DETAILED ACTION
This action is in response to the amendments and remarks filed 01/19/2026, in which claims 1-5, 7, 11-14, 16 and 20 have been amended and claims 1-20 are pending and ready for examination.
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 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.
Claims 1-2 and 4-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0126210 Al (hereinafter “Qahtan”) in view of US 20170056834 A1 (hereinafter “Bhushan”), US 2007/0141114A1 (hereinafter “Muisener”), US 2012/0004388 Al (hereinafter “Hanson”) and Huang, H., Liu, M., Li, Y. et al. Polyphenylene sulfide microfiber membrane with superhydrophobicity and superoleophilicity for oil/water separation. J Mater Sci 53, 13243–13252 (2018) (hereinafter “Huang”).
Regarding Claims 1 and 11 Qahtan discloses a water-permeable superhydrophilic and superoleophobic multilayer coated substrate (which is a filtration membrane for oil-water separation; Abstract, [0006]) comprising:
(a) a porous substrate (porous metal screen 12);
(b or d) nanoparticles (which may be silica) mixed with adhesive (i.e. the claimed primer or tie layer)
(e) a fluorosurfactant layer (i.e. an oleophobic coating layer) applied to at least a portion of the nanoparticle/adhesive layer; [0075], [0079]-[0081], [0083], [0086], Figs. 1-2;
wherein the oleophobic coating layer may comprise Capstone FS-50 ( [0091] i.e. comprises a fluoropolymer having reactive functional groups, and as used by Applicants instant sec. [0031]).
Qahtan does not disclose (1) the primer layer comprises silica that is functionalized with an organometallic compound, (c) a superhydrophilic coating layer applied to the primer layer (b), wherein the superhydrophilic layer comprises a superhydrophilic polymer or silicate; or (2) the porous substrate comprises polyester or polyphenylene sulfide (PPS) and having hydroxyl functional groups on a surface thereof; or (3) wherein each layer of the coated substrate is covalently bonded to adjacent layers and the porous substrate is covalently bonded to the primer layer.
However, (1) with regard to a superhydrophilic coating layer, Bhushan discloses a similar superhydrophilic and superoleophobic multilayer coated substrate wherein polydiallyldimethylammonium chloride (PDDA) is used as an adhesive/binder layer to bond silica nanoparticles to a substrate and a fluorine containing polymer top layer; [0007], [0011], [0040], [0135], Fig. 2.Figs. 1-2.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan by using PDDA as the adhesive to bond the silica nanoparticles to the substrate and the fluorine containing top layer as disclosed by Bhushan because this involves the simple substitution of known binder/adhesives for attaching silica nanoparticles to a substrate and a fluorine containing top layer to obtain the predictable result of forming a successful coated substrate.
This combination would result in a mixed layer of silica and PDAA between substrate and fluorosurfactant layers, which seen to read on the claimed (b) a primer layer and (c) superhydrophilic coating layer, because they are applied together to the substrate and the superhydrophilic coating layer being mixed is seen to be also applied to the silica nanoparticles/primer layer.
However, further or alternatively, if the claim is seen to require separately applied primer and superhydrophilic coating layers, Muisener discloses a similar multilayer coated substrate wherein a substrate/article is coated in a first layer of nanoparticles and adhesive and a top coating which may be a fluorinated compound, wherein the nanoparticles may either be applied mixed with adhesive/binder or the nanoparticles and binder may be applied as separate, alternate layers, including multiple layers of nanoparticles; [0048]-[0019], [0085]-[0086], [0093]-[0094], [0098]-[0099], [0124].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan in view of Bhushan by using separate, alternate layers of nanoparticles and adhesive as disclosed by Muisener because this is known alternative means for depositing nanoparticles and adhesive between a substrate and a fluorine containing top coat to obtain the predictable result of forming a successful coated substrate.
This combination would result in a substrate followed by alternating layers of Silica/PDDA, including at least multiple layers of nanoparticles, and where no specific order to or number of layers are required and thus makes obvious the structure claimed, including
(a) a porous substrate;
(b) a primer layer applied to at least a portion of a surface of the substrate (a), wherein the primer layer comprises silica nanoparticles;
(c) a superhydrophilic coating layer applied to at least a portion of the porous substrate (a), or the primer layer (b) if it is present, wherein the superhydrophilic layer comprises a superhydrophilic polymer; and
(d) a tie layer applied to at least a portion of the superhydrophilic coating layer (c), wherein the tie layer comprises silica nanoparticles and is the same as the primer layer (b),
(e) an oleophobic coating layer (fluorosurfactant/fluoropolymer having reactive functional groups) applied to at least a portion of the superhydrophilic coating layer (c), or the tie layer (d) if it is present.
