DETAILED ACTION
This action is in response to the RCE with amendments and remarks filed 11/04/2025 in which claims 1 and 4 have been amended, claims 1-20 are pending, claims 13-20 are withdrawn as directed to a non-elected invention and claims 1-12 are ready for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/04/2025 has been entered.
Claim Rejections - 35 USC § 102
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 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.
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 1-4 and 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by and/or 35 U.S.C. 103 as being unpatentable over Huseyin Gumus, Determination of progress in acrylic acid modification on polyvinylidene fluoride membrane by infrared spectroscopy, Journal of Molecular Structure, Volume 1174, 2018, Pages 122-126 (hereinafter “Gumus”).
Regarding Claim 1 Gumus discloses a porous composite membrane, the porous composite membrane comprising:
a single flat membrane, having first and second opposing sides, comprising PVDF which is coated on one wide by grafted Acrylic Acid,
wherein the first side (uncoated PVDF) is exhibits hydrophobic characteristics and the second side (AA coating) exhibits hydrophilic characteristics,
wherein the first side corresponds to a first half of the single membrane and the second side corresponds to a second half of the single membrane; wherein the first side and the second side are in direct contact with each other within the single membrane, thereby allowing direct contact between a first solvent and a second solvent within the single membrane; (i.e. the coated side/portion is considered one half and the untreated portion the other half, because under broadest reasonable interpretation “half” may refer to one of a pair, and does not require equal size or proportion); see (Abstract, Introduction, Sec. 2.1.; Scheme 1, Conclusion).
With regard to the limitation “wherein the single membrane is configured to perform nondispersive membrane solvent extraction in both the first side and the second side of the single membrane”, the pore size of the membrane is not specifically disclosed, however the pores are shown in the Fig. 2 to be ~1 micron or smaller, i.e. included in both sides of the membrane, and thus are seen to be sized such that they would inherently to perform nondispersive membrane solvent extraction; i.e. of a size that could be capable of nondispersive membrane solvent extraction when in use, and is therefore configured to perform nondispersive membrane solvent extraction in both the first side and the second side of the single membrane, as claimed.
Regarding Claim 2 Gumus discloses the porous composite membrane of claim 1, wherein the single membrane is a Janus flat membrane (cast of glass plate, Sec. 2.1.).
Regarding Claim 3 Gumus discloses the porous composite membrane of claim 1, which is a Janus flat membrane (i.e. inherently because it is a flat membrane that has a hydrophilic side and a hydrophobic side, 1. Introduction), but does not disclose wherein the single membrane is a Janus hollow fiber membrane. However it would have been obvious to use other shapes of membranes including hollow fibers, because they are an old and well known alternative to flat membranes for performing fluid separations, which allow use of different filter element configurations.
Regarding Claim 4 Gumus discloses a porous composite membrane, the porous composite membrane comprising:
a single flat membrane, having first and second opposing sides, comprising PVDF which is coated on one wide by grafted Acrylic Acid,
wherein the first side (uncoated PVDF) is exhibits hydrophobic characteristics and the second side (AA coating) exhibits hydrophilic characteristics,
wherein the first side corresponds to a first half of the single membrane and the second side corresponds to a second half of the single membrane (i.e. the coated side/portion is considered one half and the untreated portion the other half, because under broadest reasonable interpretation “half” may refer to one of a pair, and does not require equal size or proportion); nd
wherein the first side of the single membrane defines a first surface, the second side of the single membrane defines a second surface, and wherein the first surface is uncoated PVDF and the second surface is coated with a hydrophilic coating (AA); see (Abstract, Introduction, Sec. 2.1.; Scheme 1, Conclusion).
With regard to the limitation “wherein at least one of the first side or the second side is sized to perform nondispersive membrane solvent extraction”, the pore size of the membrane is not specifically disclosed, however the pores are shown in the Fig. 2 to be ~1 micron or smaller, i.e. included in both sides of the membrane, and thus are seen to be sized such that they would inherently to perform nondispersive membrane solvent extraction; i.e. of a size that could be capable of nondispersive membrane solvent extraction when in use, as claimed.
Regarding Claim 6 Gumus discloses the porous composite membrane of claim 1, wherein the single membrane includes pores extending through the single membrane from at least one of (i) the first side to the second side, or (ii) the second side to the first side (Fig. 2).
