Detailed Action
This is a Non-Final Office action based on application 17/797,682 filed on 4 August 2022. The application is a 371 of PCT/EP2021/052717, and claims priority to application EP 20305110.7 filed in the European Patent Office on 6 February 2020.
Claims 1-26 are pending, claims 11-26 are withdrawn, and claims 1-10 have been fully considered.
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
Applicant's election without traverse of claims 1-10 in the reply filed on 2 February 2026 is acknowledged. Claims 11-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4 August 2022, 11 July 2023, and 23 August 2024 have been considered by the examiner. Examiner observes however that there are some additional references listed in the text of the specification, which have not been entered in any of the IDS’s. See instant specification at page 18 paragraph 6; pg 19 para 1; pg 31 para 1.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references listed in the specification have been cited by the applicant in an IDS, or by the examiner on form PTO-892, they have not been considered.
Claim Interpretation
In the claim set presented in the preliminary amendment of February 24, 2026, Claim 1 at lines 17-19 recites that the nanoporous membrane element has a surface charge with a “□zeta potential□” of at least positive 5 mV.
In the original version of the claims, filed 4 August 2022, the corresponding claim limitation says “│zeta potential│” rather than “□zeta potential□”. Similarly, the specification at pg 8 paragraph 3 says that the nanoporous membrane is has a surface charge with a “│zeta potential│” of at least positive 5 mV. Specification pg 11 paragraph 5 says that “│zeta potential│” refers to the absolute value of the zeta potential. It is also noted that dependent claim 7 recites the nanoporous membrane is modified with polydopamine, which is a material that imparts a surface with negative zeta potential.
Examiner believes that the “│” symbol, connoting absolute value, is not supported by the computer font in which the claim set of 2/24/2026 was written, and the square symbol appearing in the claim is a Unicode placeholder glyph that is standing in for the absolute value symbol. For the purpose of treatment against the art in this action, Examiner interprets that the recitation “□zeta potential□” appearing in claim 1 should be read as “│zeta potential│”, i.e. as the absolute value of zeta potential.
In the interest of ensuring the claims are correctly represented and understood in digital form, Examiner suggests Applicant rephrase the claim language in a way that avoids the use of symbols which could give rise to digital encoding errors, for instance by replacing “│zeta potential│” with “the absolute value of the zeta potential”.
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.
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 1-10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance:
Claim 1 at lines 10-14 recites the broad recitation “≥99% ... of the solute of interest has been removed”, and the claim also recites “preferably ≥99.5%, more preferably ≥99.8%, still more preferably ≥99.8%, most preferably 100% of the solute of interest has been removed” which are successively narrower statements of the range/limitation.
Claim 1 at lines 17-21 recites the broad recitation “nanoporous membrane element having a surface charge with a │zeta potential│ ≥ 5 mV”, and the claim also recites “preferably ≥ 20 mV, most preferably ≥ 50 mV” which are successively narrower statements of the range/limitation.
Claim 2 recites the broad recitation “nanoporous membrane bearing a surface charge with a │zeta potential│ ≥ 5 mV”, and the claim also recites “preferably ≥ 20 mV, most preferably ≥ 50 mV” which are successively narrower statements of the range/limitation.
Claim 5 recites the broad recitation “the nanoporous membrane bearing a surface charge has an average pore size < 500 nm”, and the claim also recites “preferably < 300 nm, more preferably < 100 nm, most preferably < 50 nm” which are successively narrower statements of the range/limitation.
