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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12 May 2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/KR2021/014310, filed 10/15/2021) 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 (KR10-2020-0172191, filed 12/10/2020) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendments
Applicant’s amendments filed 12 May 2026 have been entered.
Claim 1 has been amended; Claim 2 was previously canceled; Claims 7-10 were previously withdrawn. Claims 1 and 3-6 are pending.
Applicant’s amendments with respect to the rejections of Claim(s) 1 and 3-6 under 35 U.S.C. 103 as being unpatentable over LEE (US 2021/0291119 A1) in view of KIM et al. (KR 20100003799 A) and further in view of LEE et al. (US 2019/0291058 A1) are sufficient; these rejections have been withdrawn. However, upon further consideration and search, new grounds of rejection have been made for Claim(s) 1 and 3-6 under 35 U.S.C. 103 as being unpatentable over LEE (US 2021/0291119 A1) in view of KIM et al. (KR 20100003799 A) and further in view of LEE et al. (US 2019/0291058 A1) and STREET et al. (US 2004/0009361 A1).
Response to Arguments
Applicant’s arguments filed 12 May 2026 have been fully considered.
Regarding the arguments in the section “35 U.S.C. § 103” (pg. 5-11):
Applicant argues the prior art fails to teach or make obvious the as-amended Claim 1 requiring a coating solution comprising a PVA:GA weight ratio of 1:0.3 to 1:1.5, a combined PVA/GA 0.05 to 2.0 wt%, and 0.005 to 0.2 wt% toluene sulfonic acid (pg. 6, par. 2) arguing that LEE ‘058 teaches a different composition for forming this protective layer, i.e., specifically requiring an additional “Chemical Formula 1”, e.g., PEO (pg. 6, par. 3-4).
Applicant further argues POSITA would not have a reasonable expectation of success in combining the teachings of all cited prior art primarily because LEE ‘058 requires Chemical Formula 1, otherwise the protective layer cannot be adequately formed (pg. 7, par. 2 to pg. 8, par. 2). Applicant reasons that the currently claimed PA RO membrane does not require a Chemical Formula 1 and is still able to form a protective layer (pg. 8, par. 5).
Applicant further cites LEE ‘058 as teaching examples utilizing glutaraldehyde at weight concentrations outside the claimed range (e.g., Comparative Example 6) resulting in “a significant decrease in flow rate” and contrasts this prior art example with Examples 1, 4, and 5 as showing significantly different results while using GA at the claimed weight ratio (see Table 2 on pg. 9).
Finally, Applicant argues Claims 3-6 depend from Claim 1 and incorporate all limitations of Claim 1; therefore, for the same reasons Claims 3-6 are nonobvious (pg. 10-11).
The Examiner respectfully disagrees.
Regarding (1), while LEE ‘058 discloses examples where the PVA:GA ratio is outside the claimed ratio, such examples are merely preferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Even though LEE ‘058 provides examples not claimed, LEE ‘058 does disclose weight ranges of PVA and GA that broadly overlap with the claimed broad range of 1:0.3 to 1:1.5. Absent evidence of unexpected results or criticality to such a claimed range, it would be obvious to one of ordinary skill in the art to achieve such a claimed ratio given the prior art disclosure.
Regarding (2) and (1) (regarding Chemical Formula 1), it is noted that even though the prior art requires Chemical Formula 1 as one of its components in the protective layer, the protective layer of the prior art also requires PVA and GA as claimed by the current invention. There is nothing in the claims that excludes other components in the protective coating layer. 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).
Regarding (3), Applicant presents Table 2 comparing the disclosed Examples 1, 4, and 5 utilizing PVA:GA weight ratios within the claimed range with the prior art Comparative Examples 5 and 6 at weight ratios outside the claimed range. Applicant further highlights “Flow rate reduction after contamination (%)” showing Examples 1, 4, and 5 having levels of 15, 15.9, and 13.60 compared with 16.30 and 12.50 for the Comparative Examples 5 and 6 of the prior art. First, none of these comparisons shows “unexpected” results or significantly different results. Comparative Examples 5 and 6 extend the trends shown by Examples 1, 4, and 5, i.e., a higher ratio yields a higher flow rate reduction ratio whereas a lower ratio yields a lower flow rate reduction ratio. In other words, the results shown by Comparative Examples 5 and 6 are wholly expected. Second, Applicant is comparing prior art ratios that are outside the claimed range—such a comparison cannot be relied upon to argue unexpected results.
