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 .
Response to Arguments
The Applicant argues that PVP is mentioned only once in passing as a pore forming agent. However, this reference, despite being brief, justifies the incorporation of PVP in the composition. Specifically, PVP is referenced by the prior art as being suitable in the composition; and, it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
The Applicant also argues that gamma butyrolactone is mentioned once from a large list of organic solvents and is not listed as the preferred solvent.
Despite the large list of solvents, it has been established that selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives”).
The Applicant also argues that Tables 1-6 and Tables 5 and 7 are suitable comparisons for the importance of the incorporation of GVL instead of other solvents.
However, this data is not commensurate with the scope of the claims, the Applicants lists 4 types of sulfone polymer E3010, E 6020, E 7010, and E 6010. These are specific types of sulfone polymers with specific repeating units, polydispersity, and molecular weights which are considerably narrower than claim 11. The examiner recommends a declaration or more specific claim set to overcome this rejection.
Additionally, the Applicant lists Luvitek K90, K70, K30, Polyox N10, N80, N750, and E9000 as specific types of water soluble polymers. These are specific types of water soluble polymers with specific repeating units, polydispersity, and molecular weights which are considerably narrower than claim 11. The examiner recommends a declaration or more specific claim set to overcome this rejection.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-3, 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over Di Nicolo US 20190177539A1.
Regarding claims 2 and 11, Di Nicolo teaches a composition comprising aromatic sulfone polymers (Abstract, Paragraph [0058]). This reads on the claimed “polysulfone.” Di Nicolo teaches the composition comprises a medium like y-butyrolactone. Di Nicolo is silent on the composition comprising y-valerolactone (Paragraph [0184]).
However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. y-butyrolactone and y-valerolactone differ by a single methylene group and can both be used as solvents. These compounds have sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09.
It would have been obvious to one of ordinary skill in the art at the time of filing to select y-valerolactone based on its close structural similarity and similar utility to the y-butyrolactone used in Di Nicolo, with the expectation that these compounds of similar structure will have similar properties.
Di Nicolo also teaches the composition comprises polyvinylpyrrolidone or polyethylene glycol (Paragraph [0275]). This reads on the claimed water soluble polymer and “poly(N-vinylpyrrolidone).”
Di Nicolo also teaches the composition can be used to form a membrane (Paragraph [0345]). Di Nicolo also teaches the membrane is formed from a solution (Paragraph [0345]). This reads on the claimed “solution.”
Regarding claim 3, Di Nicolo teaches that the polysulfone has a repeat unit structure of more than 99%:
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(Paragraph [0074-0075]).
This has a repeat unit molecular weight of 491 g/mol. This means 100 grams of this polymer is equivalent to approximately 0.2 moles of repeating units of this polymer. There is one SO2 group per repeating unit which means there is approximately 0.2 moles of SO2 per 100 grams of polymer. This falls within the claimed range of 0.02 to 2 moles of SO2 per 100 grams of polymer.
Regarding claims 5 and 9, Di Nicolo teaches the composition can comprise at least one additional additives (Paragraph [0274]). Di Nicolo teaches this one additional ingredient can comprise 0.1 to 30 wt% of the composition (Paragraph [0273]). This overlaps with the claimed range of 0.1 to 25 wt%. Di Nicolo teaches the additional ingredient can comprise latent organic solvents (Paragraph [0274]). Di Nicolo lists ethanol (Paragraph [0182]) as a suitable solvent for the composition. Ethanol reads on the claimed C2-C4 alkanol.
It would have been obvious to one of ordinary skill in the art at the time of filing to use ethanol as the latent organic solvent in the composition as ethanol is already shown to be suitable as a solvent in the composition and would therefore be acceptable to use in the same composition in smaller quantities as a latent organic solvent.
Regarding claim 6, Di Nicolo teaches the polymer is 10 to 100 wt.% of the composition (Paragraph [0271]). This overlaps with the claimed range of 5-50wt%.
Regarding claim 7, Di Nicolo teaches the pore forming agent (PVP) is 0.1-30wt% of the composition (Paragraph [0275]). This overlaps with the claimed range of 0.1-15wt%.
Regarding claim 8, Di Nicolo teaches the medium is at least 40wt% of the composition (Paragraph [0191]). This overlaps with the claimed range of 40-90wt%.
Regarding claim 10, Di Nicolo teaches a variety of possible solvents including NMP. However Di Nicolo teaching the composition can comprise NMP does not mean all embodiments of the invention of Di Nicolo comprise NMP in amounts of greater than 2.5 wt%. Therefore, Di Nicolo reads on the limitations of claim 9.
Regarding claims 12 and 14, Di Nicolo teaches the solutions are immersed in a coagulation bath and then washed with pure water (Paragraph [0346]). This reads on the claimed “contact with a coagulant” and “washing the obtained membrane.”
Regarding claim 13, Di Nicolo teaches that coagulation bath comprises pure de-ionized water (Paragraph [0346]). This reads on the claimed “water.”
Claims 4 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Di Nicolo US 20190177539A1 in view of Haak WO 91/16943.
Regarding claims 4 and 18, Di Nicolo teaches that the water soluble polymer can be polyethylene glycol (Paragraph [0275]). Polyethylene glycol land polyethylene oxide are structurally the same. Therefore polyethylene glycol reads on the claimed polyethylene oxide. However, Di Nicolo is silent on the molecular weight of polyethylene oxide.
Haak teaches a membrane that is formed from a polysulfone polymer and contains a pore forming agent where the pore forming agent is polyethylene glycol (Page 14-16 Lines 34-5). Haak teaches the pore forming agent has a molecular weight of 4,000-8,000 (Page 16 Lines 1-6). This overlaps with the claimed range of 8,000 or more.
It would have been obvious to one of ordinary skill in the art at the time of filing to make the pore forming agent of Di Nicolo have the same molecular weight as the pore forming agent of Haak as this molecular weight has been shown to be suitable for pore forming agents in a similar composition for a similar application.
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 19, Di Nicolo is silent on the coagulant comprising a water gamma valerolactone mixture with a solvent. Di Nicolo teaches that the coagulant is water or a water isopropanol mixture (Paragraph [0346])
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 LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762