Claim 5 recites the broad recitation:
“the nanoporous membrane ... is essentially formed of a material selected from TiO2, boron nitride, SiO2, polyethersulfone, polycarbonate, anodic aluminum oxide, hydrotalcite, Ni-Fe layered double hydroxide, Ni2dobdc, Mg2dobdc (dobdc = 1,4- dioxido-2,5-benzenedicarboxylate), cellulose or polyelectrolyte layers polymer membranes such as nanoporous membranes obtained by sequentially dip-coating layers of cationic polyethyleneimine and anionic poly(acrylic acid) onto polycarbonate membranes”
and the claim also recites
“... preferably TiO2, BN, SiO2, polycarbonate, anodic alumina, hydrotalcite, Ni-Fe layered double hydroxide, Ni2dobdc, Mg2dobdc, cellulose or polyelectrolyte layers polymer membranes”
which is the narrower statement of the range/limitation, and “most preferably TiO2, BN, anodic alumina, SiO2, or polycarbonate” which is a still narrower statement of the range/limitation.
Claim 8 recites the broad recitation “the charged nanoporous membrane is obtained from a polycarbonate membrane having an average pore size < 500 nm”, and the claim also recites “ ... preferably < 300 nm, more preferably < 200 nm” which are successively narrower statements of the range/limitation.
The claims are considered indefinite because at each of these instances, there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of treating each of these claims against the art in this action, Examiner interprets that any art which satisfies the broadest version of the recited range will read on the claim.
Claim 1, at pg 2 lines 10-14, recites that the solvent worked upon by the claimed system is selected from a set of sufficiently polar aprotic solvents, or from “protic solvents such as water, alcohols, formic acid, acetic acid, hydrogen fluoride, and ammonia”. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). This rejection can be overcome by amending the claim to clearly and exactly identify which solvents are being claimed.
Claim 5 recites that, among the possible materials from which the nanoporous membrane can be made, are “cellulose or polyelectrolyte layers polymer membranes such as nanoporous membranes obtained by sequentially dip-coating layers of cationic polyethyleneimine and anionic poly(acrylic acid) onto polycarbonate membranes”. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). This portion of the rejection can be overcome by amending the claim to clearly and exactly identify which polymer membrane compositions fall within the scope of the claim.
Claim 3 recites that “the semipermeable membrane is a size exclusion membrane, an ion exchange membrane, or any other membrane allowing the separation/filtration of particular molecules or ions from a given electrolyte solution such as a semi-permeable membranes based on separation by chemical affinity, preferably a size exclusion selective membrane or an ion exchange membrane.” This recitation presents multiple layers of indefiniteness:
the claim recites the broad recitation “a size exclusion membrane, an ion exchange membrane, or any other membrane”, and the claim also recites “preferably a size exclusion selective membrane or an ion exchange membrane” which is the narrower statement of the range/limitation. This renders the claim scope unclear because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
The claim recites that the membrane may be “any other membrane allowing the separation/filtration of particular molecules or ions from a given electrolyte solution such as a semi-permeable membranes based on separation by chemical affinity”. The phrase "such as" renders the claim indefinite because it is unclear whether the limitation following the phrase (“semi-permeable membranes based on separation by chemical affinity”) are part of the claimed invention. See MPEP § 2173.05(d).
For the purpose of treating the claim against the prior art in this action, Examiner interprets that any membrane allowing the separation/filtration of particular molecules or ions from a given electrolyte solution is within the scope of claim 3. Since the specification defines “semipermeable membrane” as a membrane allowing the separation/filtration of particular species from a given electrolyte solution, the feature recited in claim 3 is inherently present in any semipermeable membrane.
Claim 10 recites that the energy source of claim 9 is configured to be charged by one of: (1) “light, wherein particularly the electric energy source element comprises a solar cell or a photodiode”, and (2) “using the reserve electro-osmotic effect of pumping electrolyte solution through the reverse osmosis membrane element, wherein particularly the electric energy source element comprises a hydro turbine element operatively connected to the reverse electro-osmotic membrane element”. In each of these two instances, the phrase "particularly" renders the claim indefinite because it is unclear whether the limitations following the phrase are (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required part of the claimed invention. See MPEP § 2173.05(d).
