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 Arguments
Applicant's arguments filed September 4, 2025 have been fully considered but they are not persuasive.
The claims have not been amended to overcome all of the prior 112 rejections. It is noted that the filed claims are essentially the same as those presented for and addressed during the interview of February 19, 2025 and those filed on February 25, 2025 (the only difference being the amendment of claim 1, directed to the four or more standoff holes. The issues stated by the examiner during the interview and provided for in the interview summary and addressed in the prior Office Action of June 4, 2025 have not been resolved. The examiner maintains the previously stated position previously stated in the prior Office Action. See remarks and rejections of the prior Office Action and herein.
Applicant has not sufficiently addressed and/or sufficiently amended the claims to overcome the prior 112 rejections and prior art rejections. For example, applicant has not addressed the rejection directed to the term “proximate” in claim 1 nor the further rejections of dependent claims 3-9. Therefore, the rejections are hereby maintained.
As to the 112 rejection of that states it is unclear which/what standoffs are being referenced by “the standoffs”, it is noted that the rejection is not based upon the drawings, but such is directed to lack of clarity of the language of employed in the claims. Indicating what standoffs (not claimed as elements of the instant invention (a filter membrane) in the drawings are intended to be referenced by the phrase does not remedy the lack of clarity of the claim language. It is noted while the claims are interpreted in light of the specification, the reference numerals nor the figures (what is and/or not illustrated) themselves are read into the claims. The claimed apparatus is defined by the positively claimed elements listed in the claims.
As to the negative limitations, it appears that applicant is relying upon paragraph 0058 of the US publication (which is not the same as paragraph 0058 of the specification) and drawings. It is noted that 0058 of the publication only states “Support holes 703 may be found in the non-porous region 701 of the filter membrane 700”. Applicant also refers to figures 7A-7D of the application which are insufficient to support the negative limitations. However, it is noted that applicant does not provide for any description of where any description of claims 5-7 (second support region lacking pores) is provided for in the specification. As previously stated in the prior Office Action, “any negative limitation or exclusionary proviso must have basis in the original disclosure. MPEP 2173.05(i) Negative Limitations. Applicant is not entitled to rely upon the drawings as support to claim what is not shown in the drawings. The drawings do not illustrate numerous features/structures (not present; “lacking” in the drawings). If applicant were permitted to claim all that is not shown (lacking), the list, of possibilities of what features/structures could be excluded would be exhaustive (infinite). Since the original specification does not provide for a specific exclusionary proviso nor alternatives for a basis of exclusion of any specific alternative, the rejection of claims 5-7 is hereby maintained.
It is noted while the claims are interpreted in light of the specification, the reference numerals nor the figure themselves are read into the claims. Here, in claim 1, the “support region” is only structurally defined as a region (location) where “four standoff” holes and “membrane support” holes are located but not any pores. However, as previously stated the name of such holes do not provide any structural distinction from any pores nor holes because the terms “holes” and “pores” are synonymous. It is noted that each of the porous polymeric filter region and polymeric support region are not defined by any structure other than pores and holes. However, there is no specific tangible structure recited in the claims in which such pores and holes are required to be located within. The term “region” is relatively broad and is not defined as being any specific structure(s) nor and definitive structural boundaries/dimensions so as to definitively determine where each respective region begins and ends. As previously stated, it is noted that the terms “pores”, “openings”, and “holes” are synonyms and the term “plurality” only requires 2. Therefore, the filter region can be any general, broad area where 2 pores are located within. However such region is not claimed as having any definitive structural/measurable boundary to determine where the region begins and ends so as to be distinguished from any other region, part, area, location, element, etc. The same is applicable to the support “region”. Applicant does not provide for any definitive structural boundaries of such regions.
