DETAILED ACTION
This action is in response to the amendments and remarks filed 05/19/2026 in which claims 1, 4 and 13 have been amended, claims 1-20 are pending, claims 13-20 are withdrawn as directed to a non-elected invention and claims 1-12 are ready for examination.
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.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 pore size of the second side (untreated hydrophilic base membrane) is 0.1 µm or 0.45 µm (Table 1), and the first side (i.e. the hydrophobic coating) coats the pores of the hydrophilic membrane and thus the pore size of the first side/hydrophobic layer will inherently be lower than the pore size of the base membrane (i.e. including less than to 0.1 µm), as evidenced by the LEP going up for coated membrane, see Table 5 and Fig. 2 (see MPEP 2112 with regard to inherent properties); while the disclosure is silent with regard to symmetric or asymmetric pore size or porosity of either side of the membrane, the first or second sides must necessarily and inherently have pore size and porosity which is either one of symmetric or asymmetric, as they are the only types of pore size and porosity;
thus the first side and the second side of the single membrane are characterized by a symmetric or an asymmetric pore size smaller than or equal to 0.2 µm and symmetric or asymmetric porosity; wherein the second side that exhibits hydrophilic characteristics has a pore size of less than 0.1 µm as claimed; and
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 second side (untreated hydrophilic base membrane) is 0.1 µm or 0.45 µm (Table 1), and the first side (i.e. the hydrophobic coating) coats the pores of the hydrophilic membrane and thus the pore size of the first side/hydrophobic layer will inherently be equal or lower than the pore size of the base membrane, as evidenced by the LEP going up for coated membrane, see Table 5 and Fig. 2 (see MPEP 2112 with regard to inherent properties). The membrane pores are thus 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.
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. 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”) in view of Shuai Liang, et al., Menachem Elimelech; Highly Hydrophilic Polyvinylidene Fluoride (PVDF) Ultrafiltration Membranes via Postfabrication Grafting of Surface-Tailored Silica Nanoparticles. ACS Appl. Mater. Interfaces 24 July 2013; 5 (14): 6694–6703. (hereinafter “Liang”).
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 ide (uncoated PVDF) has an asymmetric pore size and porosity (inherently due to fabrication and as shown in Fig, 2)
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).
Gumus is silent to the specific pore size of the membrane sides and thus does not disclose wherein the first side and the second side of the single membrane are characterized by a symmetric or an asymmetric pore size smaller than or equal to 0.2 µm and symmetric or asymmetric porosity; wherein the second side that exhibits hydrophilic characteristics has a pore size of less than 0.1 µm.
However Liang discloses a similar PVDF ultrafiltration membrane which has been coated in a hydrophilic layer, wherein the base uncoated PVDF membrane is prepared by a similar process of casting a PVDF in solvent solution on a glass plate and then immersing in water to coagulate and then coated in the hydrophilic layer, i.e. non-solvent induced phase separation (NIPS) that inherently results in an asymmetric pore structure; wherein the uncoated PVDF membrane has a pore size of 26.2 nm and the hydrophilic coated membranes have a pore size of 20.5-55.8 nm; see PVDF Membrane Casting, Plasma Induced Graft Copolymerization and Membrane Functionalization, and Graft Copolymerization on Membranes with Different Pore Size and Hydrophilicity, and Fig. 2).
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 Gumus by using a pore size for the first side (uncoated PVDF) of 26.2 nm, and a pore size for the second side (i.e. the coated membrane side) of from 20.5-55.8 nm as disclosed by Liang because this involves the use, or simple substitution, of known pore sizes for the sides of similar hydrophilic modified NIPS PVDF ultrafiltration membranes, to obtain the predictable result of forming a successful membrane for ultrafiltration, and because these pore sizes are known to be useful in a similar hydrophilic modified NIPS PVDF ultrafiltration membrane. The first side (uncoated PVDF) thus has an asymmetric pore size and porosity, and while the disclosure is silent with regard to symmetric or asymmetric pore size or porosity of the second side of the membrane, the second side must necessarily and inherently have pore size and porosity which is either one of symmetric or asymmetric, as they are the only types of pore size and porosity.
This thus results in wherein the first side and the second side of the single membrane are characterized by a symmetric or an asymmetric pore size smaller than or equal to 0.2 µm and symmetric or asymmetric porosity; wherein the second side that exhibits hydrophilic characteristics has a pore size of less than 0.1 µm, as claimed.
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 sides are as detailed above, i.e. a pore size for the first side (uncoated PVDF) of 26.2 nm, and a pore size for the second side (i.e. the coated membrane side) of from 20.5-55.8 nm, 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 in view of Liang 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 in view of Liang 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); and
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).
Gumus is silent to the specific pore size of the membrane sides and thus does not disclose wherein the first side and the second side of the single membrane are characterized by a symmetric or an asymmetric pore size smaller than or equal to 0.2 µm and symmetric or asymmetric porosity; wherein the second side that exhibits hydrophilic characteristics has a pore size of less than 0.1 µm.
