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 Amendment
The amendment filed 03/11/2026 has been entered. Claims 1-16 remain pending in the application; nonelected Claims 4-15 are withdrawn from consideration. Applicant’s amendments to the Claims have addressed every objection previously set forth in the Office Action mailed 12/03/2025.
Response to Arguments
Applicant’s arguments filed 03/11/2026 with respect to claim(s) 1-3 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being obvious over US 2016/0035456 A1, hereinafter Sauro, in view of Mei Qun Seah (Mei Qun Seah et al. Progress of Interfacial Polymerization Techniques for Polyamide Thin Film (Nano)Composite Membrane Fabrication: A Comprehensive Review), hereinafter MQS, further in view of US 2013/0056244 A1, hereinafter Srinivas.
Regarding Claim 1, For the purpose of furthering prosecution and in light of instant disclosure Examiner interprets “self-supporting” in light of instant specification [0022] “By "self-supporting" it is meant that the graphene-polyamide composite has structural integrity without use of a separate support membrane.”
Sauro teaches a composite comprising essentially pure graphene ([0005] “The compositions includes at least one polymer and graphene sheets”), and polyamide ([0017] “polyamides include…aromatic polyamides”; [0022]), wherein the composite is in the form of a self-supporting membrane ([0009] “The composition can be used to form … membranes having desired flow properties and porosities. Such materials could have highly variable and tunable porosities and porosity gradients can be formed”) .
Embodiments of Sauro suggest but do not explicitly teach interfacially-polymerized polyamides formed by aromatic components ([0017] “polyamides include…aromatic polyamides”; [0022] “The polymers, graphene sheets, and additional components, if used, can be formed into the compositions using any suitable means, including …solution/dispersion processing/blending…and similar processes. At least a portion of the graphene sheets ( and/or other components) can be added to monomer or oligomers that are then in-situ polymerized to form the polymers”).
However MQS teaches an interfacially-polymerized polyamide formed by polymerization of an aromatic polyamine compound and an aromatic polycarbonyl compound in the form of a self-supporting membrane (MQS p 7 Table 1- Authors: Cui et al. Support Free IP Conditions: Formation of support-free PA, using 2 wt % MPD and 0.1 wt % TMC. Excess solution was drained after . IP – Interfacial Polymerization, MPD = m- phenylenediamine, TMC = trimesoyl chloride or 1,3,5-benzenetricarbonyl trichloride).
MQS also provides motivation for aromatic polyamines, specifically: “The use of different monomers creates different surface morphologies, where the TFC membrane constructed of MPD–TMC generally exhibits a ridge-and-valley structure… the ridge-and-valley PA layer demonstrates excellent NaCl rejection over the globular PA structure, owing to the high degree of crosslinking that produces dense skin layer”, where the comparative globular PA structure was formed by PIP-TMC, PIP being an non-aromatic polyamine (See MQS p 3 Sec 2).
Sauro is analogous because Sauro is in the field of graphene-polyamide composites.
MQS is analogous because MQS is in the same field of aromatic polyamide synthesis via interfacial polymerization.
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to use the interfacial polymerization of MQS Table 1 for the polymerization of the aromatic polyamide of Sauro [0017]. In doing so,“ the ridge-and-valley PA layer demonstrates excellent NaCl rejection … owing to the high degree of crosslinking that produces dense skin layer” (MQS p 2 Sec 2).
While MQS suggests combining the free-standing polyamide layer with another surface, (p 5 Sec 3.1), the combination of Sauro and MQS does not explicitly teach having a graphene side opposite to a polyamide side.
However, embodiments of Srinivas teach a composite (either of at least Figs. 1A, 2A), comprising graphene ([0061] “Additives can include…graphene”; [0063] “Additional examples of additives include those formed of activated carbon, graphene”) and polyamide ([0065] “host material can include …polyamide, polyimide…aromatic polyamide, polyamide-imide…graphene… polymer-carbon composite ( e.g., formed of ketjen black, activated carbon, carbon black, graphene, and other forms of carbon)”), wherein the composite is in the form of a self-supporting membrane ([0064] “A host material can be in the form of a layer, a film, or a sheet serving as a substrate”) having a graphene side opposite to a polyamide side (either of at least Figs. 1A, 2A; [0057] “the additives can be localized within the embedded region, such that a remainder of the host material is substantially devoid of the additives”; [0055] “Specifically, FIG. 1A is a schematic of surface-embedded additives 130 that form a network that is partially exposed and partially buried into a top, embedding surface 134 of a host material 132,”).
Srinivas is analogous because Srinivas is in the same field of graphene-polyamide composites.
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to try the specific localization practices of Srinivas for the modified Sauro composite. Doing so would “allow for variable, controllable vertical additive concentration profile, in accordance with a localization of additives within an embedded region of at least a portion of a host material” (Srinivas [0057]).
Regarding Claim 2, Sauro teaches the composite of claim 1, comprising 10 to 90 weight percent of the graphene ([0083] “The composition can comprise about 1 to about 10
weight percent graphene sheets, based on the total weight of graphene sheets and polymer”) based on the total weight of the composite ([0083] “The composition can comprise about 1 to about 10 weight percent graphene sheets, based on the total weight of graphene sheets and polymer”), which suggests a 10 to 90 weight percent of the polyamide, as the remainder of the total weight, about 99 to about 90 weight percent, would be the polymer weight .
MPEP 2144.05 (III)(A) states “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies”
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to optimize the weight ratios of graphene and polymer within the prior art conditions taught in Sauro to achieve the expected results of “electronically conductive polymer compositions” (Sauro Title).
Regarding Claim 3, while Sauro does not disclose all limitations within one embodiment, Embodiments of Sauro teach a thickness from 10 to 5000 micrometers ([0078] “the compositions can optionally have a thickness of …50 micrometers to 1 mm, 100 micrometers to 2 mm, 100 micrometers to 1 mm, 100 micrometers to 750 micrometers, 100 micrometers to 500 micrometers, 500 micrometers to 2 mm, or 500 micrometers to 1 mm”).
MPEP 2144.05 (III)(A) states “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies”
It would have been obvious to one of ordinary skill in the art, before the effectively filed date, to optimize the weight ratios of graphene and polymer within the prior art conditions taught in Sauro to achieve the expected results of “electronically conductive polymer compositions” (Sauro Title).
Regarding Claim 16, modified Sauro as applied to the claims above teaches the polyamine compound is m- phenylenediamine and the polycarbonyl compound is 1,3,5-benzenetricarbonyl trichloride (MQS p 7 Table 1- Authors: Cui et al. Support Free IP Conditions: Formation of support-free PA, using 2 wt % MPD and 0.1 wt % TMC. Excess solution was drained after . IP – Interfacial Polymerization, MPD = m- phenylenediamine, TMC = trimesoyl chloride or 1,3,5-benzenetricarbonyl trichloride).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-20120241371-A1 teaches membrane having a carbon matrix layer and an active layer of interfacially polymerized polyamide made from TMC and mPDA.
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 MARRIAH ELLINGTON whose telephone number is (703)756-1061. The examiner can normally be reached Monday - Friday, 9:00 am - 4:00 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, Ben 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.
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.
/MARRIAH ELLINGTON/
Examiner
Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773