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 without traverse of Group I (Claims 1-14) in the reply filed on December 11, 2025 is acknowledged.
Claims 15-22 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 11, 2025.
The elected Claims 1–14 are drawn to a process for making a nanofiltration membrane, and include multiple distinct species of the MOF-related fabrication process. The species differ by the manner in which the MOF is applied relative to the interfacial polymerization steps. A single method cannot simultaneously (i) disperse the MOF in an aqueous piperazine (PIP) phase prior to interfacial polymerization, (ii) form the MOF as an interlayer by filtration through the ultrafiltration membrane prior to interfacial polymerization, and (iii) deposit the MOF while supplying piperazine by capillary action from a source prior to reaction with TMC, because these are mutually exclusive sequences for introducing the MOF and piperazine.
The following species are identified:
Species I (TIP): Claims 8–10, MOF in aqueous phase.
Species II (ILIP): Claim 11, MOF interlayer by filtration.
Species III (CAIP): Claims 12–14, capillary delivery of PIP.
Applicant is required to elect a single species for examination, with the right to traverse (MPEP § 806.04(f)). Pending Applicant’s response and for examination purposes, the Examiner is provisionally examining Claims 1–10, corresponding to Species I (TIP), as recited in Claims 8–10.
Priority
Applicant’s claim for the benefit of a prior-filed application (has PRO 63117484, filed on November 24, 2020; is 371 of PCT/US21/60793, filed on November 24, 2021) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Objections
Claim 4 objected to because of the following informalities:
The phrase “wherein step of applying” should be corrected to read “wherein the step of applying” to correct missing article usage.
Claim 6 objected to because of the following informalities:
The phrase “liner PEI” should be corrected to read “linear PEI” to correct a typographical error.
Claim 7 objected to because of the following informalities:
The phrase “include between PEI in a range of between 10% to 90% and PIP in a range of between 10% to 90%” should be corrected to read “include PEI in a range of between 10% to 90% and PIP in a range of between 10% to 90%” to remove duplicative wording.
Claim 8 objected to because of the following informalities:
The phrase “wherein step of applying” should be corrected to read “wherein the step of applying” to correct missing article usage.
The phrase “dispersing an metal organic framework (MOF)” should be corrected to read “dispersing a metal organic framework (MOF)” to correct article usage.
Claim 11 objected to because of the following informalities:
The phrase “wherein step of applying” should be corrected to read “wherein the step of applying” to correct missing article usage.
The phrase “dispersing an metal organic framework (MOF)” should be corrected to read “dispersing a metal organic framework (MOF)” to correct article usage.
Claim 12 objected to because of the following informalities:
The phrase “wherein step of applying” should be corrected to read “wherein the step of applying” to correct missing article usage.
The phrase “onto source of piperazine (PIP) monomer solution” should be corrected to read “onto a source of piperazine (PIP) monomer solution” to correct missing article usage.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 11 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 11 recites forming an MOF “interlayer” and then “reacting the interlayer with 1,3,5-benzenetricarbonyl trichloride (TMC) so as to form a polyamide nanofiltration membrane layer.” As written, this requires forming the polyamide layer by reaction of the interlayer with TMC alone. The specification’s ILIP embodiment forms the MOF interlayer by filtration and then performs the same interfacial polymerization procedure described elsewhere (¶[0041]), which includes an aqueous amine (piperazine) step followed by the TMC step (¶[0039]). The specification does not describe forming a polyamide nanofiltration membrane layer by reacting the MOF interlayer with TMC without the aqueous amine step. Accordingly, Claim 11 recites subject matter that is not supported and not enabled by the specification.
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.
Claim 7 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 7 recites the limitation “PEI in a range of between 10% to 90% and PIP in a range of between 10% to 90%,” which renders the scope unclear because it does not specify whether the recited percentages are based on weight, molar basis, or another basis. The specification describes the “10% to 90%” values only in the context of a weight based replacement of PIP by PEI in the aqueous phase monomers, namely “a certain percentage (from 10% to 90%) of PIP was replaced by” PEI where “(L/H)x indicates the weight ratio of PEI in the aqueous phase monomers” (¶[0023]). Accordingly, the claim should be amended to specify the basis for the recited “10% to 90%” values, for example as a weight based ratio, consistent with the specification.
