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`
`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 675 of 1333
`
`PTO/SB/06 (09-11)
`Approvedfor use through 1/31/2014. OMB 0651-0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`PATENT APPLICATION FEE DETERMINATION RECORD|*°Plcation or Docket Number [Fling Date
`Substitute for Form PTO-875 01/21/2015|[7] Tc be Mailed14/601 340
`
`
`
`entry:
`
`[| carce &) smatt [] micro
`
`APPLICATION AS FILED — PART|
`
`(Column 1)
`
`(Column 2)
`
`NUMBER FILED
`
`NUMBER EXTRA
`
`RATE($)
`
`FEE ($)
`
`meee37 CFR 1.16(a),
`
`(b), or (c))
`
`LJ searcu FEE
`
`LI EXAMINATION FEE
`TOTAL CLAIMS
`(37 CER 1.16(i)
`INDEPENDENT CLAIMS
`(37 CFR 1.16(h
`
`LIAPPLICATION SIZE FEE
`(37 CFR 1.16(s))
`
`)
`
`’
`
`/
`minus 20 =
`;
`minus 3 =
`If the specification and drawings exceed 100 sheets
`of paper, the application size fee due is $310 ($155
`for small entity) for each additional 50 sheets or
`fraction thereof. See 35 U.S.C. 41(a)(1)(G) and 37
`
`C] MULTIPLE DEPENDENT CLAIM PRESENT(87 CFR 1.16(j})
`* If the difference in column1 is less than zero, enter “O”in column 2.
`
`APPLICATION AS AMENDED - PARTII
`
`01/26/2016|REMAINING a PREVIOUSLY
`
`(Column 1)
`CLAIMS
`
`(Column 2)
`HIGHEST
`
`(Column 3)
`
`AMENDMENT
`
`AMENDMENT
`
`PAID FOR
`
`Toa ror
`rereah
`LJ Application Size Fee (37 CFR 1.16(s))
`
`oO FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR 1.16(j))
`
`TOTAL ADD'L FEE
`
`(Column 1)
`CLAIMS
`
`(Column 2)
`HIGHEST
`
`(Golumn 3)
`
`ADDITIONALFEE($)
`
`The “Highest Number Previously Paid For” (Tatal or Independent) is the highest number found in the appropriate box in column 1. ADDITIONALFEE($)
`
`PAID FOR
`AMENDMENT.
`Kb
`ste
`3aLT
`=I[_] Application Size Fee (37 CFR1.16(s))
`
` if the entry in column 1 is less than the entry in column2, write “O" in column 3.
`
`oO FIRST PRESENTATION OF MULTIPLE DEPENDENTCLAIM (37 CFR 1.16(j))
`
`** If the “Highest Number Previously Paid For” IN THIS SPACEis less than 20, enter “20”.
`*** If the “Highest Number Previously Paid For’ IN THIS SPACEisless than 3, enter “3”.
`
`LIE
`/TAMARA DARKO/
`
`This collection ofinformation is required by 37 GFR 1.16. The information is required to obtain or retain a benefit by the public whichis to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete. including gathering,
`preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amountof time you
`require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S.
`Department of Gommerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMSTO THIS
`ADDRESS. SEND TO: Commissionerfor Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`if you need assistance in completing the form, calf 1-800-PTO-9199 and select option 2
`
`Page 675
`
`JA1993
`
`OWTEx. 2119
`Tennant Company v. OWT
`IPR2021-00625
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 676 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 676 of 1333
`
`PATENT ASSIGNMENT COVER SHEET
`
`Electronic Version v1.1
`Stylesheet Version v1.2
`
`EPAS ID: PAT3803298
`
`SUBMISSION TYPE:
`
`NEW ASSIGNMENT
`
`NATURE OF CONVEYANCE:
`
`CONVEYING PARTY DATA
`
`OXYGENATOR WATER TECHNOLOGIES, INC.
