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 .
Claim Interpretation
For purposes on continued examination, the Examiner wishes to clarify that the claims of the instant clams are to be given their broadest reasonable interpretation.
In claim 1, any form of monitoring will be sufficient to read on the claim of monitoring a surface level. The same is to be said with identifying the criterion utilized in the claims. There is no indication as to what this criterion is. Dependent claim 2 requires that the emptying criterion comprises a lower threshold of storage capacity, but doesn’t say what that capacity is. If a reference states that anything below a level line is an indication of a low level, then this will read on the claims.
It is also noted that claim 1 only states that refilling criterion and emptying criterion is identified, it never actively claims the acts of emptying or refilling the storage device. Under the broadest reasonable interpretation of these claims, a washing machine with a fiber based clothing and a bleach setting would read on the claims as written, as there would be an initial washing step, a draining step until no water is detected, and then a bleaching step added in a secondary washing/rinsing step.
It is recommended to actively claim the steps of the method instead of listing a series of conceptual actions that do not require being quantified or do not have actionable definitions.
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 5 and 19 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 claim 5, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 19, there is an inconsistency as to the increments of the storage. Claim 19 requires that the given rate is 20-50% of the storage in an hour. Claim 19 is dependent on claim 7 that introduces the variable of a given rate during an increment period. Claim 7 is dependent on claim 6 that states that the given increment corresponds to 0.1-5% of the storage capacity of the storage. It is unclear as to how the same increment can be 0.1-5% but also filled at a rate of 20-50% in that increment period time of one hour. Clarification is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) monitoring, identifying, and responding to the identifying of at least one criterion for controlling paper making. Each of the limitations of monitoring and identifying under their broadest reasonable interpretation cover limitation of the mind. Processes that observe, evaluate, and judge are abstract mental processes. This judicial exception is not integrated into a practical application because the only actionable step is for “starting to dose a biocide agent” without further detail or explanation. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the act of applying a biocide to a solution is common engineering practice. The claims do not have any effect on this step either as it is not based on any of the monitored or identified criterion. It is simply a well known step that occurs if one of the two criterion is met.
Further, the claim states that the action of adjusting one property only occurs "if" the indication occurs. Therefore, the claim contains a contingent limitation [MPEP 2111.04 (II)]. A contingent limitation cannot integrate into the claim if it does not occur.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 8-12, 14, 16-18, and 20 are rejected under 35 U.S.C. 102a1 as being anticipated by Kolari et al, US Patent Publication 2020/0299903.
Regarding claim 1, Kolari teaches a method for controlling paper making (see abstract), comprising monitoring a surface level of a fibrous suspension in a storage [0016-0017], and identifying that the surface level has decreased so that at least one emptying criterion is met [0021] and thereafter identifying that the surface level has increased so that at least one refilling criterion is met [0025], and responsively to the identifying that the surface level has increased so that the at least one refilling criterion is met [0026], starting to dose a biocide agent into the fibrous suspension entering the storage [0069].
Regarding claim 2, Kolari further teaches that wherein the at least one emptying criterion comprises that the surface level has decreased to a lower threshold of storage capacity of the storage [0036-0042].
Regarding claim 3, Kolari further teaches that wherein the lower threshold is dynamically defined as a decrement of the surface level of the storage capacity [0036-0042].
Regarding claim 4, Kolari further teaches that the lower threshold is adaptively defined based on previous measurements relating to microbial activity in the storage (figures 5 and [0029-0034]).
Regarding claim 5, Kolari further teaches that the previous measurements relating to microbial activity are based on one or more effects of degradation of the stored fibrous suspension, such as decreased pH and / or increased electrical conductivity (pH reduction [0032]).
Regarding claim 8, Kolari further teaches that the fibrous suspension comprises recycled fibres [0019].
Regarding claims 9-10 and 20, Kolari further teaches terminating the dosing of the biocide agent when the surface level meets a given terminating height threshold ([0069-0076 as described by pulsing the biocide during the processing steps of increased risks identified earlier as refilling stages after low amounts)].
Regarding claim 11, Kolari further teaches that the dosing is proportional to an amount of the fibrous suspension entering the storage (claims 11-12 and [0056]).
Regarding claim 12, Kolari further teaches quantifying anaerobic bacteria and adjusting the dosing accordingly (see claim 4 and [0053]).
Regarding claim 14, Kolari further teaches an apparatus comprising means for performing the method of claim 1 as shown by the towers int eh examples that can perform the methods (See examples).
Regarding claims 16-18, Kolari further teaches wherein the lower threshold corresponds to at least 30% of the storage capacity of the storage [0041].
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.
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) 6-7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kolari et al, US Patent Publication 2020/0299903.
Regarding claim 6, Kolari further teaches that the at least one refilling criterion comprises that the surface level has increased by a given increment from a cycle bottom surface level [0017 and 0024]; the cycle bottom surface level is a minimum surface level after meeting the at least one emptying criterion; and the given increment corresponds to 0.1 to 5 % of a storage capacity of the storage [0043].
Kolari further states that the measurements and level corrections can be calibrated in many ways [0043]. It is stated that the average artisan could determine these levels depending on the shape and size and type of tank being utilized [0043].
It would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the increments of the level management as taught by Kolari as the simple act of determining the levels is within the ability of the average artisan based on the starting devices being utilized to track the level increments in.
Regarding claim 7, Kolari further teaches that the at least one refilling criterion comprises that the surface level has increased with a given rate during an increment period [0037-0043].
Regarding claim 19, Kolari teaches the act of filling the storage tanks but does not specify explicitly a rate of at least 20-50% of the storage capacity per hour.
One of ordinary skill would have looked at the figures that shows the ebb and flow of the tower level (as presented in Figure 1). While the exact amount of the percentage change in one hour cannot be directly calculated, the figures depicting a change of 20% to around 80% in a steep almost vertical climb would have led the average artisan to understand that at least 20% of the storage capacity would be refilled in that one hour. It would have been obvious that the fill rate as shown in figure 1 would obviously read on the claimed refill rate.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kolari et al, US Patent Publication 2020/0299903 in view of Donofrio et al, USP 4,966,775.
Regarding claim 13, Kolari teaches the use of biocides, but is simply silent on any specific biocide to utilize.
In the same field of endeavor of treating pulp and paper systems with a biocide (see column 1), Donofrio teaches that a preferred biocide is hypochlorite (see abstract and all claims).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the specific biocide as taught by Donofrio in the Kolari method as the act of simply looking to see ethe conventional biocides when only the generic is provided is well within the ability of the average artisan.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kolari et al, US Patent Publication 2020/0299903 in view of Nagpal et al, US Patent Publication 2020/0209839
Regarding claim 15, Kolari remains as applied above but is silent on the method being run off of a non-transitory computer medium.
In the same field of endeavor of change the state of one or more pulp processing machines based on conditions (see claim 24), Nagpal teaches the use of a non-transitory computer readable medium to store and operate the instructions to run a method for pulp processing machines (see claims 17 and 24). It would have been obvious to utilize a non-transitory medium to hold and operate the system controls in a known and conventional manner as shown by Nagpal.
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 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/286144 and 16/770627 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both prior applications include all of the instantly claimed requirements and then additional limitations of the acts of determining the levels and operations for monitoring and applying the additives.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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