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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
03/24/2026.
Status of Rejections
All previous rejections are maintained.
Claims 1-16 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-6, and 11-13 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Small et al (US 20200078736 A1. Inoue et al (WO 2014119207 A1, SEARCH translation used for citation) cited as an evidentiary reference.
Claim 1: Small discloses a selective ion exchange membrane (see e.g. abstract), comprising:
a polymeric porous substrate (“Polycarbonate membrane”, see e.g. Fig 2; [0005]);
a cross-linked ion-transferring polymeric layer on a surface of the substrate (“polyethyleneimine” or “poly(acrylic acid)” of the LbL, see e.g. Fig 2; [0005]);
a charged functionalizing layer covalently bound to the cross-linked ion-transferring polymeric layer (the other one of “polyethyleneimine” or “poly(acrylic acid)” of the LbL, see e.g. Fig 2; [0005]).
Small discloses that substrate has a pore diameter of 0.05 µm (see e.g. [0023] of Small). According to Inoue, a microporous membrane is a membrane with pore diameter of between 0.01 and 20 µm (see e.g. page 4, paragraph starting with “The average pore”). Therefore, the membrane of Small is considered microporous.
With regard to the preamble, the limitation claiming the membrane is “monovalent selective” is an intended use/function of the membrane. MPEP § 2114 II states "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. A review of the instant disclosure points to relative charges of the polymeric layer and the functionalizing layer as giving the membrane this function. Small discloses all of the positively recited structure of claim 1, as well as the structures of dependent claims regarding the charges of the polymeric layer and the functionalizing layer as shown below. Therefore, the limitation is considered to be anticipated by Small.
Claim 4: Small discloses that the monovalent selective ion exchange membrane is a cation exchange membrane (see e.g. abstract) wherein the charged functionalizing layer is a positively charged functionalizing layer (“cationic polyethyleneimine “, see e.g. [0005]).
Claim 5: Small discloses that the positively charged functionalizing layer comprises a quaternary ammonium (see e.g. [0019]).
Claim 6: Small discloses that the monovalent selective ion exchange membrane is an anion exchange membrane (see e.g. claim 24) wherein the charged functionalizing layer is a negatively charged functionalizing layer (“anionic poly(acrylic acid)“, see e.g. [0005]).
Claim 11: Small discloses a selective cation exchange membrane support (see e.g. abstract), comprising:
a polymeric porous substrate (“Polycarbonate membrane”, see e.g. Fig 2; [0005]);
a cross-linked ion-transferring polymeric layer on a surface of the substrate and an intermediate layer comprising an amine group covalently bound to the cross-linked ion-transferring polymeric layer (“polyethyleneimine” and “poly(acrylic acid)” of the LbL, see e.g. Fig 2; [0005]).
With regard to the preamble, the limitation claiming the membrane is “monovalent selective” is an intended use/function of the membrane. MPEP § 2114 II states "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. A review of the instant disclosure points to relative charges of the polymeric layer and the functionalizing layer as giving the membrane this function. Small discloses all of the positively recited structure of claim 11. Therefore, the limitation is considered to be anticipated by Small.
Claim 12: Small discloses that the intermediate layer comprises a primary amine group (see e.g. [0005]).
Claim 13: Small discloses that the intermediate layer comprises polyethylenimine (PEI) (see e.g. [0005]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Small in view of Van Berchum et al (US 9675940 B2).
Claim 7: Small does not explicitly teach a counter ion permselectivity of at least 100%. Van Berchum teaches it is desirable to have an ion exchange membrane (see e.g. col 1, lines 12-14) with good permselectivity and a low resistance (see e.g. col 1, lines 49-52). These characteristics can be tuned by selecting appropriate polymers and molecular weights (see e.g. col 3, lines 40-47). Good permselectivity is more than 95% (see e.g. col 12, lines 21-24). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Small to have a permselectivity of greater than 95% as taught in Van Berchum. This range overlaps with the claimed range of at least 100%. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claim 9: Small does not explicitly teach a resistivity of less than about 5 Ω-cm2. Van Berchum teaches it is desirable to have an ion exchange membrane (see e.g. col 1, lines 12-14) with good permselectivity and a low resistance (see e.g. col 1, lines 49-52). These characteristics can be tuned by selecting appropriate polymers and molecular weights (see e.g. col 3, lines 40-47). Good resistance is than about 3 Ω-cm2 (see e.g. col 12, lines 25-28). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Small to have the resistance taught in Van Berchum.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Small in view of Cheng et al (“Selective removal of divalent cations by polyelectrolyte multilayer nanofiltration membrane: Role of polyelectrolyte charge, ion size, and ionic strength”, Journal of Membrane Science, Volume 559, April 2018, Pages 98-106).
