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 with traverse of Invention II (claims 5-10) in the reply filed on 4/1/26 is acknowledged. The traversal is on the ground(s) that newly added claims 21-24 provide an embodiment in which every feature from Inventions II and III is claimed. This is not found persuasive because these claims and this embodiment are non-elected (see below).
The requirement is still deemed proper and is therefore made FINAL.
Newly submitted claims 21-24, directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The embodiment captured by depending claims 21-24 was not previously present or part of the original restriction requirement. As such, they are not covered by the election of Invention II.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-24 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 5 is objected to because of the following informalities:
On line 9 of claim 5, the “and” should be removed and moved to after the “water stream, or both” on line 11.
On line 11 of claim 5, the step of “routing the solids stream…” should be set on a new line.
Appropriate correction is required.
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 5-10 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 pre-AIA the applicant regards as the invention. Claims 5 and 10 recite the limitation “a high efficiency separator.” The term “high efficiency” is a relative term which renders the claim indefinite. The term "high efficiency" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to the efficiency level required (or how this efficiency is measured) to constitute a separator with “high efficiency as claimed. For purposes of examination, the term “high efficiency” will be considered as if removed.
Claims 6-10, dependent upon claim 1, are hereby rejected under 35 USC 112(b) as being dependent upon a rejected base claim.
Claim 7 is 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 pre-AIA the applicant regards as the invention. Claim 7 recites the limitation “wherein the fluid stream containing solids is a non-aqueous stream, the liquid stream is a non-aqueous stream or both...” The term “non-aqueous stream” is indefinite in that claim 5, upon which claim 7 ultimately depends, recites “where the fluid stream containing solids is a water-based stream, the liquid stream is a water-based stream, or both,” and it is unclear as to how a “water-based” stream may be “non-aqueous.” For purposes of examination, the limitation “wherein the fluid stream containing solids is a non-aqueous stream, the liquid stream is a non-aqueous stream or both...” will be considered as if removed.
Claim 7 recites the limitation “… operating the diverter to route the solids stream away from the electro-osmotic filter press” The term “route the solids stream away from the electro-osmotic filter press” is indefinite in that claim 5, upon which claim 7 ultimately depends, recites “routing the solids stream to an electro-osmotic filter press,” and it is unclear as to how the same stream can both be routed to and routed away from the electro-osmotic filter press. For purposes of examination, the limitation “… operating the diverter to route the solids stream away from the electro-osmotic filter press” will be considered as if removed.
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.
Claims 5, 6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Leyendecker et al. (US 2016/0052814) in view of Jones et al. (US 2007/0051682).
With respect to independent claim 1, Leyendecker discloses a method of treating a fluid stream containing solids, the method comprising:
mixing the fluid stream containing solids, or a material derived from the fluid stream containing solids, with a flocculant agent, a coagulant agent, or both to form a mixture (Abstract, [0040]-[0046], and Figs. 3 and 4);
routing the mixture to a separator to yield a solids stream and a liquid stream ([0047]-[0049] and Fig. 4). determining whether the fluid stream containing solids is a water-based stream, determining whether the liquid stream is a water stream, or both ([0035]-[0039] and Fig. 4); where the fluid stream containing solids is a water-based stream, the liquid stream is a water stream, or both (Abstract and [0032]-[0034]); and
routing the solids stream to a filter press to form a compressed solid material ([0050] and Fig. 4).
Regarding claim 5, Leyendecker discloses a method comprising employing a filter press to form a compressed solid material during a dewatering process step ([0050] and Fig. 4). However, he fails to expressly disclose wherein the filter press is a “electro-osmosis filter press,” as instantly claimed. Jones teaches a method comprising employing a filter press to form a compressed solid material during a dewatering process step, wherein the filter press is an electro-osmosis filter press (Abstract and [0017]).
Replacing the filter press disclosed by Leyendecker with the filter press taught by Jones is but a simple substitution of one known equivalent dewatering filter press for another, performing the same function for the same purpose. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make this simple substitution as it has been held “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR at 1395 (citing United States v. Adams, 383 US 39, 50-51 (1966)).
With respect to depending claim 6, Leyendecker discloses an apparatus and method for separating water comprising solids into a fluid stream containing solids and clean water, wherein the fluid stream is diverted to a filter press ([0047]-[0049] and Figs. 3 and 4). However, Leyendecker fails to expressly disclose wherein the diverting is by “operating a diverter,” as instantly claimed. The Office considers it well known and standard in the art when diverting fluid to employ a diverter and, as such, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider a well known and standard component in the same process.
With respect to depending claim 8, Leyendecker discloses wherein the compressed solid material is a cake ([0050]). With respect to depending claim 9, Leyendecker discloses further comprising mixing the mixture using a mixing vessel, an in-line mixer, or both ([0042]). With respect to depending claim 10, Leyendecker discloses further comprising controlling operation of the separator by flowing a diluent into the mixture (Abstract and [0040]-[0046]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Simpson et al. (US 2011/0203999) teaches a method for treating and separating a fluid stream comprising solids.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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