As to claim 4, similarly to what was previously stated, applicant now states: “standoffs 321a,b are shown in Fig. 3A, for example. Because it is a side view, only two standoffs are shown. But the context, including Fig. 3B, makes clear that four standoffs are present, which correspond to the four standoff holes 319a,b,c,d.” Referring to the figures does not remedy issue of the language employed in the claims. Although no standoffs are positively claimed as elements of the invention (the filter membrane), it is unclear which/what standoffs are being refenced by “the standoffs” because claim 1 previously mentions “a plurality of standoffs” and claim 4 also previously recites “four stand offs”. Therefore, it is unclear which/what standoffs (previously recited in the claims) the phrase “the standoffs” refers to. Furthermore, what the membrane may be attached to (frame) and what applicant intends to be used to attach the filter membrane (standoffs, fasteners) are not structural elements of the invention (the filter membrane). The invention as clearly stated in the preamble of the claims is only “the filer membrane”, not the filter membrane and other structures that are not positively claimed as elements of the filter membrane. If applicant intends to claim an apparatus that comprises a membrane and further structural elements, then the claims should clearly recite such.
The examiner fails to locate any description of the invention of the amended claims. For example, there is no description of the filter membrane further comprising a second support region as provided for in claims 5-7. It is noted that claims 5-7 also provide for a negative limitation directed the second support region as indicated by the “lacking pores…”clause. Any negative limitation or exclusionary proviso must have basis in the original disclosure. MPEP 2173.05(i) Negative Limitations. (See also prior Office Action). Therefore, the claims are directed to new matter.
As to claims 5-7, applicant now states: “Figs. 7A-7D are intended to illustrate different embodiments of the polymeric filter membrane. The figures use similar shading and describe support region 721, which "allow[s] for placement of seals, such as an O-ring, within region 722." Figs. 7C and 7D use the same shading to depict region 741, and describes it as a seal region. From the shading and similar purpose, one can infer that the region 741 is also a "support region” and previously asserted in the prior Office Action that the claims “cover the embodiments shown in Figs. 7B, 7C, and 7D, which include a second support region 741.” The examiner disagrees. 741 is not described as being “a second support region” as stated by applicant. It is noted that what the figures are “intended to illustrate”, what can be “inferred” from the figures (it is noted that what may be “inferred” from the drawings by one person may not be inferred by another), and what is and is not illustrated in the figures are not claim limitations. Furthermore, as previously stated in the prior Office Action, this is not consistent with paragraph [0058] of the publication:
“The support regions 721 have holes 723. The support regions 721 allow for placement of seals, such as an O-ring, within region 722. FIG. 7C shows a filter membrane 740 with several holes 742 provided within a single seal region 741. Each hole may include a seal, such as an O-ring, within region 741. FIG. 7D shows another examples of a membrane filter 760 which shows that a single seal may be provided within seal region 744 and surround several holes 742 within the seal region 741.”
The claims are not consistent with the specification. As previously stated above, 741 (the seal region) is not disclosed/described as “a second support region …” as provided for in the claim and furthermore, no second support region is disclosed as lacking any pores are recited in claims 5-7 and no second plurality of membrane support holes are provided for in the specification. The figures are insufficient to support the negative limitations of the claims (see prior remarks above directed to what is not shown/not illustrated in the drawings). Therefore, the new matter rejection is hereby maintained.
As to claim 8, applicant states “this is intended to recite the thickness of the filter membrane”. However, the entire invention being claimed is a filter membrane. The filter membrane does not have a single thickness. For example, the individual positively claimed elements can have thicknesses, each of which is also considered as a thickness of the membrane. If applicant intends to refer to a specific thickness of specific element of the invention, extending from…to…, then it is suggested that the claim be amended to clearly recite such. Otherwise, the claim is not limed to any specific thickness of the membrane.
As to claim 9, applicant states “that a person having ordinary skill in the art would understand aspect ratio to mean the ratio of a thickness to diameter.” The examiner disagrees. Thickness and diameter are not the only dimensions of a pore. One can select whatever dimensions one chooses to define an aspect ratio. If applicant intends for such ratio to be thickness to diameter, then the claim should clearly recite such. Otherwise, it is unclear what dimensions are required to define the ratio values.
