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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9/18/24, 4/7/25, 8/22/25 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Status
Claims 1, 3-8 are pending.
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 1, 3-8 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 pre-AIA the applicant regards as the invention.
As to claim 1, it is unclear what a heavy solution is describing in line 3 because what is or is not “heavy” and heavy is relative and subjective. Therefore, this limitation is indefinite. Further, where is the heavy solution and is the sample in the heavy solution?
As to lines 5-7 of claim 1, it is unclear what supernatant is describing. Where is this supernatant, is the supernatant in the container, and how does the discharge from the container happen? Also, with respect to the discharge path of lines 8-9, because the supernatant ant it’s relationship to the other elements is unclear then it is also unclear how the supernatant is discharged from the container.
As to claim 1, it is unclear what intimate contact is describing in line 13 because what is or is not “intimate” and intimate is relative and subjective. Therefore, this limitation is indefinite.
Claims 3-8 are rejected based on further claim dependency.
As to claim 5, it is unclear what material applicants are attempting to define by a resin. Typically, the term “resin” is understood in the art. However, when looking to applicants specification, the only example of a resin is “silicone resin”. However, “silicone” does not typically form a resin and is instead an elastomer. Therefore, it is unclear if silicone or elastomers are also encompassed by the term “resin” in the claims. A potential infringer, in light of the specification, would not find it clear as to what specific materials do or do not infringe on the “resin” of claim 5.
Appropriate correction and/or clarification is required.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 4, 6, 8 are rejected under 35 U.S.C. 102a1 as being anticipated by anticipated by Zhang et al (Translation of CN 111791394; already of record; hereinafter “Zhang”).
As to claim 1, Zhang teaches a purification apparatus that purifies a specific sample from a mixed sample (Zhang; Fig. 1-5, [43-76[), the purification apparatus comprising: a container to separate the mixed sample with a heavy solution based on a specific gravity difference (Zhang teaches container 1 or 5; Fig. 1-5); a filter unit that collects the specific sample in the mixed sample by introduction of a supernatant discharged from the container, the specific sample being lighter in specific gravity than the heavy solution (Zhang teaches filter 108 and filter 16; Fig. 1-5, [57-68, 73, 78]. The examiner notes that the sample and any solutions used in the device are related to intended use and do not further limit the apparatus structure.); and a discharge path that guides the supernatant discharged from the container to the filter unit (Zhang teaches discharge portion as 4, 5, and/or 9; Fig. 1-5), wherein the filter unit includes a filter and a connection portion, the connection portion being attached to the filter and the discharge path and connecting the filter and the discharge path to each other, and the filter unit is in intimate contact with the discharge path (Zhang teaches filter 108 which includes a connection portion as the walls 101/103 which is connected to discharge path 9; Fig. 4).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
As to claim 3, Zhang teaches the purification apparatus according to claim 1, wherein the connection portion includes a lid portion and a wall portion, and the discharge path has an end projecting from the lid portion (Zhang teaches filter 108 which includes a connection portion as the lid 101 and wall 103 with discharge path 9 projecting from the lid; Fig. 4).
As to claim 4, Zhang teaches the purification apparatus according to claim 1, wherein the connection portion is composed of a material different from a material for the specific sample (The specific sample is not positively recited and is related to intended use. The device of the prior art is capable of using any sample, including a sample with a different material than used in the connection portion).
As to claim 6, Zhang teaches the purification apparatus according to claim 1, wherein the connection portion is removable from the discharge path or the filter (Zhang teaches filter 108 which includes a connection portion as the walls 101/103 which is connected to discharge path 9; Fig. 4. Because the different structures are shown by different hash marks then they are formed of separate structures and are removable).
As to claim 8, Zhang teaches the purification apparatus according to claim 1, wherein the specific sample is microplastic (The examiner notes that the sample is not positively recited as part of the apparatus and does not further define the apparatus beyond that of a capability. The structure taught in claim 1 is capable of processing any sample).
Claims 1, 4, 6, 8 are rejected under 35 U.S.C. 102a1 as being anticipated by anticipated by Shen et al (Translation of CN 214234466; already of record; hereinafter “Shen”).
