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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/4/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blount (US 2002/0185447) in view of Faur et al. (US 2002/0008012) and Gonzalez Calvo (US 2017/0203988).
Regarding claim 2, Blount teaches at least one primary treatment subsystem with means capable of adjusting the pH (“adding alkali or acidic catalyst: alkali metal hydroxide”), at least one reactor/vessel capable of being heated above 240 C (464 F) at elevated pressures further capable of maintaining a liquid therein, at least one heat exchanger/heat exchange system capable of controlling the temperature of the liquid in the reactor and a means capable of separating solids from liquids (filtering) as a tertiary treatment process ([0018] and Claim 1).
It is noted that Blount teaches the reactor temperature is controlled via a heat exchanger ([0018]). One skilled in the art would recognize that heat exchangers heat one fluid/liquid by the heat of a different fluid and most heat exchangers have a first/main chamber for the fluid being heated and a second chamber adjacent the main chamber for the heating fluid that heats the liquid in the main chamber (see Faur heat exchangers 12 15 in Figs. 1 and 7-9). It is Examiner’s position that one skilled in the art would understand the heat exchange system for the reactor to have the structure as claimed, or it would have been obvious to provide the structure claimed as it is how heat exchangers are typically made.
Further, the chamber where the desired reaction in Blount would take place would have to have a hollow interior holding the liquid to be treated and due to the elevated pressure during the reaction, it would have to be hydraulically isolated from an ambient environment or the pressure would never be above ambient.
Blount fails to teach a heating vessel that heats the incoming liquid to the reactor with the liquid exiting the reactor. Faur teaches an apparatus where a liquid to be treated is combined with chemicals and heated to specific temperatures in a reactor and after exiting the reactor, the heated and treated liquid is passed through a heat exchanger/heating vessel in order to heat the incoming liquid to the reactor thereby using the waste heat of the heated and treated liquid thereby reducing the amount of heat necessary to reach the desired reactor temperature ([0061]). As such, it would have been obvious to provide a heating vessel as claimed in order to preheat the incoming stream going to the reactor with the waste heat from the stream exiting the reactor thereby reducing the heat necessary to heat up the fluid inside the reactor to the desired temperatures.
Blount teaches that the chamber is designed to operate at elevated pressures but fails to teach the elevated pressure would be at least 400 psi. As such, Blount fails to teach the main chamber configured to withstand an internal pressure of 400 psi as claimed. Gonzalez Calvo teaches that for hydrolysis reactors that operate at high heat overlapping the range claimed, it is common for the tanks and piping to be designed to withstand pressures up to 30 barg (435 psi) as the tanks and piping treat liquids that are heated and pressurized ([0032]-[0037]). As such, one skilled in the art would have found it obvious to provide the tanks with structure capable of handling elevated/high pressures, such as 30 barg/435 psi, in order to allow for heating and pressurization of the fluid to be treated without mechanical failure.
It is noted that the specific method steps the apparatus is intended to perform as well as the material worked upon and the results of the treatment processes are not given patentable weight. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). "Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claim 3, Blount teaches a means to add chemical additives and that pH can be adjusted. The specific pH claimed is an intended use based on a specific fluid being treated and is not given patentable weight. All necessary structure is provided allowing the pH level to be 10 is taught and the apparatus claim is considered to be anticipated.
Regarding claims 4-7 and 9, Blount teaches that the fluid being treated can be mixed with multiple chemicals/components that can perform different functions ([0006]-[0017]). As no specific sources of chemicals is claimed only desired chemicals added as part of operation, the specific chemicals used are not given patentable weight, only the structure capable of adding different chemicals. Therefore, Blount reads on claims 4-7 as it teaches multiple components being added.
Regarding claim 8, Blount teaches the primary treatment subsystem is capable of removing solids ([0027]).
Regarding claim 10, Blount teaches a tertiary treatment subsystem capable of remove insoluble material downstream of the reactor (claim 1).
Regarding claim 11, Blount teaches multiple means that are capable of disinfecting, such as high temperatures to kill pathogenic organisms, distillation, and evaporation/burning (claim 1).
Claim(s) 12-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blount (US 2002/0185447) in view of Faur et al. (US 2002/0008012).
Regarding claim 12, Blount teaches at least one primary treatment subsystem with means capable of adjusting the pH (“adding alkali or acidic catalyst: alkali metal hydroxide”), at least one reactor/vessel capable of being heated above 240 C (464 F) at elevated pressures further capable of maintaining a liquid therein, at least one heat exchanger/heat exchange system capable of controlling the temperature of the liquid in the reactor and a means capable of separating solids from liquids (filtering) as a tertiary treatment process ([0018] and Claim 1).