`
`03/13/2016
`
`RECEIVING PARTY DATA
`
`Name:
`Street Address:
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`1600 TCF TOWER
`
`Internal Address:
`
`121 SOUTH 8TH STREET
`
`
`
`
`
`
`City:
`MINNEAPOLIS
`
`State/Country:
`Postal Code:
`
`MINNESOTA
`55402
`
`PROPERTY NUMBERS Total: 4
`
`
`Property Type
`Number
`
`Application Number:
`12023431
`
`Application Number:
`
`14601340
`
`Application Number:
`
`Application Number:
`
`13247241
`
`13657311
`
`CORRESPONDENCE DATA
`
`(612)642-8407
`Fax Number:
`Correspondencewill be sent to the e-mail addressfirst; if that is unsuccessful, it will be sent
`using a fax number, if provided;if that is unsuccessful, it will be sent via US Mail.
`Phone:
`612-672-8200
`
`Email:
`Correspondent Name:
`AddressLine 1:
`Address Line 2:
`
`debra.dix@maslon.com
`AMY SWEDBERG
`90 SOUTH 7TH STREETSTE 3300
`MASLON LLP
`
`AddressLine 4:
`
`MINNEAPOLIS, MINNESOTA 55402
`
`NAME OF SUBMITTER:
`
`STEVEN W. LUNDBERG
`
`
`
`
`
`PidocumentsonsasanGanvBecaration@7OFRTG
`
`Page 676
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`JA1994
`
`OWTEx. 2119
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`IPR2021-00625
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`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 677 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 677 of 1333
`
`Total Attachments: 2
`
`source=Oxygenator - Ex.Alist of patents#page1 tif
`
`source=OWTLien#page1.tif
`
`Page 677
`
`JA1995
`
`OWTEx. 2119
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 678 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 678 of 1333
`
`NOTICE OF ATTORNEYS’ LIEN IN PATENTS
`
`NOTICE IS HEREBY GIVENthat the law firm of Schwegman, Lundberg & Woessner,
`
`P.A. (“Law Firm”), with its principal place of business at 1600 TCF Tower, 121 South Eighth
`
`Street, Minneapolis, Minnesota, duly authorized to practice as such in the State of Minnesota,
`
`claims and holdsalien in andto all of the patents listed on Exhibit A, and all of the applications
`
`and registrations associated therewith, together with all proceeds thereof, of Oxygenator Water
`
`Technologies, Inc., a Minnesota corporation (“Client”), with its registered address at 1660 8
`
`Hwy 100 #598, St Louis Park, MN 55416. Said lien is claimed for legal services rendered by
`
`Law Firm to Client for representation of Client in proceedings involving and affecting the
`
`ownership andtitle to the property upon whichthis lien is claimed for the reasonable and agreed
`
`upon value of $257,609.80 of which the sum of $43,977.30 remains unpaid.
`
` ERG & WOESSNER,P.A.
`
`Shareholder
`
`STATE OF MINNESOTA_)
`)
`ss.
`COUNTY OF HENNEPIN_)
`
`d
`
`On this23"- day of March, 2016, before me personally came Steven W. Lundberg, who
`being duly sworn did depose and say that he is a shareholder of the Law Firm described in and
`which executed the foregoing instrument.