Each claim that depends from claim 1 inherits the indefiniteness of claim 1. Each claim that depends from claim 2 also inherits the indefiniteness of claim 2. Claim 4 which depends from claim 3 inherits the indefiniteness of claim 3. Claim 8 which depends from claim 5 inherits the indefiniteness of claim 5. Therefore Claims 1-10 are all rejected under §112(b).
Claim Rejections - 35 USC § 102
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sheng et al (US 2006/0275138 A1).
Regarding claim 1, Sheng teaches an electroosmosis system comprising:
a) a first vessel intended to receive a first electrolyte solution concentrated in a solute of interest, and comprising a first electrode in contact with the first electrolyte solution contained in the first vessel (figure 1, first chamber 14 having first electrode 36 therein, configured to have a first electrolyte solution introduced via inlet 18; para [0027]-[0031]);
b) a second vessel intended to receive a second electrolyte solution substantially free of, or depleted in, the same solute of interest, and comprising a second electrode in contact with the second electrolyte solution contained in the second vessel (figure 1, second chamber 16 having second electrode 38 therein, configured to receive electrolyte that flows from first chamber 14, through membrane 30, into chamber 16; para [0027]-[0031]) ; wherein the first electrolyte solution contains a higher concentration of solute than the second electrolyte solution; or wherein in the second electrolyte solution intended to be received in the second vessel, > 99%, preferably > 99.5%, more preferably > 99,8%, still more preferably > 99,9%, most preferably 100% of the solute of interest has been removed as compared to the first electrolyte solution teaches;
c) a reverse osmosis membrane element separating the first and second vessels (figure 1, membrane element 30), combining (i) a semipermeable membrane element (first and second electrodes 36, 38 are metal films deposited on the two opposing faces of the membrane; figure 7-8 and para [0065]-[0069], the metal elements have pore size of ~50 nm and therefore are semipermeable in the sense that colloids larger than this are excluded), and
(ii) a nanoporous membrane element (figure 1, nanoporous element 32; para [0029]-[0030], “body 32 ... a porous anodic alumina film containing nanochannels 34”), the nanoporous membrane having an average pore size < 1 um, preferably < 500 nm (para [0043]-[0054], [0068], the pore size of the nanoporous membrane element is from 50 to 200 nm);
wherein the semipermeable membrane element and the nanoporous membrane element having a surface charge are two distinct elements (the membrane is a composite comprising these two membrane elements layered one atop the other to define a multilayer composite, consistent with the intended meaning of “two distinct elements” (see instant specification at pg 12)) ;
wherein the semipermeable membrane element is configured to be in contact with the first electrolyte solution of the first vessel (figure 1, electrode 36 contacts solution in the interior of the first vessel 14), and the said reverse osmosis membrane element fulfilling both (i) a function of solute filtration and (ii) a function of electroinducing the flow of the solvent from the first electrolyte solution from the first vessel to the second vessel through the reverse osmosis membrane element (figure 7-8, the membrane has 50 nm pores and therefore is able to filter solutes from the electrolyte by virtue of size exclusion; para [0036]-[0054] and figure 2-4, the membrane is operable to induce solvent flow therethrough by electroosmosis);
the first and second electrolyte solutions and in first and second vessels and, respectively, comprising the same polar solvent, wherein the polar solvent includes protic solvents such as water (para [0036]-[0054], the solvent is water),
the first and second electrodes and being operatively coupled to an electric energy source (figure 1, electrodes 36 and 38 are connected to DC electric power supply 40; para [0029]-[0030]) ;
the reverse electro-osmotic filtration system being configured to apply an electric field between the first and second electrodes and induce a reverse- osmosis flow of the polar solvent of the first electrolyte solution from the first vessel to the second vessel, through the reverse osmosis membrane element (para [0036]-[0054]).
