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 claims 1-40 in the reply filed on 07 JULY 2026 is acknowledged.
Claim 41 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07 JULY 2026.
Claim Interpretation
Independent claims 1-20 and independent claims 21-40 are identical, with the exclusion of the reference to the overall apparatus as a “device” in claims 1-20 or as a “system” in claims 21-40. The identical claims will be addressed together below.
Claim Objections
Claims 19 and 39 are objected to because of the following informalities:
In Claim 19, “The system of claim 18 further” in line 1 of the claim is missing a comma and should read “The system of claim 18, further”.
In Claim 19, “conditioned water” in line 2 of the claim should read “the conditioned water”.
In Claim 39, “The system of claim 38 further” in line 1 of the claim is missing a comma and should read “The system of claim 38, further”.
In Claim 39, “conditioned water” in line 2 of the claim should read “the conditioned water”.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9, 14-19, 21-29, and 34-39 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Collins et al, United Kingdom Patent Application No. GB 2430196 A (hereinafter Collins).
Regarding Claims 1 and 21, Collins discloses a course filter that protects membranes from fouling (i.e., a system/device for reducing biofouling; Fig. 1, #2) for a filtration system (i.e., in a water system, the system/device comprising; Page 10, Lines 10-13; Fig. 1)
wherein the coarse filter is a clarifier (i.e., a contained water feature) that is open to the body of water (i.e., positioned within an open water environment) and contains settling tubes (i.e., wherein the contained water feature comprises one or more permeable or nonpermeable walls separating a volume of water from the open water environment) that are arranged to remove mineral and organic particulates (i.e., so as to form contained water within the contained water feature; Page 10, Lines 14-22),
wherein the settling tubes having an anti-fouling coating (i.e., one or more structures positioned in the contained water within the contained water feature, wherein each of the one or more structures defines a shape; Page 10, Lines 14-22)
such as a copper-laden anti-fouling coating for controlling biofouling (i.e., wherein each of the one or more structures includes a biocide thereon that contacts the contained water in the contained water feature to aid in forming conditioned water within the contained water feature; Page 11, Lines 18-30)
wherein the fine filter is provided downstream of the course filter (i.e., wherein at least some of the conditioned water from the contained water feature is provided to the water system for use therein; Page 13, Lines 12-17) and the flow through the settling tubes can be sufficiently low to ensure a high percentage of minerals and denser than water organic particles do not contribute to load on the fine filter (i.e., the conditioned water staying within the contained water feature for a dwell time prior to entering the water system; Page 10, Lines 23-27).
Furthermore, the limitation “positioned within an open water environment” and “the conditioned water staying within the contained water feature for a dwell time prior to entering the water system” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115. The Examiner has addressed the limitations in the event that Applicant positively recites the limitations as structural requirements.
Regarding Claims 2 and 22, the limitation “wherein the dwell time is an average amount of time a molecule of water spends within the contained water feature between entering the contained water feature and exiting from the contained water feature” is simply a definition of dwell time and does not add any limitations to the apparatus.
Furthermore, the limitation “wherein the dwell time is an average amount of time a molecule of water spends within the contained water feature between entering the contained water feature and exiting from the contained water feature” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Regarding Claims 3 and 23, the limitation “wherein the dwell time is determined based on a size of the volume of the contained water feature divided by an average flow rate through the contained water feature over a period of an hour during operation of the water system” is simply a definition of dwell time and does not add any limitations to the apparatus.
Furthermore, the limitation “wherein the dwell time is determined based on a size of the volume of the contained water feature divided by an average flow rate through the contained water feature over a period of an hour during operation of the water system” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Regarding Claims 4 and 24, the limitation “wherein the dwell time is within a range of 1 minute to 6 hours” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Regarding Claims 5 and 25, the limitation “wherein the dwell time is 1 minute or less” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Regarding Claims 6 and 26, the limitation “wherein the dwell time is greater than 6 hours” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115.
Regarding Claims 7 and 27, Collins further discloses that the coarse filter is a clarifier that is arranged to remove mineral and organic particulates (i.e., wherein a first water chemistry of water in the open water environment is different than a second water chemistry of the contained water within the contained water feature; Page 10, Lines 14-22).
Regarding Claims 8 and 28, Collins further discloses that the coarse filter is a clarifier that is arranged to remove mineral and organic particulates such as sand (i.e., wherein the first water chemistry is different than the second water chemistry by having at least one difference of a water chemistry characteristic, wherein the water chemistry characteristic is one of silica; Page 10, Lines 14-22).
Regarding Claims 9 and 29, Collins further discloses that the tubes are in the form of sheets made from composite polymeric materials (i.e., wherein the each of the one or more structures comprises a 3-dimensional flexible material selected from the group consisting of natural and synthetic sheets; Page 11, Lines 18-30).
Regarding Claims 14 and 34, Collins further discloses wherein the coarse filter is open to the body of water (i.e., wherein the one or more permeable or nonpermeable walls comprises a permeable wall that enables free flow of water from the open water environment into the contained water of the contained water feature; Page 10, Lines 14-22).
Regarding Claims 15 and 35, Collins further discloses that the reverse osmosis plant is located at or near a seabed (i.e., wherein the open water environment is sea water; Page 11, Lines 1-17).
Furthermore, the limitation “wherein the open water environment is fresh water or sea water” is directed toward a manner or method by which the invention is used and is not subject to patentability. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and thus holds no patentable weight. See MPEP §2115. The Examiner has addressed the limitations in the event that Applicant positively recites the limitations as structural requirements.
