DETAILED ACTION
Response to Amendment
1. In response to the amendment received on 1/7/26:
claims 1-8, 16, 18, and 20-29 are presently pending
claims 9-15, 17 and 19 are cancelled
the objection to the drawing is withdrawn in light of the amended drawing filed 1/7/26
the rejections of claims 3-5 under 35 USC 112(b) are withdrawn in light of the amendments to the claims
all prior art grounds of rejection are withdrawn in light of the amendments to the claims and the arguments filed 1/7/26
new grounds of rejection are presented herein
Claim Objections
Claim 29 is objected to because of the following informalities:
In line 1, the “counter electrode” is set forth instead of the “counterelectrode” as set forth throughout the entirety of the claims and the specification.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
3. 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.
Claims 18, 22 and 29 are 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 18 recites the limitation "the at least one fluid" in line 7. However, there is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "wherein device" in line 3. However, there is insufficient antecedent basis for this limitation in the claim since a device was previously set forth it would appear that this limitation should refer to “the device” so as to clearly denote a further limitation of the previously set forth element and not the inclusion of some new device.
Claim 29 recites the limitation "the counter electrode" in line 1 and “the seating device” in line 6. However, there is insufficient antecedent basis for each of these limitations 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 (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 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.
Claim(s) 1, 3-7, 16, 18, and 20-29 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by WO 2018/122315 A1 to Brinke-Seiferth, with reference to the corresponding US filing, US Pub. No. 2019/0344220 (hereinafter referred to as “BRINKE”).
Regarding claim 1, BRINKE teaches a method for separation of charged substances by means of adsorption and electrodesorption from a chemically charged polymer membrane (see generally BRINKE at Abstract and ¶40-¶45 teaching the method for the separation of charged substances as claimed; see also BRINKE at ¶26 teaching polyethersulfone as a polymer material for the membrane and ¶61 discussing the membrane having a charge), comprising the following steps:
providing the chemically charged polymer membrane with a first flat and porous metal coating at least on a first side of the polymer membrane (see BRINKE at ¶41);
bringing the chemically charged polymer membrane with the first flat and porous metal coating into contact with at least one first fluid containing the charged substances and adsorbing the charged substances to the charged polymer membrane (see BRINKE at ¶42-¶44);
bringing the chemically charged polymer membrane with the first flat and porous metal coating, and a counter electrode, into contact with the at least one first or at least one second fluid (see BRINKE at ¶45 teaching the detachment of the charged substances into another liquid); and
applying a first direct voltage between the first metal coating of the chemically charged polymer membrane and the counter electrode, wherein the direct voltage that is applied is opposite to the charge of the polymer membrane (see BRINKE at ¶45 teaching the detachment occurring via a reversal of the voltage).
Regarding claim 3, BRINKE teaches the method wherein the first fluid is at least partly removed between the beginning of step b) and the beginning of step d), or the first fluid is passed at least partly through the polymer membrane between the beginning of step b) and the beginning of step c) (see BRINKE at ¶45 teaching the detachment of the charged substances into another liquid via voltage reversal which occurs at step c) and so the first fluid being removed within the period set forth by the claim).
Regarding claim 4, BRINKE teaches the method wherein before or during step b) a second direct voltage is applied with opposite polarity to the first direct voltage between the metal coating and the counter electrode that is in contact with the first fluid (see BRINKE at ¶42-¶44).
Regarding claim 5, BRINKE teaches the method wherein the value of the first direct voltage is in the range within 10 mV to 3 V (see BRINKE at ¶46 teaching voltages no more than 1.5 V).
Regarding claim 6, BRINKE teaches the method wherein the counter electrode is formed either by a second flat, porous metal coating on a second side that is situated opposite the first side, wherein the first and second flat metal coatings are insulated from one another by the polymer membrane or through arrangement of a permeable electrode that is formed by a metallic mesh, with interposition of an insulating and permeable spacer (see BRINKE at ¶18 and ¶49 teaching the form of the opposite electrode or counter electrode as claimed).
Regarding claim 7, BRINKE teaches the method wherein the porosity of the polymer membrane with the first metal coating, relative to the initial bubble point pore or the mean pore size, is reduced by between 0.1% and 10% compared to the uncoated polymer membrane, or thickness of the first metal coating is in the range from 5 nm to 200 nm or the pore size of the uncoated polymer membrane is greater than 0.01 µm, or the polymer membrane with the metal coating comprises porous passages (see BRINKE at ¶18 and ¶33).
