www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/982,619
`
`09/21/2020
`
`Yasunari MAEDA
`
`AOYA.36PUS01
`
`1072
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`
`CLEVELAND, OH 44115
`
`MCGANN, BERNADETTE KAREN
`
`1773
`
`08/30/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/982,619
`MAEDAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BERNADETTE K MCGANN
`1773
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 08/10/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-14 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C) Claim(s)__ is/are allowed.
`Claim(s) 1-14 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220824
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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.
`
`Response to Amendment
`
`Applicant's argumentsfiled August 10, 2022 have been fully considered but they are not
`
`persuasive. In response:
`
`1.
`
`The amendmentsto the claims have been entered.
`
`a. Claims 1-14 are pending.
`
`b. Claims 1, 3, 8, 9 and 14 are amended.
`
`2.
`
`3.
`
`In view of the amendmentsto the claims, the indefiniteness rejections have been
`
`withdrawn.
`
`In the response, Applicants argued that the claimed “particle feeder configured to bring
`
`a particle containing a same elementas that of the metal ion into the hard water at a
`
`feeding point, the feeding point being located upstream of the hard water storage or
`
`located in the hard water storage”is a distinguishing feature over claims 3 and 4 in U.S.
`
`Application No. 16/488,592 and claims 1 and 2 as issued in US 11/242,273 (see page 5)
`
`a.
`
`Itis noted only 16/488,592 was cited in the double patenting rejection.
`
`b.
`
`In view of Applicants’ arguments, the double patenting rejection has been
`
`withdrawn.
`
`4.
`
`In the response, Applicants argued there is no motivation to modify the separation
`
`device of figure 6 of WO 443 to include a particle feature, as claimed. It was argued that:
`
`a.
`
`“this embodiment of WO'443 does not include a separate particle feeder as
`
`claimed” (see page 7).
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 3
`
`b.
`
`“The neutrally buoyant material is already a separate phase from the water, and
`
`there is no reason to include any type of separate particle feeding to provide
`
`crystallization and precipitation. Also, as shownin FIG. 6, the treated water is
`
`pumpedfrom the device for subsequent strontium removal” (see page 7). “WO'443
`
`provides a separation device shownin FIG. 11 (below) where strontium is separated
`
`from water. This, for example, may be the treated water that has left the device
`
`shownin FIG. 6. As such, if combined, the separation device shownin FIG. 11 of
`
`WO'433 would be downstream the device shownin FIG. 6” (see page 8).
`
`c.
`
`“JP'996 also fails to cure the deficiencies of W0'443. JP'996 discloses the use CO
`
`gas and adjustmentof pH to 8 or higherto precipitate calcium ions” (see page 9)
`
`5.
`
`In the response, Applicants argued that even if WO 443 were modified, there is not
`
`reason or motivation to achieve the claimed ion removal system because it “would
`
`result in the slurry being combined in some form of a downstream mixer, not the bubble
`
`tank. With reference to FIG. 11 of WO'443, the source 910 of water product 926 is best
`
`likened to the water being provided from the devicein FIG. 6 of WO'443. Downstream
`
`from this storage is the tank 912 to hold slurry composition precipitator vessel 916” (see
`
`pages 9 and 10).
`
`Regarding argument(4a), the separate particle feeder limitation is noted as being presentin
`
`Figure 6 of WO 443 (see page 9 and 10 of the Office Action).
`
`Argument (4b) is deemed unpersuasive. Vessel (820) of figure 6 is deemed a hard water storage
`
`embodiment. The tank (912)/slurry composition (914/16) of figure 11 is deemed a particle feeder. The
`
`entry of the slurry composition (914/16) from tank (912) into the vessel (820) is deemed to be upstream
`
`of the hard water storage.
`
`It would have been obvious to one ofordinary skill in the art before the
`
`effective filing date of the invention to place the tank (912)/slurry composition (914/16) upstream of the
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 4
`
`vessel (820) and reasonably expect the resulting apparatus to work as WO 433 intended. Additionally,
`
`WO443 disclose that “various apparatus described are provided by wayofillustration only and that
`
`various modifications and changes may be made withoutfollowing the examples of embodiments and
`
`applications illustrated and described herein, wherein such modifications and changesare within the
`
`scope of the apparatus of the invention” (see paragraph [00266]).
