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 with traverse of Group I with Species A2, encompassing claims 1, 4-6, and 11-18, in the reply filed on 7/21/2026 is acknowledged. The traversal is on the ground(s) that that search and examination can be made without serous burden. This is not found persuasive because
(i) the inventions of Group I and Group II are drawn into different classes and each invention requires a different field of search. Applicants’ attention is drawn to the fact that the search for method claims requires the identification of processing steps while the search for apparatus claims requires the identification of structural elements, which introduces additional search burden. Applicants’ arguments that the search of one invention must necessarily result in a search for the other one has been considered, but is not found persuasive in so far as the searches are not co-extensive and additional search would of necessity be required for the combination of inventions, which introduces additional search and examination burden.
(ii) the inventions of different species require a different field of search. Applicants’ attention is drawn to the fact that the species are independent and distinct and the different species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species, which introduces additional search and examination burden.
The requirement is still deemed proper and is therefore made FINAL.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 is: “a feedback mechanism …” in claim 1.
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.
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.
Claims 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lewis, III (PG-PUB US 2020/0071199, cited in IDS).
Regarding claim 1, Lewis III discloses an apparatus for generating nitrogen species using plasma (ABSTRACT), The apparatus comprises
(1) a plasma reactor assembly 101 having a reaction zone 126 for generating reactive nitrogen species by contacting water with the plasma discharge (i.e., a plasma generator…, Figure 2, paragraphs [0111] –[0112]);
(2) monitoring sensors configured for sensing various input signals for the system (i.e., a feedback mechanism…, paragraph [0117]); and
(3) a control unit 201 coupled to the sensors for properly operating the system to generate a solution having high concentration of nitrate (i.e., a control module …, Figure 6, paragraphs [0116] – [0117]).
The limitation of “a feedback mechanism” is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The instant specification discloses that “a feedback mechanism” includes one or more sensors (paragraphs [0123] – [0125]).
Lewis III teaches monitoring sensors for sensing various input signals (paragraph [0117]), reading on “a feedback mechanism”.
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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis, III (PG-PUB US 2020/0071199, cited in IDS) as applied to claim 1 above, and further in view of Lewis III (PG-PUB US 2021/0354105, cited in IDS, referred to Lewis’105 thereafter).
Regarding claim 4, Lewis III does not teach an injector for supplying liquid and gas. However, Lewis’105 discloses an apparatus for generating nitrogen species using plasma (ABSTRACT). Lewis’105 teaches that the apparatus comprises a plasma reactor assembly 105 and an injector 104 for supplying gas 102 and water 103, wherein the injector 104 can generate water droplets 106 having 8 µm to 20 µm for significantly improving efficiency of transferring the reactive nitrogen species in water and is coupled to the control 135 for properly regulating the operation of the system (Figures 2-3, paragraphs [0082], & [0102]).
Therefore, it would be obvious for one having ordinary skill in the art to utilize an injector for supplying gas and water droplets having 8 µm to 20 µm as suggested by Lewis’105 in order to improve efficiency of transferring the reactive nitrogen species in water within the device of Lewis.
Regarding claim 5, since the device of Lewis/Lewis’105 comprises substantially the same structures as claimed, the injection is fully capable of performing the claimed functions.
Regarding claim 6, Lewis’105 teaches that the amounts of gas and water droplet affect the generation of reactive nitrogen species (paragraphs [0112]. One having ordinary skill in the art would have realized to optimize the amounts/ratio of gas and water droplet to the reaction zone in order to achieve desired concentration of the reactive nitrogen species within the device of Lewis/Lewis’105.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis, III (PG-PUB US 2020/0071199, cited in IDS) as applied to claim 1 above, and further in view of Tsai et al (PG-PUB US 20170142962).
Regarding claim 11, Lewis III teaches that plasma activated water is generated (paragraph [0135]), but does not teach a condenser downstream of the reaction region or a collection reservoir. However, Tsai et al disclose an apparatus for generating nitrogen species using plasma (ABSTRACT & paragraphs [0038] & [0055]). Tsai teaches that a plasma generator 412 generates plasma activated mist 413 which is condensed in a condenser 415 and the condensed mist is collected in a container 418 for collecting plasma activated liquid 416 (Figure 4, paragraph [0075]). Therefore, it would be obvious for one having ordinary skill in the art to include a condenser downstream of the reaction region and a container downstream thereof as suggested by Tsai in order to collect the plasma activated liquid within the device of Lewis III.
Regarding claim 12, Tsai teaches that the condenser 415 includes coolant surface with coolant input 414 and coolant output 419 (Figure 4, paragraph [0075]).