`
`
`
`NOTARYYhessaa(Q). Mabou
`
`
`THERESA A. HATHAWAY
`2 NOTARY PUBLIC - MINNESOTA:
`
`: My Commission Expires
`
`January 31, 2018
`
`
`Page 678
`
`JA1996
`
`OWTEx. 2119
`Tennant Company v. OWT
`IPR2021-00625
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`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 679 of 1333
`
`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 679 of 1333
`
`3406.006US1
`Utility-
`
`NPREG
`
`
`
`
`
`ENHANCEDRESINREGENIUnitedStatesofAmerica
`
`
`
`
`
`3406.005USR
`Utility-REIS
`
`
`
`
`
`
`
`FLOW-THROUGHOXYGENDUnitedStatesofAmerica
`
`3406.005US2
`Utility-REIS
`
`
`
`
`
`
`
`FLOW-THROUGHOXYGENDUnitedStatesofAmerica
`
`NUMBER
`
`SLWFILE
`
`
`
`
`
`
`
`MATTERTYPETITLECOUNTRY
`
`3406.002US1
`Utility-DIV
`
`
`
`
`
`FLOW-THROUGHOXYGERUnitedStatesofAmerica
`
`
`FILINGDATENUMBER
`ExhibitA
`
`
`Sep28,201113/247,241
`
`
`Oct22,201213/657,311
`
`
`Jan31,200812/023,431
`
`
`Jan21,201514/601,340
`APPLICATION
`
`Pending
`
`Issued
`
`
`
`
`
`Mar17,2015RE45,415
`
`0098819-A1
`
`Oct24,2011US-2013-
`
`
`
`MarkRolfes
`
`Transferred
`
`
`
`Sep28,2011
`
`STATUS
`
`ISSUEDATENUMBER
`
`
`DATENUMBER
`
`INVENTORS
`
`Issued
`
`Mar2,20107,670,495
`
`
`Feb22,2002US2008-
`
`JamesAndrew
`
`0179259A1
`Senkiw
`
`PATENT
`
`
`
`PRIORITYPUBLICATION
`
`Senkiw
`
`
`
`JamesAndrew
`
`Senkiw
`
`
`
`JamesAndrew
`
`Page 679
`
`JA1997
`
`OWTEx. 2119
`Tennant Company v. OWT
`IPR2021-00625
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`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 680 of 1333
`
`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 680 of 1333
`
`WWW.usplO.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450,
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION No.
`
`14/601,340
`
`FILING DATE
`
`01/21/2015
`
` APPLICATION NO.
`
`James Andrew Senkiw
`
`3406.005SUS2
`
`1069
`
`Carl
`rs.
`1 Pind
`Carlson, Caspers, Vandenburgh, T.indquist &Loier
`Schuman, PA
`JOHNSON,JERRYD
`225 South 6th Street
`Suite 4200
`Minneapolis, MN 55402
`
`ART UNIT
`3991
`
`PAPER NUMBER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time periodforreply, if any, is set in the attached communication,
`
`MAIL DATE
`
`10/05/2016
`
`DELIVERY MODE
`
`PAPER
`
`PTOL-90A (Rev. 04/07)
`
`Page 680
`
`JA1998
`
`OWTEx. 2119
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`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 681 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 681 of 1333
`
`
`
`
`
`Application No.
`Applicant(s)
`14/601,340
`SENKIW, JAMES ANDREW
`
`Examiner
`Art Unit
`AIA(First Inventorto File)
`JERRY D. JOHNSON
`3991
`No
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`Office Action Summary
`
`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).
`after SIX (6) MONTHS from the mailing date of this communication.
`-
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (8) MONTHS from 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).
`
`In na event, however, may a reply betimely filed
`
` Attachment(s)
`
`Status
`1)X] Responsive to communication(s)filed on January 26, 2016.
`(J 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)L Anelection 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)L] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)X] Claim(s) 13-69 is/are pending in the application.
`5a) Of the aboveclaim(s)
`is/are withdrawn from consideration.
`\E] Claim(s)__ is/are allowed.
`7) Claim(s) 13-69 is/are rejected.
`\L] Claim(s)__ is/are objected to.
`9)L) Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may beeligible 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.dov/patents/init_ events/pph/index.isp or send an inquiry to PPHieedback@uspto.daov.
`
`
`
`Application Papers
`10)[] The specification is objected to by the Examiner.
`
`
`11)D The drawing(s) filed on
`is/are: a)L_] 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) Acknowledgmentis madeof a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a) All
`b)[] Some** cc) None ofthe:
`1.1] Certified copies of the priority documents have beenreceived.
`2 Certified copies of the priority documents have been received in Application No.
`3.0] Copies ofthe certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 1 7.2(a)).
`“ See the attached detailed Office action for a list of the certified copies not received.
