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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required, but no new matter may be added; if such subsystems are supported by the original disclosure including the original drawings or original claims, such support should be fully explained.
The specification does not provide proper antecedent basis for at least the following terms:
From claim 1, chlorination subsystem and ozonation subsystem;
From claim 2, mineral control subsystem;
From claim 3, potability monitoring subsystem (examiner notes that the specification does recite a monitoring control subsystem but does not describe it as a potability monitoring subsystem; it is not clear if the two terms have the same intended meaning); and
From claim 17, onboard control subsystem (examiner notes that the specification does appear to support the term onboard control system but not control subsystem; it is not clear if the two terms have the same intended meaning).
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.
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: the various subsystems in the claims
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.
Examiner notes that the disclosure does not appear to support most of the claimed subsystems with such language, and so it is not clear what the required scope of those terms is. See the 112(a) and 112(b) rejections below for further explanation.
However, certain subsystems are explicitly defined in the specification:
The term filtration subsystem is represented by element (22) [0044] which is also called a “filtering subsystem” and the terms are understood as being interchangeable within the meaning of the specification, and is explicitly disclosed as requiring [0032] a “multimedia (or ‘depth’ or ‘bedded’) filter system F3, an iron removal system F4, a carbon filter system F5, and a one-micron filter system F6.”
The term reverse osmosis subsystem (also called “RO subsystem”) is represented as element (24) [0039, Fig. 1B] and is understood as requiring at least an RO membrane array (F8) with at least two stages (50) and (52).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-6, 9, and 13-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
With respect to claims 1-6 and 13-20, the claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
See the specification objection above. The claims make reference to a variety of subsystems, most of which are not recited in the specification using such language such that the claims appear to include new matter which is not fully supported by the original (parent) disclosure.
See also MPEP 2181 II and IV; the use of a means-plus-function type claim (as above, the term “subsystem” is considered a placeholder equivalent to “means” because it does not include sufficient structure to perform the associated functions) requires direct linking between the function and the corresponding structure in the specification, and therefore given the current lack of support for the subsystems outlined above (chlorination, potability monitoring, ozonation, and mineral control), the claims fail to satisfy the written description requirement.
With respect to claim 9, the specification does not provide support for the claimed step of replacing trucked-in non-potable water with potable water. At most the specification teaches that certain trucked-in water sources may be rendered non-potable at certain points, but there is no teaching or suggestion of replacing it, or explanation of the requirements thereof.
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.
Claims 1-6 and 13-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As above, the claims are indefinite at least because the required scope of many of the claimed subsystems is unclear (at least the chlorination, potability monitoring, ozonation, and mineral control subsystems are not properly explained in the disclosure in a manner sufficient to render the claim language definite when using means-plus-function type language).
Further with respect to claim 1, the claim recites that the filtration subsystem is configured to remove oxidize iron present in the water stream. From the specification it appears that the invention is intended to include elements which oxidize the iron, and so it is not clear whether claim 1 is implying that such elements are present, or merely whether the filtration subsystem includes structures capable of removing oxidized iron when present.
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 No. 10,696,575 B1.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims require substantially the same elements e.g. filtration subsystems, RO, storage, chlorination control, etc. and further the copending claims are explicitly taught as being provided in a mobile system. Further, dependent claims require the inclusion of an oxidation or ozonation subsystem consistent with the instant claims.
A method of treating water as claimed is implicit or obvious over the copending claims which teach a system configured to treat water with elements consistent with the claimed invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10,882,773 B1.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the instant claims and use more specific terminology to satisfy the instant claimed subsystems. Compare reference claim 1 and instant claim 1, where the “ozonation subsystem” is an ozone generator, the “chlorination subsystem” is a chlorine sensor, etc. Similarly compare reference claim 6 and instant claim 13, and compare reference claim 13 and instant claim 20.
A method of treating water as claimed in instant claim 7 is implicit or obvious over the copending claims which teach a system configured to treat water with elements consistent with the claimed invention.
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 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 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.
Claims 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Dempo (US 5,512,178) in view of Heiss (US PGPub 2005/0139430 A1), with evidence from Wiemers et al (US PGPub 2011/0257788 A1) and/or Boberg (US 3,353,593).