Regarding (4), as-amended Claim 1 is rejected under 35 USC 103; therefore, Applicant’s arguments for Claim 3-6 are moot.
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 and 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over LEE (US 2021/0291119 A1) in view of KIM et al. (KR 20100003799 A; machine translation provided and referenced herein) and further in view of LEE et al. (US 2019/0291058 A1) and STREET et al. (US 2004/0009361 A1).
Regarding Claim 1, LEE ‘119 discloses a reverse osmosis membrane comprising a porous support, a porous polymer support layer, a polyamide layer, and an antimicrobial layer (p0009, p0027). Briefly, a porous support layer is reacted with a polymer solution on an upper surface to form a porous polymer support layer (i.e., a porous support; a polymer support layer which is formed on at least one surface of the porous support; p0027). A polyamide layer is formed on an upper surface of the polymer support layer (i.e., a polyamide layer which is formed on the polymer support layer; p0027). Finally, the polyamide layer is treated with an antimicrobial layer-forming solution to form an antimicrobial layer on a surface of the polyamide layer (i.e., a fouling resistant layer… on the polyamide layer; p0027); the antimicrobial layer-forming solution further contains an antimicrobial agent (i.e., formed of an antifouling coating agent; p0045) and is bonded to the polyamide layer via covalent bonding to residual functional groups of acid halide compounds on the polyamide layer (p0048); said acid halide compounds include multifunctional acid halides (i.e., wherein the fouling resistant layer comprises a reaction product obtained by reacting… a polyfunctional acid halide compound; p0044). LEE ‘119 further discloses the antimicrobial layer-forming solution contains a certain weight percentage of the antimicrobial agent (p0052) which implies at least a solvent (i.e., wherein the antifouling coating agent comprises… a solvent).
LEE ‘119 is deficient in disclosing the antifouling coating agent comprises 0.001 to 10 wt% of a primary amine compound comprising one or more selected from ethanol amine and aminoacetaldehyde dimethyl acetal.
KIM discloses a composite polyamide reverse osmosis membrane comprising a microporous support, a polyamide layer on the microporous support, and a hydrophilic coating on the polyamide layer (pg. 4, par. 4 beginning with “Furthermore, another object…”). The hydrophilic coating is formed by covalently bonding a hydrophilic compound to the residual acid chloride groups of the polyamide layer (i.e., wherein the fouling resistant layer comprises a reaction product obtained by reacting… a polyfunctional acid halide compound; pg. 7, par. 3); hydrophilic compounds are taught to include ammonia derivatives reaction products (pg. 7, par. 4), which include primary amines including ethanolamine and aminoacetaldehyde dimethyl acetal (i.e., a primary amine compound comprising one or more selected from ethanol amine and aminoacetaldehyde dimethyl acetal; pg. 8, pars. 2, 4, and 5). KIM further discloses the hydrophilic compound is present in aqueous solution of 0.001 to 8% by weight, which reads upon the claimed range of 0.001 to 10 wt% (pg. 9, last paragraph). Advantageously, the hydrophilic coating on the polyamide layer provides excellent antifouling properties to the composite polyamide reverse osmosis membrane even after prolonged use (pg. 11, par. 2-3). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide an antifouling coating agent comprising 0.001 to 10 wt% of a primary amine compound comprising one or more selected from ethanol amine and aminoacetaldehyde dimethyl acetal as taught by KIM as a substitute for the antimicrobial layer taught by LEE ‘119 because the substitution of one known element for another would have yielded predictable results (MPEP §2143.01 B).