With regard to (2) the substrate comprising polyester or PPS, Qahtan discloses the support/porous substrate is not particularly limited and may include porous polymer sheets and may be an existing water filtration membrane [0080]. Further, Huang discloses a polyphenylene sulfide microfiber membrane for oil/water separation, which comprises a PPS microfiber membrane substrate that is provided with a fluoropolymer coating to impart surface properties (Title, Abstract, Fabrication of superhydrophobic and superoleophilic PPS microfiber membrane, Gravity-driven oil/water separation).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan in view of Bhushan and Muisener by using for the porous substrate the PPS microfiber membrane substrate as taught by Huang because this involves the simple substitution of known substrates which are coated with fluoropolymer for oil and water separation to obtain the predictable result of successful coated membrane formation and oil and water separation.
With regard to (3) covalently bonding the layers, Muisener discloses it is desirable to covalently bond the nanoparticles with the substrate and the fluorine layer; [0063]-[0064], [0090]. Further Hanson discloses organometallic compound coatings that can act as an anchor for additional coatings or as an adhesion promoter at organic/organic, organic/inorganic interfaces [0011], and which provides covalent bonds between a substrate having OH groups and a subsequently applied layer [0003], [0023]; where the substrate may be a polymer that is treated to induce hydroxyl groups at its surface [0021]-[0023].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan in view of Bhushan, Muisener and Huang by additionally including the organometallic compound coating of Hanson between each of the layers of the coated substrate of Qahtan in view of Bhushan, Muisener and Huang, as well as providing a substrate having hydroxyl groups on its surface as taught by Hanson in order to covalently bond all adjacent layers including the substrate as taught by Muisener and Hanson so as to provide anchoring and/or adhesion promotion by covalent bonds between the materials of each layer, to increase the fidelity of the coated substrate.
This combination results in:
Silica nanoparticles that are functionalized with a metal alkoxide because Hanson discloses the organometallic compound comprises metal alkoxides [0012], and where the silica particles would be covalently bonded to the organometallic compound due to silica inherent oxide surface [0021]-[0023] and thus the silica particles are functionalized with a metal alkoxide; and
Said substrate having hydroxyl functional groups on a surface thereof, as claimed.
Regarding Claims 2 and 12 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claims 1 and 11, wherein the tie layer (d) is present (supra).
Regarding Claim 4 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claim 2, wherein it would have been obvious to use the pores sizes called for in Qahtan, and thus the substrate (a) demonstrates average pore sizes 0.4-5 micron; Qahtan [0007], [0075].
Regarding Claims 5 and 14 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claims 2 and 12, wherein the primer layer (b) is present (see rejection of claims 1 and 2, supra) and comprises silica nanoparticles that are functionalized with a metal alkoxide ( Hanson disclose the organometallic compound comprises metal alkoxides [0012], where the silica particles are covalently bonded to the organometallic compound and thus the silica particles are functionalized with a metal alkoxide).
Regarding Claims 6 and 15 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claims 2 and 12, wherein the superhydrophilic layer comprises polydiallyldimethylammonium chloride having a weight average molecular weight of 100,000-200,000; Bhushan [0156].
Regarding Claim 7 and 16 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claims 2 and 12, wherein the tie layer (d) is the same as the primer layer (b); (see rejection of claim 1 and 2, supra)
Regarding Claims 8 and 17 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claims 2 and 12, wherein the oleophobic coating layer (e) comprises an amphoteric, fluorine-containing betaine surfactant (Capstone FS-50, Qahtan [0091]).
Qahtan in view of Bhushan, Muisener, Huang and Hanson does not disclose the oleophobic coating layer (e) comprises a fluorine-containing nonionic surfactant.
However, Qahtan discloses the surfactant layer 22 may be a nonionic surfactant and and/or a combination of surfactants [0089], and the fluorosurfactant(s) may be chosen from CAPSTONE fluorosurfactants “including, but not limited to FS-30, FS-31, FS-34, FS-35, FS-50, FS-51, FS-60, FS-61, FS-63, FS-64 FS-65, FS-66, and/or FS-81” [0091], thus it would have been obvious to include multiple of the CAPSTONE fluorosurfactants, including the FS-50, FS-35 and/or FS-65 in the fluorosurfactant layer, where at least FS-35 and FS-65 are nonionic fluorosurfactants.
