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 .
Claims Status
Claims 1-3 and 5-12 are pending.
Applicant’s arguments, filed 05/14/2026, with respect to 112 rejections have been fully considered and are persuasive. The rejections of claim 5-7 have been withdrawn.
Applicant’s arguments, filed 05/14/2026, with respect to the rejection(s) of claim(s) 1-12 under 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Goto et al. (JP 6582150 B1, provided with IDS).
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1-3 and 5-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsushima et al. (US 20190352786 A1) in view of Goto et al. (JP 6582150 B1, provided with IDS).
Considering claim 1, Mitsushima discloses an organic compound production device including an anode electrode and a cathode electrode to produce an organic compound [0011], wherein water accumulated in a lower part of a catholyte fed from the cathode electrode is sent to an anolyte supplied to the anode electrode ([0029] and fig. 1). Mitsushima further discloses that in the separation tank 36, hydrogen gas as a by-product, the anolyte flowing into the cathode 120 side via the electrolyte membrane 110, or the like is separated from the mixture of the organic hydride and the hydrogenation target substance [0030].
Mitsushima is silent about the process of the organic compound production being operated by a control device.
Mitsushima does not disclose the control device is structured to detect an interface between the catholyte and the water and switch between a state in which transfer of the water to the anolyte is permitted and a state in which the transfer is regulated, whereby the transfer of the water to the anolyte is permitted when the interface is detected.
However, Goto discloses a separation unit 3 has a separation tank 31 that separates the oil-water mixture into an upper liquid (organic phase) and a lower liquid (aqueous phase) by allowing the oil-water mixture to stand. The separation unit includes a discharge device 32 that discharges the upper liquid and lower liquid obtained by phase separation of the oil-water mixture ln the separation tank 31 from the separation tank 31 respectively [0027]. The discharge device 32, performs first discharge operation to discharge the upper layer liquid and a second discharge operation to discharge the lower layer liquid [0029]. If the interface sensor (32c) detects that the interface is above the upper liquid outlet 32a2, the second discharge operation is performed without performing the first discharge operation to discharge the lower liquid from the separation tank 31 [0034].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the separation method of Goto in the method of Mitsushima, because Mitsushima only generally discloses a water/organic separator, and Goto discloses details of how such separator operates. Therefore, one would have known to use details of a separation device in separator art, such as Goto.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a control device to perform the claimed process, as it is conventional to use a computer to automate a process to replace a manual function to accomplish the same result (see MPEP 2114 IV).
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Considering claims 2, 3, 7, 11 and 12, Mitsushima discloses the control device supplies power to the organic compound production device [0022]. With respect to the limitations reciting compositions of catholyte and power source, the claims are to a control device not a system or the apparatus, therefore the claims are merely intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Considering claim 6, Mitsushima discloses detecting the interface at an upper position and permit the transfer [0029].
Mitsushima does not disclose detecting the interface at a lower position and regulate the transfer.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be able to detect the interface at a lower position and close the valve to prevent complete emptying of the separator vessel of Goto, because preventing stopping the discharge of water could eventually end up transporting the organic phase whing would defeat the purpose of the separator. It would be readily obvious to one of ordinary skill to detect the interface before the organic phase, being above the water phase, starts being transferred together with water.
Considering claim 8, Mitsushima discloses the water is sent to a water separator (Fig. 1). With respect to the limitation the water to flow through a filter that adsorbs the oil to separate the oil from the water, the claim is to a control device and does not require the details of the structure of the separation device.
Considering claim 9, with respect to the limitation reciting the control device cools or heats the water to separate the oil from the water, the control device is dissipating heat to the surrounding environment as all computers do, so it will be capable of heating to a small extend the water.
Considering claim 10, Mitsushima discloses process includes agitation means such as propeller [0089], which operation would have been obvious to be automated by a control device, as part of the system automation. The propeller is used for moving gas, not flocculate the oil included in the water to separate the oil from the water, as claimed. However, from control device perspective it is merely a matter of engaging agitation means such as propeller.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/ Examiner, Art Unit 1794
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