DETAILED ACTION
This action is in response to an application filed with the US on 11/16/2022 and having an Effective Filing Date of 05/20/2020, in which claims 1-21 are pending, claims 8-10 and 19-21 have been withdrawn as directed to a non-elected invention and claims 1-7 and 11-18 are ready for examination.
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 Group I, claims 1-7 and 11-18 in the reply filed on 03/04/2026 is acknowledged. The traversal is on the ground(s) that Takamoto does not disclose cellulose nanofibers and/or microfibers that are crosslinked as required by the instant claims because the instant disclosure at P8/L20-23 defines “crosslinked nanofibers and/or microfibers” to mean the nanofibers and/or microfibers are connected together by covalent chemical bonds. This is not found persuasive because while the Examiner agrees that Takamoto does not disclose cellulose nanofibers and/or microfibers that are covalently crosslinked as required by the claims, the technical feature shared by Groups I, II and II (i.e. the composite membrane of claim 1) is disclosed by Takamoto in view of Garaj and Schneiderman, and also by Garaj in view of Zhang and Schneiderman, as detailed in the rejections of claim 1 below; and thus this technical feature is not a special technical feature as it does not make a contribution over the prior art. Therefore, no single general inventive concept exists and restriction is appropriate.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 13 FEBRUARY 2023, 20 DECEMBER 2024, 25 FEBRUARY 2025, 02 JULY 2025, 26 NOVEMBER 2025 are in compliance with the provisions of 37 CFR 1.97 and have been considered. An initialed copy of Form 1449 is enclosed herewith.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4, 7, and 14-17 are rejected under 35 U.S.C. 112(b) 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 4 recites the limitation “the ionized groups”. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation “charged groups and/or groups which become charged in the presence of water”; this conflicts with the same limitation of claim 1. It is suggested that it be corrected to “second charged groups and/or groups which become charged in the presence of water”.
Claims 14 and 16 recite the limitation “the groups”. There is insufficient antecedent basis for this limitation in the claim. It is suggested that it be corrected to “the charged groups and/or groups which become charged in the presence of water”.
Claim 14 recites the limitations “the epoxide group”, “the hydroxyl group”, “the carbonyl group”, “the carboxyl group”, “the sulfonate group -SO₃”, “the carboxyalkyl group”, “the aminodiacetate group”, “the phosphonate group”; “the amidoxine group”, “the aminophosphonate group”, “the thiol group”. There is insufficient antecedent basis for these limitations in the claim. It is suggested that each “the” be changed to “a” or “an”.
Claim 16 recites the limitation “the quaternary ammonium group”, “the tertiary ammonium group”, “the dimethylhydroxyethylammonium group”. There is insufficient antecedent basis for these limitations in the claim. It is suggested that each “the” be changed to “a” or “an”.
Claims 15 and 17 are rejected for depending form an indefinite claim.
Claim Interpretation
“crosslinked nanofibers and/or microfibers” is interpreted to mean the nanofibers and/or microfibers are connected together by covalent chemical bonds, as defined in the specification P8/L20-23.
Regarding claim 13, 15 and 17; the limitations of these claims are directed to further limitations of individual items chosen from a list of items recited in the alternative and/or Markush groups, however each of these claims 13, 15 and 17 do not positively recite that the further limited individual item is the one selected from the list/group. Thus the limitations of claims 13, 15 and 17 are seen as further limiting items which are not required, and are not further addressed with art if another item from the list/group is selected. To be considered the limitations of claims 13, 15 and 17 would need to first positively recite what the selection is before reciting further limitations directed to the selection. As an example, to positively claim the molybdenum disulfide in claim 13 it is should be amended to “wherein the lamellar nanoparticles are the lamellar nanoparticles of dichalcogenide of a transition metal which are lamellar nanoparticles of molybdenum disulfide".
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 1-7 and 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2016137455 A (hereinafter “Takamoto”, from the IDS dated 02/13/2023) in view of US 2017/0144107 Al (hereinafter “Garaj”) and US 2019/0062458 A1 (hereinafter “Schneiderman”).
Regarding Claim 1 Takamoto discloses a composite ion exchange membrane having excellent selective permeability of monovalent ions, (i.e. an ion-selective conduction composite membrane) having a base ion exchange membrane 1 (i.e. an inner layer) 1 disposed between two surface layers 2 (i.e. outer layers) on either side of the inner layer, [0006]-[0007],
wherein the thickness of each surface layer may be from 1-50 micron [0035], and the thickness of the base ion exchange membrane may be from 10-500 micron [0037], therefore the composite membrane may be from 12-600 micron, overlapping the range claimed,
wherein the outer layers are each formed of a first material comprising a network of cellulose nanofibers [0019], and
the inner layer is formed of a second material having charged groups and/or groups which become charged in the presence of water [0036], [0083].
