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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (PRO 63/053,256, filed 17 July 2020) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 63/053,256, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. There is insufficient support or enablement for the limitations in Claim 125 (no linear velocity range of from about 1 m/s to about 3 m/s is disclosed); Claim 127 (no specific “fresh water” salinity or range of salinity is disclosed); and Claim 130 (no linear velocity range of from about 0.5 m/s to about 2.5 m/s is disclosed). As such, Applicant may not claim benefit of the filing date of the earlier-filed application for these claims.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 112, 114, 117, 119, 133, 171, 175, 181, 183, 187, 201, 302, 303, 306, and 309 is/are rejected under 35 U.S.C. 103 as being unpatentable over SCHUSTER et al. (US 10,946,345) in view of HOLDA et al. (J. Appl. Polym. Sci., 2015, 42130, pg. 1-17), HANAKAWA et al. (AU 2006345112 A1), and LI et al. (CN 106582312 A; machine translation provided and referenced herein).
Regarding Claim 112, SCHUSTER discloses a microporous polyvinylidene fluoride (PVDF) hollow fiber membrane having inner and outer surfaces, the inner surface adjacent a lumen, and a supporting layer adjacent the inner surface (i.e., a fiber; the fiber comprises [an]… inner layer, wherein the… inner layer comprises a fluoropolymer, wherein the… inner layer has a tubular shape, wherein the… inner layer further comprises an inner surface; abstract; PVDF, c7/24-26). The supporting layer spans at least 80% of the wall thickness of the hollow fiber membrane and comprises isotropic pores (c5/44-48). The supporting layer lacks finger pores or macrovoids and has pores with average diameters less than 0.5 µm (i.e., wherein the… inner layer is free of macrovoids; c6/2-10). SCHUSTER further discloses the structure of this supporting layer is suitable for application of the membrane in membrane distillation of salt water wherein the hollow fiber membrane is used as part of a salt water circuit (i.e., a method comprising contacting a fluid sample with a fiber; c6/64-c7/9). The membrane has a maximum separating pore diameter ranging from 0.3 to 0.7 µm (c7/51-53) and a porosity of 70 to 85 vol.% (c7/66-c8/6) with an overall wall thickness of 125 to 175 µm (c8/29-31). SCHUSTER further discloses the use of the hollow fiber membrane in the membrane distillation of salt water (i.e., wherein the contacting removes an impurity from the fluid sample; c6/64-c7/9).
SCHUSTER is deficient in explicitly disclosing the inner layer comprises an outer surface. However, SCHUSTER discloses the supporting layer spans at least 80% of the wall thickness of the hollow fiber membrane implying that the supporting layer has two surfaces, i.e., an inner surface (the SCHUSTER-disclosed inner surface adjacent the lumen) and an implied outer surface adjacent the inner surface of the hollow fiber membrane (see FIG. 1). Thus, although not explicitly disclosed, there is an inherent outer surface to the disclosed supporting layer. Similarly, while SCHUSTER is deficient in explicitly disclosing an outer layer or that the outer layer further comprises an inner surface, because SCHUSTER discloses the supporting layer spans at least 80% of the wall thickness, there is an inherent “outer” layer adjacent the supporting layer and adjacent the outer surface wherein such an “outer” layer also includes an inner surface abutting the outer surface of the supporting layer. Thus, the limitations requiring the outer layer and the associated structures and shapes (i.e., [an]… outer layer, wherein the… outer layer comprises… polyvinylidene fluoride, wherein the… outer layer has a tubular shape, wherein the… outer layer further comprises an inner surface, wherein the outer surface of the… inner layer is in contact with the inner surface of the… outer layer to form a tubular structure, wherein in the tubular structure, the tubular shape of the… inner layer is inside the tubular shape of the… outer layer with the tubular shape of the inner layer oriented in a common direction with the tubular shape of the… outer layer, and wherein the inner surface of the… inner layer forms a tubular channel through the fiber) are inherent. SCHUSTER further discloses hydrophobic polyvinylidene fluoride hollow fiber membranes (i.e., a hydrophobic outer layer; c7/24-26).
