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 with traverse of claims 1-5 in the reply filed on 4/30/25 is acknowledged. The traversal is on the ground(s) that applicants would like to rejoin the withdrawn claims, which is possible when the elected claims become in condition for allowance.
Regarding the question of restricting system claims which depend from claim 4, which depend from claim 1 in turn, such restriction is proper because the elected claims do not have the details of other dependent claims from group I.
The requirement is still deemed proper and is therefore made FINAL.
Update: Applicant requested in the interview posted 7/24/25 that withdrawn claims 6 and 8 be rejoined for furthering the prosecution, which examiner agreed as a courtesy, as an intended use of the membrane claimed. However, this does not mean that the details of the ZLD system is open for examination, because that details need be separately examined, and remain withdrawn from consideration.
Claim Rejections - 35 USC § 103
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, 5 and 10 are rejected under 35 U.S.C. 103 as unpatentable over Lee et al (US 2019/0291058) in view of Nishiyama et al (US 2017/0007969) and WO 2015/065498.
Lee teaches a reverse osmosis membrane having PVA coating [0062] that is made into a spiral wound module: abstract, [0070], examples. It also teaches using AFM to determine the elastic modulus in [0063].
Applicant’s elastic modulus is measured on the surface in wet condition. The elastic modulus in Lee determined by AFM is 2-10 GPa, which is greater than the claimed range of 250-500 MPa [0068,] but measured on dry membrane, which was dried at 90C. The claimed range is only for the surface. Lee teaches the elastic modulus as for the “reverse osmosis membrane” but the actual method as described in [0067] indicates that it is, in fact, measured on the surface. Moreover, the “reverse osmosis membrane” in this context may only be limited to the polyamide skin layer plus the PVA coating, not the entire membrane including the microporous support and the fabric (see [0005].) The thickness of the PVA layer in Lee is 100-300 nm [0062,] whereas applicant’s is 10-1000 nm. Considering all these factors, and the fact that the membrane is made the same way or similarly, the wet surface elastic modulus would have been inherently the same.
Regarding the tricot fabric as permeate spacer, use of tricot fabric as permeate spacer is well-known in the art, and is not a patentable invention. See Nishiyama and the WO reference for details. It would have been obvious to one of ordinary skill in the art to use the relevant literature such as Nishiyama and WO for information that is not forthcoming in Lee. WO teaches course and wale count range from tricot material – see working examples.
The “zero liquid discharge water treatment system” is considered only as an intended use for the spiral wound membrane. The ZLD systems using RO membranes is known in the art according to applicant’s own admission at page 1, section 2 of the specification.
Claim(s) 1, 5 and 10 are rejected under 35 U.S.C. 103 as unpatentable over Hachisuka et al (US 6,413,425), in view of WO 2015/065498 and Nishiyama et al (US 2017/0007969.)
Hachisuka teaches PVA coated reverse osmosis membranes. See abstract, col. 8 lines 15-30 and examples. Average thickness of the PVA coating is about 100 nm (examples) but teaches the thickness to be in a similar range like applicant discloses (1-1000 nm – see column 7, lines 1-7 and col. 3, lines 36-42. The thickness of the polyamide skin layer is also in a similar range as applicant discloses, i.e., 1 to 1000 nm. See col. 7 lines 1-7.The surface elastic modulus, while Hachisuka does not teach, would be an inherent property of the coating, and would be the same as that of the applicant’s since applicant has the same coating.
Reverse osmosis membranes in spiral wound form are well-known. Spiral wound membranes are well-known to have tricot permeate spacer and is not a patentable invention. See for evidence Nishiyama, which teaches reverse osmosis membranes with PVA coating [0034] and made into spiral wound, and using tricot fabric (examples). Nishiyama does not teach the details of the tricot fabric, but such information is available from the WO reference which teaches optimizing the course and wale count in tricot fabric for permeate spacer – see working examples.
The “zero liquid discharge water treatment system” is considered only as an intended use for the spiral wound membrane. The ZLD systems using RO membranes is known in the art according to applicant’s own admission at page 1, section 2 of the specification.
Response to Arguments
Applicant's arguments filed 11/20/25 have been fully considered but they are not persuasive. For the most part, the arguments only support the rejection. It is also observed that there is no evidence that the wet elastic modulus of Lee or Hachisuka would be outside of the range claimed. The office cannot make an informed decision towards patentability without such evidence. As of now, the only position the office can take is that the elastic modulus test is done in wet condition, which resulted in lower values, aa supported by applicant’s arguments. Therefore, if the same test conducted on the Lee and Hachisuka membranes, one would expect the same results.
Conclusion
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.
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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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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777