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 Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
No new ground(s) of rejection are presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Specification
The amendment filed 4/3/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Prior, the specification conveyed a general teaching at Page 4, Lines 4-15 regarding mixing MWCNTs in a mixture of TEP and DMAC without going into any particular detail as to what order of mixing is used. Page 8, Lines 16-23 presented a single preparation example where MWCNT was dispersed in DMAC first, an appropriate amount of TEP was added, and then MWCNT was continued to be dispersed. Thus, the specification as originally filed provided a generic disclosure at Page 4 regarding dispersing MWCNTs in a TEP/DMAC mixture and a single specific example of such at Page 8. There is no indication that these sections represented two separate and distinct embodiments.
Applicant’s amendment of the specification modifies the single preparation example to be a disclosure of two different embodiments, one where MWCNTs are dispersed in an optimized mixture of TEP and DMAC and another where MWCNT was dispersed in DMAC first, and then an appropriate amount of TEP was added, and then MWCNT was continued to be dispersed. Thus, the new language used revises the paragraph to re-envision the generic disclosure of Page 4, Lines 4-15 as a separate and distinct embodiment from the single example previously presented.
As discussed above, the specification as originally filed conveyed a generic disclosure at Page 4 regarding dispersing MWCNTs in a TEP/DMAC mixture and a single specific example of an order of mixing at Page 8, Lines 16-23. Written support showing these disclosures represent two separate and distinct embodiments within the specification as originally filed is not found. Moreover, the specification as originally filed presented a single example of membrane preparation and measured properties from the particular membranes resulting therefrom. In contrast, the amendment presented now gives two examples to which the presented properties pertain.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
Claims 1, 3-14, 16 and 17 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 subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite the process steps of forming first mixture consisting of TEP and DMAC and then dispersing MWCNT in the first mixture to form a dope solution. Written support for the creation of a first mixture consisting of TEP and DMAC prior to dispersing MWCNTs is not found within the specification as originally filed and Applicant has failed to identify where support of such can be found. The specification only details dispersing MWCNT in DMAC alone and then adding TEP at Page 8. As written support for the subject matter claimed is lacking, claim 1 fails to comply with the written description requirement.
As claims 3-14, 16, and 17 depend from claim 1, they are rejected for the same issue discussed above.
Claim 3 has been amended to require MWCNTs are dispersed in the first mixture of DMAC+TEP solvents using sonication for not less than 1 hour. Page 8 only describes sonicating MWCNTs in DMAC alone for one hour followed by sonicating in TEP+DMAC for an additional 30 minutes. While page 4 of the specification generically recites sonicating a MWCNT dispersion for not less than 1 hour, whether the recited timeframe pertains to the initial DMAC alone, the subsequent mixture of TEP/DMAc, or to the sum of these timeframes is not indicated. As written support for the limitation is not found within the specification as originally filed, claim 3 fails to comply with the written description requirement.
Claim Rejections - 35 USC § 103
Claim(s) 1, 7-9, 11-14, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mapunda (Physics and Chemistry of the Earth, 2017, 100, 135-142) in view of Li (Polymer Advanced Technologies, 2011, 22, 520-531).
Regarding Claim 1, Mapunda teaches methods of creating multi-walled carbon nanotube blended polyvinylidene fluoride membranes using NIPS process for membrane distillation treatment of saline water (Abstract; Sections 2.1 and 2.2). Mapunda disperses MWCNT in DMAC:TEP and then forms a dope solution via dissolving PVDF (Section 2.2). DMAC and TEP are construed as two solvents with different solubility parameters that are mixed. The dope solution is cast into a thin film, which is then coagulated with distilled water non-solvent (Section 2.2), construed as “pure water”. The coagulation produces a porous/hydrophobic membrane (Section 3.1).
For creating MWCNT mixture in DMAC/TEP, Mapunda describes providing TEP, mixing MWCNT, and then mixing DMAC (Section 2.2) whereas the present claims require providing TEP, mixing DMAC, and then mixing MWCNT. Therefore, Mapunda differs from the subject matter claimed according to the order of mixing ingredients in providing a TEP/DMAC/MWCNT mixture. However, it has long been held that the selection of a given order of mixing ingredients is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04(IV)(C). In light of the circumstances and the cited case law, it would have been obvious to one of ordinary skill in the art that alternative order of mixing ingredients, inclusive of mixing DMAC first and then dispersing MWCNT in the combined DMAC/TEP blend, can be used to ultimately provide a MWCNT dispersed mixture.