It is acknowledged that SCHUSTER discloses “In a preferred embodiment, the pores in the inner surface are smaller than the pores in the outer surface. In particular in applications in membrane distillation, in which the outer surface of the hollow-fiber membrane is the permeate side, in which a gaseous phase is present on the permeate side of the membrane, and in which in particular a vacuum exists on the permeate side as well, it has been found that larger pores the outer surface of the hollow fiber membrane is the permeate side in the outer surface are advantageous for transporting the permeate away from the membrane” (emphasis added; c8/45-53); while this may seemingly teach away from the claimed method wherein “the contacting comprises flowing the fluid sample through the hydrophobic outer layer”, such a disclosure is considered a preferred embodiment and does not necessarily preclude utilizing the membrane of SCHUSTER wherein the outer surface is the retentate/filtrate side and the inner surface is the permeate side. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use” (In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); MPEP §2123 II). In fact, one of ordinary skill in the art would find obvious to utilize the taught membrane as claimed given the limited number of options by which fluid sample can be treated in hollow fiber filters, e.g., in-to-out filtration vs. out-to-in filtration. The claim would have been obvious because one of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp; if this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense (MPEP §2143.01 E).
Even if arguendo SCHUSTER explicitly teaches away from outside-to-inside filtration, the instant limitation “wherein the contacting comprises flowing the fluid sample through the hydrophobic outer layer” does not explicitly require outside-to-inside filtration or inside-to-outside filtration. Rather, the instant limitation only requires a fluid sample flow through the outer layer—there is no indication of directionality of flow. Thus, the membrane and method taught by SCHUSTER would read upon the instant claim limitation.
SCHUSTER is deficient in disclosing the hydrophobic outer layer comprises crosslinked polyvinylidene fluoride.
HOLDA discloses the synthesis of membranes by phase inversion (abstract). HOLDA further discloses crosslinking after phase inversion to advantageously improve the chemical stability and performance of membranes (§Crosslinking, pg. 12-13). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide crosslinked polyvinylidene polymer as taught by HOLDA in the method of SCHUSTER.
Modified SCHUSTER is deficient in disclosing a hydrophilic inner layer.
HANAKAWA discloses a polymer separation membrane based on a fluorinated resin having a layer of a three-dimensional network structure and a layer of a spherical structure, wherein the layer of the three-dimensional network structure includes a fluorinated resin-type polymer composition containing a hydrophilic polymer (i.e., equivalent to the claimed hydrophilic layer; pg. 6, lines 6-9), and the layer of the spherical structure is free from the hydrophilic polymer but constitutes a fluorinated resin-type polymer (i.e., equivalent to the claimed hydrophobic layer; pg. 6, lines 23-24). HANAKAWA further discloses the layer of the three-dimensional network structure and the layer of the spherical structure comprise the inner and outer layers of a hollow fiber membrane, respectively (pg. 11, lines 14-17). Advantageously, by providing such a hydrophilic layer (i.e., the three-dimensional network structure), the overall dual layer composite membrane has improved permeability during water filtration (pg. 8, line 23-pg. 9, line 6). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide a tubular-shaped membrane having a hydrophilic inner layer and a hydrophobic outer layer as taught by HANAKAWA in the method made obvious by modified SCHUSTER.
It is acknowledged that HANAKAWA discloses that “the membrane is preferably so positioned that the layer of three-dimensional network structure is at the side of source water” (emphasis added; pg. 11, lines 19-20); while this may seemingly teach away from the claimed method wherein “the contacting comprises flowing the fluid sample through the hydrophobic outer layer”, such a disclosure is considered a preferred embodiment and does not necessarily preclude a membrane orientation whereby the layer of three-dimensional network structure is at the permeate side. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use” (In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); MPEP §2123 II). In fact, one of ordinary skill in the art would find obvious to utilize the taught membrane in an orientation as claimed given the limited number of options by which fluid sample can be treated in hollow fiber filters, e.g., in-to-out filtration vs. out-to-in filtration. The claim would have been obvious because one of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp; if this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense (MPEP §2143.01 E).