`
`Regarding argument(4c), JP 996 discloses using calcium carbonate as seed crystals achieves
`
`rapid crystallization, generation of small fine particles of calcium carbonate and minimal sludgeis
`
`generated. See JP '996, page 5, paragraph [180]” (see Office Action, page 10). Thereis sufficient
`
`reasoning and motivation to combine the disclosure of JP 996 with WO 443.
`
`Argument (5) is deemed unpersuasive.
`
`It has not been established that the removal of the
`
`neutrally buoyant material, as illustrated in figure 6, must occur before the removal of strontium, as
`
`illustrated in figure 11. Noted above, WO 443 discloses that “various modifications and changes may be
`
`made without following the examples of embodiments and applications illustrated and described
`
`herein” (see paragraph [00266]). A reference mayberelied upon for all that it would have reasonably
`
`suggested to one having ordinaryskill the art, including nonpreferred embodiments” (see MPEP 2123, |).
`
`Claim Rejections - 35 USC § 103
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found ina
`
`prior Office action.
`
`Claims 1, and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/089443
`
`(hereinafter WO ‘443), or in the alternative, as being unpatentable over WO 2014/089443(hereinafter
`
`WO ‘443) in view of JP 2004-16996 (hereinafter JP ‘996, Citations herein presented are to the machine
`
`generated English language translation), as evidenced by Matsumoto, Masakazu,et al. “The Application
`
`of Micro-Bubblesfor Dissolution and Crystallization of Calcium Carbonate in Gas-Liquid-Solid System”
`
`(hereinafter NPL).
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 5
`
`Regarding claim 1, WO ‘443 discloses an ion removal system (“apparatus for separating
`
`materials from a liquid” See paragraph [0002]. The apparatus embodimentsdisclosed in WO ‘443 are
`
`deemed a ion removal system) comprising
`
`an ion removal device (See figure 6, apparatus enables the formation of nanobubbles (800). See
`
`also paragraphs [00166]-[00169]. See figure 11, separation apparatus (908).) including a hard water
`
`storage configured to store hard water (See figure 6, vessel (820). Additionally, regarding product and
`
`apparatus claims, when the structure recited in the reference is substantially identical to that of the
`
`claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well
`
`settled that where there is a reason to believe that a functional characteristic would be inherent in the
`
`prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary.
`
`See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP
`
`§ 2112.01, |.). Herein, the structure of WO ‘443 is substantially identical to the claimed “hard water
`
`storage” of the present application, and therefore, the structure of WO ‘443 is presumedinherently
`
`capable of storing hard water.) and a fine bubble generator configured to generate a fine bubble having
`
`a diameter of 100 um or less to supply the hard water storage with the fine bubble (See figure 6, header
`
`(816), educator (818), pressure tank (812), pressurized gas source (814). Additionally, regarding product
`
`and apparatus claims, when the structure recited in the reference is substantially identical to that of the
`
`claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well
`
`settled that where there is a reason to believe that a functional characteristic would be inherent in the
`
`prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary.
`
`See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP
`
`§ 2112.01, |.). Herein, the structure of WO ‘443 is substantially identical to the claimed “fine bubble
`
`generator” of the present application, and therefore, the structure of WO ‘443 is presumed inherently
`
`capable of generating a fine bubble to supply the hard water storage with the fine bubble.).