Regarding claim 16, BRINKE teaches the method wherein the porosity of the polymer membrane with the second metal coating, relative to the initial bubble point pore or the mean pore size, is reduced by between 0.1% and 10% compared to the uncoated polymer membrane, or thickness of the second metal coating is in the range from 5 nm to 200 nm (see BRINKE at ¶18, ¶33 and ¶49 teaching the counter electrode being an additional metal coating on the second side which would include the same properties, i.e. thickness, so as to read on the claim).
Regarding claim 18, BRINKE, as set forth in the rejection of claim 1, teaches a method for retaining adsorbed molecules by means of electrodesorption (see generally BRINKE at ¶), comprising the following steps:
providing a chemically charged polymer membrane with a first flat and porous metal coating at least on a first side of the polymer membrane and molecules adsorbed to the membrane (see BRINKE as set forth in claim 1 element a));
bringing the chemically charged polymer membrane with the first flat and porous metal coating and a counter electrode into contact with the at least one fluid (see BRINKE as set forth in claim 1 element c));
applying a first direct voltage between the first metal coating of the chemically charged polymer membrane and the counter electrode, wherein the direct voltage that is applied is opposite to the charge of the polymer membrane, thereby desorbing at least parts of the molecules from the polymer membrane into the at least one fluid (see BRINKE as set forth in claim 1 element d)).
Regarding claim 20, BRINKE teaches the method wherein the value for the second direct voltage is in the range within 10 mV and 3 V (see BRINKE at ¶46 teaching voltages no more than 1.5 V).
Regarding claim 21, BRINKE teaches a method for adsorption of charged substances to a chemically charged polymer membrane (see generally BRINKE at Abstract and ¶40-¶45 teaching the method for the adsorption of charged substances as claimed; see also BRINKE at ¶26 teaching polyethersulfone as a polymer material for the membrane and ¶61 discussing the membrane having a charge), comprising the following steps:
providing the chemically charged polymer membrane with a first flat and porous metal coating at least on a first side of the polymer membrane and providing a contacting configured for providing voltage to the first metal coating (see BRINKE at ¶41-¶43 teaching the application of a voltage which implicitly teaches a contact to provide the voltage; see also BRINKE at ¶56 and ¶69 teaching one way this was achieved through the gluing of a copper cable to the metal coating);
bringing the chemically charged polymer membrane with the first flat and porous metal coating into contact with at least one first fluid containing the charged substances and adsorbing the charged substances to the charged polymer membrane (see BRINKE at ¶44-¶45).
Regarding claim 22, BRINKE teaches the method wherein the chemically charged polymer membrane with the first metal coating is housed within a filtration or sorption device, wherein the device is configured for supplying voltage from an outside voltage source to the first metal coating or to the contacting, thereby enabling the first meal coating to work as a working electrode (see BRINKE at Figs. 1-3 teaching various device configurations with the polymer membrane as claimed – in Fig. 1, membrane 6; in Fig. 2, circular membrane 8; and in Fig. 3, folded membrane 16; see also BRINKE at ¶88 discussing with respect to Fig. 1 the supplying of a voltage from an outside source as claimed).
Regarding claim 23, BRINKE teaches the method wherein the voltage is supplied to the first metal coating by means of the contacting, wherein the contacting leads outwards of the filtration or sorption device via a wire or a thin metal foil, in order to be supplied with the voltage from the outside voltage source (see BRINKE at Fig. 1 and ¶88 teaching the supplying of a voltage from an outside source as claimed; see also BRINKE at ¶69).
Regarding claim 24, BRINKE teaches the method wherein the filtration or sorption device further houses a counter electrode and a counter electrode contacting configured for supplying voltage from the outside voltage source to the counter electrode (see BRINKE at Fig. 1 and ¶88).
Regarding claim 25, BRINKE teaches the method wherein the counter electrode is provided by a second flat, porous metal coating on a second side that is situated opposite the first side, wherein the first and second flat metal coatings are insulated from one another by the polymer membrane or through arrangement of a permeable electrode that is formed by a metallic mesh, with interposition of an insulating and permeable spacer (see BRINKE at ¶49; see also Fig. 2 depicting a mesh counter electrode with a spacer).
