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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/IN2020/051059, filed 26 December 2020) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority (IN201911054162, filed 27 December 2019) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendments
Applicant’s amendments filed 23 June 2026 have been fully entered.
Claim 19 has been amended; Claim 31 has been canceled; Claims 23 and 24 were previously canceled; and Claims 32-36 were previously withdrawn. Claims 19-22, 25-30, and 32-36 are pending.
Please note that the amendments to Claim 19 have required the rejection of Claim 20 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form.
Regarding the rejections of Claim(s) 19-22 and 25-31 under 35 U.S.C. 103 as being unpatentable over TOMASCHKE (US 5,246,587), Applicant’s amendments are persuasive; these rejections have been withdrawn. Because TOMASCHKE fails to disclose the claimed membrane, especially the claimed upper polymer nanofilm layer being restrictive to “a polyamide having repeating units selected from piperazine and trimesoyl chloride”, due to TOMASCHKE requiring that their polyamide membrane be formed from at least a trifunctional cyclic chloroformate reactant, these amendments are sufficient to overcome the 35 USC 103 obviousness rejection. However, upon further consideration, new grounds of rejection have been made for Claim(s) 19-22 and 25-30 under 35 U.S.C. 103 as being unpatentable over MATSUI et al. (US 2018/0001274 A1).
Response to Arguments
Applicant’s arguments filed 23 June 2026 have been fully considered.
Regarding the section “Rejections under 35 U.S.C. § 103” (pg. 6-8), Applicant’s arguments have been considered but are not persuasive because they are directed to grounds of rejection that have been withdrawn. Therefore, the arguments are not commensurate in scope with the presently pending claims.
Regarding the section “Conclusion” (pg. 8), because the claims remain rejected under 35 USC 103 as obvious over the prior art, the application is not in condition for allowance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 20, the claim fails to further limit the subject matter of the claim upon which it depends and further, expands on the possible options for the claimed upper polymer nanofilm layer. Claim 19 requires that the “upper polymer nanofilm layer is a polyamide” (emphasis added); however, the instant limitations of Claim 20 have expanded the available options to include other polymers in addition to polyamide.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 19-22 and 25-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUI et al. (US 2018/0001274 A1).
Regarding Claim 19, MATSUI discloses a composite semipermeable membrane comprising a polyamide skin layer obtained by interfacial polymerization and supported by a porous support (i.e., [a] highly selective ultrathin polymer nanofilm composite membrane comprising (a) a base layer of a porous support membrane… and (b) an upper polymer nanofilm layer, wherein the upper polymer nanofilm layer is a polyamide; the upper polymer nanofilm layer is made via interfacial polymerization; p0043; p0058). The polyamide layer contains a polymer obtained from the reaction of a polyfunctional amine and a polyfunctional acid halide (p0044), e.g., piperazine and trimesic acid chloride, respectively, are preferred (p0049, p0055); as further disclosed by MATSUI, the polyfunctional amines are used independently (i.e., not in combination with other amines; p0049) as are the polyfunctional acid halides (p0055) (i.e., the upper polymer nanofilm layer is a polyamide having repeating units selected from piperazine and trimesoyl chloride). The porous support for supporting the skin layer comprises polyimides or polysulfones (i.e., the base layer of porous polymer support membrane is selected from the group consisting of… polysulfone (PSf), polyimide…; p0057). The polyamide skin layer is further formed in the presence of additives, including such anionic surfactants as sodium dodecylbenzenesulfonate, sodium dodecyl sulfate, and sodium lauryl sulfate (i.e., in the presence of an anionic surfactant; p0075) at exemplary SLS concentrations of 0.15% by weight (i.e., 5.20 mM; i.e., at a concentration from 0.01 mM to 1 M in an aqueous phase; see Comparative Example 1, p0105). The thickness of the resultant skin layer is approximately 0.05 to 2 µm (p0078), which overlaps with the claimed range of a thickness of the upper polymer nanofilm layer is from 7 nm to 150 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
The prior art is deficient in explicitly disclosing an elemental composition (atomic %) of 71.4% to 74.8% carbon, 7.5% to 12.8% nitrogen, and 12.4% to 21.1% oxygen. However, given the same or similar claimed reaction conditions are taught by the prior art, such claimed elemental compositions are inherent and necessarily expected. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). Even further, the prior art discloses or makes obvious the same interfacial polymerization method of the same amine and acid chloride monomers (PIP and TMC, respectively) as those cited by the inventors of the claimed invention (see Table 4 on pgs. 35-36 of the Specification) wherein the aqueous phase includes an anionic surfactant, e.g. sodium laurel sulfate (pg. 15, lines 21-28; pg. 19, lines 1-6); Applicant identifies such resultant polyamides to have elemental compositions of 74.2% carbon, 9.2% nitrogen, and 16.6% oxygen (third entry in Table 4); 75.2% carbon, 12.1% nitrogen, and 12.7% oxygen (ninth entry in Table 4); and 74.3% carbon, 11.8% nitrogen, and 13.9% oxygen (tenth entry in Table 4). Thus, given the same or similar reaction conditions and reactants, the claimed elemental composition is necessarily expected.
