DETAILED CORRESPONDENCE
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 .
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Nos. 11369897, 10202292 and 11986752 in view of Kjellander (cited in the art rejection), and Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims (except where tubular structure for membranes are recited) are anticipated by the claims of the patent; and wherein tubular structure for membranes is made obvious by Kjellander – the obviousness analysis as in rejection 2 infra.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: ozone generator and electrochemical ozone generator in claims 11 and 12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 21: ‘the latent heat chamber’ has no antecedent basis.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 10, 13-15, 17-19, are rejected under 35 U.S.C. 102(a1) as being anticipated by Ehrenberg et al (US 2010/0170776).
Fig. 14 of Ehrenberg is a schematic showing membrane distillation. The membrane is an ionomer, such as Nafion® membrane, a commercially available membrane from DuPont [0016]. It is supported as taught in [0017] and elsewhere. Specific elements of the membrane properties like equivalent weight and asymmetric are, therefore, anticipated, because applicant has the same membrane. Figure 14 shows a condensing chamber 290 between membrane 110 and condenser surface 294 which is under vacuum, which implies a vacuum source or pump. The feed side is supplied with hot feed (high temperature: heat source in Fig. 13), which implies a heater in the feed side.
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The various loops of condenser and heater can be seen in fig. 13, which is self-explanatory. The closed loop latent heat cycle as in claim 18 is clear from figures 16 and 17 in conjunction with fig. 13. Reservoir for the first material (feed) form the circulation loop in figures 16 and 17 with the vacuum assisted embodiments.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrenberg et al (US 2010/0170776) in view of Hanemaaijer et al (US 6,716,355) and Kjellander (US 4,718,985), and further in view of Hayashi et al (US 6,030,535) and MacCullen et al (US 2017/0073250).
Teaching of Ehrenberg is described in rejection 1 above. Membrane in Ehrenberg is supported, but fails to teach (1) solar heater, (2) tubular membrane arrangement of claims 2-9 and 20, (3) ozone generator, (4) pleated membrane.
Hanemaaijer teaches that solar heating for membrane distillation is known in the art. The reference cited therein, Kjellander (EP 0164326) and published also as US 4,718,985, teaches use of solar heat and membrane distillation device with concentric tubular structure (Kjellander, Fig. 2 copied herein). Hanemaaijer in a similar invention teach the use of circulating feed water through the condensing chamber to preheat the feed and thereby conserve energy. It is also noticeable that Ehrenberg uses the coolant medium to circulate between the condenser and the feed heater to recoup the latent heat from condensation. Directly passing the feed stream as coolant into the condenser would reduce a second coolant stream. Thus it would have been obvious to improve the system of Ehrenberg by using the teachings of Hanemaaijer and for energy efficiency and reducing number of circulating loops.
The concentric tubular structure for membrane distillation taught by Kjellander is seen in the fig. 2 copied herein. It would have been obvious to one of ordinary skill to use the teaching of Kjellander for this purpose because Ehrenberg fails to teach the membrane structure and, therefore, one would resort to the literature to find suitable structures.
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The radial order for the various flows in Kjellander is described in col. 2. The order also can be reversed. See lines 25-34.
Regarding the membrane being plated, such structures are well-known and used for the primary purpose of providing increased surface area. MacCullen teaches Nafion® plated membranes for similar applications; the membrane has support layer of PTFE (abstract; [0115]).
Regarding the ozone generator, providing disinfectants to water is known for over a century, and ozone is one of such disinfectants. See Hayashi for such usage of ozone in water treatment. Electrochemical ozone generator is something commercially available, unless otherwise shown.
See KSR lnt'I. v. Teleflex lnc., 127 S. Ct. 1727, 1732, 82 USPQ2d 1385, 1390 (2007). “it is commonsense that familiar items have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle”. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached on Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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