DETAILED ACTION
This action is in response to the amendments and remarks filed on 07/16/2025, in which claims 1-4 have been amended and claims 1-15, 17 and 31-33 are pending and 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 1-15, 17 and 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0296225 A1 (hereinafter “Ho”) in view of US 2011/0005997 A1 (hereinafter “Kurth”).
Regarding Claim 1-3, 5, 8 Ho discloses a water permeable membrane comprising:
a porous support, and
a polyamide layer comprising a crosslinked polyamide interfacially polymerized on a surface of the porous support,
wherein the polyamide layer further comprises a hydrophilic additive (including those as claimed (derived from a hydrophilic, reactive additive [0034]-[0036]), and wherein the hydrophilic additive covalently bonds to the crosslinked polyamide; Abstract, [0005]-[0011], [0029]; and
wherein the water permeable membrane exhibits a salt rejection capability of at least 98%, when measured with a 2,000 ppm NaCl solution at 225 psi, and a flux rate of at least 50 gfd; Ho [0039], Tables 4-7, 11-12.
Ho does not disclose the polyamide layer comprises nanoparticles as claimed, wherein the nanoparticles have an average particle size of from 3 nm to 200 nm.
However Kurth discloses a similar composite membrane wherein a polyamide layer is formed via interfacial polymerization on a porous support, wherein nanoparticles and a hydrophilic additive may be included in the polyamide layer via incorporation in one of the solutions used for interfacial polymerization of polyamide in order to improve membrane performance including flux; wherein the nanoparticles may be zeolite Y, aluminum oxide, zirconium oxide, and/or titanium oxide) (such as monohydrolyzed trimesoyl chloride); [0064]-[0065], [0083]-[0087], [0099], [0124], [0128]-[0129]-[0142]. Wherein the nanoparticles have an average particle size of from “about 10 nm to about 1000 nm, from about 12 nm to about 500 nm, and most preferably from about 50 nm to about 300 nm” [0144], and specifically 100 nm [0134].
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 Ho by additionally including nanoparticles wherein the nanoparticles have an average particle size of from about 10 nm to about 1000 nm, from about 12 nm to about 500 nm, and most preferably from about 50 nm to about 300 nm” and specifically 100 nm as disclosed in Kurth in order to improve membrane performance including flux [0124].
Regarding Claim 4 Ho discloses a water permeable membrane comprising:
b) a crosslinked polyamide disposed on a surface of a porous substrate, wherein the crosslinked polyamide is formed by interfacially polymerizing a polyamine with a polyfunctional acyl halide in an amount, such that at least a portion of amine functional groups, acyl halide functional groups, or combinations thereof remain unreacted and form pendent reactive groups on the crosslinked polyamide; and
c) a hydrophilic additive reactive with the pendant reactive groups to covalently bind the hydrophilic additive and the crosslinked polyamide, wherein the hydrophilic, reactive additive is of the form as claimed; and
wherein the membrane exhibits improved water flux and salt retention properties compared to an otherwise identical membrane that does not contain the hydrophilic additive; (Abstract, [0005]-[0011], [0034]-[0036], claim 16); and
wherein the water permeable membrane exhibits a salt rejection capability of at least 98%, when measured with a 2,000 ppm NaCl solution at 225 psi, and a flux rate of at least 50 gfd; Ho [0039], Tables 4-7, 11-12.
Ho does not disclose the membrane comprises nanoparticles as claimed, wherein the nanoparticles have an average particle size of from 3 nm to 200 nm.
However Kurth discloses a similar composite membrane wherein a polyamide layer is formed via interfacial polymerization on a porous support, wherein nanoparticles and a hydrophilic additive may be included in the polyamide layer via incorporation in one of the solutions used for interfacial polymerization of polyamide in order to improve membrane performance including flux; wherein the nanoparticles may be zeolite Y, aluminum oxide, zirconium oxide, and/or titanium oxide) (such as monohydrolyzed trimesoyl chloride); [0064]-[0065], [0083]-[0087], [0099], [0124], [0128]-[0129]-[0142]. Wherein the nanoparticles have an average particle size of from “about 10 nm to about 1000 nm, from about 12 nm to about 500 nm, and most preferably from about 50 nm to about 300 nm” [0144], and specifically 100 nm [0134].