`
`1) | Notice of References Cited (PTO-892)
`;
`;
`2) | Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) C Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`oO Other:
`ther
`
`4)
`
`Part of Paper No./Mail Date 20160915
`
`Page 681
`
`JA1999
`
`OWT Ex. 2119
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`IPR2021-00625
`
`

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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 682 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 682 of 1333
`
`Application/Control Number: 14/601,340
`Art Unit: 3991
`
`Page 2
`
`The present application is being examined underthe pre-AJAfirst to invent provisions,
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
`
`37 CFR 1.114. Applicant's submission filed on January 26, 2016 has been entered.
`
`Reissue Applications
`
`Forreissue applications filed on or after September 16, 2012, all references to 35 U.S.C.
`
`251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
`
`This is a Request for Continued Examination (RCE), filed January 26, 2016, of
`
`continuation reissue application 14/601,340 of U.S. Patent No. 7,670,495 (the ‘495 patent) which
`
`issued from U.S. Patent Application No. 12/023,431 (the ‘431 application) with claims 1-12 on
`
`March 2, 2010. The ‘495 patent was previously reissued as U.S. RE45,415 on March 17, 2015,
`
`based on U.S. Application No. 13/247,241 (the ‘241 reissue application) filed September 28,
`
`2011. The ‘495 patent is a division of U.S. Patent No. 7,396,441, (the ‘441 patent) which issued
`
`from U.S. Application No. 10/732,326 (the '326 application) which is a continuation-in-part of
`
`U.S. Patent No. 6,689,262 (the ‘262 patent).
`
`Page 682
`
`JA2000
`
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`IPR2021-00625
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 683 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 683 of 1333
`
`Application/Control Number: 14/601,340
`Art Unit: 3991
`
`Page 3
`
`Notice
`
`Tf the patent reissue application issues without any cross reference to the continuation
`
`reissue application, amendmentto the parent reissue application to include a cross-reference to
`
`the continuation reissue application must be doneat the time of allowance of the continuation
`
`reissue application by Certificate of Correction. See MPEP 1451(ID(March 2014).
`
`Reissue Declaration
`
`The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175
`
`and MPEP § 1414) because of the following:
`
`The declaration does not identify the alleged error to be corrected by this continuation
`
`reissue application. More specifically, the rcissuc declaration statcs “[t]he ‘495 emitter claim 2,
`
`for example, is too broad in that it does not recite certain features of the disclosed emitter
`
`embodiment corresponding to FIGS. 7A and 7B andinclude, for example: the electrodes are
`
`positioned in the outer perimeter of the oxygenation chamber; this positioning of the electrodes
`
`provides an unobstructed passageway for water to flow; in that unobstructed passageway, water
`
`may flow from the water inlet to the water outlet without passing through a space between the
`
`electrodes of opposite polarity; and a portion of at least one of the first and second electrodes is
`
`in contact with a wall of the tubular housing.” (Paragraph7).
`
`Claim 2 of the ‘495 patent recites:
`
`2. An emitter for electrolytic generation of microbubbles of oxygen in an aqueous
`medium comprising:
`an anode separated at a critical distance from a cathode,
`a nonconductive spacer maintaining the separation of the anode and cathode,
`
`Page 683
`
`JA2001
`
`OWTEx. 2119
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`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 684 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 684 of 1333
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`Application/Control Number: 14/601,340
`Art Unit: 3991
`
`Page 4
`
`the nonconductive spacer having a spacer thickness between 0.005 to 0.050
`inches such that the critical distance is less than 0.060 inches and a powersourceall in
`electrical communication with each other,
`wherein the critical distance results in the formation of oxygen bubbles having a
`bubble diameter less than 0.0006 inches, said oxygen bubble being incapable of breading
`[sic]
`the surface tension of the aqueous medium such that said aqueous medium is
`supersaturated with oxygen.
`
`The '495 patent does not contain claims to an emitter positioned within a conduit (as
`
`shownin Fig. 7), rather, it is the '441 divisional patent which claims an emitter positioned within
`
`aconduit. During prosecution of the '441 patent application, applicant specifically cited to Fig. 7
`
`as support for the '441 patent claims. The present continuation reissue application cannot
`
`broaden the claims of the ‘441 divisional patent (which issued July 8, 2008). Nor can the present
`
`continuation reissue application recapture subject matter that was surrendered during the
`
`prosecution of the '441 divisional patent.
