DETAILED ACTION
Status of Claims:
Claims 1-12 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 1-6, 8, 11, and 12 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.
Regarding Claims 1 and 4:
The claims state “the control unit performs a first additive amount control…” This limitation renders the claim indefinite because “performs” is a method limitation, while the claim itself is directed to a device. Process limitations and apparatus limitation within the same claim raise issues of indefiniteness because it is not clear where direct infringement would occur (see MPEP 2173.05 (p)).
Regarding Claims 5 and 11:
The claims state “the control unit controls the hydrogen adding means to add hydrogen in excess..” This limitation renders the claim indefinite because “controls” is a method limitation, while the claim itself is directed to a device. Process limitations and apparatus limitation within the same claim raise issues of indefiniteness because it is not clear where direct infringement would occur (see MPEP 2173.05 (p)). Specifically, it is not clear if hydrogen in excess is intended as a structural feature of the apparatus. This limitation further renders the claim indefinite because it is not clear what the hydrogen is in “excess” of.
Regarding Claims 6 and 12:
The claim refers to the ”method according to claim” 1 and 4 respectively. This limitation renders the claims indefitne because claims 1 and 4 are directed to a device, not a method.
Regarding Claim 8:
The claim refers to “the water to be treated to which hydrogen is excessively added”. There is insufficient antecedent basis for this limitation within the claims.
The claim refers to “the first addition volume control”. There is insufficient antecedent basis for this limitation within the claims.
The remaining claims are indefinite because they depend from an indefinite claim.
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) 1-7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugawara (JP 2015166064, English machine translation provided).
Regarding Claim 1:
Sugawara teaches the water treatment device comprising an oxidizing substance removal device that removes an oxidizing substance from water to be treated, wherein the oxidizing substance removal device comprises: hydrogen adding means that adds hydrogen to the water to be treated (hydrogen adding apparatus 11); a catalyst tower equipped with a platinum group metal-supported catalyst through which the water to be treated to which hydrogen has been added passes (catalytic reaction device) (see pg. 3, 1st paragraph and 3rd paragraph); a control unit that controls an amount of hydrogen added by the hydrogen adding means (control unit 13) (see pg. 4, 2nd paragraph); and first measuring means that measures a dissolved hydrogen concentration in outlet water of the catalyst tower (dissolved hydrogen meter 14d) (see pg. 4, 3rd paragraph), and wherein the control unit performs a first additive amount control that controls the amount of hydrogen added by the hydrogen adding means so that a measured value by the first measuring means is within a first range (intermediate dissolved hydrogen is adjusted to as low as possible) (see pg. 4, 2nd paragraph). It is noted that the claims are directed to a device, therefore method limitations only add patentable weight to the extent that the prior art must be capable of the same process. In the instant case, as Sugawara teaches a controller that can adjust the hydrogen addition based on the hydrogen concentration, these limitations are met.
Sugawara does not teach wherein a layer height of a packed material in the catalyst tower, including the platinum group metal-supported catalyst, is 10 cm or more. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II). The layer height of the catalyst is not disclosed, however, as unexpected results are disclosed with respect to the claimed layer height, it would have been obvious to one skilled in the art to adjust the layer height to greater than 10 cm, through routine experimentation, in order to find a workable range.
Regarding Claim 2:
Sugawara teaches the water treatment device according to claim 1, further comprising an ultraviolet oxidation device (ultraviolet oxidation device 5), wherein the water to be treated is outlet water of the ultraviolet oxidation device (see pg. 2, 4th paragraph from bottom).
Regarding Claim 3:
Sugawara teaches the water treatment device according to claim 1, wherein the platinum group metal-supported catalyst is a catalyst in which at least a platinum group metal is supported on an anion exchange resin(anion exchange resin as the carrier), and the platinum group metal-supported catalyst is packed in the catalyst tower (see pg. 3 2nd and 3rd paragraphs).
Regarding Claim 4:
Sugawara teaches the water treatment device for adding hydrogen to water to be treated that is passed through a catalyst tower equipped with a platinum group metal-supported catalyst, the water treatment device comprising: hydrogen adding means that adds hydrogen to the water to be treated (hydrogen adding apparatus) (see pg. 3, 1st paragraph); a control unit that controls an amount of hydrogen added by the hydrogen adding means (control unit 13) (see pg. 4, 2nd paragraph); and first measuring means that measures a dissolved hydrogen concentration in outlet water of the catalyst tower (dissolved hydrogen meter 14d) (see pg. 4, 3rd paragraph), and wherein the control unit performs a first additive amount control that controls the amount of hydrogen added by the hydrogen adding means so that a measured value by the first measuring means is within a first range (intermediate dissolved hydrogen is adjusted to as low as possible) (see pg. 4, 2nd paragraph). It is noted that the claims are directed to a device, therefore method limitations only add patentable weight to the extent that the prior art must be capable of the same process. In the instant case, as Sugawara teaches a controller that can adjust the hydrogen addition based on the hydrogen concentration, these limitations are met.
Sugawara does not teach wherein a layer height of a packed material in the catalyst tower, including the platinum group metal-supported catalyst, is 10 cm or more. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II). The layer height of the catalyst is not disclosed, however, as unexpected results are disclosed with respect to the claimed layer height, it would have been obvious to one skilled in the art to adjust the layer height to greater than 10 cm, through routine experimentation, in order to find a workable range.