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 Ho by additionally including nanoparticles wherein the nanoparticles have an average particle size of from about 10 nm to about 1000 nm, from about 12 nm to about 500 nm, and most preferably from about 50 nm to about 300 nm” and specifically 100 nm as disclosed in Kurth in order to improve membrane performance including flux [0124].
Regarding Claim 6 Ho in view of Kurth discloses the water permeable membrane of claim l, wherein the crosslinked polyamide is derived from a polyamine monomer and a polyfunctional acyl halide; Ho [0018]-[0024].
Regarding Claim 7 Ho in view of Kurth discloses the water permeable membrane of claim 6, wherein the polyamine monomer comprises an aromatic group or an aromatic-aliphatic group; Ho [0018]-[0024].
Regarding Claim 9 Ho in view of Kurth discloses the water permeable membrane of claim 1, but does not disclose wherein the nanoparticles and the crosslinked polyamide are present in a weight ratio of from 0.01 :500 to 0.2: 1, from 0.01: 100 to 0.1: 1, from 0.01 :500 to 0.01: 1, or from 0.01: 100 to 0.01:1. While Kurth discloses “[g]enerally preferred concentrations of additive(s) 16 are from 0.005 wt. % to 5 wt. % by wt. % or more preferred from 0.05 wt. % to 1 wt. % in either aqueous layer 14 or organic layer 18-or both” [0173], it is not clear what ratio this results in the final product. However, it is clear that the nanoparticles are added to effect the membranes properties, and it is further obvious that their amount will effect the final membranes’ properties, thus the weight ratio of nanoparticles to crosslinked polyamide is a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
Regarding Claim 10 Ho in view of Kurth discloses the water permeable membrane of claim l, wherein the hydrophilic, reactive additive includes 4-(2-hydroxyethyl) morpholine, 2-(2- hydroxyethyl) pyridine, a-aminobenzoic acid-triethylamine, m-aminobenzoic acid triethylamine, p-aminobenzoic acid-triethylamine, o-aminobenzenesulfonic acid triethylamine, m-aminobenzenesulfonic acid-triethylamine, p-aminobenezenesulfonic acid triethylamine, o-aminotoluenesulfonic acid-triethylamine, m-aminotoluenesulfonic acid triethylamine, p-aminotoluenesulfonic acid-triethylamine, o-hydroxybenzoic acid triethylamine, m-hydroxybenzoic acid-triethylamine, p-hydroxybenzoic acid-triethylamine, a salt thereof, or a combination thereof; Ho [0037].
Regarding Claim 11 Ho in view of Kurth discloses the water permeable membrane of claim l, wherein the hydrophilic, reactive additive has the form as claimed; Ho [0036].
Regarding Claim 12 Ho in view of Kurth discloses the water permeable membrane of claim l, further comprising an additional hydrophilic additive derived from a hydrophilic, reactive additive as claimed; Ho [0033]-[0035].
Regarding Claim 13 Ho in view of Kurth discloses the water permeable membrane of claim l, wherein the hydrophilic additive is included in the polyamide layer during interfacial polymerization of the crosslinked polyamide; [0041].
Regarding Claim 14 Ho in view of Kurth discloses the water permeable membrane of claim l,, but it is not disclose wherein the hydrophilic additive and the crosslinked polyamide are present in a weight ratio of from 0.1: 100 to 0.5: 1, or from 0.5:50 to 0.2: 1, from 0.1: 100 to 0.1: 1, or from 0.5:50 to 0.5:1.
However it is disclosed that “[t]he hydrophilic and reactive additive may be present in any suitable amount. For example, the hydrophilic and reactive additive or additives may be present in an amount sufficient to achieve an increase in the flux capacity, salt rejection capability, or both of a membrane versus the same membrane made in the absence of the hydrophilic and reactive additive”[0038] and “[t]he specific concentration of the at least one hydrophilic and reactive additive may vary significantly depending on the particular polyamide being made and the particular hydrophilic additive being used” [0040]. Thus the weight ratio of hydrophilic additive and the crosslinked polyamide is a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
Regarding Claim 15 Ho in view of Kurth discloses the water permeable membrane of claim l, wherein the hydrophilic additive covalently bonds to the crosslinked polyamide; Ho [0029].
