DETAILED ACTION
This action is in response to the amendments and remarks filed 02/03/2026, in which claims 1-10, 12-14, 16-18, 20 and 23 are pending, claims 7-10 and 20 are withdrawn as directed to a Non-Elected Intention and claims 1-6, 12-14, 16-18 and 23 are ready for examination.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 1-6, 12-14, 18 and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 107899429 A (hereinafter “Xu”).
Regarding Claim 1 Xu discloses a hollow fiber thin-layer composite nanofiltration membrane, (i.e. a nanofilm) comprising: a reaction product of polyphenol monomers and polyamine monomers, where the polyphenol monomer may be tannic acid and the polyamine monomers may be polyethyleneimine, polyallylamine, chitosan, diethylenetriamine, triethylenetetramine, triethylamine, piperazine, m-phenylenediamine, p-phenylenediamine (i.e. a natural building block type A including at least two functional groups and a natural building block type B including at least three functional groups, wherein at least one of the functional groups of the natural building block type A is an amine group and at least one of the functional groups of the natural building block type B is a catechol group); and which are reacted via a crosslinker which may be 1-ethyl-(3-dimethylaminopropyl)-carbodiimide/N-hydroxysuccinimide (i.e. EDC);
wherein the natural building block type A and the natural building block type B react (Abstract, claims) to form a branched polymer network including solvent-resistant bonds (i.e. inherently due to EDC crosslinking), see MPE 2112.
Regarding Claim 2 Xu discloses the nanofilm according to claim 1, wherein each of the at least two functional groups of the natural building block type A is an amine group; this is inherent to the polyamines polyethyleneimine, polyallylamine, chitosan, diethylenetriamine, triethylenetetramine, triethylamine, piperazine, m-phenylenediamine, p-phenylenediamine, Claim 2.
Regarding Claim 3 Xu discloses the nanofilm of claim 1, wherein the at least three functional groups of the natural building block type B include a catechol group and a pyrogallol group; this is inherent to the polyphenol tannic acid; claim 2.
Regarding Claim 4 Xu discloses the nanofilm of claim 1, wherein the at least two functional groups of the natural building block type A (polyamines) are different from the at least three functional groups of the natural building block type B (i.e. tannic acid), Claim 2.
Regarding Claim 5 Xu discloses the nanofilm of claim 1, wherein the solvent-resistant bonds link at least a portion of the natural building block type A to at least a portion of the natural building block type B, i.e. inherently due to the crosslinking by EDC.
Regarding Claim 6 Xu discloses the nanofilm of claim 1, wherein the solvent-resistant bonds include an imine bond; i.e. because this would be inherent to tannic acid crosslinked with an amine (i.e. of the polyamines) by EDC, because EDC is known to cause the coupling on carboxyl groups (i.e. on tannic acid) and amines (i.e. on the polyamines).
Regarding Claim 12 Xu discloses the nanofilm according to claim 1, wherein the amine group and the catechol group react to form an imine bond of the formula (3); i.e. because this would be inherent to tannic acid crosslinked with an amine (i.e. of the polyamines) by EDC, because EDC is known to cause the coupling on carboxyl groups (i.e. on tannic acid) and amines (i.e. on the polyamines).
Regarding Claim 13 Xu discloses the nanofilm of claim 1, wherein at least one of the functional groups of the natural building block type B is a pyrogallol group, i.e. this is inherent o tannic acid, Claim 2.
Regarding Claim 14 Xu discloses the nanofilm according to claim 13, wherein the amine group and the pyrogallol group react to form an imine bond and a carbon-nitrogen single bond of the formulas (4) and (5); i.e. because this would be inherent to tannic acid crosslinked with an amine (i.e. of the polyamines) by EDC, because EDC is known to cause the coupling on carboxyl groups (i.e. on tannic acid) and amines (i.e. on the polyamines).
Regarding Claim 18 Xu discloses the nanofilm of claim 1 which is used in a thin film composite membrane for nanofiltration (Abstract, Title). With regard to the filter being for organic solvent nanofiltration; 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 Xu would be capable of the noted functional limitation(s), i.e. even though the specific functions are not disclosed.
Regarding Claim 23 Xu discloses the nanofilm of claim 1, wherein the natural building block type Bis tannic acid, Claim 2.
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 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over CN 107899429 A (hereinafter “Xu”).
Regarding Claim 16 Xu discloses the nanofilm of claim 1, but is silent to the thickness of the nanofilm, and thus does not disclose a thickness of the nanofilm ranges from about 1 nm to about 2000 nm.