As to claim 1, Shen teaches a purification apparatus that purifies a specific sample from a mixed sample (Shen; Fig. 1, [23, 41, 42]), the purification apparatus comprising: a container to separate the mixed sample with a heavy solution based on a specific gravity difference (Shen teaches container 1; Fig. 1, [23, 41, 42]); a filter unit that collects the specific sample in the mixed sample by introduction of a supernatant discharged from the container, the specific sample being lighter in specific gravity than the heavy solution (Shen teaches a filter 6 at the third outlet at the top of cylinder 3; Fig. 1, [23, 41, 42]. The examiner notes that the sample and any solutions used in the device are related to intended use and do not further limit the apparatus structure.); and a discharge path that guides the supernatant discharged from the container to the filter unit (Shen teaches discharge path as the portion 2; Fig. 1), wherein the filter unit includes a filter and a connection portion, the connection portion being attached to the filter and the discharge path and connecting the filter and the discharge path to each other, and the filter unit is in intimate contact with the discharge path (Shen teaches the filter as part of 3 which is connected to 5 as the connection portion; Fig. 1).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
As to claim 4, Shen teaches the purification apparatus according to claim 1, wherein the connection portion is composed of a material different from a material for the specific sample (The specific sample is not positively recited and is related to intended use. The device of the prior art is capable of using any sample, including a sample with a different material than used in the connection portion).
As to claim 6, Shen teaches the purification apparatus according to claim 1, wherein the connection portion is removable from the discharge path or the filter (Shen teaches that the connection portion 5 would be removable from 2. Further, Because the different structures are shown as differing structures then then they are formed of separate structures and are removable).
As to claim 8, Shen teaches the purification apparatus according to claim 1, wherein the specific sample is microplastic (The examiner notes that the sample is not positively recited as part of the apparatus and does not further define the apparatus beyond that of a capability. The structure taught in claim 1 is capable of processing any sample).
Claims 1, 3, 4, 7, 8 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by anticipated by Iwata et al (US 20210116337; hereinafter “Iwata”).
As to claim 1, Iwata teaches a purification apparatus that purifies a specific sample from a mixed sample (Iwata; Fig. 4), the purification apparatus comprising: a container to separate the mixed sample with a heavy solution based on a specific gravity difference (Iwata teaches container 100a; Fig. 4, [52]); a filter unit that collects the specific sample in the mixed sample by introduction of a supernatant discharged from the container, the specific sample being lighter in specific gravity than the heavy solution (Iwata teaches filter 180; Fig. 4, [54, 55]. The examiner notes that the sample and any solutions used in the device are related to intended use and do not further limit the apparatus structure.); and a discharge path that guides the supernatant discharged from the container to the filter unit, wherein the filter unit includes a filter and a connection portion (Iwata teaches discharge path as the line from 100a to filter 180 including 120a or 130; Fig. 4, [52-55]), the connection portion being attached to the filter and the discharge path and connecting the filter and the discharge path to each other, and the filter unit is in intimate contact with the discharge path (Iwata teaches the connection portion as the upper part of 124 that is connected to narrower connection tube; Fig. 4).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
As to claim 3, Iwata teaches the purification apparatus according to claim 1, wherein the connection portion includes a lid portion and a wall portion, and the discharge path has an end projecting from the lid portion (Iwata teaches the connection portion as the upper part of 124 that is connected to narrower connection tube; Fig. 4. The slanted part is the lid above the filter and the side walls encompass the filter; Fig. 4).
As to claim 4, Iwata teaches the purification apparatus according to claim 1, wherein the connection portion is composed of a material different from a material for the specific sample (The specific sample is not positively recited and is related to intended use. The device of the prior art is capable of using any sample, including a sample with a different material than used in the connection portion).
As to claim 7, Iwata teaches the purification apparatus according to claim 1, wherein the connection portion and the discharge path are integrally molded (Iwata teaches the connection portion as the upper part of 124 that is connected to narrower connection tube; Fig. 4. Because the part 124 and the tube above it are hashed the same then they are interpreted as formed of the same structure and integral).
As to claim 8, Iwata teaches the purification apparatus according to claim 1, wherein the specific sample is microplastic (The examiner notes that the sample is not positively recited as part of the apparatus and does not further define the apparatus beyond that of a capability. The structure taught in claim 1 is capable of processing any sample).
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (Translation of CN 111791394; already of record; hereinafter “Zhang”) in view of Noda et al (US 20230160796; hereinafter “Noda”) or alternatively in view of Baba (US 20050153423; hereinafter “Baba”).
As to claim 5, Zhang teaches the purification apparatus according to claim 4, with the connection portion.
Zhang does not specifically teach the connection portion is resin. However, Noda teaches the analogous art of a filter with a housing connection portion, the housing connection portion formed of resin (Noda teaches a filter 21 with a connection portion housing formed by 22/23/24 which can be formed of a resin [48]; Fig. 1, 2A). It would have been obvious to one of ordinary skill in the art to have modified the connection portion material of Zhang to be resin as in Noda because Noda teaches that it is well-known in the art to form a filter support out of resin (Noda; [48]). Alternatively, Baba teaches the analogous art of a filter housing connection made of resin (Baba; [28], Fig. 1). It would have been obvious to one of ordinary skill in the art to have modified the connection portion material of Zhang to be resin as in Baba because Baba teaches that it is well-known to make filter connectors out of resin and that resin also helps to provide the advantage of flexibility (Baba; [28]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (Translation of CN 111791394; already of record; hereinafter “Zhang”).