Regarding Claim 17 Ho discloses a method for forming a water permeable membrane, comprising:
a) applying a polyamine solution comprising a polyamine monomer to a porous support;
b) applying an acyl halide solution comprising a polyfunctional acyl halide to the porous support; and
c) allowing the polyamine monomer and the polyfunctional acyl halide to polymerize on a pore surface of the porous support to form a crosslinked polyamide,
wherein a hydrophilic, reactive additive is present in at least one of the polyamine solution or the acyl halide solution; (Abstract, [0005]-[0011], [0029]-[0041], claim 16); and
wherein the water permeable membrane exhibits a salt rejection capability of at least 98%, when measured with a 2,000 ppm NaCl solution at 225 psi, and a flux rate of at least 50 gfd; Ho [0039], Tables 4-7, 11-12.
Ho does not disclose the polyamide layer comprises nanoparticles present in at least one of the polyamine solution or the acyl halide solution, wherein the nanoparticles have an average particle size of from 3 nm to 200 nm.
However Kurth discloses a similar composite membrane wherein a polyamide layer is formed via interfacial polymerization on a porous support, wherein nanoparticles and a hydrophilic additive may be included in the polyamide layer via incorporation in one of the solutions used for interfacial polymerization of polyamide in order to improve membrane performance including flux; wherein the nanoparticles may be zeolite Y, aluminum oxide, zirconium oxide, and/or titanium oxide) (such as monohydrolyzed trimesoyl chloride); [0064]-[0065], [0083]-[0087], [0099], [0124], [0128]-[0129]-[0142]. Wherein the nanoparticles have an average particle size of from “about 10 nm to about 1000 nm, from about 12 nm to about 500 nm, and most preferably from about 50 nm to about 300 nm” [0144], and specifically 100 nm [0134].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method and membrane of Ho by additionally including nanoparticles in one of the solutions used for interfacial polymerization of polyamide wherein the nanoparticles have an average particle size of from about 10 nm to about 1000 nm, from about 12 nm to about 500 nm, and most preferably from about 50 nm to about 300 nm” and specifically 100 nm as disclosed in Kurth in order to improve membrane performance including flux [0124].
Regarding Claim 31 Ho in view of Kurth discloses a method for desalinating water comprising passing the water under pressure through a membrane according to claim 1; Ho [0050]-[0051].
Regarding Claim 32 Ho in view of Kurth discloses a method for performing dialysis comprising contacting a membrane according to claim l with a solution containing solutes and allowing water to diffuse through the membrane; Ho [0050]-[0051].
Regarding Claim 33 Ho in view of Kurth discloses a method for performing pervaporation comprising contacting a membrane according to claim 1 with a feed solution and allowing pervaporation to occur; Ho [0050]-0051].
Response to Arguments
Applicant's arguments filed 07/16/2025 have been fully considered and they are persuasive in part.
The 102 rejections citing Kurth alone are withdrawn in view of Applicants’ amendments and arguments.
In response to Applicants’ argument that “[o]ne of ordinary skill in the art would have no motivation to modify Ho to include nanoparticles, at least because Kurth’s described water flux is lower than that described by Ho of 52.6 gfd” the Examiner disagrees. Kurth clearly discloses that inclusion of the nanoparticle additives “may substantially improve the performance – for example by increasing the flux” [0124], and thus would be expected to do so when included in the membrane of Ho. It is not clear how the specific flux value disclosed by Kurth changes this teaching, as Ho uses other specific materials and processes to form the membrane with a higher flux, and thus in combination would expect further flux improvement by including nanoparticles.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Magali Slawski can be reached at 571-270-3960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/Magali P Slawski/ Supervisory Patent Examiner, Art Unit 1773
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