DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is a first action on the merits of the application. Claims 6-38 are pending.
Claim Objections
Claims 13-14, 21-22, and 32-33 are objected to because of the following informalities:
Claim 13: Applicant is respectfully advised to amend the claim to “wherein the deactivating of the electrodialytic stack is
Claims 21 and 32 are objected to upon the same basis as claim 13, noting the antecedents of claims 20 and 31, respectively.
Claim 14: Applicant is respectfully advised to amend the claim to “wherein the deactivating of the electrodialytic stack is
Claims 22 and 33 are objected to upon the same basis as claim 14.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12-15, 20-23, 31-34, and 38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 12: The claim recites, “further comprising: deactivating the electrodialytic stack to reduce energy use.” This subject matter was not described in the original disclosure. The most relevant text in the original disclosure appears to be in [0026]: “Such processes may be run together with or separately from dehumidification. For example, electricity generation may occur at night when the system is lightly utilized or shut off.” While lightly using or shutting off an electrodialytic liquid desiccant air conditioning (ELDAC) system ([0025]) would be understood by the skilled practitioner to reduce energy use, the concept of deactivating an electrodialytic stack to reduce energy use, irrespective of the time of day (consistent with a broadest reasonable interpretation of the claim), is not disclosed. It is noted that [0039] recites, “one of the stages 704, 706 may be shut off to save energy and reduce wear,” but stages 704, 706 are components of electrodialytic stack 700 ([0035]), and shutting off a stage of an electrodialytic stack is not the equivalent of shutting off or deactivating the electrodialytic stack entirely.
Claims 20, 31, and 38 are rejected upon the same basis as claim 12.
Claims 13-14 are rejected because of their dependence from claim 12.
Claims 21-22 are rejected because of their dependence from claim 20.
Claims 32-34 and 36-37 are rejected because of their dependence from claim 31.
Claim 13: The claim recites, “wherein the electrodialytic stack is deactivated to reduce peak energy use.” This subject matter was not described in the original disclosure. The most relevant text in the original disclosure appears to be in [0026]: “Such processes may be run together with or separately from dehumidification. For example, electricity generation may occur at night when the system is lightly utilized or shut off.” While lightly using or shutting off an electrodialytic liquid desiccant air conditioning (ELDAC) system ([0025]) would be understood by the skilled practitioner to reduce energy use, the concept of deactivating an electrodialytic stack to reduce peak energy use is not disclosed, and once skilled in the art would not have associated the night with peak energy use. It is noted that [0039] recites, “one of the stages 704, 706 may be shut off to save energy and reduce wear,” but stages 704, 706 are components of electrodialytic stack 700 ([0035]), and shutting off a stage of an electrodialytic stack is not the equivalent of shutting off or deactivating the electrodialytic stack entirely. It is further noted that the concept of peak energy use does not appear in the specification.
Claims 21 and 32 are rejected upon the same basis as claim 13.
Claim 14: The claim recites, “wherein the electrodialytic stack is deactivated to change a time in which energy is needed for regeneration.” This subject matter was not described in the original disclosure.
Claim 15 is rejected because of its dependence from claim 14.
Claims 22 and 33 are rejected upon the same basis as claim 14.
Claim 23 is rejected because of its dependence from claim 22.
Claim 36 is rejected because of its dependence from claim 33.
Claim 15: The claim recites, “wherein the time is changed from a first period in which electricity is relatively more expensive to a second period in which electricity is relatively less expensive.” This subject matter was not described in the original disclosure.
Claims 23 and 34 are rejected upon the same basis as claim 15.
The disclosure presented in a continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application. See MPEP 201.07. When new matter that is not supported by the specification is added to the claims, it is rejected under 35 USC 112(a). See MPEP 608.04(a) and 2163.06-07. Consequently, the priority date for the instant application is the effective filing date of the same, 26 April 2024.
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 12-15, 17, 20-23, and 25-38 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12: The claim recites, “further comprising: deactivating the electrodialytic stack to reduce energy use.” The claim depends from claim 6, which recites, “applying a voltage across the electrodialytic stack; and circulating a redox shuttle loop within the electrodialytic stack such that the electrodialytic stack produces the concentrated liquid desiccant and a diluted stream of liquid desiccant.” It is unclear where in the sequence of steps of claim 6 the deactivating step is to be inserted, and it is unclear how its insertion affects the other steps of the claim. For example, it is unclear how or whether the electrodialytic stack producing the concentrated liquid desiccant and a diluted stream of liquid desiccant remains in the method after the deactivating, as is the case with the step of “flowing a concentrated liquid desiccant from an electrodialytic stack to a desiccant reservoir.”
Claims 13-15 are rejected because of their dependence from claim 12.
Claim 20 is rejected upon the same basis as claim 12.
Claims 21-23 are rejected because of their dependence from claim 20.
Claim 31 is rejected upon the same basis as claim 12. For example, it is unclear how the step of “deactivating the electrodialytic stack” is integrated into the steps of claim 25, which appear to require the functioning of the electrodialytic stack.