Modified SCHUSTER is deficient in disclosing the hydrophilic inner layer comprises polyethylene glycol.
LI discloses a method for further improving the hydrophilicity of a polyvinylidene fluoride film (pg. 2, third paragraph from bottom). Briefly, the separating layer of the film includes polyvinylidene fluoride and polyethylene glycol (pg. 3, top), and the film comprises 15% by weight of polyethylene glycol (pg. 6, Example 4). Advantageously, the inclusion of polyethylene glycol provides larger pure water flux, higher rejection and hydrophilicity, and improved pollution-resistance (pg. 4, par. 4). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to include polyethylene glycol to improve hydrophilicity as taught by LI as part of the inner layer of the membrane in the method made obvious by modified SCHUSTER.
Regarding Claims 114 and 117, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the use of the hollow fiber membrane in the membrane distillation of salt water (i.e., wherein the contacting removes an impurity from the fluid sample; wherein the impurity is a salt; wherein the fluid sample is a water sample; c6/64-c7/9).
Regarding Claim 119, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses a salt concentration in the salt circuit of 36 g/L (c7/4-9), which reads upon the claimed range of a salinity of at least about 35,000 mg/L.
Regarding Claim 133, modified SCHUSTER makes obvious the method of Claim 112. The instant limitation requiring that the contacting removes at least about 98% of the impurity from the fluid sample is directed toward an intended result from the practice of the claimed method step of contacting. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed. A “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003); MPEP §2111.04). Where a reference discloses the terms of the recited method steps, and such steps necessarily result in the desired and recited effect, the fact that the reference does not describe the recited effect in haec verba is of no significance because the reference meets the claim under the doctrine of inherency. Depending on the separation efficiency or capacity of the claimed fiber and the conditions under which the fluid sample contacting occurs, the degree of purification of the impurity from the fluid sample can be adjusted, e.g., for higher impurity removal, a more selective fiber can be used or a slower fluid sample linear velocity can be used. Such a degree of purification is predictable and necessarily results from the sole claimed method step of “contacting”. Thus, the claimed limitation requiring at least about 98% impurity removal would be obvious to one of ordinary skill in the art prior to the effective filing date of the invention.
Regarding Claim 171, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses polyvinylidene fluoride hollow fiber membranes (i.e., wherein the fluoropolymer is polyvinylidene fluoride (PVDF); c7/24-26).
Regarding Claim 175, modified SCHUSTER makes obvious the method of Claim 112. LI further discloses the film comprises 15% by weight of polyethylene glycol (pg. 6, Example 4), which reads on the claimed range of from about 8 wt% to about 20 wt%.
Regarding Claim 181, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the supporting layer spans at least 80% of the wall thickness of the hollow fiber membrane (c5/44-48); in one embodiment, SCHUSTER discloses a wall thickness of 158 µm (Example 1, c18/45-46), which corresponds to an inner layer thickness of at least 126 µm up to 158 µm, which reads upon the claimed range of a mean thickness of from about 50 µm to about 250 µm.
Regarding Claim 183, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the supporting layer has pores with average diameters less than 0.5 µm (i.e., wherein the… inner layer is porous; c6/2-10), which overlaps with the claimed range of a mean pore size of from about 0.15 µm to about 0.4 µm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
Regarding Claim 187, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the membrane has a porosity of 70 to 85 vol.% (c7/66-c8/6) and further discloses an embodiment with a porosity of 78 vol.% (Example 1, c18/54-56), which reads upon the claimed range of a percentage of void space of from about 75% to about 95%.
Regarding Claim 201, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the membrane has a maximum separating pore diameter ranging from 0.3 to 0.7 µm (i.e., the outer layer is porous; c7/51-53) and further discloses an embodiment an average pore diameter of 0.247 µm (Example 1, c18/55-56), which reads upon the claimed range of a mean pore size of from about 0.15 µm to about 0.4 µm.
