DETAILED ACTION
This action is in response to the amendments and remarks filed 05/18/2026, in which claim 1 has been amended and claims 1-8 are pending and ready for examination.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by H.M. Kyllönen, et al., Membrane filtration enhanced by ultrasound: a review, Desalination, Volume 181, Issues 1–3, 2005, Pages 319-335 (hereinafter “Kyllönen”).
Regarding Claim 1 Kyllönen discloses a system for purifying a fluid comprising:
a treatment vessel having an interior volume for receiving a feed liquid mixture,
an ultrasound horn (i.e. ultrasonic mixing probe/device) disposed within the treatment vessel interior volume, wherein the ultrasonic probe vibrates at an ultrasonic frequency in excess of about 20,000 Hertz (including 20-1000 kHz, pg. 320 right col.; 40 kHz, pg. 323 left col.; 28 kHz to 1 Mhz, 28 kHz, 45 kHz, 100 kHz, Sec. 4.1. Ultrasound frequency);
a membrane, with pore sizes of 0.25, 1, and 3 µm (i.e. nanoporous according to claim 6), in flow communication with the treatment vessel interior volume; and
wherein the system is capable of sonicating the liquid mixture within the treatment vessel interior volume while, while at the same time, at least a portion of the liquid mixture is filtered across the nanoporous membrane and out of the treatment vessel to provide a filtrate; Fig. 3
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With regard to the limitations “an initial BNNT feedstock, wherein the initial BNNT feedstock comprises hexagonal boron nitride (h-BN) particles and less than about 50 weight percent BNNTs on a dry basis, wherein the initial BNNT feedstock is combined with a solvent to provide an initial mixture wherein the solvent added to the initial BNNT feedstock is at least one polar aprotic solvent”, “for receiving the initial mixture”, “which ultrasonically sonicates the initial mixture wherein the sonication is accomplished by inserting the first ultrasonic probe into the initial mixture” and “at least a first portion of the initial mixture is filtered across the nanoporous membrane and out of the treatment vessel to provide a filtrate with a second portion of the initial mixture remaining in the treatment vessel creating a retentate”, these are intended use limitations, wherein it has been held that the manner of operating a device does not differentiate an apparatus claims from the prior art; see MPEP 2114(II). It is specifically noted that the claim thus does not positively claim “an initial BNNT feedstock”, “a solvent”, “an initial mixture”, “a first portion”, “a second portion”, “a filtrate” and “a retentate” or the processes of mixing, receiving, sonicating, inserting or filtering. It is further the structure disclosed by Kyllönen would be capable of the noted intended use, i.e. even though the specific use is not disclosed.
Further, the limitations to “an initial BNNT feedstock”, “a solvent”, “an initial mixture”, “a first portion”, “a second portion”, “a filtrate” and “a retentate” are all directed to the material or article worked upon by the apparatus, wherein “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”, see MPEP 2115 And thus need not be disclosed by the prior art.
Regarding Claim 2 Kyllönen discloses the system of Claim 1, and with regard to the limitation “wherein the initial mixture further comprises a non-metal containing surfactant”, as the initial mixture is not positively claimed, as discussed above, this is merely a functional limitation which does not further define over the prior art because the structure disclosed by Kyllönen would be capable of the noted functional limitation.
Regarding Claim 3 Kyllönen discloses the system of Claim 1, and with regard to the limitation “wherein the retentate comprises at least 90 weight percent BNNTs on a dry basis”, as the initial mixture is not positively claimed, as discussed above, this is merely a functional limitation which does not further define over the prior art because the structure disclosed by Kyllönen would be capable of the noted functional limitation.
Regarding Claim 4 Kyllönen discloses the system of Claim 1, and with regard to the limitation “wherein the solvent comprises at least one polar aprotic solvent”, as the initial mixture is not positively claimed, as discussed above, this is merely a functional limitation which does not further define over the prior art because the structure disclosed by Kyllönen would be capable of the noted functional limitation.
Regarding Claim 6 Kyllönen discloses the system of Claim 1, wherein the nanoporous membrane comprises a plurality of pores, the pores having an average pore size of 0.25, 1, and 3 µm.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2012/0118824 A1 (hereinafter “Kashihara”).
Regarding Claim 1 Kashihara discloses a system for purifying a fluid comprising:
a treatment vessel having an interior volume (raw water side 3) for receiving a feed liquid mixture,
an ultrasonic vibrators 21 and 22 (i.e. ultrasonic mixing probes) disposed within the treatment vessel interior volume, wherein the ultrasonic probe vibrates at an ultrasonic frequency in excess of about 20,000 Hertz (50 kHz is used [0091]);
a membrane having an average pore diameter of 1 μm or more (i.e. nanoporous according to claim 6) in flow communication with the treatment vessel interior volume; and
wherein the system is capable of sonicating the liquid mixture within the treatment vessel interior volume while, while at the same time, at least a portion of the liquid mixture is filtered across the nanoporous membrane and out of the treatment vessel to provide a filtrate; Abstract, Fig. 2, [0077]-[0081].