Claims 32-34 and 36-37 are rejected because of their dependence from claim 31.
Claim 13: The claim recites, “wherein the electrodialytic stack is deactivated to reduce peak energy use.” It is unclear whether the claim means reducing the peak energy used by the electrodialytic stack, or reducing the use of the method during a period of peak energy demand on a power grid. Since the specification does not address the concept of “peak energy use,” the skilled practitioner would not be reasonably apprised of the scope of the claim.
Claims 21 and 32 are rejected upon the same basis as claim 13.
Claim 14: The claim recites, “wherein the electrodialytic stack is deactivated to change a time in which energy is needed for regeneration.” This subject matter was not described in the original disclosure.
Claims 22 and 33 are rejected upon the same basis as claim 14.
Claim 17: The claim recites the limitation " the more concentrated liquid desiccant" in line 3. There is insufficient antecedent basis for this limitation in the claim, noting that the claim does not depend from claim 9.
Claim 25: In lines 11-12, “the first and the second outer ionic exchange membranes” lacks sufficient antecedent basis. For the purposes of examination only, this text will be interpreted as “the first and the second meant by “the liquid desiccant” (line 15). For the purposes of examination, “the diluted stream” will be interpreted as “the output concentrated liquid desiccant” (line 2). It is unclear what the intended terminology for “the concentrated stream” might be.
Claims 26-38 are rejected because of their dependence from claim 25.
Claim 34: There is insufficient antecedent basis for “the time” (line 1), noting that the claim does not depend from claim 33.
Claim 35: There is insufficient antecedent basis for “the more concentrated liquid desiccant” (line 1), noting that the claim does not depend from claim 28.
Claim 38 is rejected because of its dependence from claim 35.
Claim 36: There is insufficient antecedent basis for “the more concentrated liquid desiccant” (line 1), noting that the claim does not depend from claim 28. There is insufficient antecedent basis for “the secondary storage compartment,” noting that the claim does not depend from claim 35. There is insufficient antecedent basis for “the primary storage compartment,” noting that the claim does not depend from claim 35.
Claim 37: There is insufficient antecedent basis for “the second output stream,” noting that the claim does not depend from claim 36.
Claim 38: The claim recites, “further comprising: deactivating the electrodialytic stack to reduce energy use.” The claim depends from claim 25, which recites, “directing the output stream to an electrodialytic stack . . . applying a voltage across the electrodialytic stack.” It is unclear where in the sequence of steps of claim 25 the deactivating step is to be inserted and how its insertion impacts the other limitations of the claim. For example, it is unclear how or whether the output stream is still directed to the electrodialytic stack (claim 25) when it is deactivated.
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.
REJECTION 1
Claims 6 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 10 of U.S. Patent No. 11,117,090 B2 (“reference document”).
Regarding claim 6 and claim 6 of the reference document, the claims at issue are not identical because (i) the reference document claim includes additional limitations (e.g., a central ionic exchange membrane); (ii) the reference document recites a system rather than a method; and (iii) the two claims use different phraseology.
The claims are not patentably distinct from each other because:
(i) a less-limited claim is obvious in view of a more-limited claim;
(ii) method steps such as “flowing,” “circulating,” and “directing” are implicit in terms such as “loop,” “fluid communication,” and the various instances of “stream”;
(iii) the skilled practitioner would recognize that the same concepts are claimed despite the differences in language used. For example, “flowing a concentrated liquid desiccant from an electrodialytic stack to a desiccant reservoir … circulating a stream of the concentrated liquid desiccant” corresponds to “a reservoir that stores a portion of . . . the concentrated stream of the liquid desiccant . . . an electrodialytic stack comprising … a liquid desiccant loop”; “circulating a stream of the concentrated liquid desiccant” corresponds to “concentrated stream of the liquid desiccant … exposing the concentrated stream of the liquid desiccant”; “concentrated liquid desiccant absorbs water from the air” corresponds to “the concentrated stream being diluted via absorption of water from the air”; and “circulating a redox shuttle loop within the electrodialytic stack such that the electrodialytic stack produces the concentrated liquid desiccant and a diluted stream of liquid desiccant” corresponds to “an electrodialytic stack comprising … a liquid desiccant loop . . . a liquid desiccant loop with a diluted stream and a concentrated stream of liquid desiccant separated by a central ionic exchange membrane . . . first and second redox streams separated from the diluted stream and the concentrated stream of the liquid desiccant loop,” noting that the latter text is interpreted as an alternative way of reciting an electrodialytic stack with a redox loop.
Claim 25 is not patentably distinct from claim 10 of the reference document for similar reasons as claim 6.
REJECTION 2
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,998,871 B2 (“reference document”).
Regarding claim 6 and claim 9 of the reference document, the claims at issue are not identical because (i) the reference document claim includes additional limitations (e.g., first and second outer ionic exchange membranes; a central ionic exchange membrane; if the water absorbed from the air does not equal an amount of water added to the diluted stream); (ii) the reference document recites a system rather than a method; and (iii) the two claims use different phraseology.