Claim Rejections - 35 USC § 102 / § 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 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WU et al. (Thin film composite nanofiltration membranes fabricated from polymeric amine polyethylenimine imbedded with monomeric amine piperazine for enhanced salt separations, 2015, hereinafter WU).
Regarding Claims 1 and 3, WU discloses thin film composite nanofiltration membranes fabricated by interfacial polymerization using polyethylenimine (PEI), piperazine (PIP), and trimesoyl chloride (TMC), where the properties of the membrane are tailored by adjusting the composition of the amine reactants (Abstract, Pg. 168). In this context, nanofiltration lies between ultrafiltration and reverse osmosis, and the pore size of a nanofiltration membrane corresponds to a molecular weight cut off of approximately 300 to 500 g/mol (Introduction, Pg. 168).
In Materials, a polyethersulfone (PES) membrane with a molecular weight cut-off of 10,000 is the substrate (i.e., an ultrafiltration membrane), and reagents include branched polyethylenimine (PEI), piperazine (PIP), trimesoyl chloride (TMC), and hexane (§ 2.1, Pg. 170-171).
In Preparation of TFC membranes with a single polyamide layer, an aqueous phase reactant solution is prepared by dissolving predetermined amounts of polyethylenimine (PEI) and piperazine (PIP) in de-ionized water at a total amine concentration of 3.0 wt%, and an organic phase reactant solution is 0.6 wt% trimesoyl chloride (TMC) in hexane. The polyethersulfone (PES) substrate is mounted in a cap device (i.e., a support module), contacted with the aqueous amine solution, and then contacted with the TMC solution such that the amine and TMC react on the membrane surface by interfacial polymerization, followed by heat treatment and rinsing (§ 2.2.1, Pg. 170-171).
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RUAN et al. (Preparation and characterization of an amphiphilic polyamide nanofiltration membrane with improved antifouling properties by two-step surface modification method, 2018, hereinafter RUAN).
Regarding Claims 1 and 2, RUAN discloses developing an amphiphilic polyamide nanofiltration membrane having hydrophilic domains and low surface energy domains to improve antifouling performance (Abstract, Pg. 13353).
In Materials and chemicals, a flat sheet nonwoven reinforced polysulfone (PSF) support membrane (i.e., an ultrafiltration membrane) has an average molecular weight cut off (MWCO) of 80,000 g mol⁻¹, and the listed reagents include piperazine (PIP), n-hexane, trimesoyl chloride (TMC), and sodium dodecyl sulfate (SDS) (§ 2.1, Pg. 13355).
In Membrane preparation, an amphiphilic nanofiltration membrane is prepared by a two step surface modification of a nascent polyamide nanofiltration membrane, where the nascent polyamide nanofiltration membrane is fabricated by interfacial polymerization of piperazine (PIP) and trimesoyl chloride (TMC) on the polysulfone (PSF) support membrane fixed by a polytetrafluoroethylene (PTFE) framework (i.e., the support module), including soaking the PSF support membrane in a 0.5 wt% PIP aqueous solution containing 0.1 wt% sodium dodecyl sulfate (SDS) for 2 minutes and then contacting the PIP impregnated membrane surface with a 0.1 wt% TMC organic solution in n hexane for 1 minute (§ 2.2, Pg. 13355).
Claims 2, and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over WU as applied to claim 1 above, and further in view of RUAN).
Regarding Claims 2 and 4, WU discloses the nanofiltration membrane fabrication method of Claim 1. WU discloses that the polyethersulfone (PES) substrate is mounted in a cap device (i.e., the support module) and contacted with an aqueous amine solution including polyethylenimine (PEI) and piperazine (PIP) (§ 2.2.1, Pg. 170-171).
However, WU does not explicitly disclose that “the support module comprises polytetrafluoroethylene (PTFE),” nor that the aqueous phase used for interfacial polymerization includes a sodium dodecyl sulfate (SDS) surfactant.
