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 .
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.
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).
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, and wherein the protective coating layer is formed of a protective coating solution comprising polyvinyl alcohol, glutaraldehyde and 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 polyvinyl alcohol crosslinked with glutaraldehyde (i.e., the protective coating layer comprises a cross-linked product of polyvinyl alcohol and glutaraldehyde; p0035). In provided embodiments, LEE ‘058 further discloses the protective layer composition comprises, e.g., 2 wt% polyvinyl alcohol and 0.1 wt% glutaraldehyde (and 0.3 wt% polyethylene oxide) (p0076); while LEE ‘058 is deficient in explicitly disclosing a solvent, such a disclosure of weight percentages of constituents implies the presence of a solvent (e.g., water). Thus, LEE ‘058 inherently discloses a solvent of a protective layer composition (i.e., wherein the protective coating layer is formed of a protective coating solution comprising… a solvent). 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.
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.
Response to Arguments/Amendments
Applicant’s reply filed 07 January 2026 has been fully considered. Claims 1, 4, 5, and 6 have been amended; Claim 2 has been canceled; and Claims 7-10 were previously withdrawn.
Regarding the rejections of Claims 1-6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, Applicant’s amendments to Claims 1, 4, 5, and 6 have been fully considered and are persuasive; these rejections have been withdrawn.
Regarding the rejections of Claims 1-6 under 35 U.S.C. 103 as being unpatentable over LEE (US 2021/0291119 A1) in view of LEE et al. (US 2019/0291058 A1), Applicant’s amendments to Claim 1 have been fully considered and are persuasive; these rejections have been withdrawn. However, upon further consideration and search, new grounds of rejection have been made for Claims 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).
Regarding the rejections of Claims 1-6 under 35 U.S.C. 103 as being unpatentable over LEE (US 2021/0291119 A1) in view of LEE et al. (US 2019/0291058 A1), Applicant makes the following arguments:
“[A] prima facie case of obviousness has not been established because, inter alia, the recited combination of features is neither taught nor suggested by Lee '119 and/or Lee '058” (pg. 8, bottom).
“The Examiner alleges antimicrobial layer of Lee '119 to be analogous to the recited the fouling resistant layer. Applicant respectfully disagrees” (pg. 9, middle).
Applicant further argues that the antimicrobial layer of LEE ‘119 “is significantly different to the fouling resistant layer as recited in the present claims. As described in Lee '119, the primary function of the antimicrobial layer is to improve antimicrobial activity against microorganisms. This is in contrast with the fouling resistant layer of the instant claims, which primarily functions to enhance the bonding strength between the polyamide layer and the protective layer” (pg. 9, bottom);
and further that “As described in the application as filed, the hydroxy group and the alkoxy group may serve to cross-link between the fouling resistant layer and the protective coating layer, thereby improving the durability of a reverse osmosis membrane” (pg. 10, top);
and even further that “As disclosed in paragraph [0006], the instant reverse osmosis membrane as recited can prevent the deterioration of physical properties due to chlorine exposure, and additional factors which may hinder the bonding between the polyamine layer and a protective coating layer. Thus, a POSITA having read Lee '119 and understanding the chlorine element as present in the antimicrobial layer of Lee '119, is provided no reason to specifically modify the cited reference to arrive at the present claims, at least insofar as Lee '119 fails to appreciate the fouling resistant layer to function in enhancing the bonding strength between a polyamide layer and a protective layer” (pg. 10, middle).
The Examiner respectfully disagrees.
Applicant’s arguments have been considered but are not persuasive because they are directed to grounds of rejection that have been withdrawn. Therefore, the arguments are not commensurate in scope with the presently pending claims. However, the provided arguments will be addressed as follows.
Applicant’s argument 2(a) is directed toward limitations not claimed. The claimed invention does not indicate any “primary function” as argued. 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).
Applicant’s argument 2(b) is directed toward an intended use or an intended result from the preparation of the claimed membrane. The claimed invention is to an apparatus/product, not a method; arguments directed toward an intended purpose of the cross-linking between a hydroxy group and alkoxy group has no bearing on the patentability of the membrane itself. The claims simply require “a cross-linked product” and does not specify which functional groups are crosslinked. Even if arguendo the claims are amended to specify which groups are crosslinked, the disclosure by the prior art of polyvinyl alcohol and glutaraldehyde inherently implies that the prior art teaches the same groups are crosslinked.
Applicant’s argument 2(c) is directed toward an intended use or intended purpose of the claimed membrane. As explained earlier, such intended use limitations have no bearing on the patentability of the membrane itself. Even further, Applicant’s argue the presence of chlorine in the prior art; there is no such exclusionary limitation precluding the use of chlorine in the claims. 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).
The Examiner acknowledges the additional statements provided by Applicant on pg. 11-13.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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/Ryan B Huang/Primary Examiner, Art Unit 1777