiner believes the reasoning applied to Hong applies equally to Webb, in spite of Applicant’s positively claimed language that the composition is directed only to heavy metals “other than arsenic.”
. . . .
Examiner believes (it does not appear that) the claim are not presently in condition for allowance.
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Such rationale may, for example, be drawn from an exemplary obviousness rationale suggested by the MPEP (MPEP §§2141 & 2143), the nature of the problem to be solved, the references themselves, the general teachings of the prior art including evidentiary references, knowledge generally available to one of ordinary skill in the art, scientific principles, art recognized equivalents, legal precedent or a combination of the above.
“In many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle” and an examiner may consider “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR International Co. v. Teleflex Inc, 127 S.Ct. 1742, 82 USPQ2d 1390, 1396, 1397 (2007).
For an obviousness rationale, one can also look to secondary references, MPEP suggested rationales for analogous or similar inventions or scenarios, the knowledge or creative inferences of those of ordinary skill in the art, the nature of the problem to be solved, scientific principles, art recognized equivalents, evidentiary references, legal precedent, and where appropriate one may even employ an intuitive or common sensical approach (MPEP §§2141 & 2143). These are more than solely the teachings or suggestions of a primary reference. More specifically, in determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. See 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a). Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap (MPEP §2141 III).
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It appears that Applicants generally contend that a specifically recited part in not the claimed part or not in fluid communication etc. Where applicable, Examiner believes these are addressed with the new rejections. The Claim Interpretation section also addresses major claim construction issues. However, Applicants do not always distinctly and specifically point out the supposed errors in the prior action and the arguments often appear conclusory. A reply should present arguments pointing out specific distinctions Applicants believe render the claims patentable over any applied references. See 37 C.F.R. 1.111 (b). It that light, Examiner’s patentability analysis should further clarify the present claim interpretations and rejections.
Conclusion
The following prior art and/or evidentiary references are made of record. Although they are not relied upon, Examiner views them as pertinent to Applicant's disclosure.
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The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
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Examiner did not apply prior art at this time.
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¶ 7.127 Conclusion of Office Action That Includes Requirement
This Office action has an attached requirement for information under 37 CFR 1.105. A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.lec
Examiner Note:
This form paragraph should appear at the end of any Office action that includes an attached requirement for information.
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Regarding claims 4-17, Examiner did not uncover any singular or combined prior-art-related reference(s) (anticipatory or obvious) that appear to reasonably address these claims and as such Examiner did not apply prior art to said claims. These claims are at least objected to as being dependent upon a rejected base claim. However, in view of the above-noted application concerns, Examiner will not discuss the issue of potential allowable subject matter at this juncture.
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Although Examiner did not apply prior art to claims 6, 7 and 9-18, in view of the noted claim issues, Examiner will not discuss any potential allowability issues at this juncture.
Although Examiner withdraws the prior §103 rejections and did not uncover any more pertinent prior art that would be readily usable in an anticipation or obviousness rejection, in view of the noted remaining concerns, Examiner will not address any potential allowability issues at this juncture.
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In view of the substantial similarity of the present independent claim 1 to at least claim 1 of US 8,865,001, and because a search did not uncover any prior art or reasonable combination of prior art that fully addresses all claim language, examiner does not provide any additional prior art related rejections in this Office action.
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Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
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Although additional rejections may be possible, at this juncture, such rejections would be cumulative to those of record. MPEP §706.02 I. {[Wingdings font/0xDF] Unnecessary; Stopped Using} Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
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There was a prior non-final Office action in this application, issued by another examiner. However, the claims will be examined de novo by the above/below referenced examiner. (Although the claims were examined de novo herein, Examiner attempted to be as consistent as possible.). In this OA, certain prior art references of record are retained. However, the current examiner may have interpreted the claims and such applied references differently than the prior examiner. For example, regarding claim 1, 20 and similar claims, Examiner believes the previously applied Husain reference (US6406629) is unnecessary, for at least these claims, because the Moller and Devine references also broadly disclose an anoxic chamber. [See 14/347261]
Changed Scope of Amended Claims: 13/690320
Claim 1 now incorporates a salt-removal device and associated functionalities. This limitation was drawn from former claim 17, which depended on claim 10. Since claims 2-10 and 19 depended and still depend on claim 1, the scope of these amended claims is different from the prior claim set. Any claims that further depend on any of the above-recited dependent claims will also have a revised claim scope. For example, claims 10-16 and 19 did not previously require a salt removal device. Although claim 18 required an electrochemical device that removes salts, the salts were removed from a flow stream through the salt concentration loop which is not necessarily required in the present claim 18. Nonetheless, it appears that the scope of former claim 17 and currently amended claim 10 are the same. As such, Examiner views at least the present rejection of claim 10 as a new ground of rejection although not necessitated by amendment. Since an additional non-final action is required in view of the new reference applied to claim 10, Examiner has added other new grounds of rejections, such as new indefiniteness rejections that appeared necessary, in an attempt at further advancing prosecution.
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Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP §706.07(a).
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via 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) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central 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.