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Takamoto does not disclose (1) the nanofibers and/or microfibers are crosslinked, (2) the inner layer is formed of a second material comprising nanoparticles functionalized at the surface by charged groups and/or groups which become charged in the presence of water and having pores with a diameter of between 1 and 100 nm, (3) the out layer has pores with a diameter of between 10 nm and 10 μm.
However, with regard to crosslinking the cellulose nanofibers, Schneiderman discloses porous polymeric cellulose prepared via crosslinking cellulose nanofibers, and which can be incorporated into membranes for filtration, i.e. cellulose filtration paper (Abstract, [0039], [0056], [0066], Example 1), wherein the crosslinking provides benefits such as increased stiffness, reduced shredding, improved permeability when wet, durability, reusability and reduced swelling [0056].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the composite of Takamoto by covalently crosslinking the cellulose nanofibers because as disclosed by Schneiderman the covalent crosslinking provides benefits such as increased stiffness, reduced shredding, improved permeability when wet, durability, reusability and reduced swelling.
Regarding (2) an inner layer of functionalized nanoparticles, Garaj discloses a graphene-based membrane which may be an ion exchange membrane [0060] and which may comprise a supporting substate [00079], having a thickness of between 10 nm to 10 micrometer [0128]; comprising a layer formed of graphene nanoparticles which may be functionalized at the surface by charged groups and/or groups which become charged in the presence of water [0060], [0063], [0066]-[0068] and having pores with a diameter of between 0.5 and 2 nm, [0072].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the composite of Takamoto by substituting for the base ion exchange membrane the functionalized graphene ion exchange membrane of Garaj because this involves the simple substitution of known ion exchange membranes, where Takamoto discloses the base ion exchange membrane is not particularly limited [0036], to obtain the predictable result of forming a successful composite ion exchange membrane.
With regard to (3) the pore diameters of the outer layers, Garaj notes that additional layers used with the graphene ion exchange membrane should have a pore size that does not affect liquid flux through the graphene-based membrane [0079], and thus pore size of the outer layers is 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 liquid flux through the graphene-based membrane. See MPEP § 2144.05 (B).
Regarding Claim 2 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 1, wherein the thickness of each of the outer layers between 1 µm and 50 µm (Takamoto [0035]), and the thickness of the inner layer (GO membrane) is between 10 nm and 10 µm (Garaj [0128]).
Regarding Claim 3 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 1, wherein the nanoparticles are graphene, supra (i.e. lamellar nanoparticles).
Regarding Claim 4 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 1, wherein the ionized groups, the charged groups and/or groups which become charged in the presence of water have a negative electric charge Garaj [0058]-[0059], [0066]-[0067], [0085], [0111].
Regarding Claim 5 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 1, wherein the charged groups and/or groups which become charged in the presence of water have a positive electric charge Garaj [0058]-[0059], [0066]-[0067], [0085], [0111].
Regarding Claim 6 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 1, wherein the crosslinked nanofibers and/or microfibers are nanofibers and/or microfibers of cellulose, supra, i.e. an organic material.
Regarding Claim 7 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 1, but does not disclose wherein the crosslinked nanofibers and/or the microfibers carry at their surface charged groups and/or groups which become charged in the presence of water, said groups having a charge of the same sign as that of the charged groups and/or groups which become charged in the presence of water of the functionalized nanoparticles of the inner layer.
Further, Schneiderman discloses the cellulose nanofiber compositions may be further modified to add ion exchange functional groups to the fiber surfaces (i.e. positively or negatively charged groups) [0056], [0059], [0064], Examples 2-3.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the composite of Garaj in view of Zhang and Schneiderman by functionalizing the cellulose fibers with ion exchanges groups as disclosed by Schneiderman in order to increase ion selectivity/ion exchange capacity of the ion exchange membrane.
While the prior art does not disclose specifically using ion exchange groups of the same change, one of skill in the art would find it obvious to try using charges which are either positive or negative, because this involves choosing between a finite number of options (i.e. the charge must either be the same or opposite).
Regarding Claim 11 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 3, wherein the lamellar nanoparticles are graphene, supra (i.e. lamellar nanoparticles of carbon).
