DETAILED ACTION
For this Office action, Claims 1-37 are pending.
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 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 1-37 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 1 recites “the reduced low-cost centralized filtration system” at Line 18; however, the limitation lacks established antecedent basis (see that the system is called a reduced centralized filtration system). Applicant is urged to address this issue in the response to this Office action.
Claim 5 is further rejected under 35 U.S.C. 112(b) for reciting “the network of outlets”, which lacks established antecedent basis. See that the limitation is established as a plurality of outlets in Claim 4. Appropriate correction is required.
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.
Claims 1 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 121102396 (herein referred to as “the ‘396 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite an inventive embodiment that is broader in scope than that of the ‘396 patent. In other words, since the scope of the claims of the ‘396 patent is narrower than that of the instant claims, said claims of the ‘396 patent read on the limitations of the instant claims.
For instance, Claim 1 of the ‘396 patent recites a “structure fore containing a water body having a surface of at least 3000 m2 and a volume of at least 5000 m3 and that is suitable for direct contact recreational purposes, wherein the structure comprises:
a reduced centralized filtration system that filters a volume of water of the water body, wherein:
the reduced centralized filter system comprises a number of bottom inlets that is at least 30% less than the number of inlets (the instant claim does not require the inlets to be bottom inlets, unlike that of the ‘396 patent) of a conventional swimming pool with a total area per bottom inlet of 400 ft2, the reduced centralized system having at least fifteen bottom inlets; and
the reduced centralized filtration system effectively filter[s] at least 30% less volume within a 24-hour period than a conventional swimming pool filtration system which filters the complete water volume four times within a 24-hour period;
a micro-renewal system (the ‘236 patent requires permanent operation, not recited here) which allows a micro-leakage of the water through a plurality of micro-leakage points located in an inner surface of the structure, wherein a total mircro-leakage volume refers to the total volume of water removed from the structure through the micro-leakage points and is lower than the volume of a water filtered by the reduced centralized filtration system (the ‘236 patent comprises additional limitations not required by the instant application);
a dual-frequency skimmer system, comprising [at least]:
a high-frequency reduced skimmer system (“HFSS”) that periodically removes surface water from the structure, and sends such removed water into the reduced centralized filtration system;
a low-frequency skimmer system (“LFSS”) that removes surface water from the structure during a high-renewal event such as a rain event or an increased addition of make-up water (the ‘236 patent recites limitations not required by the instant claims);
wherein the dual-frequency skimmer system has a Skimmer Operation Rate (SOR) of at least 10, wherein the SOR is defined as a ratio of operative hours of the HFSS to the operative hours of the LFSS within a 30-day period of time, as set forth in the following equation:
Skimmer Operation Rate (SOR)= (Hours of Operation of HFSS/Hours of Operation of LFSS) ≥ 10
a make-up water system that introduces a water flow into the water body that is higher than a volume of water lost through natural evaporation of the water body in addition to the water removed from the structure through the micro-renewal system, wherein the make-up water system is arranged and configured to provide a water flow given the following equation:
Make-Up Flow ≥ Evaporation Flow + Micro-Renewal Flow”.
Therefore, since Claim 1 of the ‘236 patent reads on the limitations of instant Claim 1, instant Claim 1 is rejected over Claim 1 of the ‘236 patent due to nonstatutory double patenting.
Since instant Claim 1 (upon which the remaining claims are dependent) has been rejected over Claim 1 of the ‘236 patent, and the dependent claims have the same limitations as those of the ‘236 patent, instant Claims 2-37 are rejected over Claims 2-37 of the ‘236 patent, respectively. See that each of the instant claims matches up with the corresponding claims of the ‘236 patent, with the exception of minor changes (such as “aims to remove” in Claim 35 of the ‘236 patent, instead of the instant claim’s “which removes”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD C GURTOWSKI whose telephone number is (571)272-3189. The examiner can normally be reached 10:00 am-6:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nam Nguyen can be reached at (571) 272-1342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD C GURTOWSKI/Primary Examiner, Art Unit 1773 08/14/2026
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