DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 02/06/2026 without traverse of Group I, claims 1, 3-7, 9, 22 & 24-27 for further examination. Claims 10, 14-19 & 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. 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
3. The information disclosure statement (IDS) submitted on 09/26/2024 is being considered by the examiner.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1, 3-7 & 9 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 applicant regards as the invention.
As regards to claim 1, lines 13-14 recite the limitation “the mixture of water and treatment”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the mixture of water and treatment” as “the mixture of water and treatment fluid” recited in lines 8-9. To correct this problem, amend lines 13-14 to recite “the mixture of water and treatment fluid”.
As regards to claim 9, lines 2-3 recite the limitation “the fluid”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the fluid” as “the treatment fluid” recited in claim 1. To correct this problem, amend lines 2-3 to recite “the treatment fluid”.
As regards to claim 9, line 3 recites the limitation “the tank”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the tank” as “the water separation tank” recited in line 1. To correct this problem, amend line 3 to recite “the water separation tank”.
Claims 3-7 & 9 are rejected at least based on their dependency from claim 1.
Claim Rejections
6. 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.
7. 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 Rejections - 35 USC § 103
8. 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 of this title, 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.
9. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
10. Claims 1, 3-7, 22 & 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Chaala et al. (US 20100143737 A1) hereinafter Chaala in view of Case (US 3,567,573) hereinafter Case (the terminology of the claims in the application is used, but the references of Chaala and Case are included between parentheses).
Regarding claims 1 & 22, the recitation “to a temperature less than one hundred degrees Celsius”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Chaala since Chaala meets all the structural elements of the claim and is capable of heating the treatment fluid within the pressure tank to a temperature less than one hundred degrees Celsius, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claims 1 & 22, Chaala discloses system for treating wood (abs; fig 1), comprising:
a pressure tank (14) configured for receipt of wood (12) for treatment ([0027]-[0029]; fig 1);
a storage tank (20) configured for containing a treatment fluid (16), the storage tank (20) in fluid communication with the pressure tank (14) such that the treatment fluid (16) is flowable from the storage tank (20) to the pressure tank (14) ([0027]-[0029]; fig 1);
a heater (26) capable of heating the treatment fluid (16) within the pressure tank (14) to a temperature less than one hundred degrees Celsius ([0027]-[0029]; fig 1); and
a water separation tank (38) in fluid communication with the pressure tank (14) such that a mixture of water and treatment fluid (16) are flowable from the pressure tank (14) to the water separation tank (38), the water separation tank (38) comprising a bottom wall (see fig 1), a first outlet ((outlet of clm 22) see fig 1, waste water outlet of 38), and a second outlet (see fig 1, outlet from 38-20), the bottom wall (see fig 1) sloped towards the first outlet ((outlet of clm 22) see fig 1, waste water outlet of 38), the second outlet (see fig 1, outlet from 38-20) positioned at a same height as the first outlet ((outlet of clm 22) see fig 1, waste water outlet of 38) along a vertical direction, the water from the mixture of water and treatment fluid (16) is flowable out of the water separation tank (38) through the first outlet ((outlet of clm 22) see fig 1, waste water outlet of 38), and the treatment fluid (16) of the mixture of water and treatment fluid (16) is flowable out of the water separation tank (38) through the second outlet (see fig 1, outlet from 38-20), the second outlet (see fig 1, outlet from 38-20) in fluid communication with the storage tank (20) such that the treatment fluid (16) is flowable from the water separation tank (38) to the storage tank (20) ([0027]-[0029; fig 1), however Chaala does not disclose the bottom wall sloped towards the first outlet, the second outlet positioned above the first outlet along a vertical direction.
Case discloses system for treating wood pulp (abs; fig 1), comprising a water separation tank (13) in fluid communication with a tank (10) such that a mixture of water and treatment fluid are flowable from the tank (10) to the water separation tank (13), the water separation tank (13) comprising a bottom wall (20), a first outlet (21), and a second outlet (at 27), the bottom wall (20) sloped towards (see fig 1) the first outlet (21), the second outlet (at 27) positioned above the first outlet (21) along a vertical direction (see fig 1), the water from the mixture of water and treatment fluid is flowable out of the water separation tank (13) through the first outlet (21), and the treatment fluid of the mixture of water and treatment is flowable out of the water separation tank (13) through the second outlet (at 27), the second outlet (at 27) can be in fluid communication with a storage tank such that the treatment fluid is flowable from the water separation tank (13) to the storage tank (col 3, ln 8-col 6, ln 2; fig 1). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include wherein the bottom wall is sloped towards the first outlet with the second outlet positioned above the first outlet along a vertical direction in the system of Chaala, because Case teaches the use of a water separation tank (13) in fluid communication with a tank (10) such that a mixture of water and treatment fluid are flowable from the tank (10) to the water separation tank (13), the water separation tank (13) comprising a bottom wall (20), a first outlet (21), and a second outlet (at 27), the bottom wall (20) sloped towards (see fig 1) the first outlet (21), the second outlet (at 27) positioned above the first outlet (21) along a vertical direction (see fig 1), the water from the mixture of water and treatment fluid is flowable out of the water separation tank (13) through the first outlet (21), and the treatment fluid of the mixture of water and treatment is flowable out of the water separation tank (13) through the second outlet (at 27), the second outlet (at 27) can be in fluid communication with a storage tank such that the treatment fluid is flowable from the water separation tank (13) to the storage tank allows a resultantly stronger and relatively hot black wash liquor flows outwardly through the screens 27 to the delivery line 28 so as to recover both the heat and chemicals taken on thereby in movement through the zone 19' (col 4, ln 65-col 5, ln 25).