It is noted that Blount teaches the reactor temperature is controlled via a heat exchanger ([0018]). One skilled in the art would recognize that heat exchangers heat one fluid/liquid by the heat of a different fluid and most heat exchangers have a first/main chamber for the fluid being heated and a second chamber adjacent the main chamber for the heating fluid that heats the liquid in the main chamber (see Faur heat exchangers 12 15 in Figs. 1 and 7-9). It is Examiner’s position that one skilled in the art would understand the heat exchange system for the reactor to have the structure as claimed, or it would have been obvious to provide the structure claimed as it is how heat exchangers are typically made.
Further, the chamber where the desired reaction in Blount would take place would have to have a hollow interior holding the liquid to be treated and due to the elevated pressure during the reaction, it would have to be hydraulically isolated from an ambient environment or the pressure would never be above ambient.
Blount fails to teach a heating vessel that heats the incoming liquid to the reactor with the liquid exiting the reactor. Faur teaches an apparatus where a liquid to be treated is combined with chemicals and heated to specific temperatures in a reactor and after exiting the reactor, the heated and treated liquid is passed through a heat exchanger/heating vessel in order to heat the incoming liquid to the reactor thereby using the waste heat of the heated and treated liquid thereby reducing the amount of heat necessary to reach the desired reactor temperature ([0061]). As such, it would have been obvious to provide a heating vessel as claimed in order to preheat the incoming stream going to the reactor with the waste heat from the stream exiting the reactor thereby reducing the heat necessary to heat up the fluid inside the reactor to the desired temperatures.
It is noted that the specific method steps the apparatus is intended to perform as well as the material worked upon and the results of the treatment processes are not given patentable weight. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). "Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claim 13, Blount teaches a means to add chemical additives and that pH can be adjusted. The specific pH claimed is an intended use based on a specific fluid being treated and is not given patentable weight. All necessary structure is provided allowing the pH level to be 10 is taught and the apparatus claim is considered to be anticipated.
Regarding claims 14-17 and 19, Blount teaches that the fluid being treated can be mixed with multiple chemicals/components that can perform different functions ([0006]-[0017]). As no specific sources of chemicals is claimed only desired chemicals added as part of operation, the specific chemicals used are not given patentable weight, only the structure capable of adding different chemicals. Therefore, Blount reads on claims 4-7 as it teaches multiple components being added.
Regarding claim 18, Blount teaches the primary treatment subsystem is capable of removing solids ([0027]).
Regarding claim 20, Blount teaches a tertiary treatment subsystem capable of remove insoluble material downstream of the reactor (claim 1).
Regarding claim 21, Blount teaches multiple means that are capable of disinfecting, such as high temperatures to kill pathogenic organisms, distillation, and evaporation/burning (claim 1).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13, 17, and 20 of U.S. Patent No. 11,827,536. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 2 and 12 are disclosed in claims 13, 17 and 20 of `536 teaches a system capable providing a primary treatment process in a primary treatment subsystem, a reactor capable of being heated to 350F and liquid maintained therein, and a tertiary treatment process being performed via filtering and polishing subsystems while claim 17 of `536 teaches that pH adjustment chemical additives are capable of being added as part of the primary treatment subsystem and claim 20 teaches a heat exchanger/heating vessel. It is noted that the reactor is not explicitly claimed to have a heat exchanger type design of two separate chambers but such designs are known in the art and would be one of the few possible means to heat the contents within the reactor (direct or indirect/heat exchange heating). As such, one skilled in the art would have found it obvious to provide all structural elements in claims 13, 17, and 20 and the heat exchange type design for the reactor. Claims 3-7, 9, 13-17, and 19 merely recite operational parameters or potential chemicals that can be added during the process of using the apparatus. The apparatus of claim 17 is capable of being operated and providing different chemicals and therefore meets the claim limitations. The subject matter of claim 8 and 18 is present in claim 13 of `536. It is submitted that the polishing means in claim 13 of `536 would also provide disinfecting results thereby reading on the claim limitation.
Response to Arguments
Applicant's arguments filed 9/4/2026 have been fully considered but they are not persuasive. It is noted that the above rejection has been modified to address the added claim limitations.
As discussed above, the applied prior art teaches or renders obvious all claimed structural limitations. How the device is intended to be employed and the specific fluids treated is directed to intended use and are not given patentable weight. Modified Blount teaches all claimed structural elements and renders obvious any functional limitations as the combination of references is capable of being operated in the manner claimed at the claimed temperatures and pressures.
Applicant also asserts that the double patenting rejection is in error but fails to provide arguments as to how the double patenting rejection is traversed. The final rejection dated 3/6/2026 provides a double patenting rejection to claims 2-21 and not claim 1 as argued.
Conclusion
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/PETER KEYWORTH/Primary Examiner, Art Unit 1776
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