Regarding Claim 302, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the membrane has a porosity of 70 to 85 vol.% (c7/66-c8/6) and further discloses an embodiment with a porosity of 81 vol.% (Example 2, c19/30), which reads upon the claimed range of wherein the fiber has a bulk porosity of about 80% to about 85%.
Regarding Claim 303, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further shows in the disclosed figures the lack of macrovoids anywhere throughout the hollow fiber membrane (i.e., free of macrovoids; see cross-section SEM images of FIG. 1, FIG. 7).
Regarding Claim 306, modified SCHUSTER makes obvious the method of Claim 112. Modified SCHUSTER is deficient in explicitly disclosing the outer layer further comprises crystalline polyvinylidene fluoride. However, all PVDF polymers, especially the polymer disclosed by SCHUSTER have some degree of crystallinity. Thus, the claimed limitation requiring “crystalline polyvinylidene fluoride” is instantly read upon.
Regarding Claim 309, modified SCHUSTER makes obvious the method of Claim 112. As noted earlier, SCHUSTER discloses supporting layer spans at least 80% of the wall thickness of the hollow fiber membrane (i.e., wherein the hydrophilic inner layer is thicker than the hydrophobic outer layer; c5/44-48)
Claim(s) 125, 136, 307, and 308 is/are rejected under 35 U.S.C. 103 as being unpatentable over SCHUSTER et al. (US 10,946,345) in view of HOLDA et al. (J. Appl. Polym. Sci., 2015, 42130, pg. 1-17), HANAKAWA et al. (AU 2006345112 A1), and LI et al. (CN 106582312 A), as applied to Claim 112 above, and even further in view of EDWIE et al. (Chemical Engineering Science, 68, 14 October 2011, pg. 567-578).
Regarding Claim 125, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the use of the hollow fiber membrane in the membrane distillation of salt water (c6/64-c7/9). However, modified SCHUSTER is deficient in disclosing wherein the fluid sample is flowed through the hydrophobic outer layer with a linear velocity of from about 1 m/s to about 3 m/s.
EDWIE discloses a dual-layer polyvinylidene fluoride (PVDF) hollow fiber membrane for direct contact membrane distillation (abstract; §1, last paragraph). EDWIE further discloses a saline feed solution is contacted with the hollow fiber membrane wherein the feed solution is circulated on the shell side (§2.8, par. 1). The feed solution is introduced at a flow velocity of 1.4 m/s (Table 8; §2.8, par. 1), which reads on the claimed range of a linear velocity of from about 1 m/s to about 3 m/s. Because both SCHUSTER and EDWIE disclose the use of polyvinylidene fluoride hollow fiber membranes for membrane distillation of salt water, one of ordinary skill in the art prior to the filing date of the claimed invention would have found it obvious to apply an outside feed flow as disclosed by EDWIE at sucha flow velocity in the membrane distillation process made obvious by modified SCHUSTER. The nature of the problem to be solved would have led one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A).
Regarding Claim 136, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the use of the hollow fiber membrane in the membrane distillation of salt water (c6/64-c7/9). However, modified SCHUSTER is deficient in disclosing that fluid sample is introduced through the outer layer and fresh water is introduced through the tubular channel.
EDWIE discloses a dual-layer polyvinylidene fluoride (PVDF) hollow fiber membrane for direct contact membrane distillation (abstract; §1, last paragraph). EDWIE further discloses a saline feed solution is contacted with the hollow fiber membrane wherein the feed solution is circulated on the shell side and deionized water is circulated in the lumen side (§2.8, par. 1). Because both SCHUSTER and EDWIE disclose the use of polyvinylidene fluoride hollow fiber membranes for membrane distillation of salt water, one of ordinary skill in the art prior to the filing date of the claimed invention would have found it obvious to apply flowing a fresh water feed through the lumen and fluid sample through the shell side as disclosed by EDWIE in the membrane distillation process made obvious by modified SCHUSTER. The nature of the problem to be solved would have led one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A).
