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 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.
Claims 31-40 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 the inventor or a joint inventor regards as the invention.
Instant claim 31 requires a controller configured to determine a state of a passive system and adjust an active system, but previously only requires either of the active or passive system (in the alternative), or combinations thereof. As such, the scope of the required system is unclear, i.e. whether both are required or one or the other may be employed alone; if the latter case, it is unclear how the controller is intended to be configured.
Claims 32-40 depend from claim 31 and due not cure the deficiency of claim 31.
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 31-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,913,692 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite substantially the same kind of membrane system with integrated, controlled cooling using the same logic, albeit with stricter limitations regarding the thermal capabilities of the membrane.
Instant claims 31 and 34 are anticipated by reference claim 1. Instant claims 32, 33, 35, and 36-40 match or overlap reference claims 2 and 7-13 respectively.
Instant claim 41 is anticipated by reference claim 21. Instant claims 42-47 match or overlap reference claims 22-27, respectively.
Instant claim 48 is anticipated by reference claim 32. Instant claims 50-52 are at minimum obvious over alternate embodiments e.g. reference claims 1-3. Instant claims 53 and 54 match reference claims 33 and 34, respectively.
Instant claim 55 is anticipated by reference claim 39. Instant claims 56 and 57 match reference claims 40 and 41, respectively. Claims 58-60 are at minimum obvious over alternate embodiments e.g. reference claims 23, 25, and 27.
Claims 31-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,140,355 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite substantially the same kind of membrane system with integrated, controlled cooling using the same logic, albeit with stricter limitations regarding the properties of the membrane.
The instant claims 30-60 correspond substantially to reference claims 1-30, respectively.
Allowable Subject Matter
See the prosecution history of the parent application, 18/141,316, in particular the CTNF dated 7/07/2023. The closest prior art regarding heat exchange functionality is taught by Baker (US 5,762,685 A), Hoadley (US 6,365,041 B1), and Fujita (US PGPub 2012/0152840 A1), which teach various embodiments of membrane devices including heat exchangers e.g. for pre-heating or pre-cooling e.g. to transfer heat between incoming feeds and outgoing process streams such as concentrate streams. However, the prior art alone or in combination does not teach of fairly suggest the specific controllers and their associated configuration required by the instant claims i.e. those configured to determine cooling performance of some elements in the system and, in response, adjust other elements of the system. While in general the concept of responsive temperature control is well-known in the art, the prior art does not teach or suggest active control in the claimed manner in systems which operate according to the claimed invention i.e. those which include active cooling associated with a membrane device as well as heat exchange between streams, and does not teach or fairly suggest actively adjusting those specific elements in response to changes in temperature, flowrate, and the like.
As such, claims 31-60 are free from the prior art. The double patenting and 112(b) rejections above must be properly overcome before any claims may be allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1776
Prosecution Insights