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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/28/2025 has been entered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2020-053020, filed on 03/24/2020.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “the water recovery system comprises an iodine removal device which removes iodine components from within the permeate” and “the water usage system comprises an iodine removal device which removes iodine components from within the permeate” in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Regarding Claim 6, Examiner interprets the “iodine removal device” as being one or more of reducing agent addition, activated carbon, an anion exchanger, a scrubber and a degassing membrane, as listed in paragraph 0088 of the specification, or equivalents thereof.
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.
Claims 1, 3-4, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US Patent Application No. 20190344221 A1) hereinafter Smith, in view of Tin et al (Moe Ma Ma Tin, Hiroto Murakami, Osamu Nakagoe, Hideaki Sano, Guobin Zheng, Shuji Tanabe, Enhancement of Chlorine Resistance on RO Membrane by Surface Modification with Epoxy Glue, Chemistry Letters, Volume 47, Issue 5, May 2018, Pages 682–685, https://doi.org/10.1246/cl.180158) hereinafter Tin, in view of Bettinger et al (US Patent No. 4278548 A) hereinafter Bettinger, in view of Frandsen (US Patent Application No. 20100051527 A1) hereinafter Frandsen.
Regarding Claim 1, Smith discloses a reverse osmosis membrane technology which is a water purification technology which will allow the passage of water molecules but not the majority of organics (i.e., a reverse osmosis membrane that separates a water to be treated containing organic matter into a permeate and a concentrate; Paragraph 0005). Smith further teaches a remediation channel (Fig. 1, #101) that feeds a reverse osmosis membrane (Fig. 1, #152), where compounds such as iodine are fed into the remediation line (i.e., an iodine-based oxidizing agent that is added to the water to be treated; Fig. 1, #112 and 140; Paragraphs 0057-0058), where the method passes remediated water (Fig. 9, #926) from the reverse osmosis membrane to an end use (i.e., a supply line which supplied the permeate as a water to be treated in a water usage system; Paragraphs 0090-0094). Smith further discloses a cavitation zone (Fig. 1, #144) with microbubbles generating and collapsing at high pressures and temperatures which breaks chemical bonds of complex organic hydrocarbons and oxidizes long chain chemicals into simpler chemical constituents (Paragraph 0061).
Smith does not teach the reverse osmosis membrane is a polyamide-based reverse osmosis membrane having a surface with a chlorine content, the chlorine content of the surface of the polyamide-based reverse osmosis membrane being at least 0.1 atom%.
However, Tin teaches polyamide based reverse osmosis membranes have been used in water treatment systems due to their high separation performance and that the polyamide membranes have chlorine contents of 1.3% (uncoated) and 0.8% (coated), measured by XPS (i.e., the reverse osmosis membrane consists of a polyamide-based reverse osmosis membrane having a surface with a chlorine content, the chlorine content of the surface of the polyamide-based reverse osmosis membrane being at least 0.1 atom%; Page 684, Table 2).
Tin is analogous to the claimed invention because it pertains to a reverse osmosis membrane with enhanced chlorine resistance (Abstract). It would have been obvious to one of ordinary skill in the art to modify the reverse osmosis membrane as taught by Smith with the membrane as taught by Tin because the membrane would enhance resistance to chlorine.
Smith in view of Tin does not teach wherein the total iodine CT value (mg/L-h) represented by (total iodine within the water to be treated (mg/L)) x (iodine-based oxidizing agent addition time (h)) is at least 0.7 (mg/L-h).
However, Bettinger teaches the addition of iodine (i.e., an iodine-based oxidizing agent) to a process stream before entering a reverse osmosis device for the purpose of inhibiting microorganism growth while also not degrading the structural integrity of the membrane polymer (Col. 1, Lines 65-68 to Col. 2, Lines 1-7). Bettinger further teaches that the iodine is added in quantities to provide 1 to 25 ppm (or 1 to 25 mg/L) in the process stream (Col. 2, Lines 25-45). Additionally, Bettinger teaches that the preferred treatment time for the additive is about 30 minutes to 1 hour in every 24 hours of operation (Col. 2, Lines 56-65), which, when multiplied, demonstrates, 25 ppm (mg/L) X 0.5 hours = 12.5 (mg/L)*hour, at the high end of the range taught by Bettinger. Bettinger does not teach the explicit range of greater than 0.7 mg/L*h of total iodine in the instant claim. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have selected a total iodine concentration that corresponds to the claimed range of total iodine while experimenting with the range taught by Bettinger.