Regarding Claim 5:
Sugawara teaches the water treatment device according to claim 1, wherein the control unit controls the hydrogen adding means to add hydrogen in excess without performing the first additive amount control (hydrogen is added based on the inlet concentration) (see pg. 4, 3rd-4th paragraph, pg. 5, 2nd paragraph), and, at a predetermined timing, starts the first additive amount control. It is noted that the claims are directed to a device, therefore method limitations only add patentable weight to the extent that the prior art must be capable of the same process. In the instant case, as Sugawara teaches a controller that can adjust the hydrogen addition based on the hydrogen concentration, these limitations are met.
Regarding Claim 6:
Sugawara teaches the water treatment method (device) according to claim 1, further comprising second measuring means that measures a dissolved oxygen concentration of the outlet water of the catalyst tower (outlet dissolved oxygen concentration is measured) (see pg. 5, 3rd paragraph) or water at a point-of-use, wherein the control unit performs a second additive amount control that controls the amount of hydrogen added by the hydrogen adding means so that a measured value by the second measuring means is within a second range (when the range the dissolved hydrogen concentration is set based on results of outlet oxygen concentration) (see pg. 5, 3rd paragraph), and, after the measured value by the second measuring means becomes within the second range, stops the second additive amount control to start the first additive amount control (see pg. 5, 5th paragraph).
Regarding Claim 7:
Sugawara teaches the water treatment method comprising an oxidizing substance removal step that removes an oxidizing substance from water to be treated, wherein the oxidizing substance removal step comprises steps of: adding hydrogen to the water to be treated; and passing the water to be treated to which hydrogen has been added through a catalyst tower equipped with a platinum group metal-supported catalyst (see pg. 4, 1st-7th paragraphs) wherein, in the step of adding hydrogen, a first additive amount control is performed to control an amount of hydrogen added to the water to treated so that a dissolved hydrogen concentration in outlet water of the catalyst tower is within a first range (intermediate dissolved hydrogen is adjusted to be as low as possible) (see pg. 5, 2nd paragraph).
Sugawara does not teach wherein a layer height of a packed material in the catalyst tower, including the platinum group metal-supported catalyst, is 10 cm or more. “[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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II). The layer height of the catalyst is not disclosed, however, as unexpected results are disclosed with respect to the claimed layer height, it would have been obvious to one skilled in the art to adjust the layer height to greater than 10 cm, through routine experimentation, in order to find a workable range.
Regarding Claim 9:
Sugawara teaches water treatment method according to claim 7, wherein a second additive amount control to control the amount of hydrogen added to the water to be treated is performed so that a dissolved oxygen concentration in the outlet water of the catalyst tower is in a second range, and after the dissolved oxygen concentration in the outlet water of the catalyst tower reaches the second range, the second additive amount control is stopped and the first additive amount control is started (when the range the dissolved hydrogen concentration is set based on results of outlet oxygen concentration) (see pg. 5, 3rd and 5th paragraph).
Regarding Claim 10:
Sugawara teaches the water treatment method according claim 7, wherein the water to be treated to which hydrogen is added is passed through the catalyst tower so that a space velocity with regard to the platinum group metal-supported catalyst is 30 h or higher (2000 h-1) (see pg. 2, 4th paragraph).
Regarding Claim 11:
Sugawara teaches the water treatment device according to claim 4, wherein the control unit controls the hydrogen adding means to add hydrogen in excess without performing the first additive amount control (hydrogen is added based on the inlet concentration) (see pg. 4, 3rd-4th paragraph, pg. 5, 2nd paragraph), and, at a predetermined timing, starts the first additive amount control. It is noted that the claims are directed to a device, therefore method limitations only add patentable weight to the extent that the prior art must be capable of the same process. In the instant case, as Sugawara teaches a controller that can adjust the hydrogen addition based on the hydrogen concentration, these limitations are met.
Regarding Claim 12:
Sugawara teaches the water treatment method (device) according to claim 4, further comprising second measuring means that measures a dissolved oxygen concentration of the outlet water of the catalyst tower (outlet dissolved oxygen concentration is measured) (see pg. 5, 3rd paragraph) or water at a point-of-use, wherein the control unit performs a second additive amount control that controls the amount of hydrogen added by the hydrogen adding means so that a measured value by the second measuring means is within a second range (when the range the dissolved hydrogen concentration is set based on results of outlet oxygen concentration) (see pg. 5, 3rd paragraph), and, after the measured value by the second measuring means becomes within the second range, stops the second additive amount control to start the first additive amount control (see pg. 5, 5th paragraph).
Allowable Subject Matter
Claim 8 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.
The following is a statement of reasons for the indication of allowable subject matter: Claim 8 contains limitations that are not disclosed, and would not have been obvious in view of the prior art. Specifically Sugawara does not teach “the first volume control is initiated at a predetermined timing” after hydrogen is excessively added. It would not have been obvious to modify the method of Sugawara to initiate the first addition volume control (interpreted as the first additive control) after a predetermined timing because Sugawara teaches that the change in control methods is based on relative inlet and outlet concentrations, not set time periods and there is no motivation to replace the concentration measurements with times.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 9/2/2026
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