`
`Claims 13-69 are rejected as being based upon a defective reissue declaration under 35
`
`U.S.C. 251 as set forth above. See 37 CFR 1.175.
`
`The nature of the defect(s) in the declaration is set forth in the discussion abovein this
`
`Office action.
`
`Amendment
`
`The amendmentfiled January 26, 2016 is improper. Specifically, pursuant to 37 CFR
`
`1.173(c), each claim amendment must be accompanied by an explanation of the support in the
`
`disclosure of the patent for the amendment(i.e., support for all changes made in the claim(s),
`
`whetherinsertions or deletions). The failure to submit an explanation will generally result in a
`
`Page 684
`
`JA2002
`
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`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 685 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 685 of 1333
`
`Application/Control Number: 14/601,340
`Art Unit: 3991
`
`Page 5
`
`notification to applicant that the amendment before final rejection is not completely responsive
`
`(see 37 CFR 1.135(c)). Such an amendmentafterfinal rejection will not be entered.
`
`Scope of Claims
`
`The present reissue application seeks to broaden previously patented claim 2 directed to
`
`an emitter for electrolytic generation of microbubbles of oxygen in an aqueous medium. Claim
`
`13 is representative:
`
`13. (New) An emitter for electrolytic generation of bubbles of oxygen in water,
`the emitter comprising:
`
`a tubular housing having a water inlet. a water outlet, and a longitudinal water
`flow axis from the inlet to the outlet;
`at least two electrodes comprising a first electrode and a second electrode, at least
`portions of the first and second electrodes being positioned in the tubular housing,
`the first electrode opposing and separated from the second electrode by a distance
`of between 0.005 inches up to 0.140 inches within the tubular housing;
`
`
`each electrode of the emitter is positioned so that substantially all points midway
`between all opposing electrodes are closer to a surface of the tubular housing
`than to a center point within the tubular housing and so that at least some water
`may flow from the waterinlet to the water outlet without passing through a space
`between electrodes of opposite polarity separated by a distance of between 0.005
`
`inches to 0.140 inches;
`
`a powersource in electrical communication with the electrodes, the power source
`configured to deliver a voltage to the electrodes, the voltage being less than or
`
`equal to 28.3 volts, the power source being configured to deliver a current to the
`electrodes, the current being less than or equal to 12.8 amps:
`
`the power source being operable to delivery electric current to the electrodes
`
`while water flows through the tubular housing and is in contact _with the
`electrodes to produce oxygen in said watervia electrolysis.
`
`Page 685
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 686 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 686 of 1333
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`Application/Control Number: 14/601,340
`Art Unit: 3991
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`Page 6
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`The ‘495 patent specification contains the following definitions:
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`“Oz emitter” means a cell comprised of at least one anode and at least one cathode
`
`separated by the critical distance.
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`(Column4,lines 7-8)
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`“Critical distance” meansthe distance separating the anode and cathode at which evolved
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`oxygen forms microbubbles and nanobubbles.
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`(Column4,lines 1-3)
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`Column 3, lines 11-13 of the ‘495 patent teach “[iJ]n order to form microbubbles and
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`nanobubbles, the anode and cathode are separated by a critical distance. The critical distance
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`ranges from 0.005 inches to 0.140 inches.”
`
`An “Oz emitter” is “[a]n emitter for electrolytic generation of bubbles of oxygen” as
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`recited in claims 13-69. Accordingly, the emitter of claims 13-69 comprises at least one anode
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`and at least one cathode separate by the critical distance of from 0.005 to 0.140 inches.