Regarding claim 26, BRINKE teaches the method wherein the filtration or sorption device is designed as a syringe tip or syringe tip filter or a capsule (see BRINKE at ¶68, ¶72, and Fig. 2).
Regarding claim 27, BRINKE teaches the method wherein the chemically charged polymer membrane is configured for being received by a device for performing electrodesorption of charged substances previously adsorbed to the chemically charged polymer membrane (see teachings of BRINKE cited above with respect to the rejection of claim 21 which teaches a chemically charged polymer membrane configured to provide for the capability as claimed).
Regarding claim 28, BRINKE teaches the method further comprising electrodesorbing the charged substances adsorbed in step b. from the chemically charged polymer membrane using an electrodesorption device, the electrodesorption device comprising a seating device and a device for applying direct voltage (see BRINKE at ¶40-¶45 with paragraph 45 teaching the detachment or electrodesorbing via the reversing of the voltage polarity), wherein the electrodesorbing is performed comprising the following steps:
c. accommodating the polymer membrane with the first flat and porous metal coating within the seating device (see BRINKE at ¶45 which would include the device accommodating the polymer membrane for the adsorbing which would then have the polarity reversed for the desorbing);
d. providing a counter electrode (see BRINKE at ¶42);
e. bringing the accommodated polymer membrane and the counter electrode into contact with a second fluid (see BRINKE at ¶45 teaching detachment into another liquid);
f. applying a direct voltage between the first metal coating and the counter electrode and desorbing the adsorbed charged substances into the second fluid (see BRINKE at ¶45 teaching the reversed voltage being applied to release or detach the charged substances).
Regarding claim 29, BRINKE teaches the method wherein the counter electrode is either provided by a second flat, porous metal coating on a second side that is situated opposite the first side, wherein the first and second flat metal coating are insulated from one another by the polymer membrane, or through arrangement of a permeable electrode that is formed by a metallic mesh, with interposition of an insulating and permeable spacer, or the counter electrode is part of the seating device (see BRINKE at Fig. 3 and ¶49).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 2 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRINKE in view of US Pat. No. 7,396,465 to Wu et al., (hereinafter referred to as “WU”).
Regarding claims 2 and 8, BRINKE teaches the method wherein a chemically charged polymer membrane is employed so as to adsorb charged substances that are present in the liquid being treated (see BRINKE at ¶26 teaching polyethersulfone as a polymer material for the membrane and ¶61 discussing the membrane having a charge), BRINKE fails to explicitly teach the membrane being: (1) an anion exchange membrane, i.e. the positively charged membrane, and (2) having the binding capacity for albumin as claimed.
However, WU teaches that positively charged membranes, i.e. anion exchange membranes, are known in the art which have a binding capacity at the level or greater than the level as claimed (see WU at Abstract and at col. 2 lines 39-42 teaching the binding capacity at 25 mg/ml or more; see also WU at col. 2 lines 8-9 teaching BSA being short for bovine serum albumin; see also WU at col. 11 lines 61-66 teaching binding capacities greater than 25 mg/ml of BSA as claimed).
Additionally, WU teaches the porous membranes being useful for binding proteins, nucleic acids, endotoxins, viruses, amino acids and the like (see WU at Abstract and col. 12 lines 26-35). BRINKE teaches the method for the separation and/or detection of charged biologically active substances including endotoxins (see BRINKE at ¶13 and ¶47 teaching charged substances including viruses, endotoxins, proteins, and amino acids).
As such, it would have been obvious to one of ordinary skill in the art to have used the known anion exchange membrane material of WU in the method of BRINKE since the membrane of WU would be able to provide for the desired separation of the charged substances that BRINKE is concerned with.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the anion exchange membrane or positively charged membrane of WU in the method of BRINKE in order to provide for an anion exchange membrane being a charged polymer membrane and having the binding capacity as claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 22, 25, 26, 28 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 and 7-9 of U.S. Patent No. 11,027,238 in view of WU. For the same reasons as set forth in the prior art grounds of rejection, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have claimed the polymer membrane being a charged polymer membrane.
Although the conflicting claims are not identical, they are not patentably distinct from each other because all of the features of the present claims are present within the claims of the ‘238 patent.
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 Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794