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 6
`
`WO ‘443 does not explicitly disclose that the bubbles generated are for removing a metal ion
`
`from the hard water by adsorbing the metal ion in the hard water to the fines bubble in the hard water
`
`storage and crystallizing and precipitating the adsorbed metal ion. WO ‘443 discloses that the apparatus
`
`(800) is for “separating neutrally buoyant materials from a liquid via the use of bubbles (such as air
`
`bubbles).” See paragraph [00133]. The “term ‘neutrally buoyant material’ means a solid or liquid
`
`material in a liquid (and may be a solid or liquid phase material that is phase separated in a liquid), and
`
`wherein spontaneous flotation or sinking of the material either does not occur at temperatures near
`
`25°C, or occurs over a period of more than about 20 minutes. In some embodiments, the neutrally
`
`buoyant material has an average density that is between about 95% and 105% of the density of the
`
`surrounding liquid. The neutrally buoyant material may be, in various embodiments, dispersed,
`
`emulsified, gelled, or agglomerated within the liquid; or combinations thereof. In various embodiments,
`
`the neutrally buoyant material may be a single compound, a range of related compounds, or a
`
`heterogeneous mixture of compounds . The neutrally buoyant material may include a single phase or
`
`multiple phases, such as a mixture of a solid and a gel, or a solid and an emulsified liquid particulate, and
`
`the like. In some embodiments, the neutrally buoyant material may be an oily mixture.It will be
`
`understood bythoseskilled in the art that the use of "neutrally buoyant" herein refers to materials that
`
`are neutrally buoyant, and to materials that are nearly neutrally buoyant. Further, it will be understood
`
`by those skilled in the art that a reference to a neutrally buoyant "material" in a liquid may encompassa
`
`single such material, or multiple materials.” See paragraph [00122]. The bubbles formed by the header
`
`(816)/eductors (818) in the vessel (820) of apparatus (800) of WO ‘443 are necessarily capable of
`
`removing a metal ion from the hard water by adsorbing the metal ion in the hard water to the fines
`
`bubble in the hard water storage and crystallizing and precipitating the adsorbed metal ion. NPL is
`
`evidence that the bubbles generated by the header (816)/eductors (818) in the vessel (820) of apparatus
`
`(800) would cause crystallization and precipitation of the adsorbed metal ion. NPL discloses that the
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 7
`
`“technique for the dissolution and crystallization of CaCO; in the gas-liquid-solid phases using water-
`
`soluble acid or basic microbubbles....” See page 477, section 1. “CO2 microbubbles were fed
`
`into...solution... CO2 and NH3 micro-bubbles (CO2/NH3 microbubbles) were mixed and continuously fed
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`into 2000 ml of a 0.1 mol/I solution of Ca(NO3)2, and CaO3 were reactively crystallized.” See page 477,
`
`section 2.3.2. “CO2/NH3 micro-bubbles were continuously fed...into... an aqueous 0.1 mol/I solution of
`
`Ca(NOs), ... in order to crystallize the CaCO3, CO2 gas was then fed to the liquid...and dissolving the
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`CaCQ3.” See page 477, section 2.3.3.
`
`WO ‘443 also discloses a particle feeder (See figure 11, tank (912), slurry composition (914/16))
`
`configured to bring a particle containing a same elementas that of the metal ion into the hard water
`
`(See paragraphs [0037] and [00193]-[00197]. Regarding product and apparatus claims, when the
`
`structure recited in the reference is substantially identical to that of the claims, claimed properties or
`
`functions are presumed to be inherent. The Courts haveheld that it is well settled that where thereis a
`
`reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof
`
`then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d
`
`at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Herein, the
`
`structure of WO ‘443 is substantially identical to the claimed “particle feeder” of the present application,
`
`and therefore, the structure of WO ‘443 is presumed inherently capable of bringing a particle containing
`
`a same element as that of the metal ion into the hard water.) at a feeding point, the feeding point being
`
`located upstream of the hard water storage or located in the hard water storage (Feeding pointis
`
`located upstream of the hard water storage. Additionally, MPEP 2144.04, Section VI., C., holds thatit is
`
`prima facie obvious to rearrangeparts of an apparatus. Hence, rearranging the location of the feeding
`
`point in the ion removal system is merely a design choice. Further it would have been obvious to one of
`
`ordinaryskill in the art before the effective filing date of the invention to place the tank (912)/slurry
`
`composition (914/16) upstream of the vessel (820) and reasonably expect the resulting apparatus to
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 8
`
`work as WO 433 intended. Additionally, WO 443 disclose that “various apparatus described are
`
`provided by way ofillustration only and that various modifications and changes may be made without
`
`following the examples of embodimentsand applications illustrated and described herein, wherein such
`
`modifications and changes are within the scope of the apparatus of the invention” (see paragraph
`
`[00266]).
`
`In the alternative, where WO ‘443 is not considered configured to bring a particle containing a
`
`same element as that of the metal ion into the hard water, this feature is nonetheless disclosed by JP
`
`‘996 and is rendered obvious by WO ‘443in view ofJP ‘996.