RUAN discloses a membrane preparation for forming a polyamide nanofiltration membrane by interfacial polymerization, where a polysulfone (PSF) support membrane fixed by a polytetrafluoroethylene (PTFE) framework (i.e., the support module) is soaked in a piperazine (PIP) aqueous solution containing sodium dodecyl sulfate (SDS) and then contacted with an organic solution of trimesoyl chloride (TMC) in n-hexane (§ 2.2, Pg. 13355).
The use of polytetrafluoroethylene (PTFE) framework and sodium dodecyl sulfate (SDS) surfactant, as disclosed by RUAN, are conventional fabrication choices in the art, since PTFE’s chemical resistance helps resist swelling and degradation, and SDS lowers surface tension to improve wetting of the membrane surface during interfacial polymerization. In view of WU’s nanofiltration membrane fabrication method, a person skilled in the art would incorporate a polytetrafluoroethylene (PTFE) framework and sodium dodecyl sulfate (SDS) surfactant as routine choices with predictable results.
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate a polytetrafluoroethylene (PTFE) framework and sodium dodecyl sulfate (SDS) surfactant, as disclosed by RUAN, into the nanofiltration membrane fabrication method by WU.
Regarding Claim 5, modified WU makes obvious the nanofiltration membrane fabrication method of Claim 4. WU discloses that the properties of the membrane are tailored by adjusting the composition of the amine reactants (Abstract, Pg. 168), including preparing the aqueous phase using predetermined amounts of polyethylenimine (PEI) and piperazine (PIP) (§ 2.2.1, Pg. 170–171). RUAN discloses including sodium dodecyl sulfate (SDS) in the aqueous piperazine (PIP) solution used for interfacial polymerization (§ 2.2, Pg. 13355). Based on the disclosure, a person skilled in the art would have varied the concentrations of PEI and SDS during the interfacial polymerization as routine recipe adjustments to tune the resulting nanofiltration membrane properties, including pore size, with predictable results.
Regarding Claim 6, modified WU makes obvious the nanofiltration membrane fabrication method of Claim 5. WU discloses branched (i.e., hyperbranched) polyethylenimine (PEI) as a reagent (§ 2.1, Pg. 170–171),
Regarding Claim 7, modified WU makes obvious the nanofiltration membrane fabrication method of Claim 5. WU discloses that the total amine concentration is 3.0 wt% and the amine mixture compositions vary from PEI(2.7 wt%) + PIP(0.3 wt%) through PEI(0.3 wt%) + PIP(2.7 wt%), corresponding to PEI 90% to 10% and PIP 10% to 90% (§ 2.2.1, Pg. 170–171).
Claims 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over RUAN as applied to claim 1 above, and further in view of WU.
Regarding Claims 3 and 4, RUAN discloses the nanofiltration membrane fabrication method of Claim 1. However, RUAN does not explicitly disclose “the ultrafiltration membrane comprises a polyethersulfone (PES) membrane,” or “incorporating a polyethylenimine (PEI) monomer.”
WU discloses thin film composite nanofiltration membranes fabricated by interfacial polymerization using polyethylenimine (PEI), piperazine (PIP), and trimesoyl chloride (TMC) (Abstract, Pg. 168). In Materials, a polyethersulfone (PES) membrane with a molecular weight cut off of 10,000 is the substrate (i.e., an ultrafiltration membrane) (§ 2.1, Pg. 170–171).
In Preparation of TFC membranes with a single polyamide layer, predetermined amounts of polyethylenimine (PEI) and piperazine (PIP) are dissolved in water as the aqueous phase reactant solution, and trimesoyl chloride (TMC) in hexane is used as the organic phase reactant solution, where the PES substrate is mounted and contacted with the aqueous amine solution and then contacted with the TMC solution such that the amine and TMC react on the membrane surface by interfacial polymerization (§ 2.2.1, Pg. 170–171).
