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 .
Status of Claims
2. Claims 1-20 are pending and currently under consideration for patentability under 37 CFR 1.104.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 13 is 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.
Claim 13, lines 1-2 recite “wherein the electrical charge storage component is selected from the group consisting of: an air gap switch and a transformer” which is confusing because claim 6 already recites “wherein the electrical charge storage component comprises a capacitor and at least one of an air gap switch or a transformer” (see lines 9-11). Is claim 13 attempting to remove claim 6’s requirement for a capacitor? If not, then claim 13 does not appear to be further defining the invention of claim 6, as claim 6 already requires the electrical charge storage component to have an air gap switch or transformer.
Claim Rejections - 35 USC § 102
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 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) 6 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goriachev et al. (5,464,513).
Regarding claim 6, Goriachev discloses an electrical discharge irrigation device (Fig. 1, an electrical charge arcs between anode 22 and cathode 30, in a tube with a stream of water), comprising: a power source (pulse power system 50, Fig. 1; which includes a 120-volt power line 62, Fig. 4) to produce a first voltage (“1,500-volt, 1,100-amp pulse from discharge capacitor 54” see col. 4, lines 4-11 and Fig. 4); a circuit (Fig. 4) coupled to the power source to convert the first voltage to a second voltage (pulse transformer 58 must be capable of producing a 40,000-volt, 30-amp pulse at anode 22, based on a 1,500-volt, 1,100-amp pulse from discharge capacitor 54” see col. 4, lines 4-14 and Fig. 4), wherein the second voltage is higher than the first voltage (40,000-volt is higher than 1,500-volt); a switch to activate the circuit (“semiconductor switch 56 must receive a triggering signal from electronics timing board 60” see col. 4, lines 11-15 and Fig. 4); an igniter (discharge capacitor 54, Fig. 4; see col. 4, lines 15-18) coupled to the circuit (Fig. 4) to produce a spike (to produce a high energy electrical arc, see col. 4, lines 7-18); an electrical charge storage component (the storage component is considered the discharge capacitor 54 together with the transformer 58, Fig. 4) coupled to the igniter (operably coupled via the electrical connections depicted in the circuit of Fig. 4) with the electrical charge storage component becoming conductive and storing an electrical charge and producing a high voltage spike to discharge into a conductive solution (anode and cathode create an arc therebetween, into the flow of water as seen in Fig. 1; see col. 3, lines 57-62; this is from the discharge capacitor 54 together with transformer 58, see col. 4, lines 7-18), wherein the electrical charge storage component comprises a capacitor (discharge capacitor 54) and at least one of an air gap switch or a transformer (transformer 58, Fig. 4); and a reservoir (volume module 12, Fig. 1) coupled (operably) to the electrical charge storage component to store the conductive solution (water flows through the volume module 12, see Fig. 1) with an inlet (intake port 16, Fig. 1) and an outlet (discharge port 18, Fig. 1), wherein the conductive solution (water) enters the device through the inlet and exits the device through the outlet (see Fig. 1).
Regarding claim 11, Goriachev discloses wherein the discharge into a conductive solution (water) comprises at least one of UV radiation, hydrated electrons, OH radicals, H2O2, nanoparticles, and positive ions (“molecules of water proximate to the discharge area are broken down into excited radicals, including hydroxyl ions and free oxygen, which combine with organic chemicals to eliminate them from the water stream.” See col. 2, lines 25-30; “the arc itself generates high levels of ultraviolet radiation which is destructive of many living organisms found in water streams” see col. 2, lines 58-60; “the electrical discharge breaks down the water itself into hydrated electrons, ions, and excited free radicals, including H, OH, HO.sub.2, and O.sup.+. These radicals directly attack the bacteria and viruses and then combine with the organic chemicals to eliminate them, similar to the previously mentioned hydrogen peroxide and ozone injection systems” see col. 2, line 67 through col. 3, line 5).
Regarding claim 12, Goriachev discloses wherein the conductive solution comprises at least one of saline solution, water, and glutaraldehyde (water, see Fig. 1).
Regarding claim 13, Goriachev discloses wherein the electrical charge storage component is selected from the group consisting of: an air gap switch and a transformer (transformer 58, Fig. 4).
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 1-5 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,898,705.
Although the claims at issue are not identical, they are not patentably distinct from each other.
For example, the claim language of instant claim 1 is fully disclosed by claim 1 of U.S. Patent No. 10,898,705. The only distinction is that instant claim 1 is broader because it omits “such that an acoustical shock wave exits the device through the perforated insulating material.”
Instant claim 2 is disclosed by claim 2 of U.S. Patent No. 10,898,705.
Instant claim 3 is disclosed by claim 3 of U.S. Patent No. 10,898,705.
Instant claim 4 is disclosed by claim 4 of U.S. Patent No. 10,898,705.
Instant claim 5 is disclosed by claim 5 of U.S. Patent No. 10,898,705.
Furthermore, the claim language of instant claim 14 is fully disclosed by claim 6 of U.S. Patent No. 10,898,705. The only distinction is that instant claim 14 recites that the “first electrode … discharges the electrical charge as a spark into the conductive solution” while claim 6 of U.S. Patent No. 10.898,705 recites “discharging the electrical charge as a spark into the conductive solution” without specifying that the first electrode performs the discharging. Specifying the electrode as the structure that performs the discharging does not patentably distinguish the claims.
Instant claim 15 is disclosed by claim 7 of U.S. Patent No. 10,898,705.
Instant claim 16 is disclosed by claim 8 of U.S. Patent No. 10,898,705.
Instant claim 17 is disclosed by claim 9 of U.S. Patent No. 10,898,705.
Instant claim 18 is disclosed by claim 10 of U.S. Patent No. 10,898,705.
Instant claim 19 is disclosed by claim 11 of U.S. Patent No. 10,898,705.
Instant claim 20 is disclosed by claim 12 of U.S. Patent No. 10,898,705.
Claims 6-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-17 of U.S. Patent No. 12,115,364.
Although the claims at issue are not identical, they are not patentably distinct from each other.
For example, the claim language of instant claim 6 is fully disclosed by claim 13 of U.S. Patent No. 12,115,364, except instant claim 6 recites “a switch to activate the circuit” while claim 9 of U.S. Patent No. 12,115,364 (which claim 13 depends upon) recites “a trigger to activate the circuit.” Reciting a switch instead of a trigger is not a patentable distinction, as they are known equivalents. Furthermore, instant claim 6 omits limitations present in patented claim 9, such as: “the reservoir further comprises a first electrode, the first electrode receives the electrical charge from the electrical charge storage component.” Thus, instant claim 6 is a broader version of patented claim 13.
Instant claim 7 is rejected based upon its dependence from claim 6.
Instant claim 8 is obvious over claim 12 of U.S. Patent No. 10,898,705.
Instant claim 9 is rejected based upon its dependence from claim 6.
Instant claim 10 is obvious over claim 14 of U.S. Patent No. 10,898,705.
Instant claim 11 is rejected based upon its dependence from claim 6.
Instant claim 12 is rejected based upon its dependence from claim 6.
Instant claim 13 is disclosed by claim 13 of U.S. Patent No. 10,898,705.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Miesner et al. (DE 10 2004 040 045 B3) discloses a related irrigation device with electrodes delivering pulsed alternating current.
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/CHRISTOPHER E MILLER/Examiner, Art Unit 3785
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