Mapunda also differs from the subject matter claimed in that an intermediate coagulation bath of TEP, DMAC, and water is not described. Li is also directed toward the fabrication of porous hydrophobic PVDF membranes derived from dopes of PVDF in TEP/DMAc solvent (Abstract; “Membrane casting” section). Li teaches a dual coagulation process whereby the applied membrane is subjected to a first coagulation bath of water/TEP/DMAc and then a second coagulation bath of water prevents the formation of a dense skin layer, facilitates improvements/control of hydrophobicity, strength, and porosity (“Membrane casting”, “Effect of mixed solvent in the first coagulation bath on membrane morphology and hydrophobicity”, and “Conclusions” section). It would have been obvious to one of ordinary skill in the art to apply the two coagulation bath system of Li to the protocols of Mapunda because doing so would prevent the formation of a dense skin layer and facilitate improvements/control of hydrophobicity, strength, and porosity as taught by Li.
Regarding Claims 7 and 8, Mapunda teaches dissolving PVDF in dope solution via mechanically stirring with heating for 24 h, followed by cooling to room temperature for 24 hours (Section 2.2). While not describing particular heating temperatures, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, the temperature of mixtures is known to impact dissolution, whereby higher temperatures create more kinetic energy/collisions among solvent molecules. See for instance Li where 60 degrees C is used to guarantee complete dissolution (“Membrane casting” section). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal dissolution temperatures within the scope of the present claims so as to give complete dissolution of PVDF in the dope mixtures.
Regarding Claim 9, Mapunda teaches dope solution is cast onto a glass plate at a thickness of 250 microns using casting knife (Section 2.2).
Regarding Claim 11, Li teaches immersing the membranes into first coagulation bath of TEP/DMAC/water for 30 seconds (“Membrane casting”). Li teaches the first bath contains 60 wt% of TEP+DMAC (Abstract), which implies 40 wt% of water.
Regarding Claim 12, Mapunda teaches the use of distilled water in coagulation baths (Section 2.2). Li teaches after immersion in the first coagulation bath, the glass plate/membrane is then dipped in the second water coagulation bath (“Membrane casting”, “Effect of mixed solvent in the first coagulation bath on membrane morphology and hydrophobicity”, and “Conclusions” section).
Regarding Claim 13, Mapunda/Li teach soaking the membranes in water to remove residual solvent, such as distilled water (Section 2.2 of Mapunda; “Membrane casting” of Li), inferring removal of TEP and DMAC solvents. As distillation necessarily removes ions, such water is construed as a deionized water. While not referring to specific soaking times, it is readily inferred that the amount of soaking time is a result effective variable subject to optimization by one of ordinary skill in the art since insufficient soaking times would clearly lead to insufficient solvent removal owing to the need of solvent to diffuse out of the membranes. In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal soaking times within the scope of the present claims so as to ensure complete removal of solvent.
Regarding Claim 14, Mapunda/Li teach drying the membranes in open air (Section 2.2 of Mapunda; “Membrane casting” of Li). Since a drying temperature is not specified, it is implied drying takes place at room temperature.
Regarding Claim 16, Mapunda creates dope mixtures by dispersing/sonicating MWCNT in a mixture of TEP/DMAc of varying ratios (Section 2.2). While not describing a 1:1 blend, Mapunda teaches the ratio of solvents used directly impacts characteristics such as hydrophobicity, tensile stress, thickness, and porosity (Figure 4, Table 3). Mapunda therefore indicates the DMAc/TEP ratio is a result effective variable because changing it would clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal DMAc/TEP ratios within the scope of the present claims so as to produce desirable hydrophobicity, tensile stress, thickness, and porosity characteristics.
Claim(s) 3 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mapunda (Physics and Chemistry of the Earth, 2017, 100, 135-142) in view of Li (Polymer Advanced Technologies, 2011, 22, 520-531) and Silva (Desalination, 2015, 357, 233-245).
The discussion regarding Mapunda and Li within ¶ 14-23 is incorporated herein by reference.
Regarding Claim 3, Mapunda creates dope mixtures by dispersing/sonicating MWCNT in a mixture of TEP/DMAc of varying ratios (Section 2.2). Mapunda teaches sonicating within DMAC for one hour, adding TEP, and then further sonicating for another 30 minutes (Section 2.2). To the extent Mapunda differs from the subject matter claimed with respect to sonication time of MWCNTs within the DMAC:TEP blend, Silva also pertains to the formation of MWCNT dope mixtures for the creation of membranes (Abstract). Silva teaches MWCNT is mixed/sonicated until achieving a uniform dispersion (Section 2.3). Thus, it was known in the art that the time of mixing/sonicating is a result effective variable subject to routine optimization by one of ordinary skill in the art for the purpose of achieving a uniform dispersion of substrates such as MWCNT. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal sonication times within the scope of the present claims so as to produce a desired degree of dispersion uniformity.