The claims are not patentably distinct from each other because:
(i) a less-limited claim is obvious in view of a more-limited claim;
(ii) method steps such as “flowing,” “circulating,” and “directing” are implicit in terms such as “loop,” “fluid communication,” and the various instances of “stream”;
(iii) the skilled practitioner would recognize that the same concepts are claimed despite the differences in language used. For example, “the stream of the concentrated liquid desiccant being diluted via the absorption of water” corresponds to “the concentrated stream being diluted via absorption of water from the air via the air-liquid interface to form an output stream of the liquid desiccant”; “circulating a redox shuttle loop within the electrodialytic stack” corresponds to “an electrodialytic stack comprising: a redox shuttle loop”; “electrodialytic stack produces the concentrated liquid desiccant and a diluted stream of liquid desiccant” corresponds to “being split into the diluted stream and the concentrated stream upon entry into the electrodialytic stack”; and “flowing air across the air-liquid interface” corresponds to “a stream of dehumidified air.”
Additional Claim Objections
Claims 7-24 and 26-38 are objected to as being dependent upon a rejected base claim (see nonstatutory double patenting rejections above), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
A thorough search for pertinent prior art did not locate any prior art that discloses or suggests the invention recited in claims 6-38.
The concept of a method, comprising:
flowing a concentrated liquid desiccant from an electrodialytic stack to a desiccant reservoir, the desiccant reservoir configured to store liquid desiccant;
circulating a stream of the concentrated liquid desiccant stored in the desiccant reservoir through an air-liquid interface;
flowing air across the air-liquid interface such that the stream of the concentrated liquid desiccant absorbs water from the air, the stream of the concentrated liquid desiccant being diluted via the absorption of water to form an output stream and dehumidified air;
directing the output stream to the electrodialytic stack;
applying a voltage across the electrodialytic stack; and
circulating a redox shuttle loop within the electrodialytic stack such that the electrodialytic stack produces the concentrated liquid desiccant and a diluted stream of liquid desiccant (claim 6)
is considered to define patentable subject matter over the prior art.
In addition, the concept of a method, comprising:
storing a concentrated liquid desiccant in a desiccant reservoir;
circulating a stream of the concentrated liquid desiccant stored in the desiccant reservoir through an air liquid interface;
flowing air across the air-liquid interface such that the stream of the concentrated liquid desiccant absorbs water from the air, the stream of the concentrated liquid desiccant being diluted via the absorption of water to form an output stream and dehumidified air;
directing the output stream to an electrodialytic stack, the electrodialytic stack having a central ionic exchange membrane and a first and a second ionic exchange membrane of a different type than the central ionic exchange membrane;
circulating a redox shuttle loop around the first and the second outer ionic exchange membranes; and
applying a voltage across the electrodialytic stack such that a desiccant concentrate moves from (1) the diluted stream to the redox shuttle loop and to the concentrated stream, and (2) from the redox shuttle loop to the concentrated stream, to produce the liquid desiccant and discharge a stream of diluted liquid desiccant (claim 25)
is considered to define patentable subject matter over the prior art.
The closest prior art appears to be Huang et al. (CN108187459A), which discloses an air dehumidification method ([0006]) comprising:
flowing higher concentration dehumidification solution from a first storage tank 8 (Fig. 4; [0066]) to an air-circulating membrane dehumidifier 17 ([0046], [0079]) (i.e., flowing a concentrated liquid desiccant from an electrodialytic stack to a desiccant reservoir, the desiccant reservoir configured to store liquid desiccant; circulating a stream of the concentrated liquid desiccant stored in the desiccant reservoir through an air-liquid interface);
collecting a lower concentration solution in a second storage tank 13 after use, and blowing out dry air ([0066], [0079]) (i.e., flowing air across the air-liquid interface such that the stream of the concentrated liquid desiccant absorbs water from the air, the stream of the concentrated liquid desiccant being diluted via the absorption of water to form an output stream and dehumidified air); and
flowing the dehumidifying solution in the second storage tank 13 flows into the first storage tank 8 after passing through an electrodialysis regeneration device 20 ([0078]) (i.e., directing the output stream to the electrodialytic stack; applying a voltage across the electrodialytic stack).
However, Huang does not suggest circulating a redox shuttle loop within the electrodialytic stack such that the electrodialytic stack produces the concentrated liquid desiccant and a diluted stream of liquid desiccant; or circulating a redox shuttle loop around first and second outer ionic exchange membranes to produce a concentrated liquid desiccant and discharge a stream of diluted liquid desiccant.
Claims 12-15, 17, 20-23, and 25-38 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL E GITMAN whose telephone number is (571)272-7934. The examiner can normally be reached M-Th 7:15-5:45pm.
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/GABRIEL E GITMAN/Primary Examiner, Art Unit 1772
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