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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8 and 16-18, drawn to a method of crossflow filtering wastewater, classified in C02F1/00.
II. Claim 9-15 and 19-20, drawn to a crossflow filtration system, classified in B01D61/12.
The inventions are independent or distinct, each from the other because:
Inventions group I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process such as contaminated liquid for sources other than a diagnostic apparatus or a laboratory analyzer.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification.
The inventions have acquired a separate status in the art due to their recognized divergent subject matter.
The inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
The prior art applicable to one invention would not likely to be applicable to another invention.
The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Ryan Hiler on 08/12/2026 a provisional election was made without traverse to prosecute the invention of claims 1-8 and 16-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-15 and 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim(s) 1, 2, 4-7, and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shamel et al ((1999) Cross flow Ultrafiltration Studies on Solutions of Pectin with Pulsatile Flow In-situ Cleaning, Artificial Cells, Blood Substitutes, and Biotechnology, 27:5-6, 447-453), in view of Damak et al. (Desalination 168 (2004) 231-239).
Regarding claim 1, Shamel teaches a method of cross-flow filtering a solution (refer abstract), the solution is flowing in a laminar flow across an inner surface of a tubular filter membrane (refer abstract disclosing process being operated under laminar flow) having an inlet and an outlet; wherein the wastewater flows in pulse cycles across the inner surface of the tubular filter membrane from the inlet towards the outlet (refer fig. 1, page 449 left column), wherein each pulse cycle comprises one active phase in which the wastewater is under a duty pressure at the inlet and one inactive phase in which the wastewater is under an inactive pressure at the inlet (refer page 447 disclosing pulsed flow); and
wherein a filtrate portion of the wastewater passes across the tubular filter membrane and wherein the particles are separated from the filtrate portion of the wastewater by the tubular filter membrane (refer fig. 1).
Regarding “wherein the inactive pressure is no more than 10 % of the duty pressure and the active phases have a duration of greater than 50 % of the corresponding pulse cycles”, Shamel teaches varying frequency and amplitude of pulse to achieve desired conditions for cleaning the membrane surface (Refer abstract, page 450 – paragraph “The application of Pulsatile flow…”). Selecting the frequency and amplitude of pulses would have been an obvious matter of choice to one of ordinary skill in the art to achieve desired conditions for cleaning membrane surface. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Shamel performs the method under laminar flow with Reynolds number of 1698. Shamel does not teach that laminar flow having Reynolds number smaller than 500.
Damak teaches crossflow membrane separation process under laminar flow conditions in tubular membrane to quantify effects of various operating condition (abstract) with Reynolds number between 300 and 1000 (refer page 236 left column). Selecting the Reynolds number for the solution being filtered by the method of Shamel would have been an obvious matter of choice to one of ordinary skill in the art. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, modified Shamel teaches limitations of claim 1 as set forth above. Shamel teaches that the method performed at 10 bar (refer page 448 – right column).
Regarding claim 4, 5, 6, 7, 17 and 18, modified Shamel teaches limitations of claim 1 as set forth above. Shamel teaches that pulse frequency and amplitude is adjusted to increase permeation (refer abstract, page 444 – right column). Adjusting the frequency, amplitude, and active phases would have been obvious to one of ordinary skill in the art to achieve desired permeation.
Claim(s) 3 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shamel et al ((1999) Cross flow Ultrafiltration Studies on Solutions of Pectin with Pulsatile Flow In-situ Cleaning, Artificial Cells, Blood Substitutes, and Biotechnology, 27:5-6, 447-453), in view of Damak et al. (Desalination 168 (2004) 231-239) as applied to claim 1 above, and further in view of Lu et al (Journal of Membrane Science 198 (2002) 225–243).
Regarding claim 3, modified Shamel teaches limitations of claim 1 as set forth above. Shamel does not teach that the particles as monodisperse.
Lu teaches crossflow microfiltration of solution comprising monodispersed particles (refer abstract).
Selecting the solution comprising monodispersed particles in the method of modified Shamel would have been obvious to one of ordinary skill in the art because Lu establishes that it is known in the art to use cross-filtration membrane for separation of monodispered particles from a solution.
Regarding claim 16, modified Shamel teaches limitations of claim 3 as set forth above. Shamel teaches use of ultrafiltration membrane (refer abstract). Ultrafiltration membranes are known to have capability of removing particles between range of nanometers and micrometers. Selecting particles to be removed by the membrane of Shamel would have been an obvious matter of choice to one of ordinary skill in the art.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shamel et al ((1999) Cross flow Ultrafiltration Studies on Solutions of Pectin with Pulsatile Flow In-situ Cleaning, Artificial Cells, Blood Substitutes, and Biotechnology, 27:5-6, 447-453), in view of Damak et al. (Desalination 168 (2004) 231-239) as applied to claim 1 above, and further in view of Hadzismajlovic et al. (Journal of Membrane Science 142 (1998) 173-189).
Regarding claim 8, modified Shamel teaches limitations of claim 1 as set forth above. Shamel does not teach that he method further comprises: (A) applying a recovery phase in which there is nearly no wastewater flow and there is nearly no transmembrane pressure; and (B) applying a cleaning phase in which the wastewater is streamed across the surface of the filter membrane with nearly no transmembrane pressure; wherein the recovery phase and the cleaning phase may be repeated several times.
Hadzismajlovic teaches laminar crossflow microfiltration with pulsed flow to enhance flux (refer abstract). The pulsed flow is applied with pressure oscillating between a max pressure and zero or negative pressure (Refer fig. 2) suggesting nearly no water flow with no transmembrane pressure.
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the method of modified Shamel to applying a recovery phase in which there is nearly no wastewater flow and there is nearly no transmembrane pressure; and applying a cleaning phase in which the wastewater is streamed across the surface of the filter membrane with nearly no transmembrane pressure; wherein the recovery phase and the cleaning phase may be repeated several times to improve flux.
Conclusion
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/PRANAV N PATEL/ Primary Examiner, Art Unit 1779
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