However, membrane layer thickness is well known to effect properties of the membrane formed including at least permeability and pressure drop, and is thus a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
Regarding Claim 17 Xu discloses the nanofilm of claim 1, but is silent to the molecular weight cut off of the nanofilm, and thus does not disclose wherein a molecular weight cutoff of the nanofilm ranges from about 100 g mol 1 to about 2000 g mol 1.
However, membrane molecular weight cut off is well known to effect properties of the membrane formed including effecting what materials are retained by the membrane, and is thus a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
Response to Amendment
The previous 35 U.S.C. 112(b) rejections of claims 21-22 are withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
In response to Applicants’ argument that Xu does not discloses the claimed membrane because Xu requires a third crosslinker component for the formation of the final nanofiltration membrane; the Examiner disagrees. Applicants argue that because Xu uses EDC to crosslink the polyphenol monomer to the polyamine monomer that it does not disclose the claimed “wherein the natural building block type A and the natural building block type B react to form a branched polymer network including solvent-resistant bonds”, however EDC is known to be a coupling agent which facilitates the bonding link between two reagents, i.e. it allows the two reagents to react with each other, where specially it is noted that EDC is not included in the final material and only functions to form a coupling of the functionalities present in the reagents, where a coupler is differentiated from a linker that is included in the final material; see US20150122800A1 (hereinafter “Gallastegui”) [0038]-[0039]. Thus the polyphenol monomer and the polyamine monomer are seen to react directly. And as noted in the rejection this will inherently form “a branched polymer network including solvent-resistant bonds”, i.e. because the monomers include monomers which have more than two reactive functional groups which react and will thus be branched, and because they form covalent bonds which are seen to be broadly solvent resistant.
In response to Applicants’ argument directed to claim 2, that Xu does not disclose that “each of the at least two functional groups of the natural building block type A is an amine group” because chitosan additionally has hydroxyl groups; the Examiner disagrees. First, Chitosan is not the only option for natural building block type A, which comprises other monomers which only have amine functional groups (i.e. polyethyleneimine, polyallylamine, etc.). Further, the claim limitations “each of the at least two functional groups of the natural building block type A is an amine group” does not require that all functional groups on the natural building block type A are amine groups, it is only seen to limit a portion of the functional groups. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., all functional groups on the natural building block type A are amines) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicants’ argument directed to claim 3, that Xu does not disclose that “wherein the at least three functional groups of the natural building block type B include a catechol group and a pyrogallol group” because “in Xu's system, the catechol and pyrogallol groups are present but do not participate in the reaction forming the crosslinked network via EDC”; the Examiner disagrees. Claim 1 recites “wherein the natural building block type A and the natural building block type B react to form a branched polymer network including solvent-resistant bonds”, but nowhere in claim 1 or 3 is it recited that any specific functional groups react. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the catechol and pyrogallol groups to be functional groups that participate in the reaction between building blocks A and B”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicants’ argument directed to claims 16 and 17, that it would not have been obvious to optimize the nanofilm thickness and/or molecular weight cutoff to arrive at the claimed values; the Examiner disagrees. The Examiner first notes that Applicants’ do not appear to have argued that it is not obvious to optimize the thickness and molecular weight cutoff ranges to the values claimed, but rather that it would not have been routine experimentation. To that end Applicants’ have argued that the chemistry involved in Xu is different than that of the instant disclosure; however it is not clear how this effects the obviousness of optimizing the ranges or how one of skill in the art at the time of the invention would have achieved this through routine experimentation, and is thus not persuasive. Applicants have further argued that “the Examiner has not explained how a person of ordinary skill would achieve films in the claimed range using Xu’s teachings”, however the claims are not to a method, and thus the Examiner does not have the burden to explain exactly how experimentally the ranges would be achieved. One of skill in the art would find it enabled to adjust or optimize the thickness and molecular weight cutoffs by various means, both including coating solution chemistry, through multiple depositions of films, and through post modification with other materials or chemical functionalizations, at least. Applicant’s further argue that Xu teaches the thickness is “a byproduct of an oxidation/deposition process that is notoriously hard to control” and that “its film thickness is limited by the film-forming process itself”, however this is not disclosed by Xu, Applicants’ point to a warning about not using high temperatures and not to increase the proportion of polyphenol monomers too much, but Xu does not relate these to thickness. Applicants’ further argue that the MWCO cannot be optimized in Xu’s “pile of aggregates”, but do not cite any factual support for this argument. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
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, Benjamin L Lebron can be reached at 571-272-0475. 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.
/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
Prosecution Insights