As to the art rejection based upon Kopf, applicant argument is the same as that previously addressed, applicant states:
“Kopf discloses a filtration cassette that uses traditional filters that can be compressed very tightly. These membranes lack "a polymeric support region surrounding the porous polymeric filter region and lacking pores." The larger openings 16, 18, 20, and 22 and other openings 64, 66, 68, and 70 in the filter membrane of Kopf are provided directly in the porous filter region. In contrast, to the extent there are analogous features claimed in the present invention, those features are required to be in the "polymeric support region."”
The examiner disagrees. As noted, applicant’s “polymeric support region” nor “support region” are defined by any definitive structural boundaries nor dimensions so as to determine where such regions begin and end. As to Kopf, clearly the larger openings and other openings are not located in any pores and no pores are located in any of the openings. There is nothing precluding the location of the openings themselves and a general surface area relatively near, close, proximate, etc. to such openings and absent any pores from being considered as the “support region”. Also, there is nothing precluding one from establishing and/or drawing a boundary (tangible or intangible) around, enclosing two pores (all that is required to define the filter region in claim 1) of the device of Kopf and referring to such as the filter region and noting that such openings are distant from, not within such filter region and drawing a boundary such the openings are located in a “support region” that does not include the pores as stated above.
As to the 103 rejection, applicant relies upon same argument addressed above. However, the same rational stated above is also applicable to Zhang. Therefore, the arguments are not found persuasive and the claims are rejected as given herein.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not describe all of subject matter provided for the claims. See prior Response to arguments above and 112 rejections herein below.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
It is noted that the term “plurality” and (plural terms such as “pores” and “holes” minimally only requires two (2) and the phrase “at least one” only requires one (1).
A claim is only limited by positively claimed elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”. MPEP 2115 Material or Article Worked Upon by Apparatus.
It is noted that the claims mention a plurality of standoffs and a plurality of fasteners that are not specifically structurally defined in the claim, a support frame, a membrane frame, fasteners, and four standoffs. However, none of the prior are positively claimed as structural elements of the filter membrane. All of the prior are considered as materials or articles intended to be and/or can be worked upon, used with the filter membrane. However, there is no requirement for any openings nor holes of any positively claimed element to be engaged with any standoffs and fasteners of an unclaimed support frame nor membrane frame. It is noted that there is no structural distinction provided for in the claim between “four or more standoff holes” and “a plurality of membrane support holes” other than the openings being larger than the holes. The name of the holes “standoff” and “membrane support holes” and what the openings/holes are intended to be used for “adapted to engage” clauses do not provide for any further structural element of the openings/holes. One is not limited to using the holes/openings as may be intended by applicant. There is nothing precluding any of the holes or pores from being used to engage any fasteners, standoffs, any other structures, nor anything else a user, owner, possessor of the invention may choose. The same is applicable to the plurality of openings. However, it is noted that the claimed invention is defined by the positively claimed structural elements listed in the claims. The claimed invention is not required to be used in any process at all nor with (be engaged with, attached to anything) any further unclaimed materials, articles, structures, etc. that are not elements of the filter membrane. Whether or not one chooses to engage and attach the membrane to anything is a choice not a requirement. What the membrane can be attached to, engaged with, etc. are not structural elements of the membrane and do not structurally define the membrane. As noted above, the support frame, standoffs, fasteners, and membrane frame are not structural elements of the membrane.
As to claim 1, it is presumed that “the support region” is intended to be “the polymeric support region”. Therefore, the phrase should be amended to such.
As to claim 8, it is noted that the claim is not directed to any specific positively claimed element of the filter membrane. Therefore, any element of the invention that has a thickness within the recited range will read on the claim.
As to claim 9, it is noted that the claims does not provide for what dimensions of the plurality of pores are required to define and being compared in the recited “aspect ratio”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-9 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. The examiner fails to locate any description of a filter membrane as now claimed in claims 1 and 3-9, including but not limited to the negative limitation of lacking/excluding pores in claims 1 and 5.