`
`JP ‘996 is considered to be analogous to the claimed invention becauseit is in the same field of
`
`endeavor,i.e. liquid purification. JP ‘996 discloses “an ion exchangedevicefilled with at least one type
`
`of anion exchangeresin and a calcium carbonate precipitation device for precipitating calcium
`
`carbonate from the outflow water of the ion exchange device.” See page 2, paragraph [45]. JP ‘996
`
`discloses a system wherein “calcium carbonateis precipitated after treatment with an anion exchange
`
`resin, and OH-type, carbonic acid-type, and bicarbonate-type anions are used as the anion exchange
`
`resin.” See JP ‘996, page 2, paragraph [77]. JP ‘996 discloses that the seed crystals in the crystallization
`
`reaction tower (2) are calcium carbonate seed crystals. See JP ‘996, page 3, paragraph [100].
`
`It would have been obvious to one of ordinaryskill in the art before the effective filing date of
`
`the invention to use calcium carbonate as the seed crystal, as disclosed in JP ‘996, for the seed crystal of
`
`WO ‘443. This modification would achieve a particle, calcium carbonate, containing a same elementas
`
`that of the metal ion, calcium, into the hard water, as established above by WO ‘443 as evidenced by
`
`NPL. One of ordinary skill in the art would have been motivated to make this modification becauseit
`
`would achieve removal of calcium ions from the water, thereby achieving the objective of WO ‘443,i.e.
`
`water purification. Furthermore, using calcium carbonate achievesrapid crystallization, generation of
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 9
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`small fine particles of calcium carbonate and minimal sludge is generated. See JP ‘996, page 5,
`
`paragraph [180].
`
`WO ‘443 does not explicitly disclose an ion removal device and a particle feeder being present in
`
`a single ion removal system.
`
`It would have been obvious to one ofordinaryskill in the art before the
`
`effective filing date of the invention to modify the holding tank (802) containing the solution (804) of
`
`apparatus (800) to the tank (912) containing the slurry composition (914/16) comprising seed crystals of
`
`apparatus (908) in order to achieve improved removal of impurities of contaminates from water ina
`
`single apparatus.
`
`Regarding claim 3, WO ‘443 or modified WO ‘443 discloses the invention as discussed abovein
`
`claim 1. Further, WO ‘443 or modified WO ‘443 discloses the particle feeder (WO ‘443 - See figure 6,
`
`holding tank (802), solution (804), See figure 11, tank (912), slurry composition (914/16)) includes
`
`an extruder connected to the feeding point to bring the particle to the feeding point (See figure
`
`11, tank (912), regulator and combined flow pipe (924), “Tank 912 has, in some embodiments, a flow
`
`regulator (not shown) to regulate or meter the rate of flow of slurry composition 914 into the water
`
`product 926 to form combined flow 924” (see paragraph [0268]); and
`
`a particle storage configured to store the particle to be supplied to the extruder (See figure 11,
`
`tank (912). Additionally, “[I]Jn such embodiments, various alternative means of supplying both a water
`
`soluble sulfate salt and seed crystals of strontium sulfate are used with equal advantage to supplying
`
`slurry composition 914 to the source 910 of water product 926. For example, dry powder metering
`
`systems for addition of seed crystals, water soluble sulfate salt, or a single apparatus for providing a
`
`blend of both components are employed in some embodimentsto deliver the dry material components
`
`directly to the water product 926 as it flows into the mixing apparatus 928, whereupon the components
`
`are mixed directly into the water product.” See paragraph [00270]. WO ‘443 discloses an alternative
`
`embodimentfor supplying seed crystals to the feeding point to bring the particle into the hard water.).
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 10
`
`Regarding claim 4, WO ‘443 or modified WO ‘443 discloses the invention as discussed abovein
`
`claim 3. Further, WO ‘443 or modified WO ‘443 discloses an ion removal gas storage configured to store
`
`an ion removal gas as a raw material of the fine bubble generated by the fine bubble generator (See
`
`figure 6, pressurized gas source (814). Additionally, regarding product and apparatus claims, when the
`
`structure recited in the reference is substantially identical to that of the claims, claimed properties or
`
`functions are presumed to be inherent. The Courts haveheld thatit is well settled that where thereis a
`
`reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof
`
`then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d
`
`at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01,I.). Herein, the
`
`structure of WO ‘443 is substantially identical to the claimed “ion removal gas storage” of the present
`
`application, and therefore, the structure of WO ‘443 is presumed inherently capable of storing an ion
`
`removal gas as a raw material of the fine bubble generated by the fine bubble generator.),
`
`wherein the particle storage and the ion removal gas storage are integrated with each other
`
`(WO ‘443, as discussed above, renders obvious an apparatus incorporating both the particle feeder
`
`(apparatus 908) and the ion removal gas storage (apparatus 800) in a single ion removal system. The
`
`Examiner deems “integrated with each other” to mean that both the particle storage and the ion
`
`removal gas storage are present in the same apparatus. Additionally, MPEP 2144.04, Section V., B.,
`
`holds that it is prima facie obvious to modify a multi-component structureinto a single integral
`
`structure. Hence, making the particle storage and the ion removal gas storage integrated with each
`
`other is merely a matter of obvious engineering choice.).
