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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority (SG10202002709R, filed on 24 March 2020) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102 / § 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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by FOKEMA et al (US20180326359A1, hereinafter FOKEMA).
Regarding Claim 1, FOKEMA discloses a semi-permeable membrane for nanofiltration, reverse osmosis, or forward osmosis applications to remove ionic and non-ionic contaminants from water (¶[0003]).
The membrane includes a porous substrate and alternating layers of positively charged material and negatively charged material adhered to the porous substrate, wherein at least two of the layers possess free ion exchange capacity (¶[0019]). Adhesion of a first polyelectrolyte layer to the substrate can be accomplished through a variety of polyelectrolyte-substrate interactions, including electrostatic attraction, hydrophobic interactions, hydrogen bonding, chemical crosslinking, thermal crosslinking, or physical entanglement (i.e., are bonded to one another via non-covalent bonds; ¶[0050]).
FIG. 2 illustrates a membrane comprising alternating positively charged materials and negatively charged materials supported on a porous polymer substrate. A first positively charged material 4′ interacts electrostatically with the substrate and retains uncompensated positive charge. A negatively charged material 6′, in the form of a two-dimensional material layer, is positioned over 4′ and interacts electrostatically while retaining uncompensated negative charge. Additional layers 4″ and 6″ continue the repeating charged-layer architecture, with the two-dimensional material layers functioning as charged components within the membrane (¶[0061]).
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FIG. 2 of FOKEMA
In Example 10, a single-layer graphene oxide film, a PDADMAC film, and another single-layer graphene oxide film are sequentially deposited on a substrate, forming a membrane comprising polyelectrolyte and 2-D layers (i.e., a polyelectrolyte layer between each 2D heterostructure layer of the at least two 2D heterostructure layers; ¶[0086]).
Regarding the limitation “wherein water flux through the membrane is dynamically controlled by changes in internal osmotic pressure within the membrane,” this limitation describes a functional property of the claimed membrane. FOKEMA discloses the same relevant layered membrane structure for reverse osmosis and forward osmosis applications. A functional limitation does not patentably distinguish a claimed structure from the prior art where the prior art structure is capable of performing the claimed function (In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997)).
Regarding Claim 2, FOKEMA discloses the semi-permeable membrane of Claim 1. The limitation “wherein the membrane is formed by self-assembly” is product-by-process language and does not patentably distinguish the claimed membrane from FOKEMA because patentability is based on the structure of the product itself, not the process by which it is made (In re Thorpe, 777 F.2d 695, 697–98 (Fed. Cir. 1985)).
Regarding Claim 3, FOKEMA discloses the non-covalent bonds of Claim 1. FOKEMA discloses that adhesion of a first polyelectrolyte layer to the substrate can be accomplished through a variety of polyelectrolyte-substrate interactions, including electrostatic attraction, hydrophobic interactions, hydrogen bonding, chemical crosslinking, thermal crosslinking, or physical entanglement (¶[0050]).
Regarding Claim 4, FOKEMA discloses the layer-by-layer assembly of Claim 1. FOKEMA discloses a single-layer graphene oxide film, a PDADMAC film, and another single-layer graphene oxide film sequentially deposited on a substrate, forming a membrane comprising polyelectrolyte and 2-D layers (¶[0086]).
Regarding Claim 5, FOKEMA discloses the 2D heterostructure layer of Claim 1. FOKEMA discloses graphene oxide as a negatively charged two-dimensional material (¶[0063]).
Regarding Claim 6, FOKEMA discloses the polyelectrolyte layer of Claim 1. FOKEMA discloses polybases including PDADMAC, PVBTMAC, PAH, and PEI, and polyacids including PSS and PAA (¶¶[0057]–[0058]).
Regarding Claim 7, FOKEMA discloses the average interlayer distance of Claim 1. FOKEMA discloses that the interlamellar spacing of the graphene oxide layer is approximately 1.1 nm in water (¶[0014]), which reads upon the claimed “an average interlayer distance…of 1–3 nm.”
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over FOKEMA.
Regarding Claim 8, FOKEMA makes obvious the average thickness of Claim 1. FOKEMA discloses that each polyelectrolyte or 2-D material layer has a thickness of about 2 to 32 nm (¶[0053]). Using the same configuration recited in Claim 1, comprising a polyelectrolyte layer between two 2D heterostructure layers, the membrane thickness would be about 6 to 96 nm, which overlaps the claimed “average thickness of 50 nm - 100 μm.”
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over FOKEMA as applied to claim 1 above, and further in view of NAIR et al (US20180154316A1).
Regarding Claim 9, FOKEMA discloses the semi-permeable membrane of Claim 1. However, FOKEMA does not explicitly disclose “a freestanding membrane and has an average thickness of 2: 1000 nm.”
NAIR discloses free-standing graphene oxide membranes prepared by vacuum filtration and dried under vacuum to peel a free-standing GO membrane (¶[0126]). The membranes have a thickness greater than about 1 μm, such as 1–15 μm, including a typical value of about 5 μm (¶[0048]). The structure may comprise graphene oxide with a charged polymer such as poly(2-acrylamido-2-methyl-1-propanesulfonic acid) (¶[0078]).
The free-standing membrane configuration disclosed by NAIR has sufficient thickness to maintain self-supporting mechanical integrity, which eliminates the need for a porous substrate to simplify membrane handling and integration. In view of FOKEMA’s graphene oxide/polyelectrolyte layered membrane, a person skilled in the art would have increased the membrane thickness to form a free-standing membrane that could predictably be handled and used without a porous substrate.
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate the free-standing membrane configuration, with a thickness of ≥1000 nm, as disclosed by NAIR, into the semi-permeable membrane disclosed by FOKEMA.
Response to Arguments
Applicant’s arguments, see Remarks filed January 14, 2026, with respect to the rejection of claims 1–10 under 35 U.S.C. § 102 and/or § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection under 35 U.S.C. § 102 for claims 1-7 and 35 U.S.C. § 103 for claims 8-9 made in view of FOKEMA and NAIR.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAK L. CHIU whose telephone number is (703)756-1059. The examiner can normally be reached M-F: 9:00am - 6:00pm (CST).
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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.
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/TAK L. CHIU/Examiner, Art Unit 1777
/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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