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 .
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The corresponding claim limitations are: an alkali injector for raising the pH…, a fluoride ion meter for measuring…, and a scale inhibitor supply line for adding; all in claim 6.
Applicant’s fig. 1 provides the disclosure for these claim elements – showing simply by lines 21-23. However, the disclosure also has “a measurement means (fluoride ion meter) 22 for measuring the concentration of fluoride ions” in page 4 for the fluoride ion meter, which is commercially available. 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: addition amount control apparatus in claim 6, and decarboxylation tower for removing carbonic acid in claim 8.
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 § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-8 and 10 are rejected under 35 U.S.C. 103 as unpatentable over Filloux et al (US 2024/0207789,) in view of TOA DKK brochure (attached herewith in an 892)
The priority document in this application goes back to 4/29/21, which covers figure 1 of Filloux. The English translation of the priority document publication, FR3122341A1, is used in the rejection, and is submitted herewith in an 892.
Filloux, fig. 1 is copied herein with annotations. It is self- explanatory: Feed through the RO membrane is from 102, controlled by permeate/feed ratio conversion unit 201 using flow sensors 201a and 201b. Acid, scale inhibitor etc. are added to the feed water from 105-107 (acid 106 before scale inhibitor 107) at valves 202 and 203. The pH, conductivity, concentration of fluoride, etc., are measured downstream of the addition point. pH is maintained at <7 to promote solubility of calcium carbonate (decarboxylation) [0032].
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When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
In this case sufficient specificity is observed because a pH of 5 -7 is immediately envisaged when the reference teaches a pH of less than 7, and thus anticipating claims 1-5. Nonetheless, applicant uses the TOA DKK ion monitors for their purpose, which specifically teaches the range of pH as 6-7 for these instruments. Therefore, it would have been obvious to one of ordinary skill to follow the instructions of the instrument manufacturer for their smooth functioning. Addition of acid or alkali would depend on the pH at the location.
Alternately, the claimed range is made obvious by the teaching of the prior art:
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Filloux does not specifically teach that the fluoride ion detector is provided upstream of the RO membrane, but is provided in the concentrate stream. However, since Filloux teaches among other things about preventing precipitation of ions on the membrane, the actual location of the fluoride ion detector, and other ion detectors can be upstream as well.
A rearrangement of parts, or a change in order of addition are prima facie obvious; MPEP 2144.04:
In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice)
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
For apparatus claims, the process limitations of concentration, pH, chemicals added, etc., are not patentable, based on the well-established case laws on intended use and materials worked upon.
In addition to the details of the process claims, the apparatus claims add the control apparatus which determines the scale inhibitor added based on fluoride concentration. Note that the means-plus-function claim is considered under the broadest reasonable interpretation. Filloux teaches that acid and inhibitors are added based on chemical analysis of the feed in [0010] and [0011]. Also see the WO2006/128730 reference incorporated therein. See also computer implemented process control starting at [0079]. Filloux teaches dosing chemicals based on measured values of fluoride, etc. in [0106].
Claim 9 is rejected under 35 U.S.C. 103 as unpatentable over Filloux et al (US 2024/0207789) in view of TOA DKK and further in view of WO2006/128730
Claim 9 requires an additional RO unit that is in series with the concentrate flow from the first RO unit. WO teaches the concentrate of RO unit 7 being fed to RO unit 8, and the retentate being recirculated- see figure 1 and its details. Such modification affords more recovery of water. Therefore it would have been obvious to one of ordinary skill to have the teaching of WO in the teaching of Filloux to increase water recovery. Regarding a tank to mix permeate of RO unit(s) with feed water, see tanks 1 and 17 in the figure. While WO or Filloux are silent about mixing permeate with feed, it would have been obvious to one of ordinary skill in the art to mix the permeate back with the feed if the permeate has not yet achieved the quality requirement at the least at start up, and to recycle permeate from the second RO unit if that permeate or the combined permeate does not meet the quality requirement. Such arrangements are also common sense.
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Response to Arguments
Applicant’s arguments with respect to claim(s) 7/15/26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In addition to the applied references, applicant submitted a number of foreign references that teach the claimed invention substantially. Process control of water treatment to prevent CaF2 precipitation is also well-known in this art. For compact prosecution, the art rejection is being limited to the closest prior art(s).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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