Regarding Claim 17, Mapunda creates dope mixtures by dispersing/sonicating MWCNT in a mixture of TEP/DMAc of varying ratios (Section 2.2). Mapunda teaches dispersing 0.2 wt% of MWCNTs within DMAC, adding TEP, and then further mixing (Section 2.2). To the extent Mapunda differs from the subject matter claimed with respect to the content of MWCNTs within the final dope solution, Silva also pertains to the formation of MWCNT dope mixtures for the creation of membranes for membrane distillation (Abstract). Silva teaches the content of MWCNTs within the dope mixture directly impacts the permeated flux of the resulting membranes (Section 3.2.3; Figures 9-10). Silva therefore indicates the MWCNT content within dope mixtures is a result effective variable because changing it would clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal MWCNT contents within the scope of the present claims so as to produce desirable permeated flux within the resulting membranes.
Claim(s) 4-6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mapunda (Physics and Chemistry of the Earth, 2017, 100, 135-142) in view of Li (Polymer Advanced Technologies, 2011, 22, 520-531) and Tang (US 2014/0008291 A1).
The discussion regarding Mapunda and Li within ¶ 14-23 is incorporated herein by reference.
Regarding Claims 4 and 5, Mapunda teaches PVDF concentrations of roughly 12 wt% and Li teaches PVDF concentrations of roughly 15 wt% (Section 2.2 of Mapunda; “Membrane casting” of Li). Therefore, the combination of references is suggestive of PVDF concentrations of 15 wt%. Mapunda/Li differs from the subject matter claimed with respect to the further inclusion of foaming agent.
Tang is also directed toward membranes formed via coagulation via non-solvent induced phase inversion (Abstract; Figure 1). Tang teaches it was known in the art pore formers such as ethylene glycol can be included in the dope mixtures for the purpose of increasing porosity within the resulting membranes (¶ 58-60). It would have been obvious to one of ordinary skill in the art to further include pore formers such as ethylene glycol into the dopes of Mapunda/Li because doing so would facilitate the increase of porosity within the resulting membranes as taught by Tang.
Regarding Claim 6, Tang teaches pore former can be included at concentrations spanning 0.1-5 wt% (¶ 60), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Tang suggests the 4 wt%. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tang. See MPEP 2123.
Regarding Claim 10, to the extent Mapunda/Li differs from the subject matter claimed with respect to the particular disclosure of an applied thickness of 300 microns, Tang is also directed toward membranes formed via coagulation via non-solvent induced phase inversion (Abstract; Figure 1). Tang teaches it was known in the art that dopes can be applied at thicknesses ranging widely from 50-300 microns (¶ 62) whereby the thickness of the final porous substrate formed is dependent on the thickness of dope coated (¶ 65). Tang therefore indicates the coating thickness is a result effective variable because changing it would clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal coating thicknesses within the scope of the present claims so as to produce desirable thicknesses with respect to final obtained porous material.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mapunda (Physics and Chemistry of the Earth, 2017, 100, 135-142) in view of Li (Polymer Advanced Technologies, 2011, 22, 520-531) and Kosar (US 2014/0144833 A1).
The discussion regarding Mapunda and Li within ¶ 14-23 is incorporated herein by reference.
Regarding Claims 4 and 5, Mapunda teaches PVDF concentrations of roughly 12 wt% and Li teaches PVDF concentrations of roughly 15 wt% (Section 2.2 of Mapunda; “Membrane casting” of Li). Therefore, the combination of references is suggestive of PVDF concentrations of 15 wt%. Mapunda/Li differs from the subject matter claimed with respect to the further inclusion of foaming agent.
Kosar is also directed toward membranes formed via coagulation via non-solvent induced phase inversion (¶ 20). Kosar teaches it was known in the art pore formers such as ethylene glycol can be included in the dope mixtures for the purpose of controlling porosity/pore size within the resulting membranes (¶ 18, 20). It would have been obvious to one of ordinary skill in the art to further include pore formers such as ethylene glycol into the dopes of Mapunda/Li because doing so would facilitate the control of porosity/pore size within the resulting membranes as taught by Kosar.
Regarding Claim 6, while not providing quantitative ranges associated with pore former, Kosar teaches addition of pore former results in the formation of pores of controllable size (¶ 20). Accordingly, the relative quantity of pore former is a known result effective variable because changing it would clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal pore former quantities within the scope of the present claims so as to achieve desirable porosity / pore size characteristics within the resulting membranes.
Response to Arguments
Applicant's arguments filed 4/3/2026 have been fully considered but they are not persuasive.
