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.36PUSO01
`
`1072
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`MCGANN, BERNADETTE KAREN
`
`4146
`
`05/10/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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)
`
`

`

`
`
`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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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://www.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) The drawing(s) filed on 09/21/2020 is/are: a)[¥) 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`09/21/2020;01/04/2021;07/21/2021.
`
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220425
`
`Application No.
`Applicant(s)
`16/982,619
`MAEDAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BERNADETTE K MCGANN
`4146
`Yes
`
`
`
`-- The MAILING DATEofthis 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 09/21/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)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.
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 2
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`DETAILED ACTION
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`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.
`
`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 moreclaims 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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element ina 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-AlA 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
`
`meaningof the claim languagein 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-AlA 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-AlIA 35 U.S.C. 112, sixth paragraph:
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 3
`
`(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-AlA 35
`
`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C.
`
`112(f) or pre-AlA 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-AlA 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-AlIA 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-AlA 35 U.S.C. 112, sixth paragraph,
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`except as otherwise indicated in an Office action.
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`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 4
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`Claims 1-14 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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-AlA 35 U.S.C. 112, the applicant), regards
`
`as the invention.
`
`The term “fine” in claims 1, 4, 10 and 11 is a relative term which rendersthe claim indefinite.
`
`The term “fine” is not defined by the claim, the specification does not provide a standard for
`
`ascertaining the requisite degree, and one of ordinary skillin the art would not be reasonably apprised
`
`of the scope of the invention. The limitation "fine bubble" is deemed indefinite. Claims 2-14 are also
`
`rejected by virtue of the claim dependency.
`
`Claim 8, line 3 and claim 14, line 2, recite “the gel particle.” This limitation lacks antecedent
`
`basis.
`
`Appropriate correction is required.
`
`Claim limitation "a particle feeding mechanism"of claims 3 and 9 has been evaluated under the
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`three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus,it is unclear
`
`whetherthis limitation should be interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth
`
`paragraph, because the term "mechanism"is a generic placeholder coupled with language, "connected
`
`to the feeding point to bring the particle to the feeding point", that may or may not be functional
`
`language. Thatis, it is unclear if the "bring the particle to the feeding point" is functional language.. The
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`boundariesof this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under
`
`35 U.S.C. 112(b) or pre-AlA 35 U.S.C. 112, second paragraph.
`
`In responseto this rejection, applicant must clarify whether this limitation should be interpreted
`
`under 35 U.S.C. 112(f) or pre-AlIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s
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`

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`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 5
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`intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph is insufficient.
`
`Applicant may:
`
`(a)
`
`Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, by
`
`reciting “means” or a generic placeholder for means,or by reciting “step.” The “means,” generic
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`placeholder, or “step” must be modified by functional language, and must not be modified by
`
`sufficient structure, material, or acts for performing the claimed function;
`
`(b)
`
`Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
`
`should apply because the claim limitation recites a function to be performed and doesnotrecite
`
`sufficient structure, material, or acts to perform that function;
`
`(c)
`
`Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth
`
`paragraph, by deleting the function or by reciting sufficient structure, material or acts to
`
`perform the recited function; or
`
`(d)
`
`Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does
`
`not apply becausethe limitation does not recite a function or does recite a function along with
`
`sufficient structure, material or acts to perform that function.
`
`Double Patenting
`
`Claim 1 of this application is patentably indistinct from claims 3 and 4 of Application No.
`
`16/488,592. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or
`
`assignee contain patentably indistinct claims, elimination of such claims from all but one application
`
`may be required in the absence of good and sufficient reason for their retention during pendencyin
`
`more than one application. Applicant is required to either cancel the patentably indistinct claims from all
`
`but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
`
`Claim Rejections - 35 USC § 103
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 6
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`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-AlA 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 ofrejection if the prior art relied upon, and
`
`the rationale supporting the rejection, would be the same under eitherstatus.
`
`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 ordinaryskill 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
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`nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the claims the
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`examiner presumesthat the subject matter of the various claims was commonly ownedas of the
`
`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
`
`of the obligation under 37 CFR 1.56 to point out the inventor and effectivefiling dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
`
`to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art
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`against the later invention.
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`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 7
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`Claims 1, and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/089443
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`(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
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`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).
`
`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
`
`deemeda 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
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`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 thatit 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 presumed inherently
`
`capable of storing hard water.) and a fine bubble generator configured to generate a fine bubble 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 thatit is well settled that where there
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 8
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`is areason to believe that a functional characteristic would be inherentin the prior art, the burden of
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`proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128
`
`F.3d at 1478, 44 USPQ2dat 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 “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.).
`
`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
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`material in a liquid (and may be a solid or liquid phase material that is phase separatedin 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
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`surroundingliquid. 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
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`heterogeneous mixture of compounds . The neutrally buoyant material may include a single phase or
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`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
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`understood bythoseskilled in the art that the use of “neutrally buoyant" herein refers to materials that
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`are neutrally buoyant, and to materials that are nearly neutrally buoyant. Further, it will be understood
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`by those skilled in the art that a reference to a neutrally buoyant "material" in a liquid may encompass a
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`