Modified LEE ‘119 is deficient in disclosing a protective coating layer which is formed on the fouling resistant layer, wherein the protective coating layer comprises a cross-linked product of polyvinyl alcohol and glutaraldehyde in a weight ratio of 1:0.3 to 1:1.5, and wherein the protective coating layer is formed of a protective coating solution comprising 0.05 to 2.0 wt% of a combined amount of polyvinyl alcohol and glutaraldehyde… and the remainder of a solvent.
LEE ‘058 discloses forming a protective layer on a polyamide reverse osmosis membrane (i.e., a protective coating layer; p0012); said protective layer comprises a hydrophilic polymer and a crosslinking agent (p0031). The hydrophilic polymer is polyvinyl alcohol (p0036), and the crosslinking agent is glutaraldehyde (p0037). LEE ‘058 further discloses the hydrophilic polymer content ranges from 1% to 4% by weight based on the total weight of the composition for forming the protective layer (p0043) and the crosslinking agent content ranges from 0.1% to 2% (p0044), i.e., a polyvinyl alcohol to glutaraldehyde weight ratio ranging from 1:0.1 to 1:2, which overlaps with the claimed range of polyvinyl alcohol and glutaraldehyde are cross-linked in a weight ratio of 1:0.3 to 1:1.5 and the claimed range of 0.05 to 2.0 wt% of a combined amount of polyvinyl alcohol and glutaraldehyde and therefore, establishes cases of prima facie obviousness (MPEP 2144.05). LEE ‘058 further discloses the protective layer further includes water (i.e., protective coating solution comprising… remainder of a solvent; p0038). Advantageously, a crosslinked protective coating layer as disclosed provides increased mechanical strength to a polyamide membrane due to the crosslinked coating (p0017). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide a protective layer as taught by LEE ‘058 on the fouling resistant layer of the reverse osmosis membrane disclosed by LEE ‘119.
Modified LEE ‘119 is deficient in disclosing the protective coating layer is formed of a protective coating solution comprising 0.005 to 0.2 wt% of toluene sulfonic acid and the remainder of a solvent.
STREET discloses a composition suitable for use as a coating on a polymeric film (abstract). The composition includes a cross-linking agent (p0009) and further includes a cross-linking catalyst, including ammonium sulphate and para-toluene sulphonic acid (p0026). Exemplary amounts of catalyst (e.g., ammonium sulphate) utilized by STREET include 0.084 wt% and 0.058 wt% (see Formulations A-E in examples), which reads on the claimed range of 0.005 to 0.2 wt% of toluene sulfonic acid. Advantageously, the use of a catalyst facilitates the cross-linking of the cross-linking agent (p0026). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize toluene sulfonic acid as a cross-linking catalyst as taught by STREET for the membrane made obvious by modified LEE ‘119.
Regarding Claim 3, modified LEE ‘119 makes obvious the polyamide reverse osmosis membrane of Claim 1. LEE ‘119 further discloses the polyamide layer is formed by contacting the polymer support layer with a first solution comprising a multifunctional amine compound and treating with a second solution including a multifunctional acid halide (p0027).
Regarding Claims 4-6, modified LEE ‘119 makes obvious the polyamide reverse osmosis membrane of claim 1. The instant limitations directed toward a flow rate of 18.0 gfd or more of the membrane under specific conditions (Claim 4), a ratio of reduced flow rate being less than 20% (Claim 5), and a salt removal reduction rate being less than 13.0% being measured by a specific formula (Claim 6) are directed toward materials and articles worked upon by the claimed membrane and manners or methods by which the claimed membrane is used. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935); MPEP §2115). The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); MPEP §2115). None of the instantly cited limitations affect the structure or functionality of the claimed membrane of Claim 1 and are considered to have no patentable weight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
KOSTROMINE et al. (US 2021/0095064 A1) discloses the use of PVA with GA at ratios of 70:30 to 90:10 (p0237-0238).
SHARMA et al. (US 5,594,061 A) discloses the use of an acidic crosslinking catalyst, i.e., para-toluene sulfonic acid in preparing a coating composition (c7/4-31).
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. 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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