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 (PRO 63/305,512, filed 02/01/2022) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Rejections - 35 USC § 112
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 3 are 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.
Regarding Claim 3, reference is made to “the metal ions”; however, Claim 1 has introduced two sets of metal ions, i.e., “one or more metal ions” in the phrase “a total removal efficiency of greater than 90% of one or more metal ions” and “metal ions” in the phrase “a feed stream containing 1 ppb of metal ions”. The Examiner assumes both sets of introduced metal ions are to be considered the same; however, the claim construction renders this ambiguous.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 6-14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by JABER et al. (US 2020/0206691 A1).
Regarding Claim 1, JABER discloses a filter device 220 having at least two coated porous polymeric membranes 100 and 160 secured to a filter housing 110 (i.e., a first porous membrane; a second porous membrane); the porous polymeric membranes 100 and 160 includes a coating 10 having one or more polymerized monomers with a charge in an organic liquid and cross-linked by a cross-linker and a coating 30 having one or more polymerized monomers with a charge in an organic liquid and cross-linked by a cross-linker, respectively (i.e., the first porous membrane has a coating thereon, wherein the coating of the first porous membrane is prepared from the polymerization of at least one monomer and at least one cross-linker; the second porous membrane has a coating thereon, wherein the coating of the second porous membrane is prepared from the polymerization of at least one monomer and at least one cross-linker; p0035). Porous polymeric membranes 100 and 160 are further disclosed to include polytetrafluoroethylene (PTFE) membranes (i.e., a first porous membrane comprising poly(tetrafluoroethylene); a second porous membrane comprising poly(tetrafluoroethylene); p0037), and one membrane coating has a positive charge whereas the other membrane coating has a negative charge in organic liquids (i.e., wherein the monomer has a positive charge in an organic liquid; wherein the monomer has a negative charge in an organic liquid; p0049, p0050). JABER further discloses that the metal contaminant removal efficiency of metals, in particular iron, nickel, chromium, copper and aluminum, is about 95% from an organic liquid feed stream containing 150 ppb or less of the metal contaminant concentration (p0052).
It is recognized that the instant claim requires “a feed stream containing 1 ppb of metal ions”, whereas JABER discloses a liquid feed stream containing 150 ppb or less (p0052). While the prior art disclosure discloses a range that encompasses the claimed feed stream concentration of 1 ppb of metal ions, this limitation is not considered to have any patentable weight because it is directed toward (1) materials or articles worked upon by the claimed membrane assembly; and (2) an intended use of the claimed membrane assembly.
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). In this case, the material or article worked upon is the claimed “feed stream containing 1 ppb of metal ions”; patentability is determined based on the claimed structure and function—if the prior art discloses or makes obvious all claimed structural limitations of the assembly, then the presumed function of having the ability to treat a “feed stream containing 1 ppb of metal ions” is necessarily present.
Even further, 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). If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II). Claim scope is not limited by claim language that suggests or makes optional but does not limit a claim to a particular structure. Because the prior art, singly or in combination, teaches all claimed structural language, the “adapted to” or “adapted for” clause in question is optional and does not limit the claim. The clause expresses the intended use of the claimed structural element and thereby, does not further limit the claim (MPEP §2111.04). The instant limitations of a “feed stream containing 1 ppb of metal ions” and the expected result of “a total removal efficiency of greater than 90%” are directed toward a manner or method by which the claimed assembly is used, an intended use, and an intended result. Nothing in these instant limitations further limits or requires structural or functional elements of the claimed membrane assembly beyond what is already structurally claimed. If Applicant desires to incorporate such limitations, Applicant should identify and claim the specific elements of the membrane assembly that allows for a total removal efficiency of greater than 90% from a feed stream containing 1 ppb of metal ions rather than broadly claiming coatings, cross-linkers, and monomers.