`
`Regarding claim 5, WO ‘443 or modified WO ‘443 discloses the invention as discussed abovein
`
`claim 1. Further, WO ‘443 or modified WO ‘443 discloses an ion removal gas supplier configured to
`
`supply the fine bubble generator with an ion removal gas as a raw material of the fine bubble generated
`
`by the fine bubble generator (See figure 6, pressurized gas source (814). Additionally, regarding product
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 1773
`
`Page 11
`
`and apparatus claims, when the structure recited in the reference is substantially identical to that of the
`
`claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well
`
`settled that where there is a reason to believe that a functional characteristic would be inherent in the
`
`prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary.
`
`See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP
`
`§ 2112.01, |.). Herein, the structure of WO ‘443 is substantially identical to the claimed “ion removal gas
`
`supplier” of the present application, and therefore, the structure of WO ‘443 is presumedinherently
`
`capable of supplying the fine bubble generator with an ion removal gas as a raw material of the fine
`
`bubble generated by the fine bubble generator.); and
`
`an ion removal gas flow path connecting the ion removal gas supplier and the fine bubble
`
`generator with each other (See figure 6, pipe connecting pressurized gas source (814) to the pressurized
`
`tank (812) to the header (816) within the vessel (820)),
`
`wherein the feeding point is located in the ion removal gas flow path (Feeding point is the
`
`pressurized tank (812). Additionally, MPEP 2144.04, Section VI., C., holds that it is prima facie obvious to
`
`rearrange parts of an apparatus. Hence, rearranging the location of the feeding point is merely a design
`
`choice.).
`
`Regarding claim 6, WO ‘443 or modified WO ‘443 discloses the invention as discussed abovein
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`claim 1. Further, WO ‘443 or modified WO ‘443 discloses a primary flow path for supplying the ion
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`removal device with the hard water (See figure 6, source of produced/brackish water and pump (824)),
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`wherein the feeding point is located in the primary flow path (See figure 11, source (910), water
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`product (926), tank (912), slurry (914/16), mixing apparatus (928) and pipe running from mixing
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`apparatus (928) to precipitator vessel (916).).
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`It would have been obvious to one of ordinaryskill in the art before the effective filing date of
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`the invention to position the source (910), water product (926), tank (912), slurry (914/16), mixing
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`Application/Control Number: 16/982,619
`Art Unit: 1773
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`Page 12
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`apparatus (928) and pipe running from mixing apparatus (928), of apparatus (908), to the source of
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`produced/brackish water and pump (824), of apparatus (800), thereby achieving a feeding pointis
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`located in the primary flow path, wherein the primary flow path supplies the ion removal device with
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`hard water. Apparatus (908) achieves a homogeneously dispersed combined flow of seed crystals in the
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`source water prior to entering the precipitator vessel (916). “Tank 912 is equipped to hold and dispense
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`a slurry composition 914 of the invention such that a combined flow 924 of water product 926 and
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`slurry composition 914 is formed and directed towards and into mixing apparatus 928.” See paragraph
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`[00268]. See also paragraph [00272].
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`It would have been obvious to one of ordinaryskill in the art
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`before the effective filing date of the invention to maintain this configuration of apparatus (908) when
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`modifying apparatus (800) of WO ‘443 in order to maintain the homogeneously dispersed combined
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`flow feature of WO ‘443. Additionally, MPEP 2144.04, Section VI., C., holds that it is prima facie obvious
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`to rearrange parts of an apparatus. Hence, rearranging the location of the feeding point is merely a
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`design choice.