Regarding Claim 9 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claim 8, wherein the oleophobic coating layer (e) is essentially free of perfluorooctanoic acid (i.e. because it is not disclosed to be required), and wherein the oleophobic coating layer (e) demonstrates a maximum thickness of from 100 nm to 20 micron [0092]. The thickness is expected and/or obviously to be the dry film thickness. Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 10 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claim 2, wherein the coated substrate comprises a filtration membrane; Qahtan [0006], and inherently due to its porous structure.
Regarding Claim 13 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the water-permeable filtration membrane of claim 12, wherein the substrate (a) comprises polyphenylene sulfide (PPS) (supra) and wherein it would have been obvious to use the pores sizes called for in Qahtan, and thus the substrate (a) demonstrates average pore sizes 0.4-5 micron; Qahtan [0007], [0075].
Regarding Claim 18 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claim 17, wherein the oleophobic coating layer (e) is essentially free of perfluorooctanoic acid (i.e. because it is not disclosed to be required).
Regarding Claim 19 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claim 12, wherein the oleophobic coating layer (e) demonstrates a maximum thickness of from 100 nm to 20 micron [0092]. The thickness is expected and/or obviously to be the dry film thickness. Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 20 Qahtan discloses a method of separating an oil-in-water emulsion [0006], [0119], comprising: (i) contacting the oil-in-water emulsion with a water-permeable filtration membrane; and (ii) allowing the water to permeate through the filtration membrane [0017], [0019], [0141], wherein the water-permeable filtration membrane comprises:
a water-permeable superhydrophilic and superoleophobic multilayer coated substrate (which is a filtration membrane for oil-water separation; Abstract, [0006]) comprising:
(a) a porous substrate (porous metal screen 12);
(b or d) nanoparticles (which may be silica) mixed with adhesive (i.e. the claimed primer or tie layer)
(e) a fluorosurfactant layer (i.e. an oleophobic coating layer) applied to at least a portion of the nanoparticle/adhesive layer; [0075], [0079]-[0081], [0083], [0086], Figs. 1-2;
wherein the oleophobic coating layer may comprise Capstone FS-50 ( [0091] i.e. comprises a fluoropolymer having reactive functional groups, and as used by Applicants instant sec. [0031]).
Qahtan does not disclose (1) the primer layer comprises silica that is functionalized with an organometallic compound, (c) a superhydrophilic coating layer applied to the primer layer (b), wherein the superhydrophilic layer comprises a superhydrophilic polymer or silicate; or (2) the porous substrate comprises polyester or polyphenylene sulfide (PPS) and having hydroxyl functional groups on a surface thereof; or (3) wherein each layer of the coated substrate is covalently bonded to adjacent layers and the porous substrate is covalently bonded to the primer layer.
However, with regard to (1) a superhydrophilic coating layer, Bhushan discloses a similar superhydrophilic and superoleophobic multilayer coated substrate wherein polydiallyldimethylammonium chloride (PDDA) is used as an adhesive/binder layer to bond silica nanoparticles to a substrate and a fluorine containing polymer top layer; [0007], [0011], [0040], [0135], Fig. 2.Figs. 1-2.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan by using PDDA as the adhesive to bond the silica nanoparticles to the substrate and the fluorine containing top layer as disclosed by Bhushan because this involves the simple substitution of known binder/adhesives for attaching silica nanoparticles to a substrate and a fluorine containing top layer to obtain the predictable result of forming a successful coated substrate.
This combination would result in a mixed layer of silica and PDAA between substrate and fluorosurfactant layers, which seen to read on the claimed (b) a primer layer and (c) superhydrophilic coating layer, because they are applied together to the substrate and the superhydrophilic coating layer being mixed is seen to be also applied to the silica nanoparticles/primer layer.
However, further or alternatively, if the claim is seen to require separately applied primer and superhydrophilic coating layers, Muisener discloses a similar multilayer coated substrate wherein a substrate/article is coated in a first layer of nanoparticles and adhesive and a top coating which may be a fluorinated compound, wherein the nanoparticles may either be applied mixed with adhesive/binder or the nanoparticles and binder may be applied as separate, alternate layers, including multiple layers of nanoparticles; [0048]-[0019], [0085]-[0086], [0093]-[0094], [0098]-[0099], [0124].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan in view of Bhushan by using separate, alternate layers of nanoparticles and adhesive as disclosed by Muisener because this is known alternative means for depositing nanoparticles and adhesive between a substrate and a fluorine containing top coat to obtain the predictable result of forming a successful coated substrate.