Regarding Claim 7-8 Gumus discloses the porous composite membrane of claim 6, and with regard to the limitations:
(claim 7) wherein during nondispersive membrane solvent extraction, the single membrane is configured to receive a first phase along the first side and within the pores of the first side, and a second phase along the second side and the pores of the second side,
(claim 8) wherein the first phase is an organic phase and the second phase is an aqueous phase,
These are functional limitations which attempt to define this apparatus claim’s structure in terms of its functional abilities. Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114), and thus the prior art need only disclose structure capable of achieving the recited function(s) to read on the functional limitations. These functional limitations do not further define over the prior art because the structure disclosed by Gumus would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed.
Regarding Claim 9-11 Gumus discloses the porous composite membrane of claim 6, and with regard to the limitations:
(claim 9) wherein a pressure of the first phase within the pores exceeds a pressure of the second phase along the second side without creating phase dispersion through the single membrane,
(claim 10) wherein even if a breakthrough pressure of the first and second phases is exceeded, phase dispersion through the single membrane is prevented by at least one of the hydrophilic characteristics of the second side or the hydrophobic characteristics of the first side,
(claim 11) wherein a pressure of the second phase within the pores exceeds a pressure of the first phase along the first side without creating phase dispersion through the single membrane;
These limitations are seen to be inherent properties of the membrane disclosed by Gumus, i.e. because the composition of the membrane (hydrophobic PVDF w/ acrylic acid coating after KOH treatment) is the same as disclosed in the instant specification, thus it is asserted, absent evidence to the contrary, that one would reasonably expect that the membrane disclosed by Gumus inherently has the same properties as that claimed. See MPEP 2112.01.
Regarding Claim 12 Gumus discloses the porous composite membrane of claim 1, wherein the single membrane is formed from polyvinylidene fluoride (PVDF); supra.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by and/or 35 U.S.C. 103 as being unpatentable over Aishwarya A. Puranik, Lydia N. Rodrigues, John Chau, Lin Li, Kamalesh K. Sirkar, Porous hydrophobic-hydrophilic composite membranes for direct contact membrane distillation, Journal of Membrane Science, Volume 591, 2019, 117225, ISSN 0376-7388 (hereinafter “Puranik”).
Regarding Claim 1 Puranik discloses a porous composite membrane, the porous composite membrane comprising:
a single membrane comprising a first side and a second side opposing the first side, comprising hydrophilic PVDF which is coated on one side by hydrophobic plasma-polymerized polyfluorosiloxane;
wherein the first side (plasma-polymerized polyfluorosiloxane) exhibits hydrophobic characteristic and the second side (uncoated hydrophilic PVDF) exhibits hydrophilic characteristics;
wherein the first side corresponds to a first half of the single membrane and the second side corresponds to a second half of the single membrane; wherein the first side and the second side are in direct contact with each other within the single membrane, thereby allowing direct contact between a first solvent and a second solvent within the single membrane; the coated side/portion is considered one half and the untreated portion the other half, because under broadest reasonable interpretation “half” may refer to one of a pair, and does not require equal size or proportion); see 1. Introduction, 2.1. Materials and chemicals, Tables 1-5.
With regard to the limitation “wherein the single membrane is configured to perform nondispersive membrane solvent extraction in both the first side and the second side of the single membrane”, the pore size of the untreated membrane is 0.1 or 0.45 (Table 1), wherein the untreated side must be equal or lower, and thus are seen to be sized such that they would inherently to perform nondispersive membrane solvent extraction; i.e. of a size that could be capable of nondispersive membrane solvent extraction when in use, and is therefore configured to perform nondispersive membrane solvent extraction in both the first side and the second side of the single membrane, as claimed.
Regarding Claim 2 Puranik discloses the porous composite membrane of claim 1, wherein the single membrane is a Janus flat membrane (i.e. inherently because it is a flat membrane that has a hydrophilic side and a hydrophobic side, 1. Introduction).
Regarding Claim 3 Puranik discloses the porous composite membrane of claim 1, which is a Janus flat membrane (i.e. inherently because it is a flat membrane that has a hydrophilic side and a hydrophobic side, 1. Introduction), but does not disclose wherein the single membrane is a Janus hollow fiber membrane.
However, as discussed in the introduction, the authors tested flat membranes because they had already tested similar coated hollow fibers membranes, and therefore it would have been obvious to substitute hollow fibers membranes for the flat membranes, as they are known to be treated and used in a similar way (1. Introduction).