Similarly, the limitation “wherein the membrane assembly, when soaked in a propylene glycol monomethyl ether/propylene glycol monomethyl ether acetate (PGME/PGMEA) solution (70:30, by volume) for 8 hours, generates less than 0.080 ppb of at least one metal ion chosen from ions of sodium, magnesium, aluminum, potassium, calcium, iron, and zinc” is also directed toward a manner or method by which the apparatus is utilized and is therefore, not subject to patentability.
Regarding Claim 2, JABER anticipates the membrane assembly of Claim 1. As explained earlier, the instant limitation requiring that the assembly exhibits the total removal efficiency of greater than 90% of the one or more metal ions for all the listed metal ions is directed toward an intended result from an intended use of the claimed membrane assembly. If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II). Claim scope is not limited by claim language that suggests or makes optional but does not limit a claim to a particular structure. Because the prior art, singly or in combination, teaches all claimed structural language, the “adapted to” or “adapted for” clause in question is optional and does not limit the claim. The clause expresses the intended use of the claimed structural element and thereby, does not further limit the claim (MPEP §2111.04).
Regarding Claim 3, JABER anticipates the membrane assembly of Claim 1. The instant limitation requiring that the metal ions are chosen from iron, nickel, chromium, copper, and aluminum ions are directed toward materials or articles worked upon by the claimed membrane assembly and thus, are not subject to patentable consideration.
JABER further discloses that the metal contaminants are, in particular iron, nickel, chromium, copper and aluminum (p0052). 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).
Regarding Claims 6 and 7, JABER anticipates the assembly of Claim 1. JABER further discloses the monomers 20 with a positive charge in an organic liquid that can be used in the coating 10 of the porous polymeric membranes include diallyl dimethyl ammonium chloride and vinyl benzyl trimethyl ammonium chloride (i.e., the monomer having a positive charge in an organic liquid is a quaternary ammonium compound having at least one carbon-carbon double bond (Claim 6); the quaternary ammonium compound is chosen from diallyldimethyl ammonium chloride, diallyldimethyl ammonium bromide, vinyl benzyl trimethyl ammonium chloride, and vinyl benzyl trimethyl ammonium bromide (Claim 7); p0041).
Regarding Claim 8, JABER anticipates the assembly of Claim 1. JABER further discloses suitable cross-linking agents include tetraethylene glycol diacrylate and methylene bisacrylamide (i.e., the cross-linker is chosen from methylene bis(acrylamide), tetraethylene glycol diacrylate…; p0078).
Regarding Claim 9, JABER anticipates the assemblies of preceding Claims 1-3 and 6-8. JABER further discloses the organic liquid feed stream includes cyclohexanone, PGMEA, butyl acetate, and a mixed solution of PGME/PGMEA at 7:3 mixing ratio (p0046). However, this instant limitation “the feed stream comprises a propylene glycol monomethyl ether/propylene glycol monomethyl ether acetate (PGME/PGMEA) solution (70:30, by volume), PGMEA, n-butyl acetate, or cyclohexanone” is directed toward the properties/make-up of materials or articles worked upon by the claimed assembly and is thus not subject to patentability. 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).
Regarding Claim 10, JABER discloses a filter device 220 having at least two coated porous polymeric membranes 100 and 160 secured to a filter housing 110; the porous polymeric membranes 100 and 160 includes a coating 10 having one or more polymerized monomers with a charge in an organic liquid and cross-linked by a cross-linker and a coating 30 having one or more polymerized monomers with a charge in an organic liquid and cross-linked by a cross-linker, respectively (p0035). Porous polymeric membranes 100 and 160 are further disclosed to include polytetrafluoroethylene (PTFE) membranes (p0037), and one membrane coating has a positive charge whereas the other membrane coating has a negative charge in organic liquids (p0049, p0050).
The limitation “wherein the filter device, when soaked in a…(PGME/PGMEA) solution (70:30, by volume) for 8 hours, generates less than 0.080 ppb of at least one metal ion chosen from ions of sodium, magnesium, aluminum, potassium, calcium, iron, and zinc” is directed toward an intended use of the claimed filter device and a manner or method by which the claimed filter device is utilized. If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II). 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). The claimed filter device only requires the two porous membranes delineated in “a” and “b”. The instant limitation in question is treating said filter device, i.e., using the filter device. Thus, this limitation holds no patentable weight.