Claim(s) 127, 130, 307, 308 is/are rejected under 35 U.S.C. 103 as being unpatentable over SCHUSTER et al. (US 10,946,345) in view of HOLDA et al. (J. Appl. Polym. Sci., 2015, 42130, pg. 1-17), HANAKAWA et al. (AU 2006345112 A1), and LI et al. (CN 106582312 A), as applied to Claim 112 above, and even further in view of EDWIE et al. (Chemical Engineering Science, 68, 14 October 2011, pg. 567-578) and HICKENBOTTOM et al. (WO 2013/188450 A1).
Regarding Claim 127, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the use of the hollow fiber membrane in the membrane distillation of salt water (c6/64-c7/9). However, modified SCHUSTER is deficient in disclosing flowing fresh water through the tubular channel, wherein the fresh water has a salinity of from about 500 mg/L to about 10,000 mg/L.
EDWIE discloses a dual-layer polyvinylidene fluoride (PVDF) hollow fiber membrane for direct contact membrane distillation (abstract; §1, last paragraph). EDWIE further discloses a saline feed solution is contacted with the hollow fiber membrane wherein the feed solution is circulated on the shell side and deionized water is circulated in the lumen side (§2.8, par. 1). Because both SCHUSTER and EDWIE disclose the use of polyvinylidene fluoride hollow fiber membranes for membrane distillation of salt water, one of ordinary skill in the art prior to the filing date of the claimed invention would have found it obvious to apply flowing a fresh water feed as disclosed by EDWIE in the membrane distillation process made obvious by modified SCHUSTER. The nature of the problem to be solved would have led one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A).
Modified SCHUSTER is deficient in disclosing the fresh water has a salinity of from about 500 mg/L to about 10,000 mg/L.
HICKENBOTTOM discloses membrane distillation for concentrating and extracting water from various feed streams, e.g., seawater and brackish water (par. 5). The feed stream contains a high solute concentration and the permeate/distillate stream has a solute concentration lower than in the feed stream, e.g., the feed stream is salt water and the distillate stream is fresh water (par. 28). Although HICKENBOTTOM is deficient in explicitly disclosing a specific salinity of the fresh water, HICKENBOTTOM does indicate that the permeate/distillate stream has a lower solute concentration than that of the feed stream. Depending on the desired efficiency of treatment of treating the fluid sample, given that the feed stream in the membrane distillation treatment of seawater or brine is typically at least 35,000 mg/L (3.5 wt%), one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found the claimed salinity range of from about 500 mg/L to about 10,000 mg/L (i.e., less than the solute concentration of the feed stream) to be obvious. Where 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 absent unexpected results or evidence indicating such optimum or workable ranges are critical (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP§2144.05). Furthermore, in membrane distillation processes HICKENBOTTOM discloses the substitutability of fresh water for deionized water (par. 23), which is disclosed by EDWIE. Thus, the claimed use of fresh water would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention because the substitution of one known element for another would have yielded predictable results (MPEP §2143.01 B).
Regarding Claim 130, modified SCHUSTER makes obvious the method of Claim 127. EDWIE further discloses a distillate flow velocity of 0.7 m/s (Table 8; §2.8, par. 1), which reads on the claimed range of a linear velocity of from about 0.5 m/s to about 2.5 m/s.
Regarding Claim 137, modified SCHUSTER makes obvious the method of Claim 127. SCHUSTER further discloses a distillate circuit temperature of 30°C and a salt water circuit temperature of 80°C (c7/4-6), which reads on the claimed temperature difference of wherein the fluid sample temperature is higher than the fresh water temperature by at least about 10°C to at least about 80°C. Similarly, EDWIE further discloses feed circulation temperature of 50 to 80°C and distillate circulation temperature of 17°C (§2.8, par. 1), which reads on the claimed temperature difference of from at least about 10°C to at least about 80°C.
Regarding Claim 307, modified SCHUSTER makes obvious the method of Claim 137. As noted earlier, SCHUSTER discloses the use of the hollow fiber membrane in the membrane distillation of salt water (i.e., wherein the fluid sample comprises water; c6/64-c7/9).
