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 .
Election/Restrictions
Claims 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/25/24.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 1-8, 10 and 19-22 are is/are rejected under 35 U.S.C. 102(a1) as being anticipated by De Grooth (WO 2018/202317,) or alternately, under 35 USC 103 as unpatentable over De Grooth in view of Nutalapati et al (US 2018/0221822.)
Claims 1-4, 21 and 22: De Grooth teaches an apparatus for filtering in fig. 3. The membrane is hollow fiber (page 10) with internal or external bilayer or multi-layer (layer by layer coating) coating of polyanion (Polystyrene sulfonate (PSS, Mw-200,000 ) and polycation (Poly( diallyldimethyl-ammonium chloride) (PDADMAC) (see page 10). The polyanions include sulfonic acids and carboxylic acids ionically coupled to the surface. Polyanion include quaternary ammonium – see figures 1 and 2. The base layer is the support layer as taught in [0013], [0016], [0025], and [0041]. De Grooth in the working example starts with a base hollow fiber membrane in [0041], on to which is coated alternating cationic/anionic layers using layer-by-layer deposition. This “membrane” is the base membrane as defined in the other cited paragraphs. If the starting membrane lacks a charge, the first coating would accomplish that. That is, the base membrane can be the hollow fiber membrane with a charged layer, on to which is coated more charged layers as in the claims.
Regarding the retentate outlet having a valve, fig. 3 of De Grooth shows a valve in the return line, but it is unclear if this is the retentate line. However, the description of Fig. 3 at [0044] shows that it is a test set-up, which means both permeate and retentate are recycled, meaning, they can be returned together through the same conduit. Therefore the claims area anticipated.
Notwithstanding, having a valve in the retentate line recycling retentate is not inventive, but routine in the art, as seen in Nutalapati – see fig. 1, which shows a controllable recirculation system for tangential (cross flow) membranes.
MPEP 2143: Rationales from combining references: combining prior art elements according to known methods to yield predictable results; or use of known technique to improve similar devices (methods, or products) in the same way, are prima facie obvious. In this case providing a valve to control the retentate flow would have been obvious to one of ordinary skill in the art.
Claims 5-9: while the reference does not explicitly teach the membrane pore size of 1-10 nm, it would have been inherent (see citation below,) because the nanofiltration membrane has very high retention of Mg and sulfate ions (see figure 6), which is >> 50%.
Claim 9: Thickness is 0.1 nm-10 nm per layer (page 6, line 20), and is controllable (page 2)
Claim 10: multi-layers – see figs. 4 and 5.
Claims 19: TDS content in permeate would be less than that of the feed, since the membrane rejects most of the TDS. Claim 20: inherent – same membrane.
Claims 21 and 22: a detailed examination of DeGrooth shows that the multi-layer growth was done by immersion coating, which means that the coating could be on both inside and outside surfaces.
MPEP 2112: Inherency, inherent property: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id. See also MPEP § 2112.01 with regard to inherency and product-by-process claims
In response to applicant’s arguments: arguments are addressed in the rejection.
Regarding the argument that Nutalapati and Adams do not teach the hollow fiber membrane having charged base layer, these references were used for different purposes, which is was clear in the rejection. The Adam reference is removed because it is no longer needed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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