This combination would result in a substrate followed by alternating layers of Silica/PDDA, including at least multiple layers of nanoparticles, and where no specific order to or number of layers are required and thus makes obvious the structure claimed, including
(a) a porous substrate;
(b) a primer layer applied to at least a portion of a surface of the substrate (a), wherein the primer layer comprises silica nanoparticles;
(c) a superhydrophilic coating layer applied to at least a portion of the porous substrate (a), or the primer layer (b) if it is present, wherein the superhydrophilic layer comprises a superhydrophilic polymer; and
(d) a tie layer applied to at least a portion of the superhydrophilic coating layer (c), wherein the tie layer comprises silica nanoparticles and is the same as the primer layer (b),
(e) an oleophobic coating layer (fluorosurfactant/fluoropolymer having reactive functional groups) applied to at least a portion of the superhydrophilic coating layer (c), or the tie layer (d) if it is present.
With regard to (2) the substrate comprising polyester or PPS, Qahtan discloses the support/porous substrate is not particularly limited and may include porous polymer sheets and may be an existing water filtration membrane [0080]. Further, Huang discloses a polyphenylene sulfide microfiber membrane for oil/water separation, which comprises a PPS microfiber membrane substrate that is provided with a fluoropolymer coating to impart surface properties (Title, Abstract, Fabrication of superhydrophobic and superoleophilic PPS microfiber membrane, Gravity-driven oil/water separation).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan in view of Bhushan and Muisener by using for the porous substrate the PPS microfiber membrane substrate as taught by Huang because this involves the simple substitution of known substrates which are coated with fluoropolymer for oil and water separation to obtain the predictable result of successful coated membrane formation and oil and water separation.
With regard to (3) covalently bonding the layers, Muisener discloses it is desirable to covalently bond the nanoparticles with the substrate and the fluorine layer; [0063]-[0064], [0090]. Further Hanson discloses organometallic compound coatings that can act as an anchor for additional coatings or as an adhesion promoter at organic/organic, organic/inorganic interfaces [0011], and which provides covalent bonds between a substrate having OH groups and a subsequently applied layer [0003], [0023]; where the substrate may be a polymer that is treated to induce hydroxyl groups at its surface [0021]-[0023].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan in view of Bhushan, Muisener and Huang by additionally including the organometallic compound coating of Hanson between each of the layers of the coated substrate of Qahtan in view of Bhushan, Muisener and Huang, as well as providing a substrate having hydroxyl groups on its surface as taught by Hanson in order to covalently bond all adjacent layers including the substrate as taught by Muisener and Hanson so as to provide anchoring and/or adhesion promotion by covalent bonds between the materials of each layer, to increase the fidelity of the coated substrate.
This combination results in:
Silica nanoparticles that are functionalized with a metal alkoxide because Hanson discloses the organometallic compound comprises metal alkoxides [0012], and where the silica particles would be covalently bonded to the organometallic compound due to silica inherent oxide surface [0021]-[0023] and thus the silica particles are functionalized with a metal alkoxide; and
Said substrate having hydroxyl functional groups on a surface thereof, as claimed.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Qahtan in view of Bhushan, Muisener, Huang and Hanson further in view of Simple Preparation Method for Hydrophilic/Oleophobic Coatings, Jinhui Li, Le Yang, Haifeng Liu, Guobin Li, Rui Li, Ying Cao, and Hui Zeng, ACS Applied Materials & Interfaces 2020 12 (40), 45266-45273 (hereinafter “Li”).
Regarding Claim 3 Qahtan in view of Bhushan, Muisener, Huang and Hanson discloses the coated substrate of claim 2, but does not disclose wherein the substrate (a) comprises a polyester.
However, Li discloses a similar hydrophilic/oleophobic coated filter for oil and water separations, which comprises polyester filter cloth as the substrate that is provided with a fluoropolymer coating to impart the hydrophobicity and oleophobicity (Title, Abstract).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the coated substrate of Qahtan in view of Bhushan, Muisener, Huang and Hanson by using for the porous substrate the polyester filter cloth substrate as taught by Li because this involves the simple substitution of known substrates which are coated with fluoropolymer for oil and water separation to obtain the predictable result of successful coated membrane formation and oil and water separation.
Response to Amendment
The previous 35 U.S.C. 112(b) rejections of claims 1-20 are withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 01/19/2026 have been fully considered but they are now moot because they are directed in their entirety to grounds of rejection which are no longer cited in the current action and the new limitations of the amended claims which had not been previously addressed. See the updated rejection above citing a new combination of references to address the amended claims.
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.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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