Furthermore, it is recognized that the instant claim requires “a feed stream containing 1 ppb of metal ions”, whereas JABER discloses a liquid feed stream containing 150 ppb or less (p0052). While the prior art disclosure discloses a range that encompasses the claimed feed stream concentration of 1 ppb of metal ions, this limitation is not considered to have any patentable weight because it is directed toward (1) materials or articles worked upon by the claimed membrane assembly; and (2) an intended use of the claimed membrane assembly.
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). In this case, the material or article worked upon is the claimed “feed stream containing 1 ppb of metal ions”; patentability is determined based on the claimed structure and function—if the prior art discloses or makes obvious all claimed structural limitations of the assembly, then the presumed function of having the ability to treat a “feed stream containing 1 ppb of metal ions” is necessarily present.
Even further, 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). If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II). Claim scope is not limited by claim language that suggests or makes optional but does not limit a claim to a particular structure. Because the prior art, singly or in combination, teaches all claimed structural language, the “adapted to” or “adapted for” clause in question is optional and does not limit the claim. The clause expresses the intended use of the claimed structural element and thereby, does not further limit the claim (MPEP §2111.04). The instant limitations of a “feed stream containing 1 ppb of metal ions” and the expected result of “a total removal efficiency of greater than 90%” are directed toward a manner or method by which the claimed assembly is used, an intended use, and an intended result. Nothing in these instant limitations further limits or requires structural or functional elements of the claimed membrane assembly beyond what is already structurally claimed. If Applicant desires to incorporate such limitations, Applicant should identify and claim the specific elements of the membrane assembly that allows for a total removal efficiency of greater than 90% from a feed stream containing 1 ppb of metal ions rather than broadly claiming coatings, cross-linkers, and monomers.
Regarding Claims 11 and 12, JABER anticipates the filter device of Claim 10. JABER further discloses the monomers 20 with a positive charge in an organic liquid that can be used in the coating 10 of the porous polymeric membranes include diallyl dimethyl ammonium chloride and vinyl benzyl trimethyl ammonium chloride (i.e., the monomer having a positive charge in an organic liquid is a quaternary ammonium compound having at least one carbon-carbon double bond (Claim 11); the quaternary ammonium compound is chosen from diallyldimethyl ammonium chloride, diallyldimethyl ammonium bromide, vinyl benzyl trimethyl ammonium chloride, and vinyl benzyl trimethyl ammonium bromide (Claim 12); p0041).
Regarding Claim 13, JABER anticipates the filter device of Claim 10. JABER further discloses suitable cross-linking agents include tetraethylene glycol diacrylate and methylene bisacrylamide (i.e., the cross-linker is chosen from methylene bis(acrylamide), tetraethylene glycol diacrylate…; p0078).
Regarding Claim 14, JABER anticipates the filter device of Claim 10. The instant limitation requiring that “the device generates less than 0.080 ppb of metal ions from each of the ions of sodium, magnesium, aluminum, potassium, calcium, iron, and zinc” is directed toward an intended result inherently expected from the practice or use of the claimed filter device and has no patentable weight. Claim scope is not limited by claim language that suggests or makes optional but does not limit a claim to a particular structure. Because the prior art, singly or in combination, teaches all claimed structural language, the “adapted to” or “adapted for” clause in question is optional and does not limit the claim.
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) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over JABER et al. (US 2020/0206691 A1), as applied to Claim 10 above, and further in view of ASHELIN et al. (WO 91/10495).
Regarding Claim 21, JABER anticipates the filter device of Claim 10. JABER further discloses that the porous polymeric membrane can include a variety of geometric configurations, including “a pleated sheet and a hollow fiber, among others” (p0038); however, JABER is deficient in explicitly disclosing a “pleated cylindrical component” as claimed.
