DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2: “the engineered biofilm retaining regions” lacks antecedent basis in the claim. Claim 1 recites “at least one engineered biofilm retaining region” but not positively that there is more than one.
Claim 7: “is shaped to optimise” is indefinite as it is unclear what shape that would be and what “optimise” means.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), 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 construed to incorporate by reference all the limitations of the claim to which it 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 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 construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 10 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 for failing to further limit 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.
Claim 7 recites that the internal lumen and “cylindrical sidewall”, being referred to as the “inner surface”, is “shaped to optimise gas transfer through the membrane”. However, this has no apparent definitive structure and it appears that cylindrical is the shape being referred to. The inner surface of the hollow fiber is already recited in Claim 1 as being cylindrical. It does not appear that Claim 7 further limits Claim 1 in any meaningful way.
Claim 10 recites what is now recited in Claim 1. As such, Claim 10 does not further limit Claim 1.
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 dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-12 are rejected under 35 U.S.C. 102(a) as being anticipated by Herczeg (US Pub. No. 2003/0140790).
Claims 1 and 10: Herczeg teaches a hollow fiber membrane comprising a substantially cylindrical sidewall defining an internal lumen from which gas can permeate the membrane (Fig. 7b, 200; i.e. bore). An outer surface of the substantially cylindrical sidewall comprises spaced-apart protrusions (Fig. 7b, 200) which the height of the protrusions is 0.019 inches [0038], which is equal to 480 microns. Herczeg teaches that the applications of their hollow fibers are for gas filtration [0077] which would require gas permeating the membrane. While they don’t name the region between the protrusions as “biofilm retaining region[s]”, this is a statement of intended use. The protrusions have the same structure as claim and, therefore, meet the claim.
Claim 2: the multiple protrusions seen in Fig. 7b define an array, i.e. a plurality, of biofilm retaining regions (i.e. the concave areas between protrusion peaks).
Claim 3: the biofilm retaining regions are concave (Fig. 7b, see the valley between the peaks of the protrusions).
Claim 4: the protrusions are radially extending (Fig. 7b, 200).
Claim 5: the protrusions are longitudinally extending (Fig. 7b. is a top view cross section where in a 3D image the protrusions would extend along the length – i.e. longitudinally – of the hollow fiber).
Claim 6: the outer surface of the fibre membrane is multilateral, that is has multiple protrusions (Fig. 7b, 200 in a sinusoidal pattern).
Claim 7: The inner surface of the fiber membrane which defines the lumen is cylindrical (Fig. 7b).
Claim 8: The fibre is formed from polymer extrusion [0072, 0076].
Claim 9: the lumen comprises an open end through which gas can be supplied [0044, 0045, 0110, fluid is passed from the inside of the lumen to the outside which require an end to be open].
Claim 11: the external diameter is 1500um (Fig. 6b, 1.5mm is equal to 1500um).
Claim 12: the fibre membrane comprises a gas permeable polymer [0014, 0048-0049].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Herczeg (US Pub. No. 2003/0140790) as applied to claim 1 above, and further in view of Li et al. (APTwater in view 11. of P. Li et al. / Journal of Membrane Science 434 (2013) 18-25).
Claim 13: Herczeg teaches the fibre membrane of instant claim 1, wherein the fibre membrane comprises polymeric material [0014].
Herczeg does not teach the polymeric material is polydimethyl siloxane (PDMS).
However, Li teaches motivation for PDMS use on hollow fiber membranes "In this report, we used PAN as the material for the macroporous hollow fiber substrate.” PAN has been widely applied as the substrate for composite membranes because of its good chemical resistance, easy processability and low price [14,16,17] and is disclosed by Herczeg as a polymer material for the hollow fiber membrane [0066]. Poly (dimethylsiloxane) (PDMS) was selected as the coating material since it has been proven to be an excellent coating material [14]. PDMS has very high gas permeability and impressive selectivities for O2/N2 and CO2/N2 gas pairs as shown in Table 1 [18].
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to construct the Herczeg hollow fiber membrane from the PAN/PDMS material and methods of Li. Doing so would improve the Herczeg membrane by incorporating the PDMS qualities of excellent coating material, high gas permeability, and excellent base layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/Primary Examiner, Art Unit 1773