As to claim 7, Zhang teaches the purification apparatus according to claim 1, with the connection portion and the discharge path (see above).
Zhang does not teach the components are integrally molded. However, one of ordinary skill in the art would have found it obvious to have made the connection portion and discharge path integral because using one piece construction instead of multiple pieces would be merely a matter of engineering choice (See MPEP 2144.04 V. A).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shen et al (Translation of CN 214234466; already of record; hereinafter “Shen”) in view of Noda et al (US 20230160796; hereinafter “Noda”) or alternatively in view of Baba (US 20050153423; hereinafter “Baba”).
As to claim 5, Shen teaches the purification apparatus according to claim 4, with the connection portion.
Shen does not specifically teach the connection portion is resin. However, Noda teaches the analogous art of a filter with a housing connection portion, the housing connection portion formed of resin (Noda teaches a filter 21 with a connection portion housing formed by 22/23/24 which can be formed of a resin [48]; Fig. 1, 2A). It would have been obvious to one of ordinary skill in the art to have modified the connection portion material of Shen to be resin as in Noda because Noda teaches that it is well-known in the art to form a filter support out of resin (Noda; [48]). Alternatively, Baba teaches the analogous art of a filter housing connection made of resin (Baba; [28], Fig. 1). It would have been obvious to one of ordinary skill in the art to have modified the connection portion material of Shen to be resin as in Baba because Baba teaches that it is well-known to make filter connectors out of resin and that resin also helps to provide the advantage of flexibility (Baba; [28]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Shen et al (Translation of CN 214234466; already of record; hereinafter “Shen”).
As to claim 7, Shen teaches the purification apparatus according to claim 1, with the connection portion and the discharge path (see above).
Shen does not teach the components are integrally molded. However, one of ordinary skill in the art would have found it obvious to have made the connection portion and discharge path integral because using one piece construction instead of multiple pieces would be merely a matter of engineering choice (See MPEP 2144.04 V. A).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al (US 20210116337; hereinafter “Iwata”) in view of Noda et al (US 20230160796; hereinafter “Noda”) or alternatively in view of Baba (US 20050153423; hereinafter “Baba”).
As to claim 5, Iwata teaches the purification apparatus according to claim 4, with the connection portion.
Iwata does not specifically teach the connection portion is resin. However, Noda teaches the analogous art of a filter with a housing connection portion, the housing connection portion formed of resin (Noda teaches a filter 21 with a connection portion housing formed by 22/23/24 which can be formed of a resin [48]; Fig. 1, 2A). It would have been obvious to one of ordinary skill in the art to have modified the connection portion material of Iwata to be resin as in Noda because Noda teaches that it is well-known in the art to form a filter support out of resin (Noda; [48]). Alternatively, Baba teaches the analogous art of a filter housing connection made of resin (Baba; [28], Fig. 1). It would have been obvious to one of ordinary skill in the art to have modified the connection portion material of Iwata to be resin as in Baba because Baba teaches that it is well-known to make filter connectors out of resin and that resin also helps to provide the advantage of flexibility (Baba; [28]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Iwata et al (US 20210116337; already of record; hereinafter “Iwata”).
As to claim 6, Iwata teaches the purification apparatus according to claim 1, with the connection portion, the discharge path, and the filter (see above).
Iwata does not teach the components are removable. However, one of ordinary skill in the art would have found it obvious to have made the connection portion removable from the discharge path or filter because it would be desirable to remove the filter to replace it when damaged or to access the filter contents (See MPEP 2144.04 V. C).
Other References Cited
The prior art of made of record and not relied upon is considered pertinent to applicant's disclosure include;
Guirguis, R (US RE39457; hereinafter “Guiguis”) teache a filter in 6 that includes a housing that connects to upper and lower container via discharge tubes; Fig. 1-3.
Yamaguchi et al (US 20200166486; hereinafter “Yamaguchi”) teaches connecting containers and filtering contents; Fig. 3.
Rajagopal et al (US 20180051313; hereinafter “Rajagopal”) teaches a container 12/28 with a filter between them; Fig. 5, [150].
Baba (US 20050153423; hereinafter “Baba”) teaches a connector can be made of resin or glass [28].
Thijssen et al (US 20240027305; hereinafter “Thijssen”) teaches a connection interface that connects via a sealing contact to a filter and container [21] to help establish a seal [32] where the interface is made of various materials including silicone, and also thermoplastics, which would be formed by resins [33].
Taki (US 20210017484; hereinafter “Taki”) teaches a filter in an outer portion housing that is made of resin [23], Fig 2-3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN R WHATLEY whose telephone number is (571) 272-9892. The examiner can normally be reached Mon- Fri 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Benjamin R Whatley/Primary Examiner, Art Unit 1798
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