The examiner maintains the 112(a) rejections for reasons of record. Applicant generally argues ¶ 10-11 of the PGPUB of the present application describes dispersing MWCNTs within a mixture of TEP and DMAC and that such may be done by sonicating for not less than 1 hour. This is not found persuasive.
The paragraphs at issue are devoid of any description of preparing a first mixture consisting of TEP and DMAC and subsequently dispersing MWCNTs therein. Rather, ¶ 10 simply states MWCNTs is dispersed in TEP+DMAC without going into any particular detail as to the order by which the initial mixture was obtained. In the examples of the specification (¶ 31), MWCNT is first mixed with DMAC, TEP is then added, and afterwards the MWCNTs are dispersed in the mixture of TEP and DMAC, which does not correspond to the order instantly claimed. While Applicant’s emphasis of ¶ 10 stating MWCNTs are dispersed “in” a “mixture” of TEP+DMAC is acknowledged, the protocol of the sole preparation example of the specification (MWCNT is first mixed with DMAC, TEP is then added, and afterwards the MWCNTs are dispersed in the mixture of TEP and DMAC) clearly entails dispersing MWCNTs in a mixture of TEP+DMAC. Applicant has failed to identify any description within the specification as originally filed where a mixture consisting of TEP and DMAC is created prior to MWCNT addition. Claim 2 of the international application also fails to set forth a process step of creating a mixture consisting of TEP+DMAC prior to dispersing MWCNTs. Rather, claim 2 simply recited a generic process step of dispersing MWCNTs in TEP+DMAC without outlining any particular order of mixing.
With respect to the “less than 1 hour” limitation, as discussed above, the specification describes first sonicating MWCNTs in DMAC for a period of time and sonicating again in TEP+DMAC. The specification is ambiguous as to whether the recited timeframe pertains to DMAC alone, the mixture of TEP/DMAc, or to the sum of these timeframes, notwithstanding that written support is not found for a protocol of providing a mixture consisting of TEP+DMAC, adding MWCNTs thereto, and then performing a single sonication step. For these reasons, the claims fail to comply with the written description requirement.
With respect to the prior art rejections, Applicant argues Mapunda fails to describe forming a mixture of TEP and DMAC before dispersing MWCNTs. This is not found persuasive for reasons set forth within the rejections above.
Applicant also argues Li fails to describe incorporating MWCNTs. This is not found persuasive as the inclusion of MWCNTs is met by combination of references.
Applicant argues the reliance on MPEP 2144.04(IV)(C) is misplaced, reasoning the PTAB in Ex Parte Fu indicated such a rationale could not be applied toward a “one-step mixing process”. This is not found persuasive. For creating a MWCNT mixture in DMAC/TEP, Mapunda describes providing TEP, mixing MWCNT, and then mixing DMAC (Section 2.2) whereas the present claims mixes TEP with DMAC, and then mixes MWCNT. It is unclear what relevance is to be had with respect to “one-step mixing” vs. “two-step mixing”. The only difference seen is the apparent order by which solvent or MWCNT is mixed to provide a final mixture.
Applicant essentially argues the claimed order of mixing is critical insofar as it produces unexpected results. This is not found persuasive. The membranes described within the specification are prepared by the same protocol of Mapunda: pristine MWCNT is dispersed in an appropriate amount of DMAC and sonicated for an hour. An appropriate amount of TEP was then added into the dispersed MWCNT and sonicated for further 30 minutes (¶ 31 of the PGPUB). The Examiner finds no factual evidence of record in support of Applicant’s allegation that the claimed order of mixing is in any way critical.
Applicant argues Li does not describe the inclusion of MWCNTs and thus, there would be no way of knowing if a viable membrane would result by using the dual coagulation system. Applicant essentially urges Mapunda and Li probe different aspects for differing purposes. This is not found persuasive. Mapunda clearly indicates one obtains a viable membrane by creating a MWCNT/TEP/DMAC dope mixture and coagulating. Therefore, one of ordinary skill would have a reasonable expectation of success in achieving a membrane by applying the teachings of Li. Obviousness does not require absolute predictability. The examiner maintains one of ordinary skill would find sufficient motivation to support the combination of references informed by Li’s teachings of facilitating improvements/control of hydrophobicity, strength, and porosity.
Applicant argues the claimed invention achieves superior performance in three different property metrics, which cannot be arrived at by routine optimization. This is not found persuasive. The relevance of Applicant’s argument is unclear as no particular properties are claimed and a routine optimization rationale is not relied upon for the properties alluded to within Applicant’s remarks.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Notably, the rejections of record take into account only knowledge which was within the level of ordinary skill at the time of the claimed invention was made and does not include knowledge gleaned only from the applicant’s disclosure. Therefore, such a reconstruction is proper.
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 STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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