With respect to claim 7, Dempo teaches a water treatment process [Abs] which includes an upstream multi-step treatment with ozone, followed by filtering with e.g. sand, activated carbon, and the like, followed by treatment with reverse osmosis to purify at least a portion of the stream [Fig. 1, Col. 5 line 52-Col. 6 line 30; Col. 6 line 64-Col. 7 line 18].
Dempo is silent to providing the system as trailer-mounted, or to a final step adjusting the chlorine concentration, unless chlorine adjustment may inherently occur to some extent via e.g. UV treatment and filtration (24), (26).
However, Heiss teaches a method of producing drinking water [Abs] for mobile use which allows for operation on site for various purposes [0004-0005] which may be mounted to a trailer [0043]. Additionally, the system monitors chlorine levels at various points, and provides a final chlorine adjustment i.e. injects chlorine into the water for outlet to provide a residual disinfectant, depending on the levels measured by the analyzers [0042].
It would have been obvious to one of ordinary skill in the art to modify Dempo’s taught process to include mounting on a trailer because, as in Heiss, mobile systems allow for use in a variety of contexts such as disaster relief. Similarly, it would have been obvious to include at least some manner of chlorine adjustment i.e. the ability to add controlled amounts at the outlet in order to gain the benefit of providing a residual disinfectant for the product water.
Further, see Boberg [Abs, Col. 3 lines 16-27; Col. 7 lines 40-43] and Wiemars [Fig. 1, Abs, 0088; 0092, 0099] for evidence that systems comparable to that taught by Dempo, including those with features such as ion-exchange towers, may be compatible with trailer configurations.
With respect to claim 8, Dempo does not teach adding any chlorine to the water as part of the process, such that it may be considered exclusive of chlorine prior to the RO. As above, one of ordinary skill in the art would modify the system to include chlorine at the outlet, but this would not require adding chlorine further upstream, as the purpose is to act on water already treated by all other subsystems.
With respect to claim 9, providing newly cleaned water to replace previously-obtained, non-potable water is at minimum obvious over the use of a mobile treatment system, absent more narrow definition of the required steps, as the purpose is to improve the quality of local sources by treating with mobile equipment.
With respect to claim 10, given the broadest reasonable interpretation any location with housing may be considered an encampment and any housing may be considered temporary, absent more narrow definitions of the term. Heiss teaches that the systems are useful for treating water in underdeveloped areas where people live and work, such that encampments/temporary structures are implicit or obvious [0004].
With respect to claim 11, Heiss teaches that mobile systems are useful for disaster relief [0004].
With respect to claim 12, treatment of groundwater is implicit or obvious to the use of a mobile treatment system which, as in Heiss, is designed to work with local water sources [0003-0004]; further, Dempo teaches that “underground” water may be treated [Col. 1 lines 51-53].
Allowable Subject Matter
No claims may be indicated as allowable until such time as the 112(a) and (b) rejections above, double patenting rejections, and specification objections, are properly addressed; no new matter may be added.
However, as best understood (and presuming the claim interpretation discussed above is accurate for e.g. the term filtration subsystem), the claimed invention of claims 1-6 and 13-20 would be free from the prior art. See the prosecution history of the parent application (14/630,364), now abandoned but previously allowed, including arguments filed 1/24/2019. The closest prior art is represented by Rice (US 2007/0138081 A2) which teaches what may be considered upstream filtration and downstream reverse osmosis in a vehicle mountable system. However, Rice does not teach or fairly suggest the specific claimed arrangement of a filtration system including a multimedia filter followed by an iron removal filter and a one-micron filter, nor does Rice teach or fairly suggest any downstream element capable of adjusting chlorine content before providing water to storage. As discussed in the prosecution of the parent application, while the various individual elements of the claimed system may be known in the prior art, there is no teaching or suggestion in the art to provide each element in the manner required by the claims, such that the specific arrangement of specific elements required by the claimed invention would not have been obvious for one of ordinary skill in the art.
Additionally, Dempo and Heiss teach elements consistent with the broadest embodiments of the invention, but do not teach the full details of e.g. a filtration subsystem as required by the claims, and modification with the specific elements required by the claimed subsystem would not have been obvious to one of ordinary skill in the art.
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
Prosecution Insights