Claim 8: Small does not explicitly teach an initial selectivity of 8 to 12 fold Na/Ca (ppm) at room temperature. Small teaches that the membrane can be used in purification processes (see e.g. abstract and [0005]). Cheng teaches it is desirable that some purification membranes can selectively allow the passage of monovalent cations like Na and reject divalent cations like Mg and Ca (see e.g. abstract) because these divalent ions can cause scaling (see e.g. page 98). Cheng teaches a good selectivity of Na/Ca to be greater than 10 (see e.g. Fig 3C) and as high as 30 for Mg (see e.g. abstract). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Small to have a selectivity of greater than 10 for Na/Ca as taught in Cheng to minimize issues caused by divalent scaling.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Small in view of Inoue et al (US 2013180072 A1, referred to as Higuchi herein).
Claim 10: Small teaches the substrate can be a polyethylene (see e.g. [0016]). Small does not explicitly teach that the polymeric microporous substrate comprises at least one of high-density polyethylene (HDPE) and ultrahigh molecular weight polyethylene (UHMWPE). Higuchi teaches an ion exchange membrane (see e.g. abstract) using an ultra high molecule polyethylene polymer (See e.g. page 4, paragraph starting with “Examples of the olefin”). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Small to use the ultra high molecule polyethylene polymer taught in Higuchi because Higuchi teaches these polyethylenes are suitable for ion exchange membranes, satisfying the requirements of Small. MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Small in view of Esconda et al (“Characterization of an ultrafiltration membrane modified by sorption of branched polyethyleneimine”, Desalination and Water Treatment, Volume 1, Issues 1–3, January 2009, Pages 186-193).
Claim 14: Small teaches that the intermediate layer comprises PEI (see e.g. [0005]) and having a molecular weight of at least 600 g/mol.
Small does not explicitly disclose the form of the PEI nor its molecular weight. Therefore, a person having ordinary skill in the art before the effective filing date of the instant invention would be motived to find suitable types of PEI. Esconda teaches that branched polyethyleneimine with a molecular weight greater than 600 g/mol (see e.g. abstract; page 187, col 1, paragraph starting with “Before”) is a suitable form of PEI for functionalizing ion exchange membranes (see e.g. abstract; page 186, col 2). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Small to use the PEI taught in Esconda because the PEI of Esconda is a suitable for these types of membranes and MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’.
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Small in view of Emerson et al (“Improved Preparation of Macroporous, Chlorosulfonated Poly(styrene-co-divinylbenzene) and Conversion to Sulfonamides and Sulfonylhydrazines”, Ind. Eng. Chem. Res. 2005, 44, 7045-7048).
Claim 15: Small does not explicitly teach that the intermediate layer is covalently bound to the cross-linked ion-transferring polymeric layer by a styrene group. However, Small teaches that the intermediate layer is covalently bonded to ion-transferring polymeric layer and that “anionic polymers comprising sulfonate groups can also be used”. Emerson teaches sulfochlorinated poly(styrene-co-divinylbenzene) polymers are useful for cation exchange resins (see e.g. abstract) requiring sulfonate functional groups (see e.g. 7047, col 2, paragraph starting with “These sulfochlorinated”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Small to use the sulfochlorinated poly(styrene-co-divinylbenzene) taught in Emerson because the polymer of Merson is a suitable for these types of membranes and MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’.