As regards to claims 3 & 24, Chaala discloses a system for treating wood (12) (abs; fig 1), further comprising a recovery line (see fig 1, outlet lines from top + bottom of 14) and a recovery pump (32), the recovery line (see fig 1, outlet lines from top + bottom of 14) extending between the pressure tank (14) and the water separation tank (38), the recovery pump (32) coupled to the recovery line (see fig 1, outlet lines from top + bottom of 14), the recovery pump (32) operable to flow the mixture of water and treatment fluid (16) from the pressure tank (14) to the storage tank (20) through the recovery line (see fig 1, outlet lines from top + bottom of 14) ([0027]-[0029; fig 1), however Chaala does not disclose the recovery pump (32) operable to flow the mixture of water and treatment fluid (16) from the pressure tank (14) to the water separation tank (38).
Although Chaala does not explicitly disclose the claimed additional recovery pump, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the system of Chaala to have the additional recovery pump recited in the claim to accommodate faster/more fluid flow and is therefore is not expected to alter the operation of the device in a patentably distinct way.
Therefore before the effective filing date of the invention, to one of ordinary skill in the art it would have been an obvious matter of design choice to add an additional pump in Chaala since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 1 93 USPQ 8.
As regards to claims 4 & 25, Chaala discloses a system for treating wood (12) (abs; fig 1), further comprising a supply line (see fig 1, line from 20 to 14) and a supply pump (24), the supply line (see fig 1, line from 20 to 14) extending between the storage tank (20) and the pressure tank (14), the supply pump (24) coupled to the supply line (see fig 1, line from 20 to 14), the supply pump (24) operable to flow the treatment fluid (16) from the storage tank (20) to the pressure tank (14) through the supply line (see fig 1, line from 20 to 14) ([0027]-[0029; fig 1).
As regards to claims 5 & 26, Chaala discloses a system for treating wood (12) (abs; fig 1), further comprising a water removal system (36) separate from the water separation tank (38), the water removal system (36) operable to condense and remove water from the treatment fluid (16) via sending to waste water outlet, the water removal system (36) comprising a vacuum condenser ([0027]-[0029; fig 1).
As regards to claims 6 & 27, Chaala discloses a system for treating wood (12) (abs; fig 1), wherein the storage tank (20) comprises an agitator (18) operable to agitate (see fig 1, adding fluid creates agitation/disturbance/waves in 20) the treatment fluid (16) within the storage tank (20) ([0027]-[0029; fig 1).
As regards to claim 7, Chaala discloses a system for treating wood (12) (abs; fig 1), wherein a volume of the water separation tank (38) can be measured in liters; and a volume of the storage tank (20) can be measured in liters ([0027]-[0029; fig 1), however Chaala does not disclose volume of the water separation tank (38) is no less than two thousand liters and no greater than twenty thousand liters; and a volume of the storage tank (20) is no less than twenty-five thousand liters and no greater than three hundred thousand liters.
Although Chaala does not explicitly disclose the claimed volumes, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the system of Chaala to have the volumes recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the volumes (relative dimensions/sizes) is/are considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the relative dimensions/sizes of the volumes.
Where the only difference between the prior art and the claims is a recitation of relative dimensions/sizes of the claimed device and a device having the claimed relative dimensions/sizes would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
11. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Chaala in view of Case as applied to claim 1 above and further in view of Lv et al. (US 20230406728 A1) hereinafter Lv (the terminology of the claims in the application is used, but the references of Lv are included between parentheses).
As regards to claim 9, Chaala discloses a system for treating wood (12) (abs; fig 1), the water separation tank (38) ([0027]-[0029; fig 1), however Chaala does not disclose a sparge system configured for passing one or both of air and nitrogen through the fluid in the tank to aid separation of the water and oil.
Lv discloses a treating system (abs; fig 1), comprising a sparge system configured for passing nitrogen through the fluid in the tank to aid separation of the different chemicals/liquids ([0011]; [0046]; [0065]; [0075]). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include a sparge system configured for passing one or both of air and nitrogen through the fluid in the tank to aid separation of the water and oil in the system of Chaala, because Case teaches the use of a sparge system configured for passing one or both of air and nitrogen through the fluid in the tank to aid separation of the different chemicals/liquids for backwashing, so as to fully fluidize a granular bed of the fluidized bed separator to a boiling state ([0011]; [0046]).
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights