DETAILED ACTION
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 1-9 in the reply filed on 10/21/25 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The “less than 1 degree when measured …” appears new matter.
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.
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.
Claim(s) 1 and 4-9 are rejected under 35 U.S.C. 103) as unpatentable over Lee et al, “Electrospun Polystyrene Nanofiber Membrane with Superhydrophobicity and Superoleophilicity for Selective Separation of Water and Low Viscous Oil”, 10597- ACS Appl. Mater. Interfaces 2013, 5, 10604
This reference is supplied by the applicant in an IDS. It teaches electrospun polystyrene nanofiber membrane for the express purpose of oil/water emulsion separation. It being super oleophilic, would inherently have the contact angle as claimed for oil as in claim 9. Pore size is inherently within the range claimed because of the following reasons: (1) fiber diameter of 317 nm, (2) porosity or void volume at 0.8613 cc/g, which is about 86% porosity (density of polystyrene is about 1 g/cc), (3) the SEMs appears to show the pore size between about 2.5 – about 30 microns. The 2.5 microns is the size of the “bead” in the red circles in fig. 2 (b), and the void spaces appear to be larger than this. The upper pore size is limited by the underlying SS mesh, which is disclosed as approximately 30 microns, and in the SEM, appears to be about 20 – 50 microns (by physically scaling). Therefore, the pore size would be within the range claimed or closely overlapping.
Compressing or calendaring is only a process limitation, not patentable in the product claim. MPEP 2113.
Thickness: while the reference does not explicitly state the thickness, it does teach that the thickness is varied by the deposition time between 3 and 20 minutes. This would suggest a similar thickness range. Thickness is also a result-effective variable because higher thickness would result in lower flow rate.
“Crushed shape” is not a patentable invention unless otherwise shown. See MPEP 2144.04 about mere changes in shape.
Contact angles for water and oil are inherent material properties.
Claim(s) 1 and 4-9 are rejected under 35 U.S.C. 103 as unpatentable over DE 11015000874.
DE teaches a membrane having PVdF nanofibers, with pore size range 0.1-15 microns or 1-6 microns – overlapping range for claim 3. The element, compressed at 10-100 kPa is a process limitation, which is not patentable in a product claim. MPEP 2113. Thickness of nanofiber layer is 0.25 nm to 10 millimeters – overlapping range for claims 1 and 4. The actual thickness and pore size can be controlled and optimized for the desired use of such membranes and therefore is obvious, unless otherwise shown. DE teaches that this membrane can be of high surface area and porosity, but does not specify the porosity (void volume.) However, this is another result-effective variable that can be optimized based on pressure drop and flow rate required vs mechanical strength. It is also obvious to provide the highest porosity without compromising the mechanical strength to withstand the operating pressure. Membrane material is PVdF, polystyrene or other hydrophobic materials. The membrane being lipophilic, and the contact angle for the membrane (hydrophobicity) are inherent material properties of PVdF and polystyrene (evidence – see rejection 1.) See MPEP 2112 for inherency. Fibers being electro-spun would have circular cross-section and would be crushed at the joints because the fibers are being thermally, or mechanically interconnected.
Most details are in the running pages 9 and 10 of the reference. Unfortunately, the English translation affords no page and line numbers, but the cited terminology can be easily located by word search in the PDF file.
Arguments traversing this rejection are not persuasive. The range of pore size is met by the reference because of the significant overlap, and does not have to meet the upper limit MPEP 2144.05-I. Optimizing a result-effective variable is prima facie obvious. MPEP 2144.05-II. There is no evidence for any criticality of pore size. Regarding uniform and dense pores, the term “dense pores” is an oxymoron; and the uniformity is unclear – the claimed range for the averages is very wide, compared to the teachings of the references.
Conclusion
THIS ACTION IS MADE FINAL. 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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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, Prem C Singh can be reached at 571-272-6381. 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.
/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777