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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 13 May 2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/AU2021/050635, filed 06/18/2021) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority (AU2020902089, filed 06/23/2020) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Applicant’s amendments filed 13 May 2026 have been entered. Claims 1, 6, 14, 29, 31, and 33 have been amended; Claims 14, 15, 17, 26, 27, 29, 31, and 33 have been withdrawn; and Claims 4, 5, 7, 10, 11, 16, 18-25, 28, 30, 32, and 34 have been canceled.
Regarding the rejections of Claim(s) 1-3, 6, 8, 9, 12, and 13 under 35 U.S.C. 103 as being unpatentable over ICHINOSE et al. (JP 5880813 B2) in view of KIM et al. (Polymer Journal, Vol. 25, No. 12, pg. 1295-1302, 19 May 1993) and HAN (US 2019/0344222 A1), Applicant’s amendments are sufficient; these rejections have been withdrawn. However, upon further consideration and search, new grounds of rejection have been made under 35 U.S.C. 103 as being unpatentable over ICHINOSE et al. (JP 5880813 B2) in view of HUANG et al. (CN 106268355 A) and HAN (US 2019/0344222 A1).
Please note the added 35 USC 112(d) rejection of Claim 6.
Response to Arguments
Applicant’s arguments filed 13 May 2026 have been fully considered but are not persuasive.
Regarding the rejections of Claim(s) 1-3, 6, 8, 9, 12, and 13 under 35 U.S.C. 103 as being unpatentable over ICHINOSE et al. (JP 5880813 B2) in view of KIM et al. (Polymer Journal, Vol. 25, No. 12, pg. 1295-1302, 19 May 1993) and HAN (US 2019/0344222 A1), Applicant’s arguments (pg. 7-9) have been considered. Applicant states that as-amended, Claim 1 further defines the crosslinking agent and that the cited art KIM fails to disclose or suggest this presently claimed parameter (pg. 8, par. 2). Further, Applicant states that “Kim characterizes crosslinking in terms of a ‘degree of crosslinking’”, i.e., such a disclosure “reflects the extent of reaction within the polymer network and is not a compositional parameter of the membrane” (pg. 8, par. 2). Thus, Applicant argues, KIM fails to disclose or suggest a crosslinker content weight percentage as claimed.
Even further, Applicant states that KIM is limited to glutaraldehyde-crosslinked membranes whereas the present claim excludes glutaraldehyde (pg. 8, par. 4), i.e., Applicant argues one of ordinary skill would not seek KIM to remedy the deficiencies of ICHINOSE and HAN.
Finally, Applicant states that KIM “does not teach that increasing crosslinking improves flux” and that instead, KIM discloses as crosslinking degree increases, flux decreases; therefore, Applicant argues, one of ordinary skill would not be motivated to “adopt the presently claimed crosslinker content in expectation of improved membrane performance” (pg. 9, par. 1). For these reasons, Applicant argues the cited prior art do note teach or suggest amended Claim 1 (pg. 9, par. 2).
The Examiner agrees with Applicant’s analysis of KIM. As such, the previously pending prior art rejection of Claim 1 has been withdrawn. As noted, new grounds of rejection have been made without the previously cited KIM prior art. Thus, Applicant’s arguments have been fully considered but are not persuasive because they are directed to grounds of rejection that have been withdrawn and are directed to a prior art not cited in the pending rejections. Therefore, the arguments are not commensurate in scope with the presently pending claims.
Applicant’s rejoinder request (Remarks filed 13 May 2026, pg. 9, par. 5) of Claims 14, 15, 17, 26, 27, 29, 31, and 33 has been considered; however, Claim 1 has not been found to be allowable. As such, Claims 14, 15, 17, 26, 27, 29, 31, and 33 are not eligible for rejoinder and remain withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 6, the claim recites only that “the crosslinking agent is a sulphonated crosslinking agent”. This renders the claim of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Claim 1 introduced the limitation that the crosslinking agent is selected from the group consisting of sulfosuccinic acid, 4-sulfophthalic acid, 4,6-disulphoisophthalic acid, maleic acid, oxalic acid, fumaric acid, toluene di-isocyanate, citric acid, and combinations thereof, i.e., species limitations that are more specific than the broadly claimed “sulphonated crosslinking agent”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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 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.
Claim(s) 1-3, 6, 8, 9, 12, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over ICHINOSE et al. (JP 5880813 B2; machine translation provided and referenced herein) in view of HUANG et al. (CN 106268355 A; machine translation provided and referenced herein) and further in view of HAN (US 2019/0344222 A1).
Regarding Claim 1, ICHINOSE discloses a composite filtration filter 11 (FIG. 1A, B) comprising a polyvinyl alcohol (PVA) porous membrane 21 on a supporting porous filter 31 (i.e., [a] membrane comprising a… hydrophilic layer supported on a porous… substrate; pg. 4, paragraph “(7) In the step…”; pg. 5, paragraph “Embodiment of the Present Invention”). It is noted that PVA is a highly hydrophilic material; hence the limitation requiring a hydrophilic layer is inherently disclosed. The PVA porous membrane 21 has thickness 10 nm to 500 nm (pg. 4, paragraph “The PVA porous film…”), which overlaps with the claimed range of between about 100 nm and 700 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05) and comprises pores having diameters 1 nm to 10 nm (i.e., a nanoporous…layer), which reads on the claimed range of a pore size of the nanoporous hydrophilic layer is less than about 10 nm (pg. 4, paragraph “The PVA porous film…”). ICHINOSE further discloses the supporting porous filter 31 comprises polytetrafluoroethylene, which is inherently hydrophobic (i.e., a porous hydrophobic substrate; pg. 4, paragraph “(7) In the step…”).
