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.
Claim 3 contains the trademark/trade name of various form of bleaching earth. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe brand names of bleaching earth and, accordingly, the identification/description is indefinite.
The term “hard-to-treat” in claim 6 is a relative term which renders the claim indefinite. The term “hard-to-treat” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This effects all dependent claims 7-13.
The term “mild” in claim 12 is a relative term which renders the claim indefinite. The term “mild” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of this office action any pressure below exactly standard room standard pressure is considered to meet the limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 13 recites the broad recitation 100 mbar or less and the claim also recites 60 mbar or less which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3 and 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Draese et al (US 2020/0238195 A1) and Jenkins et al (2011/0123474 A1).
Draese teaches a method of filtering oil, see abstract and title.
The feedstock is used vegetable oils (p 19).
This undergoes a vacuum cleaning process at 60C to 200C with an absorbent filter. The vacuum conditions include down to 0 mbar pressure, see p 6. The filter is made of perlite, bleaching earth, or a combination thereof, see p 18. The oil undergoes pre-treatment, this is vaporization, see p 21-23.
The reactor has several heated parts, and a such one of these parts may be considered pre-heating. See p 20.
In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946), and MPEP 2144.05.
The oil is then separated after cleaning. This constitutes the removal of the adsorbent. The oil contacting the filter constitutes adding the adsorbent. Also see claim 1.
Draese does not specifically state the mixture ratio of perlite and bleaching earth.
Jenkins teaches a clay mixture absorbent, see abstract. The composition is used for adsorption and filtration and cleaning of things, see p 101-108.
Examples use 1-15% expanded perlite with 75-99% of the other clay constituent. See p 67-69. The other clay material may be Fuller’s earth, see p 29. Fuller’s earth is a bleaching earth.
It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to use the earth/ expanded perlite amount as found in Jenkins in the invention of Draese. Draese already calls for use of this combination, and the amount found in Jenkins is effective at being an adsorbent and filter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
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/FRANCIS C CAMPANELL/
Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
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