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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims in the reply filed on 01/16/2026 is acknowledged.
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 1-10 and 96-105 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. Specifically, claims 1 and 96 recite “wherein a voltage between the first plate and the second plate is generated based on the water in the water passage,” however, the manner in which a voltage between the first plate and the second plate is generated based on the water in the water passage is unclear. The as-filed specification describes the first plate and the second plate may form a thermoelectric cell ([0034], and further describes the first plate and the second plate are formed from dissimilar metals, and nanostructuring these materials produce a layered superlattice structure of alternating bismuth telluride and bismuth selenide applied to the first plate and/or the second plate; however, the manner in which a voltage between the first and second plates is generated based on the water in the water passage is unclear because each plate is a thermoelectric cell, and the interaction between the thermoelectric cells of each plate is unclear. Claims 2-10 and 97-105 are rejected due to their respective dependence on claims 1 and 96.
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.
Claims 1, 3-4, 6-10, 96, 98-99, and 101-105 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korea Institute of Civil Engineering and Building (KR102527203B1 – cited on 06/26/2025 IDS, see attached machine translation, hereinafter referred to as Korea Institute).
Regarding claim 1, Korea Institute discloses a fixture comprising: a passage
([0009] – sewer pipe); a first plate shaped according to a cross section of the passage and spaced at a first distance from the passage ([0030]; 120; Fig. 2); and a second plate shaped according to the cross section of the passage and spaced at a second distance from the water passage ([0030]; 140; Fig. 2).
With regard to the recitation “a plumbing fixture,” statements in the preamble
reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
Regarding the limitation “water passage,” it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
With regard to the limitation “configured to hold water,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
While Korea Institute does disclose the thermally conductive film (120) can generate a Seebeck effect due to a temperature difference between the wastewater heat recovered (or introduced) through the first thermally conductive material (110) and the thermal energy of the ambient temperature introduced from the outside of the sewer pipe (10) together with the second thermally conductive material (140), the limitation “wherein a voltage between the first plate and the second plate is generated based on the water in the water passage” is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 96, Korea Institute discloses an application comprising: a fixture
comprising a passage ([0009] – sewer pipe); a first plate shaped according to a cross section of the passage and spaced at a first distance from the passage ([0030]; 120; Fig. 2); and a second plate shaped according to the cross section of the passage and spaced at a second distance from the water passage ([0030]; 140; Fig. 2).
With regard to the recitation “a water consuming application,” statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
Regarding the limitations “plumbing fixture” and “water passage” it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Additionally, the limitations “plumbing fixture” and “water passage” are directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
With regard to the limitation “configured to hold water,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
While Korea Institute does disclose the thermally conductive film (120) can generate a Seebeck effect due to a temperature difference between the wastewater heat recovered (or introduced) through the first thermally conductive material (110) and the thermal energy of the ambient temperature introduced from the outside of the sewer pipe (10) together with the second thermally conductive material (140), the limitation “wherein a voltage between the first plate and the second plate is generated based on the water in the water passage” is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claims 3 and 98, Korea Institute discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the voltage between the first plate and the second plate is generated based on a difference between a temperature of the water in the water passage and an ambient temperature,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claims 4 and 99, Korea Institute discloses all the claim limitations as set forth above. Korea Institute further discloses a battery ([0044]).
With regard to the limitation “configured to store charge from the voltage between the first plate and the second plate,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claims 6 and 101, Korea Institute discloses all the claim limitations as set forth above. Korea Institute further discloses a controller ([0058],[0059]).
With regard to the limitation “configured to receive a user input and activate at least one electrical component from current induced from the voltage between the first plate and the second plate in response to the user input,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claims 7 and 102, Korea Institute discloses all the claim limitations as set forth above. Korea Institute further discloses an indicator ([0052],[0057]-[0059]).
With regard to the limitation “operable from current induced from the voltage between the first plate and the second plate,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claims 8 and 103, Korea Institute discloses all the claim limitations as set forth above. Korea Institute further discloses a conditioning circuit ([0048],[0049]).
With regard to the limitation “configured to regulate current induced from the voltage between the first plate and the second plate,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 9, Korea Institute discloses all the claim limitations as set forth above. Korea Institute further discloses a switch ([0050] - control unit).
With regard to the limitation “configured to activate at least one electrical component from current induced from the voltage between the first plate and the second plate,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 10, Korea Institute discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the water passage is connected to at least one of a toilet, a bidet, a shower, a lavatory, or a water heater,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
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 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.
Claims 2 and 97 are rejected under 35 U.S.C. 103 as being unpatentable over Korea Institute of Civil Engineering and Building (KR102527203B1 – cited on 06/26/2025 IDS, see attached machine translation, hereinafter referred to as Korea Institute) as applied to claims 1 and 96 above, in view of DeSteese et al. (US 2005/0139250).