Claim 16: Small in view of Emerson teaches that the styrene group is chemically bound to chlorosulfonated divinylbenzene (DVB) (see e.g. abstract of Emerson).
Claim(s) 1-3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (US 20180030187 A1) in view of Inoue and Cheng. Masel et al (US 20190226098 A1) cited as an evidentiary reference for claim 1.
Claim 1: Wang discloses a selective ion exchange membrane (ion exchange membrane, see e.g. abstract), comprising:
a polymeric porous substrate (see e.g. #12 on Fig 1B and [0025]);
a cross-linked ion-transferring polymeric layer on a surface of the substrate (see e.g. #14 on Fig 1B and [0025]).
Wang discloses that the substrate is porous but does not explicitly teach that it is microporous. Inoue discloses an ion exchange membrane (see e.g. abstract) that has a microporous substrate (see e.g. abstract and page 4, paragraph starting with “The ion permeable membrane is…”). The microporous structure gives the membrane good ion permeability (see e.g. page 4, paragraph starting with “The ion permeable membrane is…”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Wang so that the substrate is microporous as taught in Inoue because the micropores give the membrane good ion permeability.
Wang does not explicitly teach that the membrane is monovalent selective. Wang teaches that the membrane can be used in purification processes (see e.g. [0059]). Cheng teaches that it is desirable for purification membranes that can selectively allow the passage of monovalent cations like Na and reject divalent cations like Mg and Ca (see e.g. abstract) because these divalent ions can cause scaling (see e.g. page 98). Cheng teaches a mix of Donnan (charge) and size-exclusion effects to achieve this by incorporating both polycations and polyanions (see e.g. abstract). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify Wang by including Donnan (charge) and size-exclusion effects taught in Cheng to give the membrane the ability to be monovalently selective to reduce issues with scaling from divalent ions.
The combination of Wang with Cheng would incorporate a charged functionalizing layer (either the polycation or polyanion) covalently bound to the cross-linked ion-transferring polymeric layer (see e.g. abstract and page 104, “4. Conslusion”).
Claim 2: Wang in view of Inoue and Cheng discloses that the membrane has a total thickness of about 30 μm to 100 μm (see e.g. [0021]), which overlaps with the claim range of about 20 µm to about 155 µm. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claim 3: Wang in view of Inoue and Cheng discloses that the membrane has a total thickness of about 30 μm to 100 μm (see e.g. [0021]), which overlaps with the claim range of about 25 m to about 55 m. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claim 8: Wang in view of Inoue does not explicitly teach an initial selectivity of 8 to 12 fold Na/Ca (ppm) at room temperature. Wang teaches that the membrane can be used in purification processes (see e.g. [0059]). Cheng teaches it is desirable that some purification membranes can selectively allow the passage of monovalent cations like Na and reject divalent cations like Mg and Ca (see e.g. abstract) because these divalent ions can cause scaling (see e.g. page 98). Cheng teaches a good selectivity of Na/Ca to be greater than 10 (see e.g. Fig 3C) and as high as 30 for Mg (see e.g. abstract). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Wang to have a selectivity of greater than 10 for Na/Ca as taught in Cheng to minimize issues caused by divalent scaling.
Claim(s) 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Inoue and Cheng as applied to claim 1 above, and in further view of Van Berchum.
Claim 7: Wang in view of Inoue and Cheng does not explicitly teach a counter ion permselectivity of at least 100%. Van Berchum teaches it is desirable to have an ion exchange membrane (see e.g. col 1, lines 12-14) with good permselectivity and a low resistance (see e.g. col 1, lines 49-52). These characteristics can be tuned by selecting appropriate polymers and molecular weights (see e.g. col 3, lines 40-47). Good permselectivity is more than 95% (see e.g. col 12, lines 21-24). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Wang by using the materials taught in Van Berchum to achieve a permselectivity of greater than 95%, which overlaps with the claimed range of at least 100%. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claim 9: Wang in view of Inoue and Cheng does not explicitly teach a resistivity of less than about 5 Ω-cm2. Van Berchum teaches it is desirable to have an ion exchange membrane (see e.g. col 1, lines 12-14) with good permselectivity and a low resistance (see e.g. col 1, lines 49-52). These characteristics can be tuned by selecting appropriate polymers and molecular weights (see e.g. col 3, lines 40-47). Good resistance is than about 3 Ω-cm2 (see e.g. col 12, lines 25-28). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Wang by using the materials taught in Van Berchum to achieve a resistance of less than about 3 Ω-cm2.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Inoue and Cheng as applied to claim 1 above, and in further view of Higuchi.