Regarding Claim 5 Puranik discloses the porous composite membrane of claim 1, wherein the first side is coated with a hydrophobic coating (the plasma-polymerized polyfluorosiloxane or polysiloxane) and the second side is uncoated (hydrophilic PVDF).
Regarding Claim 6 Puranik discloses the porous composite membrane of claim 1, wherein the single membrane includes pores extending through the single membrane from at least one of (i) the first side to the second side, or (ii) the second side to the first side (inherently, and see Figs. 2, &a-d).
Regarding Claim 7-8 Puranik discloses the porous composite membrane of claim 6, and with regard to the limitations:
(claim 7) wherein during nondispersive membrane solvent extraction, the single membrane is configured to receive a first phase along the first side and within the pores of the first side, and a second phase along the second side and the pores of the second side,
(claim 8) wherein the first phase is an organic phase and the second phase is an aqueous phase,
These are functional limitations which attempt to define this apparatus claim’s structure in terms of its functional abilities. Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114), and thus the prior art need only disclose structure capable of achieving the recited function(s) to read on the functional limitations. These functional limitations do not further define over the prior art because the structure disclosed by Puranik would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed.
Regarding Claim 9-11 Puranik discloses the porous composite membrane of claim 6, and with regard to the limitations:
(claim 9) wherein a pressure of the first phase within the pores exceeds a pressure of the second phase along the second side without creating phase dispersion through the single membrane,
(claim 10) wherein even if a breakthrough pressure of the first and second phases is exceeded, phase dispersion through the single membrane is prevented by at least one of the hydrophilic characteristics of the second side or the hydrophobic characteristics of the first side,
(claim 11) wherein a pressure of the second phase within the pores exceeds a pressure of the first phase along the first side without creating phase dispersion through the single membrane;
These limitations are seen to be inherent properties of the membrane disclosed by Puranik, i.e. because the composition of the membrane (hydrophilic PVDF w/ hydrophobic plasma-polymerized polyfluorosiloxane) is the same as disclosed in the instant specification, thus it is asserted, absent evidence to the contrary, that one would reasonably expect that the membrane disclosed by Puranik inherently has the same properties as that claimed. See MPEP 2112.01.
Regarding Claim 12 Puranik discloses the porous composite membrane of claim 1, wherein the single membrane is formed from polyvinylidene fluoride (PVDF); Tables 1-5, supra.
Response to Arguments
Applicant's arguments filed 11/04/2025 have been fully considered and they are persuasive in part.
In response to the Rule 130(a) Affidavit dated 11/04/2025 and Applicants’ arguments, the Examiner agrees the previously cited reference “Sharama” is exempt prior art, and rejections citing Sharama have thus been withdrawn.
The previous 112(b) rejections of claim 1-12 are withdrawn in view of Applicants’ amendments and arguments.
In response to Applicants’ argument that the independent claim 1 patentability distinguishes over Gumus; the Examiner disagrees. Applicants’ argue that Gumus discloses a filter for water treatment that only has a thin coating on the base membrane and “that a person skilled in the art would not be motivated by the teachings of Gumus to pursue a porous composite membrane that permitted direct contact between first/second solvents within the membrane and that was configured to perform nondispersive membrane solvent extraction in both the first and second side of the single membrane”. However it is not clear how the claim limaitons define around Gumus. This is because while Gumus discloses a thin coating layer, there is no evidence provided a small coating would not work to perform nondispersive membrane solvent extraction, in fact the instant specification discloses similar small/thin coatings do work to perform nondispersive membrane solvent extraction, see [0066]-[0067]. Further, as noted in the rejection, Gumus discloses a membrane wherein the first side corresponds to a first half of the single membrane and the second side corresponds to a second half of the single membrane; wherein the first side and the second side are in direct contact with each other within the single membrane, thereby allowing direct contact between a first solvent and a second solvent within the single membrane; i.e. because the coated side/portion is considered one half and the untreated portion the other half, because under broadest reasonable interpretation “half” may refer to one of a pair, and does not require equal size or proportion. Thus is seen to apply to the membrane as disclosed by Gumus directly, such that it anticipates the claimed invention.
With regard to claim 4, it is noted that it was previously, and remains, rejected citing Gumus, not Sharma as argued. It was claim 5 that was previously not rejected under Gumus, however claim 5 is now rejected citing refence Puranik, which discloses largely the same membrane as previously cited reference Sharma, which is seen to anticipate the current claims.
Conclusion
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/Magali P Slawski/ Supervisory Patent Examiner, Art Unit 1773