A polyethersulfone (PES) support membrane is a known alternative polysulfone family ultrafiltration substrate for interfacial polymerization membranes, since PES is commonly selected to improve aqueous phase wetting and to provide reproducible porous support morphology. Furthermore, polyethylenimine (PEI) provides a high density of amine functionality, and adding PEI to the aqueous amine phase with piperazine (PIP) is a routine recipe adjustment to tune polyamide layer formation and surface chemistry. In view of RUAN, a person skilled in the art would have substituted the polysulfone (PSF) support membrane with a polyethersulfone (PES) support membrane and included polyethylenimine (PEI) with piperazine (PIP) in the aqueous phase during interfacial polymerization to obtain the foregoing benefits.
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to substitute a polyethersulfone (PES) support membrane and to include a polyethylenimine (PEI) monomer in the aqueous phase during interfacial polymerization, as disclosed by WU, in the nanofiltration membrane fabrication method by RUAN.
Regarding Claim 5, modified RUAN makes obvious the nanofiltration membrane fabrication method of Claim 4. RUAN includes sodium dodecyl sulfate (SDS) in the aqueous piperazine (PIP) solution used for interfacial polymerization (§ 2.2, Pg. 13355). WU discloses that the properties of the membrane are tailored by adjusting the composition of the amine reactants (Abstract, Pg. 168), including preparing the aqueous phase using predetermined amounts of polyethylenimine (PEI) and piperazine (PIP) (§ 2.2.1, Pg. 170–171). Based on the disclosure, a person skilled in the art would have varied the concentrations of PEI and SDS during the interfacial polymerization as routine recipe adjustments to tune the resulting nanofiltration membrane properties, including pore size, with predictable results.
Regarding Claim 6, modified RUAN makes obvious the nanofiltration membrane fabrication method of Claim 5. WU discloses branched (i.e., hyperbranched) polyethylenimine (PEI) as a reagent (§ 2.1, Pg. 170–171).
Regarding Claim 7, modified RUAN makes obvious the nanofiltration membrane fabrication method of Claim 5. WU discloses that the total amine concentration is 3.0 wt% and the amine mixture compositions vary from PEI(2.7 wt%) + PIP(0.3 wt%) through PEI(0.3 wt%) + PIP(2.7 wt%), corresponding to PEI 90% to 10% and PIP 10% to 90% (§ 2.2.1, Pg. 170–171).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over WU as applied to claim 1 above, and further in view of GONG et al. (Thin-film nanocomposite nanofiltration membrane with an ultrathin polyamide/UIO-66-NH2 active layer for high-performance desalination, 2020, hereinafter GONG).
Regarding Claim 8, WU discloses the nanofiltration membrane fabrication method of Claim 1. However, WU does not explicitly disclose “dispersing a metal organic framework (MOF) in water,” “adding a piperazine (PIP) monomer in an aqueous-phase solution to the MOF,” or “reacting the MOF and PIP with 1,3,5-benzenetricarbonyl trichloride (TMC) so as to form a polyamide nanofiltration membrane layer.”
GONG discloses that ultrasmall metal organic framework (MOF) nanoparticles, UiO-66-NH₂ nanoparticles, are embedded in an ultrathin polyamide (PA) active layer via an interfacial polymerization reaction, and the nanoparticle loading is controlled by the nanoparticle concentration in the aqueous phase (Abstract; Pg. 117873).
In Fabrication of TFC and TFN membranes, TFN membranes are fabricated via interfacial polymerization of piperazine (PIP) and trimesoyl chloride (TMC), where UiO-66-NH₂ nanoparticles are added in a PIP water solution and sonicated to form a dispersion, and the interfacial polymerization is then carried out using a TMC n-hexane solution (§ 2.4, Pg. 117875).
Advantageously, adding UiO-66-NH₂ nanoparticles into the aqueous phase during interfacial polymerization, as disclosed by GONG, increases the nanoparticle loading in the polyamide active layer and improves desalination performance, including increased water permeability with high Na₂SO₄ rejection (Abstract; Pg. 117873). In view of WU’s nanofiltration membrane fabrication method, a person skilled in the art would incorporate UiO-66-NH₂ nanoparticles dispersed in a piperazine (PIP) aqueous solution prior to contacting with the trimesoyl chloride (TMC) organic phase, to obtain the improved desalination performance, so that the resulting interfacial polymerization forms a polyamide nanofiltration membrane layer embedding the MOF nanoparticles, with predictable results.