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`Application/Control Number: 16/982,619
`Art Unit: 4146
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`Page 9
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`single such material, or multiple materials.” See paragraph [00122]. The bubbles formed by the header
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`(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
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`bubble in the hard water storage and crystallizing and precipitating the adsorbed metal ion. NPL is
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`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
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`“technique for the dissolution and crystallization of CaCO; in the gas-liquid-solid phases using water-
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`soluble acid or basic microbubbles....” See page 477, section 1. “CO2 microbubbles were fed
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`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 CaO; were reactively crystallized.” See page 477,
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`section 2.3.2. “CO2/NH3 micro-bubbles were continuously fed...into... an aqueous 0.1 mol/I solution of
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`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.
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`WO ‘443 also discloses a particle feeder (See figure 11, tank (912), slurry composition (914/16))
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`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 presumedto 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 “particle feeder” of the present application,
`
`and therefore, the structure of WO ‘443 is presumed inherently capable of bringing a particle containing
`
`a same elementas that of the metal ion into the hard water.) at a feeding point, the feeding point being
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 10
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`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 that it is
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`prima facie obvious to rearrange parts of an apparatus. Hence, rearranging the location of the feeding
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`point in the ion removal system is merely a design choice.)
`
`In the alternative, where WO ‘443is 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
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`‘996 and is rendered obvious by WO ‘443in view of JP ‘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 exchange devicefilled 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
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`resin, and OH-type, carbonic acid-type, and bicarbonate-type anions are used as the anion exchange
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`resin.” See JP ‘996, page 2, paragraph [77]. JP ‘996 discloses that the seed crystals in the crystallization
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`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
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`the invention to use calcium carbonate as the seed crystal, as disclosed in JP ‘996, for the seed crystal of
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`WO ‘443. This modification would achieve a particle, calcium carbonate, containing a same element as
`
`that of the metal ion, calcium, into the hard water, as established above by WO ‘443 as evidenced by
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`NPL. One of ordinary skill in the art would have been motivated to make this modification becauseit
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`would achieve removal of calcium ions from the water, thereby achieving the objective of WO ‘443,i.e.
`
`waterpurification. Furthermore, using calcium carbonate achievesrapid crystallization, generation of
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`small fine particles of calcium carbonate and minimal sludge is generated. See JP ‘996, page 5,
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`paragraph [180].
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 11
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`WO ‘443 does not explicitly disclose an ion removal device and a particle feeder being presentin
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`a single ion removal system.
`
`It would have been obvious to one of ordinaryskill in the art before the
`
`effective filing date of the invention to modify the holding tank (802) containing the solution (804) of
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`apparatus (800) to the tank (912) containing the slurry composition (914/16) comprising seed crystals of
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`apparatus (908) in order to achieve improved removal of impurities of contaminates from water ina
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`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,
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`holding tank (802), solution (804), See figure 11, tank (912), slurry composition (914/16)) includes
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`a particle feeding mechanism connected to the feeding point to bring the particle to the feeding
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`point (See figure 11, combined flow pipe (924)); and
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`a particle storage configured to store the particle to be supplied to the particle feeding
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`mechanism (See figure 11, tank (912). Additionally, “[I]n such embodiments, various alternative means
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`of supplying both a watersoluble sulfate salt and seed crystals of strontium sulfate are used with equal
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`advantage to supplying slurry composition 914 to the source 910 of water product 926. For example, dry
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`powder metering systems for addition of seed crystals, water soluble sulfate salt, or a single apparatus
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`for providing a blend of both components are employed in some embodimentsto deliver the dry
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`material components directly to the water product 926as it flows into the mixing apparatus 928,