/HAYDEN BREWSTER/Examiner, AU 1779
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Sample OA language and MPEP rationales:
(previously made of record by applicants) (IDS of )
(also see attached English Machine Translation, which is referenced below).
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Regarding Claim 1 and 4-6, A, B and C combined/together discloses or suggests . . . . A teaches . . .
Regarding Claim 2,
To an ordinarily skilled artisan at the time of the invention, it would have been prima facie obvious to . . . :
(A) Combine prior art elements according to known methods to yield predictable results;
(B) Simply substitute one known element for another to obtain predictable results;
(C) Use a known technique to improve similar devices (methods, or products) in the same way;
(D) Apply a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(MPEP §2143 I A-D)
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(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
(MPEP §2143 I E-G).
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Legal Precedents: (Use judiciously; Avoid use as per se rule)
See MPEP §2144 for list of precedents.
From 15/733205: Advisory Action dated 3/28/2023 from Bradley Gordon: Respectfully, these remarks are unpersuasive. At the outset, Applicant’s arguments appear to be unsupported by factual evidence. With this in mind, previously the courts have determined that the arguments of counsel cannot take the place of evidence in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (internal quotes and citation omitted); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 48 USPQ2d 1362 (Fed. Cir. 1997) (‘An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). Thus, in accordance with the previous determinations by the courts, Applicant’s arguments are unpersuasive because they appear to be unsupported by factual evidence. Estee Lauder, supra; Schulze, supra; Geisler, supra.
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Motivational Statements (Beginning):
At the time of the claimed invention, a person of ordinary skill in the art would have been motivated to
OR
At the time of the effective filing date of the claimed invention, a person of ordinary skill in the art would have been motivated to
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it would have been obvious to one of ordinary skill in the art at the time of the claimed invention to
OR
it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention
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. . . when the claimed invention was made, it would have been obvious to one of ordinary skill in the art to
OR
. . . when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to
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At the time when the claimed invention was made, it would have been obvious to an ordinarily skilled artisan to . . .
OR
At the time when the claimed invention was effectively filed, it would have been obvious to an ordinarily skilled artisan to . . .
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An ordinarily skilled artisan would have recognized . . . and would have thought it obvious to . . .
. . . to modify . . . to reconfigure . . . to incorporate . . . to substitute . . . etc.
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Therefore, to one of ordinary skill in the art at the time of the claimed invention, it would have been obvious to . . . .
OR
Therefore, to one of ordinary skill in the art when the claimed invention was effectively filed, it would have been obvious to . . . .
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From 14/497,369:
At the time when the claimed invention was made, it would have been obvious to an ordinarily skilled artisan to include a dedicated detection means as well as a dedicated recognition means to recognize a final stage of blood-return, as recited, because some operators may find a configuration with such separate structures more desirable for one or more reasons, including improved maintenance access and additional flexibility and control in the blood purification apparatus. That is, if it were considered desirable, for any reason, to obtain separate access and control to or of a ‘detection means’ and a ‘recognition means,’ such as for better access to a malfunctioning component, it would be obvious to make these components removable or separable for that very purpose.
Alternately, this configuration is merely a matter of making separable a formerly integrated structure without fundamentally changing the operation and effectiveness of the overall apparatus.
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Current Claim Set: {Sample}
1. A method for the production of a nanoporous polymeric membrane, wherein a polymer film is bombed by means of high energy focused heavy ion beam and a chemical etching is subsequently performed to remove the portions of said film in the zones degraded by the ion bombing in such a manner to obtain pores passing through the film,
wherein the abovementioned heavy ion bombing is performed after interposing between the source of heavy ions and the polymer film, in proximity to the film, an amplitude mask having an arrangement of nanopores and thickness sufficient to prevent the passage of the heavy ions that are not directed through the abovementioned nanopores of the amplitude mask, in such a manner to obtain a polymer film with a distribution of nanopores,
said amplitude mask having an ordered honeycomb arrangement of nanopores, so that a corresponding ordered honeycomb distribution of nanopores is obtained in said polymer film,
said nanopores obtained in the polymer film having an aspect-ratio at least exceeding 10, and
said amplitude mask obtained by positioning over said polymer film a layer of material opaque to ions and depositing a layer of aluminium over said opaque layer, transforming said aluminium layer into anodic porous alumina by means of an anodisation method, eliminating the barrier layer at the bottom of the pores of the anodic, porous alumina through chemical etching, in such a reamer to define channels passing through the layer of anodic, porous alumina, chemically etching the layer opaque to ions through the pores of the anodic porous alumina in such a manner to obtain in said opaque layer an ordered arrangement of nanopores corresponding to the arrangement of the pores of the anodic porous alumina and thus using the abovementioned opaque layer with the abovementioned nanopores as an amplitude mask.
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Prior Office Action:
-----------------------------------------------------------------------------------'No Matter Where You Come from, So Long as You Are a Black Man [Woman], You Are an African' -- Peter Tosh.'No Matter Where You Come from, So Long as You Are a Black Man [Woman], You Are an African' -- Peter Tosh.
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