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate UiO-66-NH₂ nanoparticles dispersed in a piperazine (PIP) aqueous solution, as disclosed by GONG, into the aqueous phase used for interfacial polymerization in the nanofiltration membrane fabrication method by WU.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over WU in view of GONG as applied to claim 8 above, and further in view of DHAKSHINAMOORTHY et al. (Engineering UiO‐66 Metal Organic Framework for Heterogeneous Catalysis, 2019, hereinafter DHAKSHINAMOORTHY).
Regarding Claim 9, modified WU makes obvious the nanofiltration membrane fabrication method of Claim 8. GONG discloses UiO-66-NH₂ nanoparticles as the metal organic framework (MOF) nanoparticles embedded in the polyamide active layer via an interfacial polymerization reaction (Abstract; Pg. 117873). However, modified WU does not explicitly disclose that “the MOF comprises UiO-66-NCIM.”
UiO-66-NCIM is a modified UiO-66 material, and the selection of a modified UiO-66 variant is supported by the known post-synthetic modification of UiO-66. In this context, DHAKSHINAMOORTHY discloses that UiO-66 can be subjected to a variety of post-synthetic modifications, including covalent modifications at the linker, linker and metal exchange, cluster modifications, surface transformations, metalations, and mixed linker approaches (Pg. 902, Col. 2).
Amino groups on aromatic linkers are preferred substituents for post-functionalization of MOFs by organic reactions, enabling appended moieties to be anchored on the MOF lattice, and one example modifies amino-functionalized UiO-66-NH₂ with thiophene-2-carbaldehyde to form a Schiff base, followed by complexation with CuCl₂ to form UiO-66-NH₂-TC-Cu, while XRD patterns indicate that the crystalline UiO-66-NH₂ structure is not altered after five cycles (Pg. 908, Col. 2).
The same UiO-66-NH₂ post-functionalization strategy is also used with salicylaldehyde to afford a Schiff-base and form Cu²⁺–Schiff base complexes using different Cu²⁺ precursor salts, and powder XRD and FT-IR data of five times recycled UiO-66-SA-CuCl₂ are identical to those of the fresh sample, indicating stability (Pg. 909, Col. 1).
A series of functionalized isostructural UiO-66 MOFs are synthesized bearing different functional groups in the linker, UiO-66-X where X=H, NH₂, NO₂, Br, and Cl (Pg. 911, Col. 2), which demonstrates that UiO-66 is commonly prepared in functionalized variants by varying linker substituents.
Advantageously, due to the high thermal and chemical stability of UiO-66, UiO-66 can be subjected to a variety of post-synthetic modifications, including covalent modifications at the linker, linker and metal exchange, cluster modifications, surface transformations, and metalations (Pg. 902, Col. 2). In view of modified WU, a person skilled in the art would have selected a functionalized UiO-66 variant in place of UiO-66-NH₂ by linking imidazoles with UiO-66-NH₂ via —N═C— bonds to yield UiO-66-NCIM, as a routine modification to tune MOF surface chemistry for incorporation into the polyamide layer during interfacial polymerization, thereby predictably tuning MOF surface chemistry for compatibility with the polyamide matrix.
Therefore, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to incorporate a post-synthetic modification of UiO-66 to provide a functionalized UiO-66 variant, as disclosed by DHAKSHINAMOORTHY, into the nanofiltration membrane fabrication method by modified WU.
Regarding Claim 10, modified WU makes obvious the nanofiltration membrane fabrication method of Claim 9. GONG discloses that UiO-66-NH₂ nanoparticles are added in a piperazine (PIP) water solution and sonicated to form a dispersion (§ 2.4, Pg. 117875).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAK L. CHIU whose telephone number is (703)756-1059. The examiner can normally be reached M-F: 9:00am - 6:00pm (CST).
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/TAK L. CHIU/
Examiner, Art Unit 1777
/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777