The PVA porous membrane 21 is further crosslinked by a crosslinking agent (i.e., the nanoporous hydrophilic layer comprises… a crosslinking agent; pg. 4, paragraph “(7) In the step…”; pg. 6, paragraph “PVA may be crosslinked…”). However, ICHINOSE fails to disclose any final content of crosslinking agent in the formed PVA membrane, i.e., the prior art is deficient in explicitly disclosing a content of the crosslinking agent is between about 5% and 20% by weight of the nanoporous hydrophilic layer or wherein the crosslinking agent is selected from the group consisting of sulfosuccinic acid, 4-sulfophthalic acid, 4,6-disulphoisophthalic acid, maleic acid, oxalic acid, fumaric acid, toluene di-isocyanate, citric acid, and combinations thereof.
HUANG discloses an asymmetric hydrophilic/hydrophobic polymer separation membrane for water filtration (abstract; pg. 2, par. 3). One side of the membrane is hydrophobic and the other side is hydrophilic (pg. 4, par. 1). The hydrophilic side of the membrane is prepared by modifying the base membrane with a hydrophilic modifier, including maleic acid (i.e., wherein the crosslinking agent is selected from the group consisting of… maleic acid; pg. 4, par. 9), at a concentration from 2 to 35 weight % (pg. 4, par. 6), which overlaps with the claimed range of a content of the crosslinking agent is between about 5% and 20% by weight of the nanoporous hydrophilic layer and therefore, establishes a case of prima facie obviousness. Advantageously, the increase in hydrophilic character of the base membrane, e.g., comprising polyvinyl alcohol (pg. 4, par. 2), enhances the water permeability of the overall polymer separation membrane (pg. 5, par. 1). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to further modify the PVA porous membrane of ICHINOSE with maleic acid at a concentration of 5-20 weight % as suggested by HUANG.
Modified ICHINOSE is deficient in explicitly disclosing the nanoporous hydrophilic layer further comprises a nanofiller selected from the group consisting of MXene, a carbon-based nanomaterial, a MOF, and a silica nanoparticle.
HAN discloses composite nanofiltration membrane (abstract; p0003) comprising a functional layer made of MXene (p0006) with a supporting layer under the functional layer (p0005). The use of MXene as part of the functional layer advantageously provides improved long-term stability (p0003), excellent separation performance, thermal resistance, and chemical resistance (p0016). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to include MXene as a nanofiller as taught by HAN in the PVA functional layer of the composite filtration filter taught by ICHINOSE.
Regarding Claim 2, modified ICHINOSE makes obvious the membrane of Claim 1. As noted in the examples, ICHINOSE discloses formation of the PVA filter from a 1 mg/mL PVA aqueous solution (pg. 10, middle) indicating that the amount of hydrophilic polymer in the formed PVA filter is primarily the polymer (see also Table 1 on pg. 30). ICHINOSE further discloses the use of crosslinkers (e.g., 2 wt.% glutaraldehyde; pg. 14) in preparing the PVA filter. Thus, the claimed range of wherein the content of the hydrophilic polymer in the nanoporous hydrophilic layer is between about 50% and 99% by weight of the nanoporous hydrophilic layer is read upon by the prior art.
Regarding Claim 3, modified ICHINOSE makes obvious the membrane of Claim 2. ICHINOSE discloses polyvinyl alcohol (i.e., wherein the hydrophilic polymer is polyvinyl alcohol; abstract).
Regarding Claim 6, modified ICHINOSE makes obvious the membrane of Claim 1. ICHINOSE further discloses the use of glutaraldehyde crosslinker (i.e., wherein the crosslinking agent is… glutaraldehyde; pg. 5, middle).
Regarding Claim 8, modified ICHINOSE makes obvious the membrane of Claim 1. HAN further discloses MXene is Ti3C2Tx where T is –F or –OH (p0002); such a disclosure reads on the claimed formula for MXene.
Regarding Claim 9, modified ICHINOSE makes obvious the membrane of Claim 1. HAN further discloses an MXene concentration of 1-5 wt.% (p0013), which reads on the claimed range of between 0.1% and 30% by weight of the nanoporous hydrophilic layer.
Regarding Claim 12, modified ICHINOSE makes obvious the membrane of Claim 1. ICHINOSE further discloses the supporting porous filter 31 comprises polytetrafluoroethylene (i.e., wherein the porous hydrophobic substrate comprises a polymeric material selected from… polytetrafluoroethylene; pg. 4, bottom).
Regarding Claim 13, modified ICHINOSE makes obvious the membrane of Claim 1. ICHINOSE further discloses the porous material used for filter 31 comprises pore diameters ranging from “several nm to several µm” (pg. 5, paragraph “A wide range of…”), which overlaps with the claimed range of between 0.1 µm and 5 µm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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, Vickie Kim can be reached at (571)272-0579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
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