However Liang discloses a similar PVDF ultrafiltration membrane which has been coated in a hydrophilic layer, wherein the base uncoated PVDF membrane is prepared by a similar process of casting a PVDF in solvent solution on a glass plate and then immersing in water to coagulate and then coated in the hydrophilic layer, i.e. non-solvent induced phase separation (NIPS) that inherently results in an asymmetric pore structure; wherein the uncoated PVDF membrane has a pore size of 26.2 nm and the hydrophilic coated membranes have a pore size of 20.5-55.8 nm; see PVDF Membrane Casting, Plasma Induced Graft Copolymerization and Membrane Functionalization, and Graft Copolymerization on Membranes with Different Pore Size and Hydrophilicity, and Fig. 2).
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 Gumus by using a pore size for the first side (uncoated PVDF) of 26.2 nm, and a pore size for the second side (i.e. the coated membrane side) of from 20.5-55.8 nm as disclosed by Liang because this involves the use, or simple substitution, of known pore sizes for the sides of similar hydrophilic modified NIPS PVDF ultrafiltration membranes, to obtain the predictable result of forming a successful membrane for ultrafiltration, and because these pore sizes are known to be useful in a similar hydrophilic modified NIPS PVDF ultrafiltration membrane. The first side (uncoated PVDF) thus has an asymmetric pore size and porosity, and while the disclosure is silent with regard to symmetric or asymmetric pore size or porosity of the second side of the membrane, the second side must necessarily and inherently have pore size and porosity which is either one of symmetric or asymmetric, as they are the only types of pore size and porosity.
This thus results in wherein the first side and the second side of the single membrane are characterized by a symmetric or an asymmetric pore size smaller than or equal to 0.2 µm and symmetric or asymmetric porosity; wherein the second side that exhibits hydrophilic characteristics has a pore size of less than 0.1 µm, as claimed.
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 sides are as detailed above, i.e. a pore size for the first side (uncoated PVDF) of 26.2 nm, and a pore size for the second side (i.e. the coated membrane side) of from 20.5-55.8 nm, 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 6 Gumus in view of Liang 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 in view of Liang 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 in view of Liang would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed.
Regarding Claim 9-11 Gumus in view of Liang 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 in view of Liang, 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 in view of Liang inherently has the same properties as that claimed. See MPEP 2112.01.
Regarding Claim 12 Gumus in view of Liang discloses the porous composite membrane of claim 1, wherein the single membrane is formed from polyvinylidene fluoride (PVDF); supra.
Response to Arguments
Applicant's arguments filed 05/19/2026 have been fully considered but they are not persuasive.
In response to Applicants’ argument that it would not have been obvious to have a pore size of less than 0.2 µm for the membrane of Gumus; the Examiner disagrees. Applicants’ argue that “Gumus' boundary for pore size is above 0.2 µm, because pore sizes that are 0.2 µm and below cannot effectively attain good membrane distillation flux, which is a feature that Gumus is trying to accentuate.” However, Gumus is entirely silent to membrane distillation, and does not otherwise teach that the pores must be less than 0.2 µm. Thus this argument is not persuasive. Applicants’ further argue that Gumus discloses increased hydrophilicity, water uptake capacity and porosity are desirable properties, and that “[d]ecreasing the pore size would have the opposite effect and thus, Gumus would not reduce its pore size.” However, there is no evidence that decreasing pore size would negative effect hydrophilicity, water uptake capacity, or porosity. Thus this amounts to nothing more than Attorney argument, which is not given weight; see MPEP 2145(I) “assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”
In response to Applicants’ argument that it would not have been obvious to have a pore size of less than 0.2 µm for the membrane of Paranik; the Examiner disagrees. Applicants’ argue that “Table 1 in Paranik shows as its smallest pore size for a hydrophilic membrane 0.1 µm. Applicant notes that when pore sizes on the second hydrophilic side are less than 0.1 µm, one is unable to attain good membrane distillation flux.” However, there is no evidence provided that “when pore sizes on the second hydrophilic side are less than 0.1 µm, one is unable to attain good membrane distillation flux”; thus this amounts to nothing more than Attorney argument, which is not given weight; see MPEP 2145(I) “assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”
In response to Applicants’ argument that amending either Gumus or Paranik to have “smaller pores” would render then unsatisfactory for their intended purpose; the Examiner disagrees. Applicants’ argue that decreasing pore size would have a negative effect on membrane distillation flux, which would thus render the membranes unsatisfactory for their intended purpose. However, Gumus is not disclosed to be directed to membrane distillation, and so this argument is moot with regard to Gumus. With regard to Paranik, there is no evidence provided that decreasing Paranik’s membrane pore size would lead to a decrease in membrane distillation flux such that it would no longer be satisfactory for its intended purpose. Thus this amounts to nothing more than Attorney argument, which is not given weight; see MPEP 2145(I) “assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”
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.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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