Regarding Claim 12 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 3, wherein the lamellar nanoparticles are lamellar nanoparticles of graphene oxide Garaj [0063].
Regarding Claim 13 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 11, wherein the lamellar nanoparticles are of carbon and thus the limitations of claim 13 do not apply.
Regarding Claim 14 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 4, wherein the negatively charged groups are selected from hydroxyl group, carboxyl group, sulfonate group -SO₃, Garaj [0085].
Regarding Claim 15 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 14, wherein the group is selected from hydroxyl group, carboxyl group, sulfonate group -SO₃, and thus the limitations of claim 15 do not apply.
Regarding Claim 16 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 5, wherein the positive groups may be trialkylammonium groups; Garaj [0085], i.e. where a trialkyl ammonium group attached to the graphene would inherently have a Nitrogen with one bond to the graphene and three bonds to the three alkyl groups, i.e. that as claimed for a quaternary ammonium group -N(R)₃⁺ with R being a alkyl. While it is not disclosed that R is specifically a C1-C4 alkyl, it would have been obvious to try at least the most simple alkyl group i.e. methyl, for the alkyl groups, which is thus a C1 alkyl.
Regarding Claim 17 Takamoto in view of Garaj and Schneiderman discloses the membrane according to Claim 16, wherein the quaternary ammonium group is selected and thus the limitations of claim 17 do not apply.
Regarding Claim 18 Takamoto in view of Garaj and Schneiderman discloses the membrane according to claim 6, wherein the crosslinked nanofibers are nanofibers of cellulose, supra.
Claims 1, 2-7 and 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0144107 Al (hereinafter “Garaj”) in view of US 2021/0140096 A1 (hereinafter “Zhang”) and US 2019/0062458 A1 (hereinafter “Schneiderman”).
Regarding Claim 1 Garaj discloses a graphene-based membrane which may be an ion exchange membrane [0060] and which may comprise a supporting substate [00079] (i.e. an ion-selective conduction composite membrane), having a thickness of between 10 nm to 10 micrometers [0128];
comprising a layer (considered the claimed inner layer) formed of graphene nanoparticles which may be functionalized at the surface by charged groups and/or groups which become charged in the presence of water [0060], [0063], [0066]-[0068] and having pores with a diameter of between 0.5 and 2 nm, [0072].
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Garaj does not disclose said at least one inner layer, disposed between two outer layers, the outer layers are each formed of a first material comprising a network of crosslinked nanofibers and/or microfibers and pores with a diameter of between 10 nm and 10 µm
However, with regard to two outer layers, Zhang discloses a composite filtration membrane having a graphene membrane 1 which is disposed between two outer supporting layers 2, where the supporting layers function as filtration aiding layers and may be cellulose filter paper; Fig. 1, [0028], [0059], [0060].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the composite of Garaj by including two outer layers of cellulose filter paper on both sides of the graphene membrane as disclosed by Zhang because this is known means to provide support and additional filter aiding layers to a graphene membrane to enhanced filtration and support.
Garaj in view of Zhang thus discloses a functionalized graphene inner layer, disposed between two outer layers of cellulose filter paper; but does not disclose said the outer layers are each formed of a first material comprising a network of crosslinked nanofibers and/or microfibers and pores with a diameter of between 10 nm and 10 µm
However, with regard to crosslinked nanofibers and/or microfibers, Schneiderman discloses porous polymeric cellulose prepared via crosslinking cellulose nanofibers, and which can be incorporated into membranes for filtration, i.e. cellulose filtration paper (Abstract, [0039], [0056], [0066], Example 1), wherein the membrane comprising the porous crosslinked cellulose nanofibers can have higher binding capacity and can operate at higher flow rates than existing membranes [0022].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the composite of Garaj in view of Zhang by substituting for the cellulose filter paper outer layers the crosslinked cellulose nanofiber filter paper as disclosed by Schneiderman because the involves the simple substitution of known cellulose filter papers which can be incorporated into membranes to obtain the predictable result of forming a successful membrane and because the porous crosslinked cellulose nanofiber membranes can have higher binding capacity and can operate at higher flow rates than existing membranes.
With regard to the pore diameters of the outer layers, Garaj notes that additional layers used with the graphene ion exchange membrane should have a pore size that does not affect liquid flux through the graphene-based membrane [0079], and thus pore size of the outer layers is 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 liquid flux through the graphene-based membrane. See MPEP § 2144.05 (B).
