DETAILED ACTION
This action is in response to the amendments and remarks dated 01/21/2026, in which no claims have been amended, claims 1, 4-7, 10, 12-17, 20-29 and 32-34 are pending, claims 17 and 20-29 are withdrawn as directed to a non-elected invention and claims 1, 4-7, 10, 12-16 and 32-34 are ready for examination.
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.
Claims 1, 4-7, 10, 12-14, 16 and 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0061314 Al (hereinafter “Choi”) in view of US 2010/0313753 A1 (hereinafter “Calis”).
Regarding Claims 1 Choi discloses a porous polymeric membrane (for photoresist filtration [0012]) comprising
a polymer (nylon nanofiber layer and ultrahigh molecular weight polyethylene (UHMWPE) microporous membrane support layer, among other possible polymers [0064], [0070])),
wherein the porous polymeric membrane is in the form of a sheet which may be pleated [0046]-[0047], [0083] and exhibits:
(a) a bubble point of “greater than 30 psig” [0071], 75-90, 95-110 psi, [0072]; 38.4-94.5 psi, Table 2; when measured using ethoxy- nonafluorobutane HFE 7200 at a temperature of about 22°C [0072],
(b) an isopropanol flow time of 830-6172 seconds/500 ml when measured at 14.2 psi (see Fig. 5, Table 2, [0078]), and
(c) a G25 particle retention overlapping the range claimed of about 25% to about 100% (see Figs. 3, 4, 9-13 and 17-21, Table 2, and [0097] showing a range of G25 particle retention values which overlap those claimed).
Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Choi does not disclose the UHMWPE having admixed therein greater than about 20 percent by weight and less than about 80 percent by weight of a carbonaceous material, wherein the carbonaceous material is one or more of an activated carbon having an average particle size in a range from about 30 pm to about 60 um, carbon black, carbon nanotubes, and graphene
However, with regard to carbonaceous material, Calis discloses a similar UHMWPE membrane, which may include 1-50% other component(s) blended with the UHMWPE, the other components may be added to promote desired properties, such as for example provide electrical conductivity, change colour, strength, toughness, reduce cost, increase flexibility, modify hydrophobicity, introduce hydrophilicity, or as fillers., where the other component(s) may be carbon black, activated carbon, nanotubes, and which may be pleated; Abstract, [0031], [0034]-[0035], [0038].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Choi by including carbon black, activated carbon, and/or nanotubes blended with the UHMWPE as disclosed by Calis in order to promote desired properties, such as for example provide electrical conductivity, change colour, strength, toughness, reduce cost, increase flexibility, modify hydrophobicity, introduce hydrophilicity, or as fillers.
Regarding Claim 4 Choi in view of Calis discloses the porous polymeric membrane of claim 1, wherein Choi discloses the G25 particle retention is about 65% to about 80% at 5% monolayer (see Figs. 3, 4, 9-13 and 17-21, Table 2, and [0097] showing a range of values which overlap those claimed. Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Regarding Claim 5 Choi in view of Calis discloses the porous polymeric membrane of claim 1, wherein Choi discloses the bubble point is “greater than 30 psig” [0071] and 38.4-94.5 psi, Table 2; when measured using ethoxy- nonafluorobutane HFE 7200 at a temperature of about 22°C [0072]. Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Regarding Claim 6 Choi in view of Calis discloses the porous polymeric membrane of claim 1, wherein the isopropanol flow time is 830-6172 seconds/500 ml when measured at 14.2 psi (see Choi Fig. 5, Table 2, [0078]). Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Regarding Claim 7 Choi in view of Calis discloses the porous polymeric membrane of claim 1, wherein it is not specifically disclosed that the polymer contains less than about 65μg/g of extractible organic compounds and/or metal ions, however as the membrane is used for purification, it would have been prima facie obvious to one of ordinary skill in the art to provide the polymer comprising a minimum amount (up to zero) of extractable contaminants, including organic compounds and/or metal ions, in order to not further contaminate the fluid being purified by the membrane.
Regarding Claim 10 Choi in view of Calis discloses the porous polymeric membrane of claim 1, wherein the membrane has a thickness of 185-420 micron (Choi Figure 14); Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Regarding Claim 12 Choi in view of Calis discloses the porous polymeric membrane of claim 1, which is a filter (Choi Abstract).