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`whereupon the componentsare mixed directly into the water product.” See paragraph [00270]. WO
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`‘443 discloses an alternative embodimentfor supplying seed crystals to the feeding point to bring the
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`particle into the hard water.).
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`Regarding claim 4, WO ‘443 or modified WO ‘443 discloses the invention as discussed abovein
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`claim 3. Further, WO ‘443 or modified WO ‘443 discloses an ion removal gas storage configured to store
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`an ion removal gas as a raw material of the fine bubble generated by the fine bubble generator (See
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`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 12
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`figure 6, pressurized gas source (814). Additionally, regarding product and apparatus claims, when the
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`structure recited in the reference is substantially identical to that of the claims, claimed properties or
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`functions are presumedto be inherent. The Courts have held thatit is well settled that where thereis a
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`reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof
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`then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d
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`at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01,I.). Herein, the
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`structure of WO ‘443 is substantially identical to the claimed “ion removal gas storage” of the present
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`application, and therefore, the structure of WO ‘443 is presumed inherently capable of storing an ion
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`removal gas as a raw material of the fine bubble generated by the fine bubble generator.),
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`wherein the particle storage and the ion removal gas storage are integrated with each other
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`(WO ‘443, as discussed above, renders obvious an apparatus incorporating both the particle feeder
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`(apparatus 908) and the ion removal gas storage (apparatus 800) in a single ion removal system. The
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`Examiner deems “integrated with each other” to mean that both the particle storage and the ion
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`removal gas storage are present in the same apparatus. Additionally, MPEP 2144.04, Section V., B.,
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`holds thatit is prima facie obvious to modify a multi-component structure into a single integral
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`structure. Hence, making the particle storage and the ion removal gas storage integrated with each
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`other is merely a matter of obvious engineering choice.).
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`Regarding claim 5, 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 an ion removal gas supplier configured to
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`supply the fine bubble generator with an ion removal gas as a raw material of the fine bubble generated
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`by the fine bubble generator (See figure 6, pressurized gas source (814). Additionally, regarding product
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`and apparatus claims, when the structure recited in the reference is substantially identical to that of the
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`claims, claimed properties or functions are presumed to be inherent. The Courts have held thatit is well
`
`settled that where there is a reason to believe that a functional characteristic would be inherent in the
`
`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 13
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`prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary.
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`See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP
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`§ 2112.01, |.). Herein, the structure of WO ‘443 is substantially identical to the claimed “ion removal gas
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`supplier” of the present application, and therefore, the structure of WO ‘443 is presumed inherently
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`capable of supplying the fine bubble generator with an ion removal gas as a raw material of the fine
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`bubble generated by the fine bubble generator.); and
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`an ion removal gas flow path connecting the ion removal gas supplier and the fine bubble
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`generator with each other (See figure 6, pipe connecting pressurized gas source (814) to the pressurized
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`tank (812) to the header (816) within the vessel (820)),
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`wherein the feeding point is located in the ion removal gas flow path (Feeding pointis the
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`pressurized tank (812). Additionally, MPEP 2144.04, Section VI., C., holds that it is prima facie obvious to
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`rearrange parts of an apparatus. Hence, rearranging the location of the feeding point is merely a design
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`choice.).
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`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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`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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`

`

`Application/Control Number: 16/982,619
`Art Unit: 4146
`
`Page 14
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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 ofordinaryskill 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 rearrangeparts 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 o