As previously stated, any negative limitation or exclusionary proviso must have basis in the original disclosure. MPEP 2173.05(i) Negative Limitations. Furthermore, there is no description, support for claims 5-7 in the specification (See Response to Arguments above). Therefore, the claims are directed to new matter.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They are replete with vague, ambiguous, inconsistent, and confusing language.
As to claim 1, as noted above the term “region” is broad, vague, and ambiguous. The respective regions are not defined by any tangible structures/materials (substate, surface, sheet, plate, film, etc.) or of such. It is unclear what is structurally required to be considered as “a porous filter region” and “a support region” because, such regions are no sufficiently, clearly structurally defined to determine where such respective regions begins and ends. There are no clear and definitive structurally boundaries provided for in the claims to determine the metes and bounds of such regions. See also claims 5-7 (also applicable to “hole support region” recited in claim 7. See also Response to Arguments.
The “surrounding…” clause does not provide for any structural connection nor definitive relative location between the respective regions (not defined by any specific structure(s) as noted above). It is noted that something (a first structure) can “surround” something else (a second structure) without the first and second structures actually being structurally connected. However, it is noted that a list of parts (regions) that are not required to be structurally connected do not define a single apparatus.
The term “proximate” in claim 1 is a relative term which renders the claim indefinite. The term “proximate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no indication as to what relative locations or distances of any structures are considered as “proximate”. What may be considered as proximate to one person, may not be considered as such to another. It is noted that all of the elements of the membrane can be categorized as being “proximate” to each other.
Furthermore, no corners have been listed as positively claimed elements of the membrane. No have any corners been structurally define (such as by a junction/connection of walls nor any other structures, nor as being interior, exterior, etc. relative to anything).
Furthermore, it is unclear what is require of a corner to be considered as “separate” because the claim does not provide for such. Anything can be considered as “separate” relative to something else.
If applicant intends for the membrane to comprise a specific number of corners that defined by specific structures, then the claim should be amended to clearly recite such.
As to claim 1, although no standoffs are positively claimed as elements of the invention, it is unclear which/what standoffs are being refence by “the standoffs” because claim 1 previously mentions “a plurality of standoffs”.
As to claims 3-4, it is unclear what is further structurally meant, required by the claims because as previously noted, the claimed invention is “a filter membrane” as clearly recited in the preambles of the claims. As noted above no frames, standoffs, and fasteners are positively claimed as structural elements of the invention, the filter membrane. It is noted that reciting that the entire invention, “the filter membrane” (or any prior positively claimed element defining such) is attached to a membrane frame (not previously claimed, also applicable to the fasteners and “four standoffs”) does not require the filter membrane to comprise the membrane frame, fasteners, and four standoffs. What is used for attachment of the membrane and what the membrane can be or recited as being attached to are not elements of the membrane and do not further limit the structure of claimed membrane. However, it is unclear what is the structural nexus of the fasteners and four standoffs, respectively recited in claims 3-4 to the prior “a plurality of standoffs” and “a plurality of fasteners” recited in claim 1.
As to claims 3-4, it is unclear how the entire invention being defined, “a filter membrane” can be defined relative to itself (use of the phrase “the filter membrane” used within the claims, appears to be redundant). It unclear what/which prior positively claimed elements recited as defining the invention are being referenced by the use of such phrase.
As to claim 3, it is unclear what is the nexus of “a plurality of standoff holes” the “four or more standoff holes” recited in claim 1 and the nexus of “fasteners” recited in claim 3 to the “a plurality of fasteners” recited in claim 1. It is unclear if such are the same or different because the claim does not provide for such.
As to claim 4, it is unclear what is the nexus of the “four standoffs” to the “plurality of standoffs recited in claim 1.
As to claim 4, it is unclear which/what “standoffs” are being referenced by “the standoffs” because claim 1 previously mentions “a plurality of standoffs” and claim 4 also previously mentions “four standoffs”.