Claim 10: Wang in view of Inoue and Cheng teaches the substrate can be a polyethylene (see e.g. [0025]). Wang in view of Inoue does not explicitly teach that the polymeric microporous substrate comprises at least one of high-density polyethylene (HDPE) and ultrahigh molecular weight polyethylene (UHMWPE). Higuchi teaches an ion exchange membrane (see e.g. abstract) using an ultra high molecule polyethylene polymer (See e.g. page 4, paragraph starting with “Examples of the olefin”). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Wang to use the ultra high molecule polyethylene polymer taught in Higuchi because Higuchi teaches these polyethylenes are suitable for ion exchange membranes, satisfying the requirements of Wang. MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
On page(s) 7-8, the Applicant argues that the rejection of claims 1 and 11 under 35 USC § 102 incorrectly equates “both the cross-linked ion-transferring polymeric layers” with the cross-linked ion-transferring polymeric layer and the charged functionalizing layer of the claims. This is not considered persuasive. The Applicant’s arguments are drawn to a much narrower reading of these structures than what is in the claims. For example, claim 1 claims “a charged functionalizing layer covalently bound to the cross-linked ion-transferring polymeric layer”. The layers of Small are covalently bonded to each other (see e.g. abstract) and are charged with functional groups (see e.g. [0005]). Therefore, either layer can be considered to be a charged functionalizing layer covalently bound to the cross-linked ion-transferring polymeric layer.
On page(s) 7-8, the Applicant argues that Small does not read on the claimed invention because the crosslinking increases selectivity for cationic transport, like that of traditional ion exchange membranes, whereas the instant invention does the opposite (like that in claim 4 or claim 6). This is not considered persuasive. The Applicant’s arguments are directed towards the rejections of claim 1 and claim 11, which do not specify any of the charges layers and only claims a monovalent selective membrane. Small discloses that membrane is monovalent (see e.g. [0032]: “The membrane voltage, Vm, for a 1:1 monovalent salt can be described by a modified version of the Nernst equation shown in equation 1”). Additionally, Small discloses that “Below is described the polyelectrolyte film assembly and how ionic selectivity, ionic conductivity, and mechanical integrity can be further tuned by the choice of crosslinking agent and the influence it has on overall charge in the polyelectrolyte film” (see e.g. [0021]). Thus, it is clear that the increased in cationic transport is not an absolute requirement for Small (see e.g. claim 24 where both the cation and anion membranes can be formed using the methods of Small).
On page(s) 8, the Applicant argues that Small does not disclose the monolayer of the instant invention. This is not considered persuasive. The Applicant refers to the specification when discussing the monolayer. However, the monolayer has not been claimed. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page(s) 8-9, the Applicant argues that Small does not disclose the intermediate layer because the polymeric layer and the intermediate layers of Small are the same and not distinct, according to the Applicant. This is not considered persuasive. Small discloses multiple alternating layers of PEI and PAA (see e.g. Fig 2 and Fig 5C). The Applicant argues that “the present charged functionalizing layer is explicitly blocked from penetrating the membrane pores by an intermediate layer”. This is unclaimed structure and functionality. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page(s) 11-12, the Applicant argues that Cheng would reinforce the usage of a crosslinked polymeric layer for ion-selective membranes but does not suggest the use of a charged functionalizing layer covalently bound to the polymeric layer. This is not considered persuasive. Wang teaches the polymeric layer, as stated in the rejection. It was combined with Chang to reduce issues caused by scaling. This combination incorporated a charged functionalizing layer taught in Cheng (the polyions) to make the membrane monovalently selective.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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