Bettinger is analogous to the claimed invention because it pertains to a process for the control of bacterial growth in polyamide reverse osmosis membranes by treatment with iodide (Abstract). It would have been obvious to one of ordinary skill in the art to modify the oxidizing agent made obvious by Smith in view of Tin to be the iodine concentration as taught by Bettinger because the iodine concentration would inhibit microorganism growth while not degrading the structural integrity of the reverse osmosis membrane.
Smith in view of Tin in view of Bettinger does not explicitly teach that the iodine based oxidizing agent consists of water, iodine, and an iodide. Bettinger teaches that the aqueous iodide solution will form iodine in the presence of chlorine (Col. 2, Lines 8-24), but not the explicit addition of all three components.
However, Frandsen teaches that chemical deactivation of microbes is well known to occur by using a resin to release iodide and iodine with water contact which has the benefit of requiring a relatively short contact time and dwell time in the water that needs to be treated (Paragraph 0003).
Frandsen is analogous to the claimed invention because it pertains to a fluid filtration device with a halogen based antimicrobial source to prevent biofilm formation in the filter (Abstract). It would have been obvious to one of ordinary skill in the art to modify the iodine addition made obvious by Smith in view of Tin in view of Bettinger with the resin that releases iodine and iodide in water because the combination would require a relatively short contact and dwell time to kill the microbes in the water.
Furthermore, the limitation “wherein the first water to be treated contains organic matter with a molecular weight of 500 or lower” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115. See below for alternate grounds of rejection.
Furthermore, the limitation “wherein the total iodine CT value (mg/L-h) represented by (total iodine within the water to be treated (mg/L)) x (iodine-based oxidizing agent addition time (h)) is at least 0.7 (mg/L-h)” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the prior art product structure is capable of performing the intended use as recited, a prima facie case of either anticipation or obviousness has been established because the devices meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II).
Regarding Claim 3, Smith in view of Tin in view of Bettinger in view of Frandsen makes obvious the water recovery system of claim 1. Furthermore, the limitation “wherein an organic matter concentration in the permeate, expressed as TOC, is at least 0.01 mg/L” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115. See below for alternate grounds of rejection.
Regarding Claim 4, Smith in view of Tin in view of Bettinger in view of Frandsen makes obvious the water recovery system of claim 1. Furthermore, the limitation “wherein a total chlorine concentration in the permeate is at least 0.01 mg/L” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115. See below for alternate grounds of rejection.
Regarding Claim 10, Smith in view of Tin in view of Bettinger in view of Frandsen makes obvious the water recovery system of claim 1. Tin further teaches that the polyamide membrane has a chlorine content of 0.8% (coated) and a virgin membrane also with a chlorine content of 0.8% (uncoated), measured by XPS (i.e., wherein the chlorine content of the surface of the polyamide-based reverse osmosis membrane is in the range of from 0.5 to 1.1 atom%; Pages 683-684, Tables 1 and 2).
Regarding Claim 11, Smith discloses a reverse osmosis membrane technology which is a water purification technology which will allow the passage of water molecules but not the majority of organics (i.e., a reverse osmosis membrane that separates a water to be treated containing organic matter into a permeate and a concentrate using the reverse osmosis membrane; Paragraph 0005). Smith further teaches a remediation channel (Fig. 1, #101) that feeds a reverse osmosis membrane (Fig. 1, #152), where compounds such as iodine are fed into the remediation line (i.e., an iodine-based oxidizing agent addition line which adds the iodine-based oxidizing agent to the water to be treated; Fig. 1, #112 and 140; Paragraphs 0057-0058), where the method passes remediated water (Fig. 9, #926) from the reverse osmosis membrane to an end use (i.e., a supply line which supplied the permeate as a water to be treated in a water usage system; Paragraphs 0090-0094). Smith further discloses a cavitation zone (Fig. 1, #144) with microbubbles generating and collapsing at high pressures and temperatures which breaks chemical bonds of complex organic hydrocarbons and oxidizes long chain chemicals into simpler chemical constituents (Paragraph 0061).
Smith does not teach the reverse osmosis membrane consists of a polyamide-based reverse osmosis membrane having a surface with a chlorine content, the chlorine content of the surface of the polyamide-based reverse osmosis membrane being at least 0.1 atom%.
However, Tin teaches polyamide based reverse osmosis membranes have been used in water treatment systems due to their high separation performance and that the polyamide membranes have chlorine contents of 1.3% (uncoated), 0.8% (uncoated), and 0.8% (coated), measured by XPS (i.e., the reverse osmosis membrane consists of a polyamide-based reverse osmosis membrane having a surface with a chlorine content, the chlorine content of the surface of the polyamide-based reverse osmosis membrane being at least 0.1 atom%; Pages 683-684, Tables 1 and 2).
Tin is analogous to the claimed invention because it pertains to a reverse osmosis membrane with enhanced chlorine resistance (Abstract). It would have been obvious to one of ordinary skill in the art to modify the reverse osmosis membrane as taught by Smith with the membrane as taught by Tin because the membrane would enhance resistance to chlorine.
Smith in view of Tin does not teach wherein the total iodine CT value (mg/L-h) represented by (total iodine within the water to be treated (mg/L)) x (iodine-based oxidizing agent addition time (h)) is at least 0.7 (mg/L-h).
However, Bettinger teaches the addition of iodine (i.e., an iodine-based oxidizing agent) to a process stream before entering a reverse osmosis device for the purpose of inhibiting microorganism growth while also not degrading the structural integrity of the membrane polymer (Col. 1, Lines 65-68 to Col. 2, Lines 1-7). Bettinger further teaches that the iodine is added in quantities to provide 1 to 25 ppm (or 1 to 25 mg/L) in the process stream (Col. 2, Lines 25-45). Additionally, Bettinger teaches that the preferred treatment time for the additive is about 30 minutes to 1 hour in every 24 hours of operation (Col. 2, Lines 56-65), which, when multiplied, demonstrates, 25 ppm (mg/L) X 0.5 hours = 12.5 (mg/L)*hour, at the high end of the range taught by Bettinger. Bettinger does not teach the explicit range of greater than 0.7 mg/L*h of total iodine in the instant claim. However, a prima facie case of obviousness exists for claimed ranges that overlap or lie inside ranges disclosed by prior art (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))(See MPEP 2144.05(I)). It would have been obvious to one having ordinary skill in the art to have selected a total iodine concentration that corresponds to the claimed range of total iodine while experimenting with the range taught by Bettinger.
Bettinger is analogous to the claimed invention because it pertains to a process for the control of bacterial growth in polyamide reverse osmosis membranes by treatment with iodide (Abstract). It would have been obvious to one of ordinary skill in the art to modify the oxidizing agent made obvious by Smith in view of Tin to be the iodine concentration as taught by Bettinger because the iodine concentration would inhibit microorganism growth while not degrading the structural integrity of the reverse osmosis membrane.
Smith in view of Tin in view of Bettinger does not explicitly teach that the iodine based oxidizing agent consists of water, iodine, and an iodide. Bettinger teaches that the aqueous iodide solution will form iodine in the presence of chlorine (Col. 2, Lines 8-24), but not the explicit addition of all three components.
However, Frandsen teaches that chemical deactivation of microbes is well known to occur by using a resin to release iodide and iodine with water contact which has the benefit of requiring a relatively short contact time and dwell time in the water that needs to be treated (Paragraph 0003).
Frandsen is analogous to the claimed invention because it pertains to a fluid filtration device with a halogen based antimicrobial source to prevent biofilm formation in the filter (Abstract). It would have been obvious to one of ordinary skill in the art to modify the iodine addition made obvious by Smith in view of Tin in view of Bettinger with the resin that releases iodine and iodide in water because the combination would require a relatively short contact and dwell time to kill the microbes in the water.
Furthermore, the limitation “a first water to be treated contains organic matter with a molecular weight of 500 or lower” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115. See below for alternate grounds of rejection.
Furthermore, the limitation “wherein the total iodine CT value (mg/L-h) represented by (total iodine within the water to be treated (mg/L)) x (iodine-based oxidizing agent addition time (h)) is at least 0.7 (mg/L-h)” is directed toward an expected result from the practice or use of the claimed invention and is therefore not subject to patentability. Where the prior art product structure is capable of performing the intended use as recited, a prima facie case of either anticipation or obviousness has been established because the devices meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II).
Claims 3 and 4 are also rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Tin in view of Bettinger in view of Frandsen as applied to claim 1 above, and further in view of Gorrell et al (US Patent No. 20170166468 A1) hereinafter Gorrell.
Regarding Claim 3, Smith in view of Tin in view of Bettinger in view of Frandsen makes obvious the water recovery system of claim 1. Smith in view of Tin in view of Bettinger in view of Frandsen does not teach wherein an organic matter concentration in the permeate, expressed as TOC, is at least 0.01 mg/L.
However, Gorrell teaches that the level of Total Organic Carbon in the permeate is 15 mg/L (i.e., wherein an organic matter concentration in the permeate, expressed as TOC, is at least 0.01 mg/L; Page 3, Table: INDUSTRIAL UNIFORM WASTEWATER TREATMENT RESULTS; Paragraphs 0038-0040) which employs an oil and grease removal step for the purpose of reducing fouling in the reverse osmosis step (Paragraph 0040).