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`Regarding claim 7, WO ‘443 or modified WO ‘443 discloses the invention as discussed abovein
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`claim 1. Further, WO ‘443 or modified WO ‘443 discloses the feeding point is located in the hard water
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`storage (In WO ‘443, it would be merely a design choice to rearrange the location of the feeding point in
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`the ion removal system. See MPEP 2144.04.)
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`In the alternative, JP ‘996 discloses that “[t]he crystallization reaction tower2filled with calcium
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`carbonate seed crystals....” See paragraph [100]. See figure 1, crystallization reaction tower(2). That is,
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`the feeding point is located within the crystallization reaction tower, i.e. In a hard water storage.It
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`would have been obvious to one of ordinaryskill in the art before the effective filing date of the
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`invention to modify the feeding point of modified WO ‘443 byfilling the calcium carbonate seed crystals
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`in the vessel (820) of modified WO ‘443 rather than in a separate tank (912) because “calcium carbonate
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`generated by the crystallization reaction is rapidly crystallized and laminated on the seed crystal, so that
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`Application/Control Number: 16/982,619
`Art Unit: 1773
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`the generation of fine particles of calcium carbonateis small and sludge due to the fine particlesis less
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`likely to be generated. Calcium carbonate crystals grown bycrystallization and lamination are granular
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`and easily dehydrated, so they are easy to handle.” See paragraph [0180]-[0184].
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`Regarding claim 8, WO ‘443 or modified WO ‘443 discloses the invention as discussed abovein
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`claim 1. Further, WO ‘443 or modified WO ‘443 discloses the particle feeder brings a gel particle (Since
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`the particle is the same and the particle feeder is the same, then the particle formed must necessarily be
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`a gel particle. See MPEP 2112 and In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997)).
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`Claims 2, and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO
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`2014/089443 (hereinafter WO ‘443) in view of JP 2004-16996 (hereinafter JP ‘996, Citations herein
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`presentedare to the machine generated English translation), as evidenced by Matsumoto, Masakazu, et
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`al. “The Application of Micro-Bubbles for Dissolution and Crystallization of Calcium Carbonate in Gas-
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`Liquid-Solid System” (hereinafter NPL).
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`Regarding claim 2, modified WO ‘443 discloses the invention as discussed abovein claim 1.
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`Further, modified WO ‘443 discloses the metal ion is a calcium ion (WO ‘443, “contaminated water (e.g.,
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`brackish or produced water, or flowback water from processes such as fracking).” See paragraph [0002].
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`Brackish water necessarily contains calcium ions. Further, “techniques also result in the precipitation of
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`calcium salts present in the water. Calcium salts, such as calcium chloride (CaCl2) are often presentin
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`significant levels in produced water.” See paragraph [0011]. See also NPL, Abstract); and the particle is
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`calcium carbonate (See JP ;996, page 3, paragraph [100)).
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`Regarding claim 9, modified WO ‘443 discloses the invention as discussed abovein claim 2.
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`Further, modified WO ‘443 discloses the particle feeder (See figure 6,holding tank (802), solution (804),
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`See figure 11, tank (912), slurry composition (914/16)) includes:
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`an extruder connected to the feeding point to bring the particle to the feeding point (See figure
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`11, tank (912), regulator and combined flow pipe (924). “Tank 912 has, in some embodiments, a flow
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`Application/Control Number: 16/982,619
`Art Unit: 1773
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`regulator (not shown) to regulate or meter the rate of flow of slurry composition 914 into the water
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`product 926 to form combined flow 924” (see paragraph [0268]); and
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`a particle storage configured to store the particle to be supplied to the extruder (See figure 11,
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`tank (912). Additionally, “[I]Jn such embodiments, various alternative means of supplying both a water
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`soluble sulfate salt and seed crystals of strontium sulfate are used with equal advantage to supplying
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`slurry composition 914 to the source 910 of water product 926. For example, dry powder metering
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`systems for addition of seed crystals, water soluble sulfate salt, or a single apparatus for providing a
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`blend of both components are employed in some embodimentsto deliver the dry material components
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`directly to the water product 926 as it flows into the mixing apparatus 928, whereupon the components
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`are mixed directly into the water product.” See paragraph [00270]. WO ‘443 discloses an alternative
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`embodimentfor supplying seed crystals to the feeding po