Regarding the limitation “upon the contacting, water vapor transports through the hydrophobic outer layer and the hydrophilic inner layer, and into the tubular channel”, such a limitation is directed toward intended results from the practice of the claimed invention and is not subject to patentability. If a prior art process is capable of performing the intended use as recited and does not result in a manipulative difference, then it meets the limitation of the claim (MPEP §2111.02 II). Even further, such a limitation is merely describing the process by which membrane distillation occurs, of which SCHUSTER teaches.
Regarding Claim 308, modified SCHUSTER makes obvious the method of Claim 307. The limitations “wherein the hydrophilic inner layer reduces a transport resistance of the water vapor and increases permeate water flux” are directed toward inherent properties of the claimed hydrophilic inner layer and intended results. A hydrophilic layer is wholly expected to reduce any transfer resistance and to improve any flux of aqueous fluids given the properties inherent to hydrophilic material. The discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel (In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368, Fed. Cir. 2004; MPEP §2112 I). If a prior art process is capable of performing the intended use as recited and does not result in a manipulative difference, then it meets the limitation of the claim (MPEP §2111.02 II).
Claim(s) 304 and 305 is/are rejected under 35 U.S.C. 103 as being unpatentable over SCHUSTER et al. (US 10,946,345) in view of HOLDA et al. (J. Appl. Polym. Sci., 2015, 42130, pg. 1-17), HANAKAWA et al. (AU 2006345112 A1), and LI et al. (CN 106582312 A), as applied to Claim 112 above, and further in view of CAMACHO et al. (Water, 25 January 2013, 5, 94-196).
Regarding Claim 304, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the use of the hollow fiber membrane in the membrane distillation of salt water (c6/64-c7/9). However, modified SCHUSTER is deficient in disclosing a salinity of at least about 120,000 mg/L.
CAMACHO discloses the use of PVDF hollow fiber membranes (pg. 100, §1.3) for the membrane distillation treatment of various produced water and other impaired waters. For example, candidates for membrane distillation treatment include waters contained in aquifers having salinity ranges from 10,000 to 150,000 mg/L in some Middle Eastern states (pg. 151, §5.1), which overlaps with the claimed range of a salinity of at least about 120,000 mg/L and therefore, establishes a case of prima facie obviousness (MPEP 2144.05). Because both SCHUSTER and CAMACHO disclose the use of polyvinylidene fluoride hollow fiber membranes for membrane distillation of water having some degree of salinity, one of ordinary skill in the art prior to the filing date of the claimed invention would have found it obvious to apply the membrane distillation process made obvious by modified SCHUSTER for treatment of high salinity water of at least about 120,000 mg/L made obvious by CAMACHO. The nature of the problem to be solved would have led one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A).
Regarding Claim 305, modified SCHUSTER makes obvious the method of Claim 112. SCHUSTER further discloses the use of the hollow fiber membrane in the membrane distillation of salt water (c6/64-c7/9). However, modified SCHUSTER is deficient in disclosing a salinity of at least about 150,000 mg/L.
CAMACHO discloses the use of PVDF hollow fiber membranes (pg. 100, §1.3) for the membrane distillation treatment of various produced water and other impaired waters. For example, candidates for membrane distillation treatment include waters contained in aquifers having salinity ranges from 10,000 to 150,000 mg/L in some Middle Eastern states (pg. 151, §5.1), which borders with the claimed range of a salinity of at least about 150,000 mg/L and therefore, establishes a case of prima facie obviousness (MPEP 2144.05). Because both SCHUSTER and CAMACHO disclose the use of polyvinylidene fluoride hollow fiber membranes for membrane distillation of water having some degree of salinity, one of ordinary skill in the art prior to the filing date of the claimed invention would have found it obvious to apply the membrane distillation process made obvious by modified SCHUSTER for treatment of high salinity water of at least about 150,000 mg/L made obvious by CAMACHO. The nature of the problem to be solved would have led one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A).
Response to Arguments
Applicant’s arguments and amendments filed 23 September 2025 have been fully considered.
