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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13 and 23 of U.S. Patent No. 11,447,400 B2. Claim 1 of the instant application recites: A solar vapor generation system, comprising: a substrate configured to wick solution from a reservoir, wherein the substrate comprises a first planar sheet at least a portion of which is configured to be in contact with the solution, and wherein the first planar sheet has a first end connected to a first end of a second planar sheet at an angle of between 1.0 and 90.0 degrees; and a support, configured to support the substrate at a position above the solution. Claim 1 of U.S. Patent No. 11,447,400 B2 recites: A solar vapor generation system, comprising: an open-topped vessel for holding a water-based solution; a substrate configured to wick solution from the open-topped vessel, wherein the substrate comprises two planar sheets connected to one another along an adjoining edge, and wherein the two planar sheets connect at an angle of between 10.0 and 90.0 degrees; and a support, configured to support the substrate. Claim 13 of U.S. Patent No. 11,447,400 B2 recites: An apparatus for improved salt separation in an evaporation pond, comprising: a substrate configured to wick solution from the evaporation pond, wherein the substrate comprises two planar sheets connected to one another along an adjoining edge, and wherein the two planar sheets connect at an angle of between 10.0 and 90.0 degrees; a support, configured to support the substrate; and wherein a temperature of the substrate is maintained substantially at or below an ambient temperature. Claim 23 of U.S. Patent No. 11,447,400 B2 recites: A method for solar evaporation, comprising: providing a substrate configured to wick solution, wherein the substrate comprises two planar sheets connected to one another along an adjoining edge, and wherein the two planar sheets connect at an angle of between 10.0 and 90.0 degrees; exposing the substrate to solar energy; and maintaining a temperature of the substrate substantially at or below a temperature of the atmosphere.
Although the claims at issue are not identical, they are not patentably distinct from each other because a species will anticipate a claim to a genus. A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus. The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408,411,125 USPQ 345,347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989)." In the alternative, the claims recite essentially the same, or equivalent, structure worded in a different manner.
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.
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 8-30 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 8 recites, in part, “wherein the second planar sheet and the third planar sheet are arranged on opposite sides of the first planar sheet from each other.” This recitation is grammatically confusing which caused the claim to be indefinite. In the interest of advancing prosecution, the recitation in question is interpreted as if amended as follows:
-- wherein the second planar sheet and the third planar sheet are arranged opposite from each other on opposite sides of the first planar sheet
Claims 9-30 are rejected due to their dependency, directly or indirectly, from Claim 8.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,172,767 A (hereinafter “SEAR”).
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Regarding Claim 1, SEAR discloses a solar vapor generation system, comprising: a substrate configured to wick solution from a reservoir (indicated in annotated Fig. 4 above), wherein the substrate comprises a first planar sheet (indicated in annotated Fig. 4 above) at least a portion of which is configured to be in contact with the solution (indicated in annotated Fig. 4 above), and wherein the first planar sheet has a first end connected to a first end of a second planar sheet (indicated in annotated Fig. 4 above) at an angle of between 1.0 and 90.0 degrees (see Fig. 4); and a support (50), configured to support the substrate at a position above the solution (see Col. 4, Lns. 34-49: “In the modified forms of the invention shown in FIGS. 3 and 4 the water evaporation tank 10 is of the same construction as that set forth in FIG. 1 as are the pipe line and the like. However, as shown in the drawings means are provided to increase the evaporating area. Such means are illustrated in the form of cloth covered baffles 50 dispersed at random throughout the tank. These can serve as additional supports for the transparent covering. Primarily, however, when the baffles are covered with the porous material such as nylon cloth or burlap, they become saturated as a result of the capillary action by the sea water. As a consequence, without enlarging the space involved there is an increase in the evaporating area and a consequent increase in the rate of evaporation.”).
Claims 1-2 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2,813,063 A (hereinafter “BJORKSTEN”).
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Regarding Claims 1-2 and 7, BJORKSTEN discloses a solar vapor generation system, comprising: a substrate (17) configured to wick solution from a reservoir (see 20, 25), wherein the substrate comprises a first planar sheet (indicated in annotated Fig. 3 above) at least a portion of which is configured to be in contact with the solution (see annotated Fig. 3 above), and wherein the first planar sheet has a first end connected to a first end of a second planar sheet (indicated in annotated Fig. 3 above) at an angle of between 1.0 and 90.0 degrees (see Fig. 3); and a support (15), configured to support the substrate at a position above the solution (25); wherein the second planar sheet is configured to not directly contact the solution (see Fig. 3); further comprising a non-wicking member (14) disposed between the substrate (17) and the support (15).
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 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over SEAR or BJORKSTEN in view of US 2012/0264069 A1 (hereinafter “RAMIREZ”).
Regarding Claims 3-6, SEAR or BJORKSTEN do not disclose wherein the first planar sheet and/or the second planar sheet comprise more than one layer; wherein the first planar sheet and/or the second planar sheet comprise more than five layers or more than ten layers; wherein each layer is made from a same material as each other layer; wherein at least one layer is made from a different material as at least one other layer.
RAMIREZ teaches a first planar sheet and/or the second planar sheet (20A) which comprises more than one layer; wherein the first planar sheet and/or the second planar sheet comprise more than five layers or more than ten layers; wherein each layer is made from a same material as each other layer; wherein at least one layer is made from a different material as at least one other layer (see para. [0023]: “The candle wick may comprise a single layer or two or more layers of perforated or non-perforated paper material or other material as described above, wherein the same or different material may be used with multiple layer constructions.”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify SEAR or BJORKSTEN wherein the first planar sheet and/or the second planar sheet comprise more than one layer; wherein the first planar sheet and/or the second planar sheet comprise more than five layers or more than ten layers; wherein each layer is made from a same material as each other layer; wherein at least one layer is made from a different material as at least one other layer as taught and/or suggested by RAMIREZ, since all of the references teach planar sheets of wicking material, it would have been obvious to one skilled in the art to substitute one planar sheet of wicking material for the other to achieve the predictable result of wicking a liquid.
Allowable Subject Matter
Claims 8-30 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure because the references are either in the same field of endeavor or are reasonably pertinent to the particular problem with which the applicant was concerned. Please see form PTO-892 (Notice of References Cited) attached to, or included with, this Office Action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORGE A PEREIRO whose telephone number is (571)270-3932 and whose fax number is (571) 270-4932. The examiner can normally be reached on M-F 9:00 - 5:00 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached at (571) 272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORGE A PEREIRO/ Primary Examiner, Art Unit 3799
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