DETAILED ACTION
This action is in response to an application filed with the US on 01/20/2022 and having an Effective Filing Date of 01/11/2019, in which claims 1-8 are pending and ready for examination.
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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 20 JANUARY 2022 is/are in compliance with the provisions of 37 CFR 1.97 and has/have been considered. An initialed copy of Form 1449 is enclosed herewith.
Claim Rejections - 35 USC § 112
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.
Claim 3 is rejected under 35 U.S.C. 112(b) 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.
Claim 3 recites the limitation “the retentate”. There is insufficient antecedent basis for this limitation in the claim.
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,
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
an ultrasound horn (i.e. ultrasonic mixing probe) disposed within the treatment vessel interior volume,
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 system being “for purifying a boron nitride nanotube feedstock”, the treatment vessel being “for receiving an initial mixture of a boron nitride nanotube (BNNT) feedstock with a solvent, the BNNT feedstock comprising hexagonal boron nitride (h-BN) particles and less than about 50 weight percent BNNTs on a dry basis” and “wherein the initial mixture of the boron nitride nanotube (BNNT) feedstock with the solvent is sonicated within the treatment vessel interior volume while, at the same time, at least a portion of the mixture is filtered across the nanoporous membrane and out of the treatment vessel to provide a filtrate”; these are functional limitations which attempt to define this apparatus claim’s structure in terms of its functional abilities. Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114), and thus the prior art need only disclose structure capable of achieving the recited function(s) to read on the functional limitations. It is specifically noted that the claim thus does not positively claim “an initial mixture”, “a filtrate” or the process of sonicating or filtering said initial mixture. These functional limitations do not further define over the prior art because the structure disclosed by Kyllönen would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed. Further, the claimed “an initial mixture” and “a filtrate” are material worked upon, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”; MPEP 2115.
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,
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
an ultrasonic vibrators 21 and 22 (i.e. ultrasonic mixing probes) disposed within the treatment vessel interior volume,
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 system being “for purifying a boron nitride nanotube feedstock”, the treatment vessel being “for receiving an initial mixture of a boron nitride nanotube (BNNT) feedstock with a solvent, the BNNT feedstock comprising hexagonal boron nitride (h-BN) particles and less than about 50 weight percent BNNTs on a dry basis” and “wherein the initial mixture of the boron nitride nanotube (BNNT) feedstock with the solvent is sonicated within the treatment vessel interior volume while, at the same time, at least a portion of the mixture is filtered across the nanoporous membrane and out of the treatment vessel to provide a filtrate”; these are functional limitations which attempt to define this apparatus claim’s structure in terms of its functional abilities. Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114), and thus the prior art need only disclose structure capable of achieving the recited function(s) to read on the functional limitations. It is specifically noted that the claim thus does not positively claim “an initial mixture”, “a filtrate” or the process of sonicating or filtering said initial mixture. These functional limitations do not further define over the prior art because the structure disclosed by Kashihara would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed. Further, the claimed “an initial mixture” and “a filtrate” are material worked upon, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”; MPEP 2115.
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.
Conclusion
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, Magali Slawski can be reached at 571-270-3960. 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
/Magali P Slawski/ Supervisory Patent Examiner, Art Unit 1773