Sheng discloses that their nanoporous membrane element bears a surface charge and has a zeta potential (para [0040]-[0043]). Sheng does not explicitly disclose that the zeta potential of their nanoporous membrane element has an absolute value of >5 mV. However, since Sheng’s nanoporous membrane element consists of anodic aluminum oxide (para [0040]-[0043]), and the instant application teaches anodic aluminum oxide is an example of a material bearing a surface charge suitable for the nanoporous membrane element according to the present invention (claim 5; specification at pages 17, 19, 24), it is understood that Zheng’s nanoporous membrane inherently possesses a zeta potential in the claimed range. The court has held that products of identical chemical composition cannot have mutually exclusive properties, and therefore if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
As to the limitations:
- wherein the first electrolyte solution (that the first vessel is configured to receive) is concentrated in a solute of interest;
- wherein the second electrolyte solution (that the second vessel is configured to receive) is depleted of the first solute; and
- wherein the first electrolyte solution contains a higher concentration of solute than the second electrolyte solution; or wherein in the second electrolyte solution intended to be received in the second vessel, > 99%, preferably > 99.5%, more preferably > 99,8%, still more preferably > 99,9%, most preferably 100% of the solute of interest has been removed as compared to the first electrolyte solution;
these limitations relate to the composition of an electrolyte solution worked upon by the apparatus, rather than reciting a feature of the apparatus structure itself. A claim is only limited by positively recited elements. Thus, "[i]nclusion 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). Put another way, Sheng anticipates the claim despite being silent with respect to the solute ratio of the first electrolytic solution and second electrolytic solution, because the claim does not require these solutions to be present; what the claim requires is that the claimed apparatus must comprise a first vessel and a second vessel configured to receive two such solutions, as Sheng’s apparatus does.
Regarding claim 2, Sheng teaches the reverse electro-osmotic filtration system according to claim 1, wherein the semipermeable membrane element (figure 1, the electrode 36 that contacts solution in the interior of the first vessel 14) and the nanoporous membrane element having a surface charge (figure 1, nanoporous element 32; para [0029]-[0030], “body 32 ... a porous anodic alumina film containing nanochannels 34”) are two distinct elements combined together to form a two-layer composite asymmetric membrane (the membrane is a composite comprising these two membrane elements layered one atop the other to define a multilayer composite, consistent with the intended meaning of “two distinct elements”).
Regarding claim 3, Sheng teaches the system according to claim 2, wherein the semipermeable membrane is a size exclusion membrane (figure 7-8, the membrane has 50 nm pores and therefore is able to filter solutes from the electrolyte by virtue of size exclusion).
Regarding claim 5, Sheng teaches the system of claim 2, wherein the nanoporous membrane bearing a surface charge has an average pore size < 500 nm (para [0043]-[0054], [0068], the pore size of the nanoporous membrane element is from 50 to 200 nm) and is essentially formed of anodic aluminum oxide (para [0040]-[0043]).
Claims 1-3 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hansford et al (US 2006/0191831 A1).
