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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-19 in the reply filed on 7/08/2025 is acknowledged. The traversal is on the ground(s) that the groups are directed to a set of inventions which satisfy the provisions of 37 CFR 1.475(b) for having unity of invention, i.e. a product and process of use or equivalent. This is not found persuasive because as noted in 1.475(a), unity still requires the presence of a special technical feature: “Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.” See further discussions of unity in MPEP 1893.03(d) – the various exemplary categories nevertheless require the aforementioned “technical relationship” i.e. the presence of a special technical feature. Additionally, examiner suggests that the instant claimed groups are more appropriately represented as a process and apparatus for carrying out the process, such that the question is whether they are “specially adapted” and contain the aforementioned “technical relationship” and special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-3, 6-9, 11-13, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Poyet et al (EP 0497641 A1).
Examiner notes that intended use language in apparatus claims is not accorded patentable weight where the statement of intended use does not distinguish over the prior art apparatus (MPEP 2114.II).
With respect to claim 1, Poyet discloses a reverse osmosis membrane module (1) having an inlet, permeate outlet (20), and concentrate outlet (7) which is operable to separate a feed by reverse osmosis into permeate and concentrate directed to their respective outlets [Fig. 1]; a first tank (14); and a fluid circuit coupling the RO membrane module and the first tank which provides multiple flow paths, including a first flow path directing feed to the inlet i.e. from a source tank (2), a first concentrate flow path directing concentrate to the first tank via lines (7) and (13), and a second feed flow path directing feed from the first tank to the inlet via line (18), such that the first and second feed flow paths receive the feed from different sources (first path receiving from tank (2), second path receiving from tank (14) or (15)) [0032-0040, 0047].
Given the broadest reasonable interpretation, the system of Poyet anticipates the claimed invention.
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With respect to claim 2, Poyet teaches at least two intermediate storage tanks (14), (15) which can satisfy the claim requirements for first and second tanks and which would be capable of used according to the claimed cycle scheme; Poyet already suggests using different tanks for different passes [0052]. The specific operations described by the claim are directed to the intended use of the claimed system and do not distinguish structurally absent further clarification of the structural requirements.
With respect to claims 3 and 6, Poyet teaches a looping arrangement which would be understood to avoid converging flow paths absent clarification of the intended requirements. This is also understood to prevent a direct flow path between the two i.e. a path bypassing the RO membrane module. However, the specific flow path employed during operations is drawn to the intended use of the claimed system.
With respect to claim 7, the claim limitations are directed to operational parameters which represent the intended use of the claimed system and do not distinguish structurally absent clarification of structural requirements.
With respect to claims 8 and 9, Poyet teaches a pump (4) for feeding the RO module; the specific pressure profile employed is drawn to the intended use of the claimed system and does not distinguish structurally. As above, it would be capable of receiving feed from alternate sources during cycles e.g. from a feed tank (2) or any of various storage tanks (14), (15).
With respect to claims 11-13, as above Poyet teaches a fresh feed inlet via a feed tank (2). The operational parameters regarding number of cycles before switching, or discharge operations or the like, are drawn to the intended use of the claimed system and do not distinguish structurally.
With respect to claim 19, Poyet teaches RO membranes with a sodium chloride rejection rate of 88% [0108] and teaches that multiple membranes may be employed in parallel [0032].
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mack et al (WO 2020/046569 A).
Examiner notes that intended use language in apparatus claims is not accorded patentable weight where the statement of intended use does not distinguish over the prior art apparatus (MPEP 2114.II).
With respect to claim 1, Mack teaches a high recover reverse osmosis system [Abs] which includes an RO membrane unit (20) with feed inlet, permeate outlet,, and retentate outlet (46). The system also includes first and second feed flow paths from e.g. first and second tanks (28) which collect retentate from the retentate flow path (46), (48) and feed it to the RO unit, and where the first and second paths may be configured to draw from different sources i.e. first and second tanks [Fig. 1; pgs. 3 & 5]. Given the broadest reasonable interpretation, the system anticipates the claimed invention.
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With respect to claim 2, as above the system includes two tanks in parallel arrangement such that they can be alternated in cycle; the specific operations employed represent the intended use and do not distinguish structurally.
With respect to claims 3 and 6, they system includes a looping flow path which would be understood to avoid converging flow paths absent clarification of the intended requirements. This is also understood to prevent a direct flow path between the two i.e. a path bypassing the RO membrane module. However, the specific flow path employed during operations is drawn to the intended use of the claimed system.
With respect to claims 4 and 5, the looping arrangement and taught flow paths [Fig. 1] allow for retentate to enter one side of e.g. a first tank while the other side of e.g. a second tank is used as feed, and vice versa, without any mixing or crossing of paths [Fig. 1].
With respect to claim 7, the claim limitations are directed to operational parameters which represent the intended use of the claimed system and do not distinguish structurally absent clarification of structural requirements.
With respect to claims 8 and 9, Mack teaches a pump (22) for feeding the RO module; this is explicitly identified [Fig. 1] as a variable speed pump, although the specific pressure profile employed is drawn to the intended use of the claimed system and does not distinguish structurally. As above, it would be capable of receiving feed from alternate sources during cycles e.g. from a first and second tanks from (22) or a direct feed branch from like (54) and the like.
With respect to claims 10-14, Mack teaches a fresh feed inlet which passes through a path (42) to reach an energy recovery device (24) where it may be pressurized by RO concentrate from path (46) [Fig. 1]. As above the operational parameters regarding number of cycles before switching, or discharge operations or the like, are drawn to the intended use of the claimed system and do not distinguish structurally.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
Claims 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Poyet et al.