ASHELIN discloses, among others, PTFE membranes (pg. 9, lines 9-20) and further discloses these membranes are formed into cylindrical pleated shapes (pg. 9, lines 23-25). Such a geometry is typical and conventional in the art (pg. 10, lines 4-5). Advantageously, the use of a pleated cylindrical shape significantly increases the available membrane surface area for filtration and thus, would be obvious to any one of ordinary skill in the art to utilize when designing a filtration application. All claimed elements were known in the prior art and one of ordinary skill in the art could have combined the elements as claimed by known methods with no change in their respective, individual functions, and the combination would have yielded nothing more than predictable results (MPEP §2143.01 A). 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 pleated cylindrical component for each porous membrane as taught by ASHELIN in the filter device disclosed by JABER.
Response to Amendments/Arguments
Applicant’s amendments filed 18 December 2025 have been fully considered.
Regarding the Claim Objections of Claims 8, 9, 10, and 13, Applicant’s amendments are sufficient; these objections have been withdrawn.
Regarding the rejections of Claims 3 and 11-14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, Applicant’s amendments are not sufficient. Applicant has not addressed the rejection of Claim 3; this rejection is sustained; Applicant’s amendments to Claims 11 and 12 are sufficient; these rejections and the rejections of Claims 13 and 14 are also withdrawn.
Regarding the prior art rejections, Applicant’s amendments and arguments (pg. 7-9) have been fully considered but are not persuasive.
Applicant argues that the cited prior art JABER fails to teach or suggest all claimed features of independent Claims 1 and 10 (pg. 7); further Applicant argues JABER fails to teach or suggest “the advantageous leaching achieved by the features of Independent Claims 1 and 10” and refers to Example 6 of the Specification as indicative of the purported advantageous leaching (pg. 8-9). For these reasons, Applicant argues Independent Claims 1 and 10 and dependent claims (pg. 9) are patentable over JABER.
The Examiner respectively disagrees.
The cited limitations are directed to either (1) materials or articles worked upon by the claimed membrane assembly/filter device; and (2) an intended use of the claimed membrane assembly/filter device. These limitations have no patentable weight.
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). In this case, the material or article worked upon is the claimed “feed stream containing 1 ppb of metal ions”; patentability is determined based on the claimed structure and function—if the prior art discloses or makes obvious all claimed structural limitations of the assembly/device, then the presumed function of having the ability to treat a “feed stream containing 1 ppb of metal ions” is necessarily present.
Even further, 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). If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II). Claim scope is not limited by claim language that suggests or makes optional but does not limit a claim to a particular structure. Because the prior art, singly or in combination, teaches all claimed structural language, the “adapted to” or “adapted for” clause in question is optional and does not limit the claim. The clause expresses the intended use of the claimed structural element and thereby, does not further limit the claim (MPEP §2111.04). The instant limitations of a “feed stream containing 1 ppb of metal ions” and the expected result of “a total removal efficiency of greater than 90%” are directed toward a manner or method by which the claimed assembly or device is used, an intended use, and an intended result. Nothing in these instant limitations further limits or requires structural or functional elements of the claimed membrane assembly/filter device beyond what is already structurally claimed. If Applicant desires to incorporate such limitations, Applicant should identify and claim the specific elements of the membrane assembly or filter device that allows for a total removal efficiency of greater than 90% from a feed stream containing 1 ppb of metal ions rather than broadly claiming coatings, cross-linkers, and monomers.
Similarly, the limitation “wherein the membrane assembly/filter device, when soaked in a propylene glycol monomethyl ether/propylene glycol monomethyl ether acetate (PGME/PGMEA) solution (70:30, by volume) for 8 hours, generates less than 0.080 ppb of at least one metal ion chosen from ions of sodium, magnesium, aluminum, potassium, calcium, iron, and zinc” is also directed toward a manner or method by which the apparatus is utilized and is therefore, not subject to patentability.
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.
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, 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 1777