Regarding the 35 USC 103 rejections of Claim(s) 112-114, 117, 119, 133, 171, 175, 181, 183, 187, 201, 302, 303, 306, and 309 as being unpatentable over SCHUSTER et al. (US 10,946,345) in view of HOLDA et al. (J. Appl. Polym. Sci., 2015, 42130, pg. 1-17), HANAKAWA et al. (AU 2006345112 A1), and YANG et al. (US 2012/0085698 A1), Applicant has amended Claim 112 to recite “wherein the contacting comprises flowing the fluid sample through the hydrophobic outer layer” and argues that none of the cited references teach or suggest a fiber comprising “a hydrophilic inner layer, wherein the hydrophilic inner layer comprises a fluoropolymer and polyethylene glycol (PEG)” (pg. 6, bottom).
Applicant argues HANAKAWA does not disclose a “hydrophilic inner layer” but instead HANAKAWA discloses “the layer of spherical structure is preferably substantially free from the hydrophilic polymer… an outermost layer is preferably formed by the layer of three-dimensional network structure” (pg. 6, lines 23-26); Applicant further states that the inner layer (i.e., the spherical structure layer) of HANAKAWA is substantially free of hydrophilic polymer and the outer layer (i.e., the three-dimensional network structure) comprises a hydrophilic polymer, which is opposite to the fiber recited in Claim 112 (pg. 7, top).
Similarly, Applicant argues YANG fails to teach the instant limitation; the inner layer of YANG does not use PEG, and the PEG used in YANG are extracted from the membrane during the process of formation as recited in p0014 and p0058 of YANG (pg. 8, top).
Applicant’s remaining arguments pertaining to the other 35 USC 103 rejections are predicated on the arguments presented for the rejection of Claim 112.
The Examiner partially agrees.
Regarding Applicant’s argument pertaining to HANAKAWA, it is acknowledged that HANAKAWA discloses that “the membrane is preferably so positioned that the layer of three-dimensional network structure is at the side of source water” (emphasis added; pg. 11, lines 19-20); while this may seemingly teach away from the claimed method wherein “the contacting comprises flowing the fluid sample through the hydrophobic outer layer”, such a disclosure is considered a preferred embodiment and does not necessarily preclude a membrane orientation whereby the layer of three-dimensional network structure is at the permeate side. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use” (In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); MPEP §2123 II). In fact, one of ordinary skill in the art would find obvious to utilize the taught membrane in an orientation as claimed given the limited number of options by which fluid sample can be treated in hollow fiber filters, e.g., in-to-out filtration vs. out-to-in filtration. The claim would have been obvious because one of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp; if this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense (MPEP §2143.01 E).
Regarding Applicant’s argument pertaining to YANG, such amendments and arguments are persuasive. YANG does not seemingly disclose the presence of PEG in the hydrophilic layer of the membrane. The 35 USC 103 rejections of Claim(s) 112-114, 117, 119, 133, 171, 175, 181, 183, 187, 201, 302, 303, 306, and 309 as being unpatentable over SCHUSTER et al. (US 10,946,345) in view of HOLDA et al. (J. Appl. Polym. Sci., 2015, 42130, pg. 1-17), HANAKAWA et al. (AU 2006345112 A1), and YANG et al. (US 2012/0085698 A1) are withdrawn; however, after further search and consideration new grounds of rejection have been made under 35 USC 103 for Claim(s) 112, 114, 117, 119, 133, 171, 175, 181, 183, 187, 201, 302, 303, 306, and 309 as being unpatentable over SCHUSTER et al. (US 10,946,345) in view of HOLDA et al. (J. Appl. Polym. Sci., 2015, 42130, pg. 1-17), HANAKAWA et al. (AU 2006345112 A1), and LI et al. (CN 106582312 A).
It is further noted that Applicant’s cancellations of Claims 113, 124, and 136 and amendments to Claims 114, 133, and 137 to different dependencies have required adjustments to the grounds of rejections of the remaining dependent claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/Ryan B Huang/Primary Examiner, Art Unit 1777