Poyet teaches as above. Poyet does not explicitly teach that the two tanks are arranged such that one can serve as feed while the other collects retentate without the two paths ever mixing. However, Poyet teaches multi-pass operation schemes in which a first retentate is collected after a first pass, and then is fed to the system in a second pass while a second retentate is collected [0046-0053] and that the system contains branch pipes which allow flow to be directed to these purposes. As such, the claimed behavior is inherently required or, at minimum, would have been obvious to include to allow for flexible operation of the intended multi-pass scheme i.e. to allow a tank to provide a feed while an adjacent tank collects concentrate and vice versa.
Claim 10 rejected under 35 U.S.C. 103 as being unpatentable over Poyet et al in view of Mack et al.
Poyet teaches as above but is silent to energy recovery devices for pressurizing the feed by using outgoing concentrate energy.
However, Mack teaches similar RO systems as discussed above, and teaches employing an energy recovery device (24) to recover energy from a concentrate line (48) to pressurizing incoming feed (42) [Fig. 1, pg. 3].
It would have been obvious to one of ordinary skill in the art to modify the system of Poyet to feature an energy recovery device such as that of Mack to gain the benefit of recovering pressure energy from concentrate and use it to pressurize the feed.
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Poyet et al in view of Taniguchi et al (US PGPub 2018/02564410 A1).
With respect to claim 14, 15, and 17, Poyet teaches as above but is silent to a treatment unit capable of providing a chemical dosage to e.g. a feed tank or receiver tank of a given cycle, or to the use of RO concentrate, or further RO-processes RO concentrate-permeate.
However, Taniguchi teaches methods of enhancing rejection performance of semipermeable membranes [Abs] such as RO membranes [0003] which include various embodiments providing a chemical tank (15) as part of a chemical dosing unit, in which a chemical is fed to a membrane through a feed line [0051], e.g. by providing in the chemical tank a mixture of a chemical solute and permeate or retentate from the membrane system [0054]. In embodiments [Fig. 4, 0129], this may include permeate from a second membrane separation e.g. via a line (10b) where said second membrane is fed from the first membrane concentrate.
It would have been obvious to incorporate such features into the system of Poyet to improve the rejection performance of the membranes employed by Poyet, in the manner suggested by Taniguchi which is intended to improve RO separations. Because of the batch tanks employed for various cycles of Poyet, it would have been obvious to dose the chemical feed from Taniguchi into any of the various tanks used to feed the various cycles of Poyet, to facilitate improvement at various passes. Examiner notes that the specific chemical employed would be directed to the intended use of the claimed device, or to the material worked upon by the claimed device, and would not distinguish structurally.
With respect to claim 16, Taniguchi teaches a safety filter (7) on a feed line between a tank (5) and the RO membrane modules [0049, Fig. 1]. Providing prefiltration of various configuration to protect high performance membranes is well known in the art and it would have been obvious to employ safety filters such as those taught by Taniguchi into the system of Poyet for the same purpose.
With respect to claim 18, Taniguchi teaches providing an energy recovery unit (13) on an ultimate concentrate outlet to recover energy on concentrate which is being otherwise discharged [0049, Fig. 4]. It would have been obvious to include such a feature in the system of Poyet for the same purpose i.e. to improve efficiency by recovering pressure energy from the waste concentrate.
Claims 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mack et al in view of Taniguchi et al.
With respect to claim 14, 15, and 17, Mack teaches as above but is silent to a treatment unit capable of providing a chemical dosage to e.g. a feed tank or receiver tank of a given cycle, or to the use of RO concentrate, or further RO-processes RO concentrate-permeate.
However, Taniguchi teaches methods of enhancing rejection performance of semipermeable membranes [Abs] such as RO membranes [0003] which include various embodiments providing a chemical tank (15) as part of a chemical dosing unit, in which a chemical is fed to a membrane through a feed line [0051], e.g. by providing in the chemical tank a mixture of a chemical solute and permeate or retentate from the membrane system [0054]. In embodiments [Fig. 4, 0129], this may include permeate from a second membrane separation e.g. via a line (10b) where said second membrane is fed from the first membrane concentrate.
It would have been obvious to incorporate such features into the system of Mack to improve the rejection performance of the membranes employed by Mack, in the manner suggested by Taniguchi which is intended to improve RO separations. Because of the batch tanks employed for various cycles of Mack, it would have been obvious to dose the chemical feed from Taniguchi into any of the various tanks used to feed the various cycles of Mack, to facilitate improvement at various passes. Examiner notes that the specific chemical employed would be directed to the intended use of the claimed device, or to the material worked upon by the claimed device, and would not distinguish structurally.
With respect to claim 16, Taniguchi teaches a safety filter (7) on a feed line between a tank (5) and the RO membrane modules [0049, Fig. 1]. Providing prefiltration of various configuration to protect high performance membranes is well known in the art and it would have been obvious to employ safety filters such as those taught by Mack into the system of Poyet for the same purpose.
With respect to claim 18, as above Mack teaches energy recovery using the concentrate. Taniguchi similarly teaches providing an energy recovery unit (13) on an ultimate concentrate outlet to recover energy on concentrate which is being otherwise discharged [0049, Fig. 4].
With respect to claim 19, Mack is silent to the salt rejection properties of the membranes employed; however, Taniguchi suggests that exemplary RO membranes may have salt rejection of 90% or more e.g. when employing performance enhancing additives [0080]. It would have been obvious to include such membranes in the system of Mack for their known and expected RO properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1776
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