As to claim 4, it is unclear what is the nexus of “standoff holes” to the “four or more standoff holes” previously recited in claim 1 and “a plurality of standoff holes” previously mentioned in claim 3 because the claim does not provide for such.
Claim 4 recites the limitation " the plurality of openings of the filter membrane". There is insufficient antecedent basis for this limitation in the claim.
As to claim 5-7, it is unclear how the filter membrane can be claimed as comprising a second support region and a second plurality of support holes because no “first” support region and no first plurality of support holes have been previously mentioned, claimed, and clearly, structurally defined in the claims. It is unclear what is the structural nexus/connectivity of the second support region to prior a support region of claim 1 because the claim does not clearly recite such. There is no structural connectivity provided for between the support region recited in claim 1 and the a second support region. There is no indication how to determine that “a second support region is positioned within the porous polymeric filter region” because as noted about such region is no sufficiently structural defined in the claims to determine what actually defines such region. A plurality of (2) pores (holes) does not definitively define any structural boundaries of such “region”. It is noted that any further “region” of the “porous filter region” (a region being any part/location of such undefined region that one chooses) that does not include the same pores recited in claim 1 meets the recitation. Furthermore, the specification does not describe “a second support region” as provided for in the claims.
As to claim 6, it is unclear what is the structural nexus of “a second plurality of membrane support holes” to the prior “a plurality of membrane support holes” because the claim does not provide for such. It is noted that no plurality of “first” membrane support holes are previously claimed. Therefore, it is unclear how there is a “second” plurality of membrane support holes. Furthermore, it is unclear what is the structural nexus of the second plurality of membrane support holes to the previously positively claimed elements. Such second plurality of membrane support holes are not required to be located in any prior positively claimed structural element nor any other definitive structure.
As to claims 6-7, it is unclear what is structurally required, meant by the term “surrounds” and “surrounded by”, respectively because the claims do not clearly, definitively provide for such. The term does not provide for nor require any structurally connection nor definitively relative location between any positively claimed elements. The term “surround” is relative, subjective. What structural/proximity relationships that may be considered as “surrounds” and/or “surrounded by” by one person may not be considered as such to another and vice versa.
As to claim 7, it is unclear which/what membrane support hole(s) is being referenced by the phrase “each membrane support hole” because the claim does not clearly provide for such. Claim 1 previously recites “a plurality of membrane support holes”. However, it is unclear if claim 7 is intended to be directed to the prior plurality of membrane support holes because the claim does not recite such.
As to claim 7, it is unclear what the pronoun “its” in the phrase “its own…” is meant to reference. However, if this is intended to refer to each of the plurality of membrane support holes, it is noted that no membrane support hole has been previously claimed as owning (possessing), comprising, including “a hole support region” as recited in the claim, nor described as such in the specification. Furthermore, it is unclear what is the structural nexus of the “hole support region” to the prior porous filter region and support region of claim 1 because the claim does not provide for such.
As to claim 8, it is unclear what is structurally meant, required by the claim because the claim is directed to “the filter membrane” (the entire invention) that applicant is intending to define in the claims and not a specific element of the filter membrane. It is noted that any thickness of any positively claimed element is a thickness of the filter membrane. It is unclear how the filter membrane can be defined relative to itself, the filter membrane. It is unclear what/which thickness of the filter membrane is being reference because as noted above of the positively claimed elements can have at least one thickness, all of which are thicknesses of the membrane. Therefore, it is unclear what/which thickness is being referenced (if the claim is referring to a specific thickness of a single element or sum of thicknesses of multiple/all of the positively claimed elements of the membrane). The claim is confusing.
As to claim 9, it is unclear, what is structurally considered as “an aspect ratio” because the claim does clearly and definitively indicate such. It is unclear what dimensional values (are being compared) of the plurality pores are intended to define such “aspect ratio”. A pore can have multiple dimensions (length, width, height, diameter, radius, diagonal, wall thickness, etc.). Here, the claim does not provide for what dimensions of the pore are referenced to define the ratio.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 3-7 is/are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Kopf, US 5,868,930.