Regarding Claim 20, MATSUI makes obvious the membrane of Claim 19. MATSUI discloses a composite semipermeable membrane comprising a polyamide skin layer (i.e., wherein the upper polymer nanofilm layer is selected from the group consisting of polyamide…; p0043).
Regarding Claims 21, 22, and 25-30, MATSUI makes obvious the composite membrane of Claim 19. All recited limitations in these claims are directed toward properties (Claims 21, 22, and 25-30) or functions (Claims 25-29) inherent to the claimed composite membrane. The 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; MPEP §2112 I). Although MATSUI is deficient in explicitly disclosing a zeta potential, a Young’s modulus (MATSUI does disclose an elastic modulus value of 150 MPa or more, p0082), mass density, water contact angle, or molecular weight cut-off, such limitations are directed toward properties inherent for the claimed composite membrane. Given that MATSUI discloses similar or the same process by which the composite membrane is produced, such claimed properties are inherent and necessarily expected absent additional differentiation. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). As noted earlier, the prior art discloses or makes obvious the same interfacial polymerization method of the same amine and acid chloride monomers (PIP and TMC, respectively) as those cited by the inventors of the instant application (see Table 4 on pgs. 35-36 of the Specification) wherein the aqueous phase includes an anionic surfactant, e.g. sodium laurel sulfate (pg. 15, lines 21-28; pg. 19, lines 1-6); Applicant identifies such resultant polyamide composite membranes to have the same claimed zeta potential, Young’s modulus, mass density, water contact angle, and molecular weight cut-off. Thus, given the same or similar reaction conditions and reactants, including the use of an anionic surfactant in the aqueous phase of the polymerization reaction, these instantly claimed properties are inherently expected and would be obvious in the composite membrane suggested by MATSUI.
Furthermore, the claim limitations of pure water permeance, Na2SO4, NaCl, and MgCl2 rejection rates, ideal salt selectivities between NaCl and Na2SO4 and between NaCl and MgCl2, and ion selectivity between monovalent and divalent anions are directed toward manners or methods by which the claimed composite membrane is used and are not subject to patentable weight. The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); MPEP §2115).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
ZHANG et al. (US 2014/0054228 A1): ZHANG discloses nanofiltration membranes comprising thin-film polyamide composite membranes with a porous substrate and a coating layer (p0020). The substrate is further comprised of polysulfones or polyimides (p0021). The coating layer is prepared from interfacial polymerization of piperazine (p0023) and trimesoyl chloride (p0024). ZHANG further reports a zeta potential versus pH of the membranes ranging from about -16 to about -20 mV at pH 7 (FIG. 5).
TAKAGI et al. (US 2015/0298064 A1): TAKAGI discloses a polyamide separation functional layer of a composite membrane (prepared by interfacial condensation of an amine and an acid halide; p0056) supported on a porous support containing polysulfone (p0053). An elasticity modulus between 0.1 GPa and 5.0 GPa is disclosed and is advantageous for water desalination in that flow resistance is reduced when elasticity is 0.1 GPa or more and membrane integrity is maintained below 5.0 GPa (p0100).
DENNISON et al. (ACS Applied Nano Materials, 2018, 1, 5008-5018): DENNISON discloses thin film composite polyamide membranes comprising 100 nm thick polyamide active layers (§Introduction, pg. 5008, par. 1). Mass densities for such TFC membranes are as high as 2 g/cm3 but are also commercially available at 1.2±0.1 g/cm3 (§Introduction, pg. 5009, par. 1). As noted, control of active layer mass density determines membrane performance, e.g., as polyamide film density increases, water uptake and water flux decline (§Introduction, pg. 5008, par. 2).
YABUNO et al. (US 2021/0101119 A1): YABUNO discloses a composite semipermeable membrane comprising a polyamide polymer (p0009) on a supporting layer (p0018). YABUNO further discloses water contact angles for the composite membrane.
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 RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
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