Gorrell is analogous to the claimed invention because it pertains to processing wastewater to the degree that it can be reused through reverse osmosis without fouling (Abstract). It would have been obvious to one of ordinary skill in the art to modify the reverse osmosis membrane technology made obvious by Smith in view of Tin in view of Bettinger in view of Frandsen with the grease removal step taught by Gorrell because it would reduce the fouling during the reverse osmosis step.
Regarding Claim 4, Smith in view of Tin in view of Bettinger in view of Frandsen makes obvious the water recovery system of claim 1. Smith in view of Tin in view of Bettinger in view of Frandsen does not teach wherein a total chlorine concentration in the permeate is at least 0.01 mg/L.
However, Gorrell teaches that the level of Chloride in the permeate is 4.68 mg/L (i.e., wherein a total chlorine concentration in the permeate is at least 0.01 mg/L; Page 3, Table: INDUSTRIAL UNIFORM WASTEWATER TREATMENT RESULTS; Paragraphs 0038-0040) which employs an oil and grease removal step for the purpose of reducing fouling in the reverse osmosis step (Paragraph 0040).
It would have been obvious to one of ordinary skill in the art to modify the reverse osmosis membrane technology made obvious by Smith in view of Tin in view of Bettinger in view of Frandsen with the grease removal step taught by Gorrell because it would reduce the fouling during the reverse osmosis step.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Tin in view of Bettinger in view of Frandsen as applied to claim 1 above, and further in view of von Medlin (US Patent No. 5269919 A) hereinafter von Medlin.
Regarding Claim 6, Smith in view of Tin in view of Bettinger in view of Frandsen makes obvious the water recovery system of claim 1. Smith in view of Tin in view of Bettinger in view of Frandsen does not teach wherein the water recovery system further comprises a first iodine removal device which removes iodine components from within the permeate, or the water usage system comprises a second iodine removal device which removes iodine components from within the permeate.
However, von Medlin teaches a subchamber (Fig. 2, #104) which has polyamide-based membrane layers wrapped around it which contains granular activated carbon (Fig. 3, #136; Col. 7 Lines 37-68 to Col. 8, Lines 1-5) where the iodides are removed by the granular activated carbon (i.e., wherein the water recovery system further comprises a first iodine removal device which removes iodine components from within the permeate, or the water usage system comprises a second iodine removal device which removes iodine components from within the permeate; Col. 9, Lines 49-66 to Col. 10, Lines 1-2) because excess iodine in water may have harmful effects on a consumer (Col. 2, Lines 31-45).
von Medlin is analogous to the claimed invention because it pertains to a water purifying system for removing organic contaminants (Abstract). It would have been obvious to one of ordinary skill in the art to modify the reverse osmosis membrane technology made obvious by Smith in view of Tin in view of Bettinger in view of Frandsen with the granular activated carbon taught by von Medlin because the activated carbon would remove the iodine and prevent harmful effects on consumers of the permeate water.
Response to Amendment
The amendment filed on 08/08/2025 has been entered.
In view of the amendment to the claims, the amendment of claim 10 and the addition of new claim 11 have been acknowledged.
In view of the amendment to claim 10, the claim objections have been withdrawn.
Response to Arguments
Applicant’s arguments filed on 08/08/2025 have been fully considered.
Applicant argues, regarding claim 1, that the claim recites the limitation “ the reverse osmosis membrane consists of a polyamide-based reverse osmosis membrane having a surface with a chlorine content” and that the use of the phrase “consists of” makes exclusive the polyamide-based reverse osmosis membrane and the surface of the polyamide-based reverse osmosis membrane (Arguments filed 08/08/2025, Page 7 to Page 10).
The Examiner respectfully disagrees.
Regarding Applicant’s arguments for claim 1, there are two points that need to be made.
The coating taught by Tin becomes a surface of the polyamide-based reverse osmosis membrane when applied to the membrane. The coating and the membrane are not considered separate after application of the coating and one would refer to them simply as the polyamide-based reverse osmosis membrane. Once the surface of the membrane has been enhanced for chlorine content, the process of enhancing the surface no longer matters in an apparatus claim. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113(I)).
Tin teaches that the virgin polyamide-based reverse osmosis membranes themselves contain 0.8% and 1.3% chlorine content in tables 1 and 2 of pages 683 and 684. Therefore, the membranes already have the requisite amount of chlorine content even without the coating.
Essentially, the coated membrane can be used for the purpose of enhancing chlorine resistance or the uncoated membranes are used because they are well known commercially available membranes for reverse osmosis (Tin, Page 683, Paragraph 1).
Applicant’s arguments have been fully considered but are not persuasive. All other arguments have been indirectly addressed.
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.
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/A.A.G./Examiner, Art Unit 1777
/Ryan B Huang/Primary Examiner, Art Unit 1777