`
`Claims 13-69 recite “a tubular housing having a waterinlet, a water outlet, and a
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`longitudinal water flowaxis from the inlet to the outlet” (claim 13); “a tubular housing defining
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`an oxygenation chamberand having a waterinlet, a water outlet, a longitudinal water flow axis
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`from theinlet to the outlet” (claim 27); “a tubular housing defining an oxygenation chamber and
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`having a waterinlet, and a water outlet” (claim 37); "a tubular housing defining an oxygenation
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`chamber, and having an inward-facing surface that definesat least in part the oxygenation
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`chamber, a water inlet, and a water outlet” (claim 50) and; “a tubular housing defining an
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`oxygenation chamber,said housing having an outer wall that runs parallel to a longitudinal
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`center axis of the housing, said housing having a waterinlct and wateroutlct” (claim 62).
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`Page 686
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 687 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 687 of 1333
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`Application/Control Number: 14/601,340
`Art Unit: 3991
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`Page 7
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`The“tubular housing”recited in claims 13-69 is a “fluid conduit” as recited in claims 1-
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`15 of the 441 patent, i.c., “a fluid conduit having a fluid inlet and a fluid outlet fluidily connected
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`with a conduit lumen” (‘441 patent, claim 1).
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`Claims 13-69 are thus directed to an emitter for electrolytic generation of microbubbles
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`of oxygen comprising at least one anode andat least one cathode separated by a distance of
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`0.005 to 0.140 inches wherein the emitter is positioned with a conduit having an inlet and an
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`outlet.
`
`35 U.S.C. § 112, 1" paragraph
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`
`
`
`(a) IN GENERAL.—Thespecification shall contain a written description of the invention,
`and of the manner and process of making and usingit, in such full, clear, concise, and exact terms as to
`enable any personskilled in the art to which it pertains, or with which it is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor
`of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and usingit, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art lo which il pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`Claims 13-69 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph,as failing to comply with the written description requirement. The claim(s) contains
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`subject matter which wasnot described in the specification in such a way as to reasonably
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`convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-ATA the
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`inventor(s), at the time the application wasfiled, had possession of the claimed invention.
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`Page 687
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 688 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 688 of 1333
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`Application/Control Number: 14/601,340
`Art Unit: 3991
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`Page 8
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`There is no support for claiming “at least portions of the first and second electrodes being
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`positioned in the tubular housing”; “each electrode of the emitter is positioned so that
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`substantially all points midway between all opposing electrodesare closer to a surface of the
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`tubular housing than to a center point within the tubular housing”’; “at least one of the first and
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`second electrodes is positioned in the tubular housing closer to the inward-facing surface than
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`said distance separating the electrodes”; “each electrode of the emitter is positioned closer to the
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`inward-facing surface than to the longitudinal axis at the center of the tubular housing”; “the
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`electrodes are positioned away from a longitudinal center axis of the tubular housing"; "the
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`passageway running longitudinally for at least the length of that portion of one ofthe electrodes
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`positioned within the tubular housing”; "the unobstructed passageway includes the centeraxis
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`and is multiple times widerthan the distance separating the opposing first and second electrodes
`
`within the tubular housing”; “the outside electrode defines a cross-sectional area between the
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`outside electrode and the inward facing surface of the tubular housing that is substantially less
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`than a cross-sectional area of the unobstructed passageway”; “the passageway runningfor at
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`least the length of that portion of one of the electrodes positioned within the housing"; “the
`
`outside electrode defines a cross-sectional area between the outside electrode and the inward
`
`facing surface of the tubular housing that is substantially less than a cross-sectional area of the
`wea
`unobstructed passageway";
`
`"a portion ofat least one ofthe first and second electrodes being in
`noon
`contact with at least one wall of the tubular housing”;
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`"the electrode in contact with a wall of the
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`tubular housing is in contact with a curved wall of the tubular housing" and; "the unobstructed
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`passageway having a substantially uniform cross-sectional area along that length.”
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`Page 688
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 689 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 689 of 1333
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`Application/Control Number: |4/601,340
`Art Unit: 3991
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`Page 9
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`To the extent that applicant's Reissue Declaration references Figures 7A and 7B as
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`support for the above claim limitations, e.g., “it was an error not to include emitter claims that
`
`include varying combinations of the features disclosed in the emitter embodiment corresponding
`
`to FIGS. 7A and 7B ofthe ‘495 patent” (Page | of the Declaration filed January 26, 2016),
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`Figures 7A and 7B are NOTtaught as being to scale. Accordingly, Figures 7A and 7B do not
`
`provide support for limitations which are not otherwise disclosed in the ‘495 patent specification.
