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.
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 1-9 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.
For claim 1, the term “VOC” is an acronym which is not defined within the claim. Appropriate correction is required.
Claims 2-9 depend from claim 1.
Claim Rejections - 35 USC § 103
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-3 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Baker US 2008/0047436 in view of Lee et al. US 2009/0282984.
For claim 1, the Baker reference discloses a VOC removal method comprising: adsorbing a VOC contained in a process gas by passing the process gas through an adsorption zone of a VOC adsorption rotor (paragraph [0017]) that includes a cellular structure supporting an adsorbent to adsorb a WOC (paragraph [0016]); desorbing the VOC adsorbed in the adsorption zone by heating the cellular structure by passing current through the cellular structure in a desorption zone of the VOC adsorption rotor and passing a gaseous substance through the desorption zone of the VOC adsorption rotor (paragraph [0017]); and cooling the cellular structure heated in the desorption zone in a cooling zone of the VOC adsorption rotor (the adsorption blocks after 12A). The reference does not disclose wherein the cellular structure is made of metal.
The Lee et al. reference discloses the cellular structure is made of metal and coated with activated carbon fiber (paragraph [0020]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Baker reference to include the cellular structure is made of metal and coated with activated carbon fiber (Lee et al. paragraph [0020]) so as to allow for high thermal energy storage as well as well as VOC adsorption. Further the courts have held it to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
For claim 2, the Baker in the desorption zone, the current is passed through the cellular structure by applying a voltage to the cellular structure (paragraph [0017]).
For claim 3, the Baker reference discloses in the desorption zone, the voltage is applied to the cellular structure from each outer side portion of the VOC adsorption rotor in a direction in which a rotational axis of the VOC adsorption rotor extends (figure 3, object2 18 and 14).
For claim 6, the Baker reference discloses the process gas is passed through the adsorption zone by being blown with a first blowing device (paragraph [0031]). To note the process gas is moving therefore “a first blowing device” is present.
For claim 7, the Baker reference discloses the gaseous substance is passed through the desorption zone by being blown with a second blowing device (figure 3 object 16 and paragraph [0033]). To note the gaseous substance is moving and therefore “a second blowing device” is present.
For claim 8, the Baker reference does not disclose a gaseous substance for cooling the cellular structure is blown to the cooling zone by a third blowing device.
The Lee et al. reference discloses a gaseous substance for cooling the cellular structure is blown to the cooling zone by a third blowing device (paragraphs [0077] and [0078]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the Baker reference to disclose a gaseous substance for cooling the cellular structure is blown to the cooling zone by a third blowing device (Lee e tal. paragraphs [0077] and [0078]) so as to effectively cool the adsorption medium so the adsorption operation can be performed easily.
For claim 9, comprising rotating the VOC adsorption rotor such that adsorption and desorption of the VOC contained in the process gas is performed repeatedly (paragraph [0030]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker US 2008/0047436 and Lee et al. US 2009/0282984 as applied in claim 1 and further in view of Makino et al. US 2012/0024158.
For claim 4, the Baker reference discloses the voltage is applied to a pair of contacts respectively located at each outer side portion of the VOC adsorption rotor in the direction in which the rotational axis of the VOC adsorption rotor extends, the pair of contacts being positioned in contact with the VOC adsorption rotor (paragraph [0033]). The reference does not disclose the pair of contacts being electrodes but does disclose “suitable electrical contacts”.
The Makino et al. reference discloses a pair of electrodes at either side of the adsorber (figure 9, objects 60 and 62).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Baker et al. by include a pair of electrodes (Makino et al. figure 9 objects 60 and 62) as electrodes “suitable electrical contacts” for adsorber systems.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker US 2008/0047436 and Lee et al. US 2009/0282984 as applied in claim 1 above and further in view of Tanahashi et al. US 7,207,123.
For claim 5, the Baker et al. reference discloses in a direction of rotation of the VOC adsorption rotor, the desorption zone occupies an angular range of 30° to 60° (paragraphs [0028] and [0031]). The courts have held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The reference does not disclose, the adsorption zone occupies an angular range of 230° to 270°, and the cooling zone occupies an angular range of 30° to 60°.
The Lee et al. reference discloses distinct zones for each of the adsorption, desorption and cooling zones but does not explicitly state the ranges. While the figures are not to scale it appears that the cooling zone and desorption zone occupy an angular range of 30° to 60° (figure 4).
Similarity the Tanahashi et al. reference discloses distinct zones for each of the adsorption, desorption and cooling zones but does not explicitly state the ranges. While the figures are not to scale it appears that the cooling zone and desorption zone occupy an angular range of 90°, while the adsorption zone occupies approximately 180° (figure 3).
It would have been obvious to one having ordinary skill in the art to have modified the Baker et al. reference to include distinct zones for each of the adsorption, desorption and cooling zones (Lee et al. figure 4 and Tanahashi et al. figure 3) so as to adsorb VOCs while also regenerating the adsorber and preparing the adsorber for further adsorbing.
Further the Lee et al. and Tanahashi et al. references disclose there is a wide range of angular ranges that can be used for each zone. As would be recognized by one having ordinary skill in the art, choosing a range would be a matter of design choice to have an apparatus and process with a desired amount of adsorption, regeneration and cooling (Lee et al. paragraphs [0076] and [0077]). Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Baker to include the adsorption zone occupies an angular range of 230° to 270°, and the cooling zone occupies an angular range of 30° to 60° it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Double Patenting
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 7 and 10-14 of copending Application No. 18/960146 (‘146).
Claims 1 and 9 of the current application corresponds to claims 1 of ‘146. While it is acknowledged that current claim 1 is the method and claim 1 of ‘146 is the apparatus, the method of using the apparatus for it’s intended purpose would be well within the level of ordinary skill in the art.
Claim 2 of the current application
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBER ROSE ORLANDO whose telephone number is (571)270-3149. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AMBER ROSE ORLANDO
Primary Examiner
Art Unit 1731
/AMBER R ORLANDO/ Primary Examiner, Art Unit 1731
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