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
Claims 4, 11 and 15-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/29/25.
Species elected:
A: coating
B: APTAC
C: ammonium hydroxide.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 26 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 26 recites removing at least 90% of the chloride ions from “deionized” water. Deionized means there are no ions in water. Therefore, the claim is indefinite.
Claim Rejections - 35 USC § 102/103
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.
Claim(s) 1-3, 5-9, 12-14 and 25-27 are rejected under 35 U.S.C. 102(a1) as anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Jaber et al (US 2020/0206691), with evidence from Zhang, et al, cited in rejection 2 or Scheurman III (US 6,059,974).
Jaber teaches, in examples 2 and 4, the claimed membrane. Applicant discloses that Jaber membrane is the same applicant used: spec. at [0061]. The resulting membrane has a positive charge from the ammonium group of APTAC. This is the same as in claims 8 and 14, the ultimate/narrowest membrane structure claimed in this series of claims. In [0161], Jaber also teaches several quaternary ammonium cations associated with hydroxyl cations, which anticipates the claims.
Claim 1 also recites ionizable nitrogen functional groups as associated with hydroxyl groups. The specification discloses in example 1 [0075] that the membrane is subjected to “1 % NH4OH 30-minute soak, 16-hour 50°C DIW soak, followed by 1 % NH4OH 30 minute flush, then a 30 minute DIW flush.” While Jaber does not tach converting the associated anions to -OH, this is well-known in the art for regenerating the anion exchange resins and membranes for the purpose of exchanging anions, and is not a patentable invention. (Evidence, Scheurman III). Including the reagents like ammonium hydroxide to convert the membrane into -OH form is not patentable in the product claims.
Also see further evidence that the membrane is converted to -OH form as shown in rejection 2, for the implied purpose of making it -OH conducting membrane. Therefore, it would have been obvious to one of ordinary skill in the art to convert the membrane to -OH for use as anion exchange membrane or as a -OH conducting membrane.
Additionally, converting an ion exchange resin from one form to another, like a cation of its association with one form of anion to another, is well-known and is commonly used (like regenerating). Therefore, any associated hydroxyl ions would have been obvious. Also see [0161] (explanation below.)
Claim 9: Jaber clause 39 at [0161]. This also would provide the hydroxide association. Claims 12 and 13 only recite process steps.
Claims 2, 25 and 3 recite only the capability of the membrane or its intended use, which they are inherently capable.
Claim 26: removing chloride ions from water is an inherent property of the membrane unless otherwise shown.
Arguments are not persuasive. Claims are directed to a porous membrane. Ammonium hydroxide, etc., are reagents to make the membrane having the -OH association, which are not patentable in the product claims.
Claim(s) 1-3, 5-8, 12-13 and 25-27 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhang et al, Alkaline anion-exchange polymer membrane with grid–plug microstructure for hydrogen fuel cell application, Journal of Power Sources 196 (2011) 5494–5498
Zhang teaches a porous anion exchange membrane having a base polymer membrane onto which is coated APTAC (by soaking a in solution as disclosed in spec) and crosslinked using N,N_-methylenebisacrylamide. The chloride form is converted to hydroxyl form by treating with dilute KOH. Applicant discloses in [0047] that the “surface” include inner pore surfaces. Use of ammonium hydroxides as in claims to convert to -OH form is only a process detail. This anticipates the claims. Regarding the pore size range in claim 2 of 1 nm to 10 microns, this is a very wide range. The actual pore size required can be optimized based on the intended use. Removing Cl- from water is an inherent property of the membrane, unless otherwise shown.
Arguments are not persuasive. The argument that Zeng membrane is not porous is not supported by evidence. The abstract explicitly teaches a porous membrane, filled with the quaternary ammonium compound, same as claimed. Nowhere in this reference does it teach that the resultant membrane in Zeng is not porous. The evidence suggests the contrary: Table 1 shows optimizing of the PTAC loading in the membrane and the result that increasing the concentration increases the filling extent. Therefore, even at maximum filling, there would be open pores in the polysulfone membrane. This is further conformed from the teaching Zeng, “the strong PSU grid guarantees negligible dimensional expansion.”
Applicant’s claims do not exclude the “pore-plug” structure of Zhang. In fact, applicant uses a similar method, as taught by Zhang, of soaking the porous substrate in the APTAC solution containing the crosslinker, etc., and the having the membrane sandwiched between PE sheets to expose to UV radiation.
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 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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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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