`
`Nor do Figures 7A and 7B disclose features that are nowbeing claimed. For example, Figures
`
`7A and 7B do not disclose an emitter wherein “at least portions of the first and second
`
`electrodes being positioned in the tubular housing”(i.e., the first and second electrodes are
`
`positioned entirely within the tubular housing of Figures 7A and 7B), or an emitter wherein "a
`
`portion of at least one of the first and second electrodes being in contact with at least one wall of
`
`the tubular housing”. Likewise, Figures 7A and 7B do not provide written description support
`
`for reciting “substantially” in said claim limitations.
`
`35 U.S.C. § 112, 2ndparagraph
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION. The specification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventoror a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AJA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 13-27, 31, 38, 55, 56 and 62-69 are rejected under 35 U.S.C. 112(b) or 35 U.S.C.
`
`112 (pre-AIA), second paragraph,as being indefinite for failing to particularly point out and
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`Page 689
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 690 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 690 of 1333
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`Application/Control Number: 14/601,340
`Art Unit: 3991
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`Page 10
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`distinctly claim the subject matter which the inventoror a joint inventor, or for pre-AITA the
`
`applicant regards as the invention.
`
`In claims 13, 19, 20, 31, 38, 55 and 62,the term “substantially” is subjective and
`
`indefinite.
`
`35 U.S.C. § 112, 4th paragraph
`
`The following is a quotation of 35 U.S.C. 112(d):
`
`
`
`
`
`
`(d) REFERENCE IN DEPENDENT FORMS.—Subjectto subsection (c), a claim in dependent form
`shall contain a reference to a claim previously set forth and then specify a further limitation of the
`subject matter claimed. A claim in dependent form shall be construcd to incorporate byreferenceall the
`limitations of the claimto whichit refers.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph[i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in
`dependent formshall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by
`reference all the limitations of the claim to whichit refers.
`
`Claims 23, 26, 36, 46, 49, 58, 61 and 69 are rejected under 35 U.S.C. 112(d) or pre-AIA
`
`35 U.S.C. 112, 4th paragraph, as being of improper dependent form forfailing to furtherlimit the
`
`subject matter of the claim upon which it depends, or for failing to include all the limitations of
`
`the claim upon which it depends.
`
`The ‘495 patent teaches that a “critical distance” separating the anode and cathode
`
`ranging from 0.005 inches to 0.140 inchesis the distance at which evolved oxygen forms
`
`microbubbles and nanobubbles. As each of the claims from which claims 23, 26, 36, 46 and 49
`
`dependare already limited to the critical distance, the recitation in claims 23, 26, 36, 46 and 49
`
`to forming microbubbles or nanobubbles is not a further limitation to these claims. In like
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`Page 690
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 691 of 1333
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`CASE 0:20-cv-00358-ECT-HB Doc. 74-1 Filed 06/09/21 Page 691 of 1333
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`Application/Control Number: 14/601,340
`Art Unit: 3991
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`Page 1]
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`manner, the recitation in dependent claims 58, 61 and 69 that the emitter is “operable” to create
`
`microbubbles or nanobubbles is not a further limitation to the claims.
`
`Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper
`
`dependent form, rewrite the claim(s) in independent form,or present a sufficient showing that
`
`the dependentclaim(s) complies with the statutory requirements.
`
`Recapture
`
`Claims 13-69 are rejected under 35 U.S.C. 251 as being an improperrecapture of
`
`broadened claimed subject matter surrendered in the application for the patent upon which the
`
`present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103
`
`USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d
`
`1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak
`
`Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments
`
`Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142
`
`F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161
`
`(Fed, Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed.
`
`Cir. 1984). A broadening aspectis present in the reissue which wasnotpresent in the
`
`application for patent. The record ofthe application for the patent shows that the b