Regarding claim 13, Lewis III teaches that the contact vessel 504 is sealed (Figure 9, paragraph [0135]). Tsai teaches that the container 418 is coupled to the condenser 415 for collecting the plasma activated liquid 416 (Figure 4, paragraph [0075]).
Regarding claim 14, Lewis III teaches that a recirculation system is coupled to the contact vessel 504 back to the water injection unit (paragraphs [0134] – [0135]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lewis, III (PG-PUB US 2020/0071199, cited in IDS) and Tsai et al (PG-PUB US 20170142962) as applied to claim 11 above, and further in view of Maloney et al (PG-PUB US 20080308403).
Regarding claim 15, Tsai teaches to utilize a condenser to condense liquid (paragraph [0075]), but Lewis III/Tsai does not teach the condenser having porous packing material. However, Maloney et al disclose a condenser (ABSTRACT). Maloney teaches that a condenser 7 is filled with stainless steel wool for enhancing condensation (Figure 1, paragraph [0025]). Therefore, it would be obvious for one having ordinary skill in the art to utilize stainless steel wool as packing material for a condenser as suggested by Maloney in order to enhance condensation within the device of Lewis III/Tsai with reasonable expectation of success.
Claims 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis, III (PG-PUB US 2020/0071199, cited in IDS) in view of Lewis III (PG-PUB US 2021/0354105, cited in IDS, referred to Lewis’105 thereafter) .
Regarding claim 16, Lewis III discloses an apparatus for generating nitrogen species using plasma (ABSTRACT), The apparatus comprises
(1) a plasma reactor assembly 101 having a reaction zone 126 for generating reactive nitrogen species by contacting water with the plasma discharge (i.e., a plasma generator…, Figure 2, paragraphs [0111] –[0112]);
(2) monitoring sensors configured for sensing various input signals for the system (i.e., a feedback mechanism…, paragraph [0117]); and
(3) a control unit 201 coupled to the sensors for properly operating the system to generate a solution having high concentration of nitrate (i.e., a control module …, Figure 6, paragraphs [0116] – [0117]).
Lewis III does not teach an injector for supplying liquid and gas. However, Lewis’105 discloses an apparatus for generating nitrogen species using plasma (ABSTRACT). Lewis’105 teaches that the apparatus comprises a plasma reactor assembly 105 and an injector 104 for supplying gas 102 and water 103, wherein the injector 104 can generate water droplets 106 having 8 µm to 20 µm for significantly improving efficiency of transferring the reactive nitrogen species in water and is coupled to the control 135 for properly regulating the operation of the system (Figures 2-3, paragraphs [0082], & [0102]).
Therefore, it would be obvious for one having ordinary skill in the art to utilize an injector for supplying gas and water droplets having 8 µm to 20 µm as suggested by Lewis’105 in order to improve efficiency of transferring the reactive nitrogen species in water within the device of Lewis.
Regarding claim 18, Lewis’105 teaches that the amounts of gas and water droplet affect the generation of reactive nitrogen species (paragraphs [0112]. One having ordinary skill in the art would have realized to optimize the amounts/ration of gas and water droplet to the reaction zone in order to achieve desired concentration of the reactive nitrogen species within the device of Lewis/Lewis’105.
Claims 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lewis, III (PG-PUB US 2020/0071199, cited in IDS) and Lewis III (PG-PUB US 2021/0354105, cited in IDS, referred to Lewis’105 thereafter) as applied to claim 16 above, and further in view of Tsai et al (PG-PUB US 20170142962).
Regarding claim 17, Lewis III teaches that plasma activated water is generated (paragraph [0135]), but Lewis III/Lewis’105 does not teach a condenser downstream of the reaction region or a collection reservoir. However, Tsai et al disclose an apparatus for generating nitrogen species using plasma (ABSTRACT & paragraphs [0038] & [0055]). Tsai teaches that a plasma generator 412 generates plasma activated mist 413 which is condensed in a condenser 415 and the condensed mist is collected in a container 418 for collecting plasma activated liquid 416 (Figure 4, paragraph [0075]). Therefore, it would be obvious for one having ordinary skill in the art to include a condenser downstream of the reaction region and a container downstream thereof as suggested by Tsai in order to collect the plasma activated liquid within the device of Lewis III/Lewis’105.
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, 4, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,201,135. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus comprising substantially the same elements as that of the issued patent.
Claims 1, 4, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,108,516. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus comprising substantially the same elements as that of the issued patent.
Claims 1, 11, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 12,193,373. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus comprising substantially the same elements as that of the issued patent.
Conclusion
Claims 1, 4-6, and 11-18 are rejected. Claims 2-3, 7-10, and 19-20 are withdrawn.
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/XIUYU TAI/Primary Examiner, Art Unit 1795
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