Regarding claim 1, Hansford teaches a reverse electro-osmotic filtration system (figure 8; para [0009]-[0015], [0066]-[0075]) comprising:
a) a first vessel intended to receive a first electrolyte solution concentrated in a solute of interest, and comprising a first electrode in contact with the first electrolyte solution contained in the first vessel (figure 8A-8B, chamber 82 containing electrode 90 and sample solution 96);
b) a second vessel intended to receive a second electrolyte solution substantially free of, or depleted in, the same solute of interest, and comprising a second electrode in contact with the second electrolyte solution contained in the second vessel (figure 8A-8B, downstream chamber 88 containing second electrode 92); wherein the first electrolyte solution contains a higher concentration of solute than the second electrolyte solution (para [0071]);
c) a reverse osmosis membrane element separating the first and second vessels (para [0068], “a plurality of membranes 76, 78, 80 that partition the chamber into a plurality of separation regions 82, 84, 86, and 88”), combining (i) a semipermeable membrane element (figure 8A-8B, membrane 76), and
(ii) a nanoporous membrane element (figure 8A-8B, either of elements 78 and 80 reads on claimed “nanoporous membrane element”), the nanoporous membrane having an average pore size < 1 µm, preferably <500 nm as measured according to ISO 15901 norm (para [0010], “Each membrane has a plurality of flow-through channels ... channels have a selected minimum cross-sectional dimension in the range between 2 and 100 nm”);
wherein the semipermeable membrane element and the nanoporous membrane element having a surface charge are two distinct elements (figure 8A-8B, semipermeable membrane element 76 is distinct from nanoporous membrane(s) 78, 80);
wherein the semipermeable membrane element is configured to be in contact with the first electrolyte solution of the first vessel (as shown in figure 8A-8B), and the said reverse osmosis membrane element fulfilling both (i) a function of solute filtration and (ii) a function of electroinducing the flow of the solvent from the first electrolyte solution from the first vessel to the second vessel through the reverse osmosis membrane element (para [0039], [0070]-[0072]);
the first and second electrolyte solutions and in first and second vessels and, respectively, comprising the same polar solvent; wherein the polar solvent includes protic solvents such as water, alcohols, formic acid, acetic acid, hydrogen fluoride, and ammonia (per para [0036], the electrolyte is aqueous, i.e. its solvent is water);
the first and second electrodes and being operatively coupled to an electric energy source (figure 8A-8B, power source 94);
the reverse electro-osmotic filtration system being configured to apply an electric field between the first and second electrodes and induce a reverse- osmosis flow of the polar solvent of the first electrolyte solution from the first vessel to the second vessel, through the reverse osmosis membrane element (para [0051], [0055], [0070]).
Hansford discloses that their nanoporous membrane element bears a surface charge and has a zeta potential (para [0042]-[0050]). Hansford does not explicitly disclose that the zeta potential of their nanoporous membrane element has an absolute value of >5 mV. However, since Hansford’s nanoporous membrane element is made of SiO2-coated silicon, optionally surface-functionalized with amine groups (para [0043]-[0044]), and the instant application teaches that SiO2, with or without surface functionalization, is an example of a material bearing a surface charge suitable for the nanoporous membrane element according to the present invention (claim 5; instant specification at pages 17-19), it is understood that Hansford’s nanoporous membrane inherently possesses a zeta potential in the claimed range. The court has held that products of identical chemical composition cannot have mutually exclusive properties, and therefore if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
As to the limitations:
- wherein the first electrolyte solution (that the first vessel is configured to receive) is concentrated in a solute of interest;
- wherein the second electrolyte solution (that the second vessel is configured to receive) is depleted of the first solute; and
- wherein the first electrolyte solution contains a higher concentration of solute than the second electrolyte solution; or wherein in the second electrolyte solution intended to be received in the second vessel, > 99%, preferably > 99.5%, more preferably > 99,8%, still more preferably > 99,9%, most preferably 100% of the solute of interest has been removed as compared to the first electrolyte solution;
these limitations relate to the composition of an electrolyte solution worked upon by the apparatus, rather than reciting a feature of the apparatus structure itself. A claim is only limited by positively recited elements. Thus, "[i]nclusion 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). Put another way, Hansford anticipates the claim despite being silent with respect to the solute ratio of the first electrolytic solution and second electrolytic solution, because the claim does not require these solutions to be present; what the claim requires is that the claimed apparatus must comprise a first vessel and a second vessel configured to receive two such solutions, as Hansford’s apparatus comprises.
Regarding claim 2, Hansford teaches the reverse electro-osmotic filtration system according to claim 1, wherein the semipermeable membrane element (figure 8A-8B #76) and the nanoporous membrane element having a surface charge (figure 8A-8B #78) are two distinct elements combined together to form a two-layer composite asymmetric membrane (as shown in figure 8A-8B).
Regarding claim 3, Hansford teaches the system according to claim 2, wherein the semipermeable membrane is a size exclusion membrane (para [0070]).