Regarding claims 2 and 97, Korea Institute discloses all the claim limitations as set forth above.
Korea Institute does not explicitly disclose the first plate is formed from a first metal ([0033] discloses and the second plate is formed from a second metal.
DeSteese discloses flexible thermoelectric films ([0055],[0056]) and further discloses the films are formed from metals ([0056],[0060]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the thermally conductive films 120 and 140 of Korea Institute with metal, as disclosed by DeSteese, because as evidenced by DeSteese, the use of metal in a thermally conductive film of a thermoelectric device amounts to the use of known materials in the art for their intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when forming the thermally conductive films of Korea Institute with metal based on the teaching of DeSteese.
With regard to the limitation requiring the first plate is formed from a first metal and the second plate is formed from a second metal, the limitation does not require the first metal and the second metal to be different metals, therefore, the metal disclosed in modified Korea Institute satisfies the requirements of the limitation.
Claims 5 and 100 are rejected under 35 U.S.C. 103 as being unpatentable over Korea Institute of Civil Engineering and Building (KR102527203B1 – cited on 06/26/2025 IDS, see attached machine translation, hereinafter referred to as Korea Institute) as applied to claims 1 and 96 above, in view of Kirihara et al. (US 2014/0102501).
Regarding claims 5 and 100, Korea Institute discloses all the claim limitations as
set forth above.
While Korea Institute does disclose a radio ([0055],[0056]), Korea Institute does not explicitly disclose a wireless radio.
Kirihara discloses a thermoelectric conversion apparatus which applies power to a wireless transmission device ([0015]). Kirihara further discloses the wireless transmission device is operable to perform radio transmission ([0131]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the power generated by the thermoelectric device of Korea Institute to power a wireless transmission device operable to perform radio transmission, as disclosed by Kirihara, because as evidenced by Kirihara, the use of a thermoelectric device to power a wireless transmission device operable to perform radio transmission amounts to the use of a known component in the art for its intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when using the thermoelectric device of Korea Institute to power a wireless transmission device operable to perform radio transmission based on the teaching of Kirihara.
With regard to the limitation “operable from current induced from the voltage between the first plate and the second plate,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that recitations directed to the manner in which a claimed apparatus is intended to be used do not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Korea Institute of Civil Engineering and Building (KR102527203B1 – cited on 06/26/2025 IDS, see attached machine translation, hereinafter referred to as Korea Institute) as applied to claim 1 above, in view of Hall et al. (US 2009/0218264).
Regarding claim 10, Korea Institute discloses all the claim limitations as set forth
above.
While Korea Institute does disclose the use of heat generated from wastewater ([0002]), Korea Institute does not explicitly disclose the water passage is connected to at least one of a toilet, a bidet, a shower, a lavatory, or a water heater.
Hall discloses an application comprising a sewer pipe and a toilet ([0029]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to connect a toilet, as disclosed by Hall, to the sewer system of Korea Institute, because as evidenced by Hall, the use of a toilet and a sewer pipe in an application amounts to the use of known components in the art for their intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when connecting a toilet to the sewer system of Korea Institute based on the teaching of Hall.
Claims 104 and 105 are rejected under 35 U.S.C. 103 as being unpatentable over Korea Institute of Civil Engineering and Building (KR102527203B1 – cited on 06/26/2025 IDS, see attached machine translation, hereinafter referred to as Korea Institute) as applied to claim 96 above, in view of Hall et al. (US 2009/0218264).
Regarding claim 104, Korea Institute discloses all the claim limitations as set
forth above.
While Korea Institute does disclose the use of heat generated from wastewater ([0002]), Korea Institute does not explicitly disclose the application comprising at least one of a toilet or a bidet.
Hall discloses an application comprising a sewer pipe and a toilet ([0029]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a toilet, as disclosed by Hall, in the application of Korea Institute, because as evidenced by Hall, the use of a toilet and a sewer pipe in an application amounts to the use of known components in the art for their intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when including a toilet in the application of Korea Institute based on the teaching of Hall.
Regarding claim 105, Korea Institute discloses all the claim limitations as set
forth above.
While Korea Institute does disclose the use of heat generated from wastewater ([0002]), Korea Institute does not explicitly disclose the application comprising at least one of a showerhead or a faucet.
Hall discloses an application comprising a sewer pipe and a shower drain ([0032]; it is noted that the claim does not require a physical connection between components of the application, therefore, all components of the disclosed shower, including a showerhead, are considered to be part of the disclosed application).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a showerhead, as disclosed by Hall, in the application of Korea Institute, because as evidenced by Hall, the use of a shower drain and a sewer pipe in an application amounts to the use of known components in the art for their intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when including any component of a shower, including a showerhead, in the application of Korea Institute based on the teaching of Hall.
Conclusion
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/TAMIR AYAD/Primary Examiner, Art Unit 1726