Regarding Claim 13 Choi discloses a first porous polymeric membrane for photoresist filtration [0012] comprising
a first porous polymeric membrane (i.e. the microporous membrane, such as the ultrahigh molecular weight polyethylene membrane, among other possible polymers [0064], [0070]); and
a second porous polymeric membrane (i.e. the nanofiber layer(s) or support/backing layer(s); [0012],[0032]), i.e. wherein an outer surface of the first porous polymeric membrane is in contact with an outer surface of the second porous polymeric membrane, wherein the second porous polymeric membrane is different from the first porous polymeric membrane.
wherein the first porous polymeric membrane is in the form of a sheet which may be pleated [0046]-[0047], [0083] and exhibits:
(a) a bubble point of “greater than 30 psig” [0071], 75-90, 95-110 psi, [0072]; 38.4-94.5 psi, Table 2; when measured using ethoxy- nonafluorobutane HFE 7200 at a temperature of about 22°C [0072],
(b) an isopropanol flow time of 830-6172 seconds/500 ml when measured at 14.2 psi (see Fig. 5, Table 2, [0078]), and
(c) a G25 particle retention overlapping the range claimed of about 25% to about 100% (see Figs. 3, 4, 9-13 and 17-21, Table 2, and [0097] showing a range of G25 particle retention values which overlap those claimed).
Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Choi does not disclose the UHMWPE having admixed therein greater than about 20 percent by weight and less than about 80 percent by weight of a carbonaceous material, wherein the carbonaceous material is one or more of an activated carbon having an average particle size in a range from about 30 pm to about 60 um, carbon black, carbon nanotubes, and graphene
However, with regard to carbonaceous material, Calis discloses a similar UHMWPE membrane, which may include 1-50% other component(s) blended with the UHMWPE, the other components may be added to promote desired properties, such as for example provide electrical conductivity, change colour, strength, toughness, reduce cost, increase flexibility, modify hydrophobicity, introduce hydrophilicity, or as fillers., where the other component(s) may be carbon black, activated carbon, nanotubes, and which may be pleated; Abstract, [0031], [0034]-[0035], [0038].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Choi by including carbon black, activated carbon, and/or nanotubes blended with the UHMWPE as disclosed by Calis in order to promote desired properties, such as for example provide electrical conductivity, change colour, strength, toughness, reduce cost, increase flexibility, modify hydrophobicity, introduce hydrophilicity, or as fillers.
Regarding Claim 14 Choi in view of Calis discloses composite membrane of claim 13, wherein the outer surface of the first porous polymeric membrane is an output facing surface and the outer surf ace of the second porous polymeric membrane is an input facing surface; i.e. inherently because this functional limitation does not further define over the prior art because the structure disclosed by Choi in view of Calis would be capable of the noted functional limitation(s), i.e. even though the specific function is not disclosed; see MPEP 2114.
Regarding Claim 16 Choi in view of Calis discloses the composite membrane of claim 13, which is a filter; [0021].
Regarding Claim 32 Choi discloses a porous polymeric membrane for photoresist filtration [0012] comprising
a polymer (nylon nanofiber layer and ultrahigh molecular weight polyethylene microporous membrane support layer, among other possible polymers [0064], [0070])),
wherein the membrane is in the form of a sheet which may be pleated [0046]-[0047], [0083] and exhibits:
(a) a bubble point of “greater than 30 psig” [0071], 75-90, 95-110 psi, [0072]; 38.4-94.5 psi, Table 2; when measured using ethoxy- nonafluorobutane HFE 7200 at a temperature of about 22°C [0072],
(b) an isopropanol flow time of 830-6172 seconds/500 ml when measured at 14.2 psi (see Fig. 5, Table 2, [0078]), and
(c) a G25 particle retention of about 65% to about 80% at 5% monolayer (see Figs. 3, 4, 9-13 and 17-21, Table 2, and [0097] showing a range of G25 particle retention values which overlap those claimed, where the monolayer coverage may be 1-30% [0080], specifically 69% for 5% monolayer coverage).
Since the range(s) disclosed overlap(s) the range(s) claimed, the range(s) recited in the claim(s) is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion(s) of the disclosed range(s) that correspond(s) to the claimed range(s). See MPEP 2144.05(I).