Regarding Claim 3 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 1, wherein the nanoparticles are graphene, supra (i.e. lamellar nanoparticles).
Regarding Claim 4 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 1, wherein the ionized groups, the charged groups and/or groups which become charged in the presence of water have a negative electric charge Garaj [0058]-[0059], [0066]-[0067], [0085], [0111].
Regarding Claim 5 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 1, wherein the charged groups and/or groups which become charged in the presence of water have a positive electric charge Garaj [0058]-[0059], [0066]-[0067], [0085], [0111].
Regarding Claim 6 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 1, wherein the crosslinked nanofibers and/or microfibers are nanofibers and/or microfibers of cellulose, supra, i.e. an organic material.
Regarding Claim 7 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 1, but does not disclose wherein the crosslinked nanofibers and/or the microfibers carry at their surface charged groups and/or groups which become charged in the presence of water, said groups having a charge of the same sign as that of the charged groups and/or groups which become charged in the presence of water of the functionalized nanoparticles of the inner layer.
Further, Schneiderman discloses the cellulose nanofiber compositions may be further modified to add ion exchange functional groups to the fiber surfaces (i.e. positively or negatively charged groups) [0056], [0059], [0064], Examples 2-3.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the composite of Garaj in view of Zhang and Schneiderman by functionalizing the cellulose fibers with ion exchanges groups as disclosed by Schneiderman in order to increase ion selectivity/ion exchange capacity of the ion exchange membrane.
While the prior art does not disclose specifically using ion exchange groups of the same change, one of skill in the art would find it obvious to try using charges which are either positive or negative, because this involves choosing between a finite number of options (i.e. the charge must either be the same or opposite).
Regarding Claim 11 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 3, wherein the lamellar nanoparticles are graphene, supra (i.e. lamellar nanoparticles of carbon).
Regarding Claim 12 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 3, wherein the lamellar nanoparticles are lamellar nanoparticles of graphene oxide Garaj [0063].
Regarding Claim 13 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 11, wherein the lamellar nanoparticles are of carbon and thus the limitations of claim 13 do not apply.
Regarding Claim 14 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 4, wherein the negatively charged groups are selected from hydroxyl group, carboxyl group, sulfonate group -SO₃, Garaj [0085].
Regarding Claim 15 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 14, wherein the group is selected from hydroxyl group, carboxyl group, sulfonate group -SO₃, and thus the limitations of claim 13 do not apply.
Regarding Claim 16 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 5, wherein the positive groups may be trialkylammonium groups; Garaj [0085], i.e. where a trialkyl ammonium group attached to the graphene would inherently have a Nitrogen with one bond to the graphene and three bonds to the three alkyl groups, i.e. that as claimed for a quaternary ammonium group -N(R)₃⁺ with R being a alkyl. While it is not disclosed that R is specifically a C1-C4 alkyl, it would have been obvious to try at least the most simple alkyl group i.e. methyl, for the alkyl groups, which is thus a C1 alkyl.
Regarding Claim 17 Garaj in view of Zhang and Schneiderman discloses the membrane according to Claim 16, wherein the quaternary ammonium group is selected and thus the limitations of claim 17 do not apply.
Regarding Claim 18 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 6, wherein the crosslinked nanofibers are nanofibers of cellulose, supra.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Garaj in view of Zhang and Schneiderman further in view of Takamoto.
Regarding Claim 2 Garaj in view of Zhang and Schneiderman discloses the membrane according to claim 1, wherein the thickness of the inner layer (GO membrane) is between 10 nm and 10 µm (Garaj [0128]) but neither Zhang nor Schneiderman disclose a specific thickness of the outer layers is between 2 µm and 45 µm.
However, Takamoto discloses a similar composite ion exchange membrane having a base ion exchange membrane 1 (i.e. an inner layer) 1 disposed between two surface layers 2 (i.e. outer layers) of cellulose nanofibers on either side of the inner layer, [0006]-[0007], [0019], wherein the thickness of each surface layer may be from 1-50 micron [0035], and the thickness of the base ion exchange membrane may be from 10-500 micron [0037].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the composite of Garaj in view of Zhang and Schneiderman by forming the outer nanofiber cellulose layer to have a thickness of from 1-50 microns as disclosed by Schneiderman because this involves the simple substitution of known cellulose nanofiber outer layer thickness used in similar membrane having an inner ion exchange membrane disposed between two outer nanofiber layers to obtain the predictable result of forming a successful membrane.
Conclusion
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773
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