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 .
DETAILED ACTION
Claim Objections
Claims 6 and 15-18 are objected to because of the following informalities: Claims 6 and 15, line 2 recite ‘power’ instead of -powder-. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a separator in claim 1, line 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 5-14, and 19 of U.S. Patent No. 12,305,514. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows:
19/173,866 (Claim 1) USP 12,305,514 (Claim 1)
A system for extracting water from ice-regolith powder, comprising
A system for extracting water from lunar regolith, comprising: a regolith intake configured to collect lunar regolith and separate and discharge gravel and pass a mixture of ice-regolith powder
a heater configured to heat the ice-regolith powder and vaporize any layer of ice in at least a continuous, non- filling ice-regolith relationship
a heater configured to heat the ice-regolith powder and vaporize any layer of ice in at least a continuous, non-filling ice-regolith relationship
a separator configured to receive the ice-regolith powder and split the ice-regolith powder into split streams of different sized lithic fragments and ice particles per the ratio of inertial force and aerodynamic drag force of the lithic fragments and ice particles
a separator configured to receive the ice-regolith powder and split the ice-regolith powder into split streams of different sized lithic fragments and ice particles per the ratio of inertial force and aerodynamic drag force of the lithic fragments and ice particles
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 9
Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Claim 19
Claim 13
Claim 13
Claim 14
Claim 14
Claims 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 15, 16, and 18 of U.S. Patent No. 12,305,514 in view of Garabedian et al (USP 9,987,664 B1).
Regarding claim 15, ‘514 discloses separation of lithic fragments and ice particles, but ‘514 does not disclose the separator splits the ice-regolith power into split streams of lower, mid and upper diameter sized lithic fragments and ice particles. Garabedian teaches the separator splits the ice-regolith power into split streams of lower, mid and upper diameter sized fragments (col. 3, lines 9-26 progressive separating by size of items) for the purpose of classifying material into appropriate size grades. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify ‘514, as taught by Garabedian, for the purpose of classifying material into appropriate size grades.
Claim 16
Claim 18
Claim 17
Claim 18
Claim 18
Claim 16
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,071,851. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows:
19/173,866 (Claim 1) USP 12,071,851 (Claim 1)
A system for extracting water from lunar regolith, comprising
A system for extracting water from lunar regolith, comprising
a regolith intake configured to collect lunar regolith and separate and discharge gravel and pass a mixture of ice-regolith powder
a heater configured to heat the ice-regolith powder and vaporize any layer of ice in at least a continuous, non- filling ice-regolith relationship
a heater configured to heat the ice-regolith powder and vaporize any layer of ice in at least a continuous, non-filling ice-regolith relationship
a separator configured to receive the ice-regolith powder and split the ice-regolith powder into split streams of different sized lithic fragments and ice particles per the ratio of inertial force and aerodynamic drag force of the lithic fragments and ice particles
a pneumatic separator configured to receive the ice-regolith powder and pneumatically split the ice-regolith powder into split streams of different sized lithic fragments and ice particles per the ratio of inertial force and aerodynamic drag force of the lithic fragments and ice particles
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 9
Claim 10
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 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 1-4, 6-8, 10-13, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gibson et al (USP 4,948,477).
Regarding claim 1, Gibson discloses a system for extracting water from ice-regolith powder, comprising: a heater configured to heat the ice-regolith powder and vaporize any layer of ice in at least a continuous, non- filling ice-regolith relationship (col. 10, lines 5-12 where the bed is heated); and a separator configured to receive the ice-regolith powder and split the ice-regolith powder into split streams of different sized lithic fragments and ice particles per the ratio of inertial force and aerodynamic drag force of the lithic fragments and ice particles (elements 32, 33, and 34).
Regarding claim 2, Gibson discloses the heater is positioned before or integrated with the separator (see Fig. 4 where the reactor includes separators 32, 33, and 34).
Regarding claim 3, Gibson discloses the heater is configured to heat the ice-regolith powder and vaporize ice in an adhering, bridging, an adhering, non-bridging or a continuous filling ice-regolith relationship (col. 10, lines 5-12).
Regarding claim 4, Gibson discloses the separator includes an output having a gas dryer or cold plate configured to remove water vapor (element 41).