Regarding claim 6, Hansford discloses the system of claim 2 and further teaches that the surface of the charged nanoporous membrane is chemically modified to enhance the nanoporous membrane surface charge (para [0043]-[0044]; figure 2).
Regarding claim 7, Hansford teaches the system of claim 6, and further teaches the chemical modification is effected on the surface of the nanoporous membrane pore walls (para [0043]-[0044]; figure 2).
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.
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hansford.
Regarding claim 9, Hansford teaches the system of claim 1. In the particular embodiment of Hansford that anticipates the system of claim 1 (figure 8A-8B; para [0009]-[0015] and [0066]-[0075]), Hansford is silent with respect to whether or not the electric energy source element is a battery. However in another embodiment (para [0076]-[0082] and figure 9), Hansford teaches the electric energy source element is a battery (para [0080]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the embodiment of Hansford’s figure 8 (in which Hansford is silent with respect to what sort of power source the electric power source element is) by selecting a battery as the power source element, based on Hansford’s teaching that a battery is a suitable power source for powering the similar electroosmotic device disclosed in the embodiment of figure 9. Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results [MPEP 2143(A)].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hansford as applied to claim 3 above, and further in view of Zhang et al (Environ. Sci., Technol., 49, 10235-10242 (2015)).
Regarding claim 4, Hansford discloses the system of claim 3 and teaches that the semipermeable membrane is a size exclusion selective membrane (para [0070]). However, Hansford does not teach the size exclusion selective membrane is composed of stacked graphene oxide flakes.
Zhang discloses a composite membrane comprising of a semipermeable membrane layer and a nanoporous membrane layer (abstract), wherein the semipermeable membrane layer is a size exclusion selective membrane composed of stacked graphene oxide flakes (pg 10236 left column para 5 – right column para 2, the semipermeable membrane layer is formed by vacuum-filtering a graphene oxide (GO) solution onto the nanoporous membrane layer; pg 10238 figure 3, the semipermeable membrane layer is about 70 nm thick, i.e. it comprises a stack of more than one GO flake; pg 10237 figure 2).
Zhang teaches that the composite membrane thus disclosed is effective for filtering undesired charged solutes out of water (pg 10240 left column para 2 – right column para 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the reverse osmosis filtration system of Hansford by selecting, as the filtration membrane element, a membrane comprising a nanoporous membrane element of polycarbonate that has been surface modified by dip coating in an aqueous polydopamine solution, based on Zhang’s disclosure of such a membrane, and Zhang’s teaching that this membrane is effective for the purpose of filtering undesired solutes out of aqueous solution. The simple substitution of one known element for another (i.e., one membrane material for another) is likely to be obvious when predictable results are achieved (i.e., effective membrane filtration) [MPEP § 2143(B)]. Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sheng as applied to claims 3 and 5 above, and further in view of Zhang.
Regarding claim 4, Sheng teaches the system according to claim 3, wherein the semipermeable membrane is a size exclusion membrane (figure 7-8, the membrane has 50 nm pores and therefore is able to filter solutes from the electrolyte by virtue of size exclusion). However, Sheng does not teach the size exclusion selective membrane is composed of stacked graphene oxide flakes.