Choi does not disclose the UHMWPE having admixed therein greater than about 10 percent by weight and less than about 80 percent by weight of a carbonaceous material, wherein the carbonaceous material is one or more of an activated carbon having an average particle size in a range from about 30 pm to about 60 um, carbon black, carbon nanotubes, and graphene
However, with regard to carbonaceous material, Calis discloses a similar UHMWPE membrane, which may include 1-50% other component(s) blended with the UHMWPE, the other components may be added to promote desired properties, such as for example provide electrical conductivity, change colour, strength, toughness, reduce cost, increase flexibility, modify hydrophobicity, introduce hydrophilicity, or as fillers., where the other component(s) may be carbon black, activated carbon, nanotubes, and which may be pleated; Abstract, [0031], [0034]-[0035], [0038].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Choi by including carbon black, activated carbon, and/or nanotubes blended with the UHMWPE as disclosed by Calis in order to promote desired properties, such as for example provide electrical conductivity, change colour, strength, toughness, reduce cost, increase flexibility, modify hydrophobicity, introduce hydrophilicity, or as fillers.
Regarding Claim 33 Choi in view of Calis discloses the porous polymer membrane of claim 1, wherein the porous polymeric membrane is a polymeric solid containing pores, wherein the pores are interconnecting passages extending from one surface of the porous polymeric membrane to the opposite surface of the porous polymeric membrane (this is seen to be true for any and all layers of Choi in view of Calis as they are solid, porous and polymeric).
Regarding Claim 34 Choi in view of Calis discloses the composite membrane of claim 13, wherein each of the first and second porous polymeric membranes is a polymeric solid containing pores, wherein the pores are interconnecting passages extending from one surface of the membrane to the opposite surface of the membrane (this is seen to be true for any and all layers of Choi in view of Calis as they are solid, porous and polymeric).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0061314 Al (hereinafter “Choi”) in view of Calis and further in view of US 20150190760 A1 (hereinafter “Singh”).
Regarding Claim 15 Choi in view of Calis discloses composite membrane of claim 13, but does not disclose wherein the composite membrane is a co-cast membrane of the first porous polymeric membrane and the second porous polymeric membrane.
However, with regard to a co-cast membrane, Singh discloses a membrane that is a single porous layer but comprises two or more zones/sub-layers having different properties which are formed via co-casting multiple polymer solutions; [0004]-[0005], [0022] and thus comprises a first porous polymeric membrane zone and a second porous polymeric membrane zone, wherein an outer surface of the first porous polymeric membrane zone is in contact with an outer surface of the second porous polymeric membrane zone, wherein the second porous polymeric membrane zone is different from the first porous polymeric membrane zone (i.e. a first charge continuous zone, a neutral charge continuous zone, and a second charge continuous zone, the continuous zones each being considered a membrane, because they are formed from individual polymer casting solutions), wherein each zone/membrane has different charges; [0004], Examples. These multiple zones of different charges provide one zone which preferentially captures anions and another which preferentially captures cations, providing dual filtration capacity and allowing some anions/cations to be captured on one of the zones and provide a prefiltration function, and allowing more of the charged zone to be available for further adsorption to capacity [0026]-[0031].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Choi in view of Calis by forming the microporous membrane of as a co-cast membrane having multiple zones of different charges as disclosed by Singh in order to provide dual filtration capacity and allowing some anions/cations to be captured on one of the zones and provide a prefiltration function, and allowing more of the charged zone to be available for further adsorption to capacity.
It is noted that the multi-zone membrane of Choi in view of Calis and Singh is thus seen as one membrane according to how Choi uses the term “membrane” and as two membranes according to the instant claim limaitons.
Response to Arguments
Applicant's arguments filed 01/21/2026 have been fully considered but they are not persuasive.
In response to Applicants’ argument that “[t]he combination of Choi and Calis does not disclose an average particle size in a range from about 30 µm to about 60 µm as recited by claims 1, 13 and 32”; the Examiner disagrees. Applicants argue that “Calis does not discuss whatsoever the particle size of those additives. As such, neither the Calis, Choi, or the combination of Calis and Choi disclose nor suggest to one having ordinary skill in the art the carbonaceous average particle size in the membrane recited by claims 1, 13 and 32.” However, claims 1, 13 and 32 recite the limitation “wherein the carbonaceous material is one or more of activated carbon having an average particle size in a range from about 30 µm to about 60 µm, carbon black, carbon nanotubes, and graphene”; thus the claims do no limit the size of “carbon black, carbon nanotubes, and graphene”, only the size of activated carbon is limited. As the rejection of claims 1, 13 and 32 states it is obvious to include “carbon black, activated carbon, and/or nanotubes blended with the UHMWPE as disclosed by Calis”, the rejection fully addresses the claimed limitations and is proper.
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.
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 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
Prosecution Insights