Regarding claim 6, Gibson discloses the separator splits the ice-regolith power into split streams of lower, mid and upper diameter sized lithic fragments and ice particles (elements 32, 33, and 34).
Regarding claim 7, Gibson discloses each split stream includes at least one of a magnetic separator and tribocharger/electrostatic separator (elements 15 and 19).
Regarding claim 8, Gibson discloses each split stream includes a magnetic separator and tribocharger/electrostatic separator connected thereto (see Fig. 3; elements 15 and 19).
Regarding claim 10, Gibson discloses a system for extracting water from ice-regolith powder, comprising: a heater configured to receive ice-regolith powder having ice grains that are 10-100 microns (col. 3, lines 50-59) and heat the ice- regolith powder and vaporize any layer of ice in at least a continuous, non-filling ice-regolith relationship (col. 10, lines 5-12 where the bed is heated); and a separator configured to receive the ice-regolith powder and split the ice-regolith powder into split streams of different sized lithic fragments and ice particles per the ratio of inertial force and aerodynamic drag force of the lithic fragments and ice particles (elements 32, 33, and 34).
Regarding claim 11, Gibson discloses the heater is positioned before or integrated with the separator (see Fig. 4 where the reactor includes separators 32, 33, and 34).
Regarding claim 12, Gibson discloses the heater is configured to heat the ice-regolith powder and vaporize ice in an adhering, bridging, an adhering, non-bridging or a continuous filling ice-regolith relationship (col. 10, lines 5-12).
Regarding claim 13, Gibson discloses the separator includes an output having a gas dryer or cold plate configured to remove water vapor (element 41).
Regarding claim 15, Gibson discloses the separator splits the ice-regolith power into split streams of lower, mid and upper diameter sized lithic fragments and ice particles (elements 32, 33, and 34).
Regarding claim 16, Gibson discloses each split stream includes at least one of a magnetic separator and tribocharger/electrostatic separator (elements 15 and 19).
Regarding claim 17, Gibson discloses each split stream includes a magnetic separator and tribocharger/electrostatic separator connected thereto (see Fig. 3; elements 15 and 19).
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 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 of this title, 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.
Claims 5, 9, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Gibson in view of Design Choice.
Regarding claim 5, Gibson does not explicitly disclose the split streams of different sized lithic fragments and ice particles are based upon splits of 20-40 microns and 600-800 microns for lithic fragments. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to separating by size because Applicant has not disclosed that specific sizes provide an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Gibson, and applicant’s invention, to perform equally well with either size split because both separation systems would perform the same function of separating particles for the purpose of obtaining particles of a desired size.
Regarding claim 9, Gibson ‘946 does not explicitly disclose each tribocharger/electrostatic separator is configured to produce 100 to 10,000 times the acceleration of ice particles versus lithic fragments of the same diameter size. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to separate particles because Applicant has not disclosed that acceleration of particles provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Gibson, and applicant’s invention, to perform equally well with either electrostatic acceleration because both electrostatic separators would perform the same function of particles for the purpose of producing at least two different fractions of particles.
Regarding claim 14, Gibson does not explicitly disclose the split streams of different sized lithic fragments and ice particles are based upon splits of 20-40 microns and 600-800 microns for lithic fragments. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to separating by size because Applicant has not disclosed that specific sizes provide an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Gibson, and applicant’s invention, to perform equally well with either size split because both separation system would perform the same function of separating particles for the purpose of obtaining particles of a desired size.
Regarding claim 18, Gibson ‘946 does not explicitly disclose each tribocharger/electrostatic separator is configured to produce 100 to 10,000 times the acceleration of ice particles versus lithic fragments of the same diameter size. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to separate particles because Applicant has not disclosed that acceleration of particles provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Gibson, and applicant’s invention, to perform equally well with either electrostatic acceleration because both electrostatic separators would perform the same function of particles for the purpose of producing at least two different fractions of particles
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kalyanavenkateshware Kumar whose telephone number is (571)272-8102. The examiner can normally be reached on M-F 08:00-16:30.
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/K.K./Examiner, Art Unit 3653
/MICHAEL MCCULLOUGH/Supervisory Patent Examiner, Art Unit 3653