Regarding Claims 16 and 36, Collins further discloses that the desalination plant is floating in the body of water (i.e., wherein the one or more permeable or nonpermeable walls are configure to float in the open water environment; Page 18, Lines 27-32).
Regarding Claims 17 and 37, Collins further discloses that the desalination plant is submerged at a depth to take advantage of the hydrostatic head pressure (i.e., wherein the one or more permeable or nonpermeable walls are configured to be fully submerged in the open water environment; Page 18, Lines 27-32).
Regarding Claims 18 and 38, Collins further discloses that the reverse osmosis plant is located at or near a seabed (i.e., wherein the one or more permeable or nonpermeable walls are positioned adjacent a bottom of the open water environment such that a portion of a water column of the open water environment is above the contained water feature; Page 11, Lines 1-17).
Regarding Claims 19 and 39, Collins further discloses that the coarse filter is preferably located upstream of a circulation pump which draws high salinity water from the open body of water and through the coarse filter (i.e., further comprising an inlet suction pipe configured to draw the conditioned water from the contained water for providing to the water system such that additional water is drawn into the contained water of the contained water feature through the permeable wall; Page 10, Lines 14-22).
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.
Claims 10-13, 20, 30-33, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Collins et al, United Kingdom Patent Application No. GB 2430196 A (hereinafter Collins) as applied to claims 1 and 21 above, and further in view of Eyster et al, US Patent Application No. US 20130337201 A1 (hereinafter Eyster).
Regarding Claims 10 and 30, Collins further teaches that a net may be disposed across the tube upstream ends for the prevention of marine animal ingress (Page 13, Lines 4-11).
Collins does not teach wherein the each of the one or more structures is a ball.
However, Eyster teaches that the antifouling structure (Fig. 4) can be can be formed in a sheet (Paragraph 0058) that contains microcapsules (i.e., wherein the each of the one or more structures is a ball; Fig. 7B, #58) and attached via loop and hook type fasteners (Fig. 7A, #62, 64; Paragraph 0061) for the purpose of easy removal (Paragraph 0067) and can be made to be biodegradable (Paragraph 0059).
Eyster is analogous to the claimed invention because it pertains to anti-biofouling structures to be placed onto surfaces or structures exposed to aquatic environments (Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the coating as taught by Collins with the anti-fouling structure as taught by Eyster because one of ordinary skill in the art would be able to remove and replace the structure when the biocide has all diffused out or has been damaged or has been biodegraded.
Regarding Claims 11 and 31, Collins further teaches that a net may be disposed across the tube upstream ends for the prevention of marine animal ingress (Page 13, Lines 4-11).
Collins does not teach wherein the each of the one or more structures is a strip.
However, Eyster teaches that the antifouling structure (Fig. 4) can be can be formed in a sheet (Paragraph 0058) and/or strips (i.e., wherein the each of the one or more structures is a strip; Fig. 7A, #54) and attached via loop and hook type fasteners (Fig. 7A, #62, 64; Paragraph 0061) for the purpose of easy removal (Paragraph 0067) and can be made to be biodegradable (Paragraph 0059).
It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the coating as taught by Collins with the anti-fouling structure as taught by Eyster because one of ordinary skill in the art would be able to remove and replace the structure when the biocide has all diffused out or has been damaged or has been biodegraded.
Regarding Claims 12 and 32, Collins further teaches the tube walls have an anti-fouling coating (i.e., wherein each of the one or more structures is attached to one of the one or more nonpermeable walls; Page 11, Lines 18-30) that a net may be disposed across the tube upstream ends for the prevention of marine animal ingress (i.e., wherein each of the one or more structures is attached to one of the one or more permeable walls; Page 13, Lines 4-11).
Regarding Claims 13 and 33, Eyster further teaches that the anti-biofouling structure (Fig. 7A, #50) is attached via loop and hook type fasteners (Fig. 7A, #62, 64; Paragraph 0061), which are shown to be located on only two ends of the fabric (i.e., wherein at least one of the one or more structures is attached to the one of the one or more permeable or nonpermeable walls such that at least one end of the at least one of the one or more structures is movable within the contained water in a loose manner), for the purpose of easy removal (Paragraph 0067).
Regarding Claims 20 and 40, Collins further teaches that a net may be disposed across the tube upstream ends for the prevention of marine animal ingress (Page 13, Lines 4-11).
Collins does not teach wherein the one or more structures are replaceable within the contained water of the contained water feature.
However, Eyster teaches that the antifouling structure (Fig. 4) can be can be formed in a sheet (Paragraph 0058) and attached via loop and hook type fasteners (Fig. 7A, #62, 64; Paragraph 0061) for the purpose of easy removal (i.e., wherein the one or more structures are replaceable within the contained water of the contained water feature; Paragraph 0067) and can be made to be biodegradable (Paragraph 0059).
It would have been obvious to one of ordinary skill in the art at the time of filing the instant claimed invention to modify the coating as taught by Collins with the anti-fouling structure as taught by Eyster because one of ordinary skill in the art would be able to remove and replace the structure when the biocide has all diffused out or has been damaged or has been biodegraded.
Conclusion
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/A.A.G./ Examiner, Art Unit 1772
/IN SUK C BULLOCK/ Supervisory Patent Examiner, Art Unit 1772
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