Kopf disclose a filter (membrane) comprising a membrane (filter sheet members; Figures 1-17, description of the figures). The filter sheets comprise a porous filter region including a plurality of pores having a pore dimension within a range of 20nm and less than 100 microns…. (“The sheets of filter material used in the cassette article of the present invention may be of any suitable porosity rating. As used herein, the porosity rating of a sheet of filter material is the smallest particle size which cannot pass through the pores of the filter material. Typical porosity ratings are expressed in molecular weight (MW) and micrometer units, e.g., a 2 micron filter media sheet being a material which will pass particles smaller than 2 microns in diameter through the pores of the material, while particles larger than 2 microns will not be passed through the filter material, and as a further example, a 10,000 MW filter media sheet being a material which will pass particles smaller than 10,000 MW in diameter through the pores of the material, while particles larger than 10,000 MW will not be passed through the filter material.”) (See figures, and column 10, lines 47-61- column 11, line 10);
the membrane filter 10 and sheets include a number of support regions (surface areas) that “surround” a number of pores of the porous filter region and the support regions do not include pores of the recited range dimension, (See figures and description of the figures);
the support regions comprise a plurality of openings and holes that be employed with fasteners 85 and standoffs 84 “openings 16, 18, 20, 22, 24, 26, 64, 66, 68, and 70 accommodating the insertion therethrough of the rods (standoffs) 34, 36, 38, 72, 74, 76, and 78” (figures 1-18). As shown in the figures some the openings/holes are larger than others (for example hole/openings 16, 18, 20, 22, 24, 26 are larger that openings/holes 64, 66, 68, and 70.
As to claims 3-4, standoffs, the holes, and fasteners can be used to attached the filter member to a membrane frame.
Claim Rejections - 35 USC § 103
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) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kopf as applied above, and further in view of Zhang et al., US 2019/0105609.
Kopf does not specify a filter membrane thickness of 5 to 25 microns and an aspect ratio ranging from 0.5:1 to 20:1.
Zhang discloses a filtration device comprising a membrane filter comprising a porous sheet (66), wherein some portions of the surface of the porous membrane sheet are in contact with a support (62) and a spacer (64) sheets including support holes. The size of the diameter (minimum dimension) of the pores ranges from 1,5 up to 3 microns. (paragraphs [0048], [0044], [0053]; claims 1,2; figures 3,15).
The top portion 56, the membrane support 62, the membrane 66, the spacer 64, and the bottom portion 58 all include respective openings (holes) 88, 90, 92, 94, 96. The respective openings 88, 90, 92, 94, 96 are vertically aligned with respect to each other and enable fasteners (e.g., rods, bolts, etc.) to be disposed through them to assemble the components of the crossflow filtration device 18 together. The bottom The top portion, bottom portion, and spacer (frame comprises a 4 four openings/standoff holes; paragraph 0049 Figure 3).
The membrane 66 has pore free regions between and surrounding the support holes and support holes surround the pore free regions. (Figures 3, 9, 10).
The membrane 66 may also include a thickness of approximately 13-25 microns. (paragraph 0044).
The Applicant is advised that the Supreme Court recently clarified that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR Int’l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007) (see MPEP § 2143).
Common sense, predictability, knowledge, and skill of one of ordinary skill in the art may suffice to establish obviousness.
It would have been obvious to and within the common sense, knowledge, and skill of ordinary skill in the art to modify the device of Kopf to have a thickness of 5 to 25 microns and an aspect ratio ranging from 0.5:1 to 20:1 as taught by Zhang to minimize the materials used and space, overall profile of the device. It would have been an obvious matter of design choice, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kopf; Henry B.; Ondrick; Edwin P.; Foster; Paul A. et al.; Kessler; Stephen B.; Perl; Horst et al.; Tanaka; Yoshinobu et al.; Galimi; Giuseppe et al.; and IACONELLI WILLIAM B. disclose filtration devices.
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/BRIAN R GORDON/Primary Examiner, Art Unit 1798