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 .
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 45 is 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.
Claim 45 recites “the Tm of the additive of formula (I)”. This lacks antecedent basis in the claim.
“the Tm of the additive of formula (I)” is also indefinite as it is unclear what the melt temperature is as the formula can vary and it is unclear what the temperature Tm is and how it can be compared. As such, it is interpreted that it is at a temperature below which formula (I) would be destroyed.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 24, 26, 27, 30, 32-39, 41, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Roller et al. (WO2018/065526) and further in view of Ebewele (2000, Polymer Science and Technology Book, 1st Edition, CRC Press, 22 pages).
Claims 24: Roller et al. teach a method of making a membrane comprising preparing a polymer composition comprising the at least one additive of formula I (pages 22-23) into a membrane and immersing in water (Claim 11). Roller et al. teach that the material is extruded (page 30, lines 27-35). Roller et al. teach that the method comprises incorporating at least 28% of the at least one additive of formula I (Claim 1).
They do not teach filler material.
Ebewele teaches that “very few polymers are used technologically in their chemically pure form; it is generally necessary to modify their behavior by the incorporation of additives. Additives are usually required to impart stability against the degradative effects of various kinds of aging processes and enhance product quality and performance.” (I. Introduction).
One of ordinary skill in the art at the time of the invention would have found it obvious to incorporate a filler in order to improve the polymer filter membrane material and enhance the quality, stability, and performance as discussed by Ebewele.
Claim 26: Roller et al. teach the method comprising melt-mixing the polymer and additive above the melting temperature to form a melt (Page 30).
Claims 27 and 45: Roller et al. teach that the processing temperature is at least 15C more than the melting temperature (Page 30).
Claim 30: Roller et al. teach that the Ar in formula is one of the compounds listed in Claim 30 (Page 23).
Claim 32: Roller et al. teach that the additive is a sodium or potassium benzoate (Page 24).
Claim 33: Roller et al. teach that the composition comprises additive of 30-75 wt.% (Page 25).
Claims 34 and 35: the prior art remains as applied to Claim 24 above. Ebewele teaches that the reinforcing filler includes fibers such as glass and carbon fibers (III. Fillers and Reinforcements (Composites)).
Claim 36: Roller et al. teach that the water temperature is between room temperature and 95C (Page 32).
Claims 37, 38, and 39 are drawn to the specifics of the reinforcing filler. Ebewele teaches the use of reinforcing filler including fibers such as glass and carbon fibers (see above). Ebewele teaches that various types of fibers in various lengths (short or continuous, page 5/22) and forms are available for use as reinforcement fiber (page 4/22). They teach that the form has “a significant influence of the properties” (page 5/22).
They do not teach the specific length, diameter, and aspect ratio of the fibers.
The claim is drawn to the process of making a membrane. And while the reinforcing filler material is part of the membrane and is added to the polymer matrix during the process, the specific dimensions of the filler are not critical to the method of making the membrane. Ebewele clearly teaches that a wide variety of fiber reinforcement materials are added to polymers for different reasons. One of ordinary skill in the art at the time of the invention would have found it obvious to try using any carbon or glass fiber having any type of length, width, and aspect ratio in Roller et al.’s membrane process in order to create the optimal membrane for their purpose. Claim 41: Roller et al. teach that the average pore size is from 0.01 to 5.0 micron (Page 36, Table 3, Average Pore size).
Claim 42: Roller et al. teach that the porosity is from 3% to 90% (Page 36, Table 3, Porosity).
Claims 40, rejected under 35 U.S.C. 103 as being unpatentable over Roller et al. (WO2018/065526) and further in view of Ebewele (2000, Polymer Science and Technology Book, 1st Edition, CRC Press, 22 pages) in view of Heitkamp et al. (USP 5980738).
Claim 40: the prior art as applied to Claim 24 does not teach that the weight percentage range is from 3 to 20 wt%.
Heitkamp et al. teach a polymeric porous material made of PPS comprising a fiber reinforcement at the amount of 0-60 wt%, preferably 3 to about 30 wt% (col. 6, lines 37-51). The fiber reinforcement provides enhanced strength (col. 2, lines 45-53). The amount of fiber reinforcement is a result effective variable which is controlled in order to impart particular characteristics on the final polymeric product (col. 7, lines 34-60). The amount of reinforcement fiber included in the polymeric material will also affect the strength of the final product.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claims 44 is rejected under 35 U.S.C. 103 as being unpatentable over Roller et al. (WO2018/065526) and Ebewele (2000, Polymer Science and Technology Book, 1st Edition, CRC Press, 22 pages) in view of Zweben (Composites: Overview, 2005, Elsevier, pages 192-208).
Claim 44: Ebewele does not teach the diameter of the reinforcing glass fiber.
Ebewele teaches that E-glass fibers are the most common type of glass fibers used for reinforcing. Zweben teaches that E-glass filament diameters typically ranges from 3-20um (Page 195, Glass Fibers).
One of ordinary skill in the art at the time of the invention would have found it obvious that Ebewele’s glass fiber description included fibers in the range of 3-20um as identified by Zweben as the most common E-glass fiber diameter.
Allowable Subject Matter
Claim 46 is allowable. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
The claims are drawn to “a method of forming a porous polymer membrane”. The arguments applicant presents are not related to the method of forming the membrane; Applicant in fact does not argue any of the actual method steps, i.e. “preparing”, “melt-mixing”, and “extruding”. Rather, Applicant argues the properties and materials of the membrane (which are not claimed, see above).
Applicant argues that there is no “indication” in the prior art that a reinforcing filler, such as glass fiber, would be compatible with the specific membrane matrix polymer or survive the preparation environments.
As Ebewele clearly explains, glass fibers are incredibly common fibers used as filler for reinforcement in polymers. They also teach that glass fibers are incredibly stable. One of ordinary skill in the art would reasonably conclude that glass fibers would be stable in various polymerics environments. Further, given the basic knowledge of the use of glass fibers in polymeric materials as reinforcements, it was within the routine skill of one ordinary skill in the art to determine the specific type of fiber specifications through routine experimentation in view of Ebewele’s teachings.
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 ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin 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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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/ Primary Examiner, Art Unit 1773
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