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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 3, 7, 11-13, 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by "Performance investigation of surface modified ceramic microfiltration membranes and the effects of ionic strength" to Daches.
Claims 1, 3, 7, 12, 16:
Daches teaches functionalizing a ceramic membrane in situ (i.e., in a reaction zone) using cysteic acid (2.3). The ceramic membrane is AAO having a pore diameter of 0.22 µm (2.2; Table 3). The membrane is connected to the filtration rig and 1M cysteic acid aqueous solution was circulated through the membrane for 12 hours at a temperature of 85°C (2.3). This process does not include any kind of pre-treatment of the membrane, such as a hydration pretreatment or an oxidation pretreatment.
Claim 11:
The membrane is tubular in shape (2.2) and crossflow (abstract).
Claim 13:
The cysteic acid functionalization is a neutral/zwitterionic molecule linked to the ceramic membrane through carboxylic acid groups.
Claim Rejections - 35 USC § 103
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) 2, 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over "Performance investigation of surface modified ceramic microfiltration membranes and the effects of ionic strength" to Daches in view of US 2017/0225128 to Votaw.
Daches is discussed above but does not teach a vacuum or treating one or more different porous membranes. However, Votaw does teach using a vacuum pump to pull a vacuum on the membrane with the hydrophilic solution [0058]. Although Votaw does find this process to be expensive, something does not become patentable simply because it has been described as somewhat inferior. MPEP 2123. Additionally, Votaw teaches the recirculating flowing design for treating plural different membranes [0064]. As the hydrophilic material is deposited onto the membranes, and the concentration of the hydrophilic material in solution decreases, additional hydrophilic material is added to solution [0073]. Votaw does not teach that the particular breakpoint for this addition is 0.5 mol/L. However, Votaw is optimizing for greater functionalization of the membrane [0072] and would have been motivated to keep the concentration of the hydrophilic material in solution high to accomplish this effort in a time efficient manner. Additionally, the concentration of hydrophilic material is an art recognized result effective variable and would have been obvious through routine optimization.
Claim(s) 9, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over "Performance investigation of surface modified ceramic microfiltration membranes and the effects of ionic strength" to Daches.
Daches is discussed above but does not teach an increase of flux by about 20% or a concentration of the cysteic acid in aqueous solution is 0.5-0.7 mol/L. However, Daches does teach that the flux is increased relative to the unmodified membrane (pg. 24, table 5) and that this increase in flux is attributable to the cysteic acid functionalization (pg. 6, abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to tailor the cysteic acid functionalization in order to achieve the desired level of increased flux in an efficient manner.
Daches does not teach a concentration of cysteic acid other than 1M. However, differences in concentration or temperature will generally not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The selection of these parameters would have been obvious for achieving a sufficient level of functionalization in an efficient manner.
Response to Arguments
Applicant’s arguments, filed 1/21/25, with respect to the rejection(s) of claim(s) under 112, 102 have been fully considered and are persuasive in light of co-filed claim amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of further search.
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 ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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, Curtis Mayes can be reached on 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