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With regard to the limitations “an initial BNNT feedstock, wherein the initial BNNT feedstock comprises hexagonal boron nitride (h-BN) particles and less than about 50 weight percent BNNTs on a dry basis, wherein the initial BNNT feedstock is combined with a solvent to provide an initial mixture wherein the solvent added to the initial BNNT feedstock is at least one polar aprotic solvent”, “for receiving the initial mixture”, “which ultrasonically sonicates the initial mixture wherein the sonication is accomplished by inserting the first ultrasonic probe into the initial mixture” and “at least a first portion of the initial mixture is filtered across the nanoporous membrane and out of the treatment vessel to provide a filtrate with a second portion of the initial mixture remaining in the treatment vessel creating a retentate”, these are intended use limitations, wherein it has been held that the manner of operating a device does not differentiate an apparatus claims from the prior art; see MPEP 2114(II). It is specifically noted that the claim thus does not positively claim “an initial BNNT feedstock”, “a solvent”, “an initial mixture”, “a first portion”, “a second portion”, “a filtrate” and “a retentate” or the processes of mixing, receiving, sonicating, inserting or filtering. It is further the structure disclosed by Kashihara would be capable of the noted intended use, i.e. even though the specific use is not disclosed.
Further, the limitations to “an initial BNNT feedstock”, “a solvent”, “an initial mixture”, “a first portion”, “a second portion”, “a filtrate” and “a retentate” are all directed to the material or article worked upon by the apparatus, wherein “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”, see MPEP 2115 And thus need not be disclosed by the prior art.
Regarding Claim 2 Kashihara discloses the system of Claim 1, and with regard to the limitation “wherein the initial mixture further comprises a non-metal containing surfactant”, as the initial mixture is not positively claimed, as discussed above, this is merely a functional limitation which does not further define over the prior art because the structure disclosed by Kashihara would be capable of the noted functional limitation.
Regarding Claim 3 Kashihara discloses the system of Claim 1, and with regard to the limitation “wherein the retentate comprises at least 90 weight percent BNNTs on a dry basis”, as the initial mixture is not positively claimed, as discussed above, this is merely a functional limitation which does not further define over the prior art because the structure disclosed by Kashihara would be capable of the noted functional limitation.
Regarding Claim 4 Kashihara discloses the system of Claim 1, and with regard to the limitation “wherein the solvent comprises at least one polar aprotic solvent”, as the initial mixture is not positively claimed, as discussed above, this is merely a functional limitation which does not further define over the prior art because the structure disclosed by Kashihara would be capable of the noted functional limitation.
Regarding Claim 5 Kashihara discloses the system of Claim 1, wherein the nanoporous membrane may comprise polytetrafluoroethylene [0028].
Regarding Claim 6 Kashihara discloses the system of Claim 1, wherein the nanoporous membrane comprises a plurality of pores, the pores having an average pore size/diameter of 1 µm or more [0013], including PTFE with a pore diameter of 2-5 µm [0036].
Regarding Claim 7 Kashihara discloses the system of Claim 1, further comprising a receiving vessel (the second membrane filtration means, Fig. 1, [0079]) for collecting filtrate from the nanoporous membrane, and with regard to the limitation “wherein the receiving vessel is maintained at a sub-atmospheric pressure in order to draw filtrate across the membrane”, this is directed to how the apparatus is used and is therefore a functional limitation, as discussed above, which does not further define over the prior art because the structure disclosed by Kashihara would be capable of the noted functional limitation.
Regarding Claim 8 Kashihara discloses the system of Claim 1, further comprising a solvent supply line (i.e. 11), which supplies that raw water feed and is there for suitable for adding makeup solvent to the mixture in the treatment vessel. And while no specific supply reservoir is discussed, the raw water feed must necessarily and inherently be supplied from somewhere, that inherent supply may thus be considered a solvent supply reservoir. See MPEP 2112 with regard to inherency.
Response to Amendment
The previous 35 U.S.C. 112(b) rejection of claim 3 is withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 05/18/2026 have been fully considered but they are not persuasive.
In response to Applicants’ argument that neither Kyllönen nor Kashihara disclose filtration of BNNT and thus do not anticipate the instant claims; the Examiner disagrees. Apparatus claims may be limited with functional language, but the prior art does not need to actually disclose the functional limitations; the prior art need only disclose structure capable of achieving the recited function(s) to read on the functional limitations, see MPEP 2114.
Further, the limitations to “an initial BNNT feedstock”, “a solvent”, “an initial mixture”, “a first portion”, “a second portion”, “a filtrate” and “a retentate” are all directed to the material or article worked upon by the apparatus, wherein “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” And thus need not be disclosed by the prior art.
As the systems of Kyllönen and Kashihara both include structure which would be capable of the noted functional limitations; they are seen to anticipate the 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773