Zhang discloses a composite membrane comprising of a semipermeable membrane layer and a nanoporous membrane layer (abstract), wherein the semipermeable membrane layer is a size exclusion selective membrane composed of stacked graphene oxide flakes (pg 10236 left column para 5 – right column para 2, the semipermeable membrane layer is formed by vacuum-filtering a graphene oxide (GO) solution onto the nanoporous membrane layer; pg 10238 figure 3, the semipermeable membrane layer is about 70 nm thick, i.e. it comprises a stack of more than one GO flake; pg 10237 figure 2). Zhang teaches that the composite membrane thus disclosed is effective for filtering undesired charged solutes out of water (pg 10240 left column para 2 – right column para 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the reverse osmosis filtration system of Sheng by selecting, as the filtration membrane element, a membrane comprising a nanoporous membrane element of polycarbonate that has been surface modified by dip coating in an aqueous polydopamine solution, based on Zhang’s disclosure of such a membrane, and Zhang’s teaching that this membrane is effective for the purpose of filtering undesired solutes out of aqueous solution. The simple substitution of one known element for another (i.e., one membrane material for another) is likely to be obvious when predictable results are achieved (i.e., effective membrane filtration) [MPEP § 2143(B)]. Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Regarding claim 8, Sheng teaches the reverse electro-osmotic filtration system according to claim 5, wherein the charged nanoporous membrane has an average pore size of < 500 nm (para [0043]-[0054], [0068], the pore size of the nanoporous membrane element is from 50 to 200 nm).
Sheng does not teach the charged nanoporous membrane is obtained from a polycarbonate membrane, the inner pore walls of which have been chemically modified by dip-coating the polycarbonate membrane in an aqueous solution of polydopamine.
Zhang discloses a composite membrane comprising of a semipermeable membrane layer and a nanoporous membrane layer (abstract), wherein the nanoporous membrane layer is comprised of track-etched polycarbonate membrane having an average pore size of < 500 nm (pg 10239 right column para 4 – pg 10240 left column para 1, “The polycarbonate substrate has a smooth surface with uniform pores of 0.2 µm in diameter”), the inner pore walls of which have been chemically modified by dip-coating the polycarbonate membrane in an aqueous solution of polydopamine (pg 10236 left column para 4). Zhang teaches that the composite membrane thus disclosed is effective for filtering undesired charged solutes out of water (pg 10240 left column para 2 – right column para 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the reverse osmosis filtration system of Sheng by selecting, as the filtration membrane element, a membrane comprising a nanoporous membrane element of polycarbonate that has been surface modified by dip coating in an aqueous polydopamine solution, based on Zhang’s disclosure of such a membrane, and Zhang’s teaching that this membrane is an effective water filtration membrane. The simple substitution of one known element for another (i.e., one membrane material for another) is likely to be obvious when predictable results are achieved (i.e., effective membrane filtration) [MPEP § 2143(B)]. Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hansford as applied to claim 9 above, and further in view of Chapin et al (US 2,780,765 A).
Regarding claim 10, Hansford renders the system of claim 9 obvious but does not teach that the battery is configured to be charged by one of: light, wherein the electric energy source comprises a solar cell or photo diode; or a hydro turbine operatively connected to the reverse electro-osmotic membrane element.
Chapin teaches an electric energy source element comprising a battery and a solar cell (figure 2, load 32 is powered by the battery 30, and battery 30 is configured to be charged by the series of photovoltaic cells 10), wherein the battery is configured to be charged by light impinging on the solar cell (col 4 ln 53 – 74).
Chapin teaches that the harnessing of solar energy is desirable because sunlight is a free and abundant energy source (col 1 ln 24-30). Chapin teaches in particular that the operative combination of a solar cell with a storage battery makes for an effective power source, because the battery is able to provide a well-matched load to the varying power output of the solar cell, resulting in a device that is able to efficiently capture and store solar energy when sunlight is available (col 1 ln 19-23; col 2 ln 1-7), and deliver a consistent supply of power to a low-power electronic device (col 3 ln 16-32).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to configure Hansford’s battery to be charged by a solar cell, based on the prior art’s teaching that the operative combination of a battery with a solar cell configured to charge the battery is an effective arrangement for capturing solar energy and providing a renewable power supply to a battery-powered electronic device (Chapin at col 1 ln 19-23; col 2 ln 1-7; col 3 ln 16-32). Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results [MPEP 2143(A)].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew R Koltonow whose telephone number is (571)272-7713. The examiner can normally be reached Monday - Friday, 10:00 - 6:00 ET.
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, Luan V Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW KOLTONOW/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
Prosecution Insights