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 .
Response to Arguments
The Amendment filed 17DEC2025 has been entered. No new matter has been entered. Applicant's arguments filed 17DEC2025 have been fully considered but they are not persuasive.
The rejection is based on the combination of ALI’s membrane as modified by HOEK. ALI does not teach nanoparticles.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Furthermore, HOEK’s membrane may optionally not use nanoparticles (par. [0271]; see also commercially available PA-TFC membrane NF270 without nanoparticles having a zeta potential of -20 mV; [0327-0329,0343-0344]; TABLE 3.1). Patents are relevant as prior art for all they contain (MPEP 2123).
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.
Claims 10-12,15-16,22-32 are 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 regards as the invention.
Claim 10 line(s) 8-9 sets forth the limitation “the upper polymer nanofilm consists of a crosslinked polyamide, the crosslinked or linear polyamide”. The claim scope is unclear as a crosslinked polyamide is first required, but then expanded to include a linear polyamide.
Claim 31 line(s) 8-9 sets forth the limitation “the upper polymer nanofilm consists of a crosslinked polyamide, the crosslinked or linear polyamide”. The claim scope is unclear as a crosslinked polyamide is first required, but then expanded to include a linear polyamide.
Claim Rejections - 35 USC § 103
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.
Claim(s) 10-12,15-16,22-27,30-32 are rejected under 35 U.S.C. 103 as being obvious over ALI (US 20190209975) in view of HOEK (US 20100224555).
Regarding claims 10-12,22,27-32, ALI teaches thin film composite membranes for fluid separations (title) including:
i. a base layer of porous polymer support membrane (abstract), which may be made of e.g. polyethersulfone (par. [0042]); and
ii. an upper polymer nanofilm (dipping the support in an aqueous solution; abstract);
wherein the upper polymer nanofilm has a thickness ranging from e.g. about 5-10 nm (par. [0045]), which anticipates the claimed range of 4 nm to 50 nm (or less than 15,10 nm),
wherein the upper polymer nanofilm consists of a crosslinked polyamide (e.g. piperazine; par. [0043]) and a polyfunctional acid halide (e.g. trimesoyl chloride or TMC; par. [0054]); and,
a degree of crosslinking in the range of e.g. 65-99% (par. [0047]) which overlaps the claimed range of 52.5 to 90.8% and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
ALI teaches the degree of crosslinking is a results-effective variable that affects the membrane structure and properties (e.g. permeance or selectivity; par. [0047-0049]). Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to select the claimed degree of crosslinking range because ALI teaches the degree of crosslinking is a results-effective variable. See MPEP 2144.05 II, A & B.
ALI does not teach a zeta potential. However, HOEK teaches nanocomposite membranes (title) including:
a base layer of porous polymer support membrane, which may be made of e.g. polyethersulfone (par. [0025]);
an upper interfacially-polymerized cross-linked polyamide nanofilm (e.g. of piperazine, par. [0007,0032,0034]);
wherein the upper polymer nanofilm has a thickness ranging from e.g. 1-200 nm, (par. [0032]), which overlaps the claimed range of 4 nm to 50 nm (or less than 15 or 10 or 5 nm) and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range; and
a zeta potential depending on solution pH, type of counter-ions present, and total solution ionic strength (which are operating parameters; par. [0215]; see also commercially available membrane NF270 having a zeta potential of about -20 mV; par. [0327-0329,0343]; TABLE 3.1). HOEK’s zeta potential of -20 mV anticipates the instantly claimed range -20 to -30 mV.
HOEK teaches the nanocomposite membranes can have various properties that provide the superior function of the membranes, including excellent flux, high hydrophilicity, negative zeta potential, surface smoothness, an excellent rejection rate, improved resistance to fouling, and the ability to be provided in various shapes (par. [0208]).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to specify the membrane of ALI with the zeta potential of HOEK in order to provide improved properties. The references are combinable, because they are in the same technological environment of membranes. See MPEP 2141 III (A) and (G).
ALI’s modified membrane has the same structure and function (e.g. fluid filtration; par. [0028]). This includes the property of pure water and saltwater permeance. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01). Note that pure water permeance and saltwater permeance is a result of the membrane operating in water at a certain pressure and temperature.
Note that the term “interfacial polymerization” sets forth a method of making the membrane and does not provide structure per se (see also e.g. ALI abstract).
Note that concentration in the method of making the membrane implies the relative amounts of polyamine and a polyfunctional acid halide in the membrane (see also ALI par. [0043-0044]). Generally, differences in concentration […] will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 15-16,24-26, ALI’s modified membrane is capable of exhibiting a Na2SO4, MgCl2 and NaCl rejection, a pure water permeance, anion selectivity, and cation selectivity. Note that this is a result. ALI’s modified membrane has the same structure and function (fluid filtration). This includes the property of Na2SO4, MgCl2, and NaCl rejection and water permeance. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01).
Note that the limitations “mixed salt feed”, “seawater” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
Claim(s) 23 is rejected under 35 U.S.C. 103 as being unpatentable over ALI (US 20190209975) in view of HOEK (US 20100224555) and BLUME (US 4963165).
Regarding claim 23, ALI is silent as to the upper polymer nanofilm being amorphous. However, BLUME teaches a composite membrane (title) comprising a solvent-resistant amorphous polyamide (C7/L63). Membranes made of such polymers in solution provide for a defect-free membrane (C8/L60-C9/L19).
Therefore, at the time the invention was filed, it would have been obvious to one of ordinary skill in the art to modify/specify the upper polymer nanofilm of ALI’s modified membrane to be amorphous in order to provide for a defect-free membrane as taught by BLUME. The references are combinable, because they are in the same technological environment of membranes. See MPEP 2141 III (A) and (G).
Telephonic Inquiries
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 LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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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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LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1777