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 5-7 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.
Claim 5 recites the limitation "the interface" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the transfer" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the interface" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the transfer" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 is indefinite because it is not clear how control device can separate the oil form the water, as a control device is merely a computer, thus is not equipped to perform fluid separation, because it is not sufficient, for example, to open a valve or pump etc. to cause separation. It can merely direct the water to a separator buy opening valves, but not separate water from oil. For the purpose of further examination, the above limitation will be interpreted as the control device configured to send the water separated in a water separator to the anolyte.
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.
Claim(s) 1-3, 7-9, 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanebuth et al. (DE 102019205316 A1, machine translation).
Considering claims 1 and 11, Hanebuth discloses an organic compound production device including an anode electrode and a cathode electrode to produce an organic compound [0015], 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 ([0033] and fig. 1).
Hanebuth is silent about the process of the organic compound production being operated by a control device.
However, 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 and 12, 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 8, Hanebuth 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, Hanebuth discloses a process of heating the water [0026]. The limitation of separating water form oil is merely an intended use, which is met when the heated water in Hanebuth can be used in a separation process, which is universally true, provided not further guidelines of the separation process.
Claim(s) 1-3, 7 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsushima et al. (US 20190352786 A1).
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 is silent about the process of the organic compound production being operated by a control device.
However, 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 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.
Claim Rejections - 35 USC § 102
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) 1-7, 11 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cave et al. (US 20200240023 A1).
Considering claim 1, Cave discloses a control device structured to control an organic compound production device including an anode electrode and a cathode electrode to produce an organic compound [0154], wherein the control device sends water (controls a valve) [0154]. With respect to the limitation reciting sending the water accumulated in a lower part of a catholyte fed from the cathode electrode to an anolyte supplied to the anode electrode, the control device does not distinguish between where the water is sent, it merely opens/closes a valve.
Considering claims 2, 3, 7, 11 and 12, Cave discloses the control device supplies power to the organic compound production device [0154]. 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 claims 4-6, Cave discloses the control device operates sensors, such as optical sensors, and valves [0154], therefore it is capable of detecting an interface between catholyte and water, because it is merely a signal received from a sensor such as absorbance measuring tools [0154]. Therefore, the limitations of detecting (signal from the sensor) and transferring water (operating a valve) are met by the controller of Cave, since the claim does not require any particular dependency or order of steps.
Conclusion
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/WOJCIECH HASKE/Examiner, Art Unit 1794