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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because text details (i.e., scale bar lengths), are indiscernible in FIG. 3, FIG. 4, and FIG. 5. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over ICHIRO (JP 11047566; machine translation provided by Applicant and referenced herein) in view of LIU et al. (US 2023/0234001 A1) with evidentiary support from KOMORI et al. (JP 2013158713 A; machine translation provided and referenced herein) and ROZENBAOUM et al. (US 2016/0236156 A1).
Regarding Claim 1, ICHIRO discloses a reverse osmosis membrane element comprising a reverse osmosis composite film with a porous polysulfone support, a polyamide separation functional layer and a membrane film organic polymer coating (i.e., a porous support; a separation functional layer formed on the porous support; a coating layer provided on a surface of the separation functional layer; p0019; p0014) for use in spiral wound membrane modules (p0033).
ICHIRO further discloses a procedure for coating the composite reverse osmosis membrane surface similar to—if not largely identical to—the coating procedure disclosed by Applicant. Briefly, a 0.25 wt% polyvinyl alcohol solution (99% saponification degree) is mixed in a 3:7 solution of isopropyl alcohol/water (i.e., a 30% IPA solution) and applied to the surface of a composite reverse osmosis membrane, and the resultant coated membrane is dried at 130 °C for 5 minutes (p0029). Comparatively, the instant application prepares a coating liquid by mixing 0.4 wt% of polyvinyl alcohol (at least 99% saponification degree) with a 30% IPA solution, immersing a composite semipermeable membrane in the coating liquid, and subsequently drying the coated membrane at 120 °C for 2 minutes (p0128-p0129, Examples 3 and 4, Table 1). A comparison of ICHIRO’s disclosure and Applicant’s disclosure indicates that the coating conditions and drying conditions between the two are very similar. As such, it is expected that such similar procedures would produce similar—if not the same—surface roughness properties as claimed. Although the prior art does not specifically disclose the claimed limitations pertaining to the surface roughness of the coating layer, because the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP §2112.01 I).
However, alternatively, ICHIRO is deficient in explicitly disclosing the coating layer having different surface roughness due to different adhesion amounts of a coating material depending on locations or that a coating layer-side surface on which a glossy portion having a surface roughness Ra of 30 nm or less and a non-glossy portion having a surface roughness Ra of 50 nm or more are provided.
KOMORI discloses a semipermeable membrane for use in spiral type membrane elements having excellent adhesive properties between a membrane support and a flow passage material (abstract). The prior art acknowledges a known issue in the field of spiral wound membranes, namely that when a module is used under high pressure, the adhesions between the membrane support and the flow path material may be insufficient, and there is a possibility for a line leak occurring from the side surface of the membrane support (pg. 2, par. 2). Indeed, as acknowledged by ROZENBAOUM, for spiral wound modules comprising reverse osmosis membranes (p0002), a known issue in the field of spiral wound membranes is that the fold lines of membrane sheets (at the edge of a spacer or feed carrier material of membrane leaves) are susceptible to cracking and leakage resulting in undesirable lower rejection rates (p0005). One known solution to this issue is to use reinforcing tape along the fold lines (p0006). However, tapes are known to delaminate/come off during use or cleaning; ROZENBAOUM identifies a specific example of this issue for a PVA-coated membrane wherein the PVA dissolves during membrane use thereby affecting tape adhesion to the active layer side of the membrane (p0007). As a solution, KOMORI suggests enhancing the adhesiveness of the surface to provide an excellent seal bond to reduce or minimize line leakage (pg. 3, bottom paragraph).
To this end, LIU discloses a solution for improving the structural integrity of a composite membrane, namely the cohesiveness between the layers of the membrane (p0028). The membrane comprises at least a substrate layer and an active layer (p0036, p0029). The substrate layer comprises a polymeric structure, including polyvinyl alcohol (p0039), and the active layer comprises a film former including polyvinyl alcohol (p0111). LIU further discloses that by increasing the surface roughness of a substrate layer, e.g., such as greater than 20 nm or greater than 50 nm, better contact with the overlaid active layer is advantageously achieved and results in improved mechanical and structural integrity of the layers (p0050). (It is noted that LIU in teaching that the areas of the substrate layer having increased roughness being at least 20 nm or at least 50 nm implies that the areas that do not have increased roughness have less than 20 nm roughness; thus, LIU discloses the limitations of a glossy portion having a surface roughness Ra of 30 nm or less and a non-glossy portion having a surface roughness Ra of 50 nm or more are provided).
It is acknowledged that LIU discloses surface roughness for a substrate layer and that the claimed invention is directed toward the surface roughness of a coating layer. However, LIU addresses the aforementioned issue of PVA adhesion; the coating layer of ICHIRO’s composite membrane is PVA. Thus, one of ordinary skill in the art, in considering both LIU and ICHIRO, would find it obvious that given the known problems associated with spiral wound membrane surfaces, especially PVA surfaces (as evidenced by KOMORI and ROZENBAOUM), to incorporate the LIU-taught surface roughness properties to the PVA coating layer of ICHIRO to advantageously enhance the adhesiveness of the PVA coating layer and enhance overall structural integrity to prevent delamination when the spiral wound reverse osmosis membrane is in use.
Regarding Claim 2, modified ICHIRO makes obvious the composite semipermeable membrane of Claim 1. Although the prior art is deficient in explicitly disclosing an area ratio of 1:4 to 4:1 of glossy portion to non-glossy portion, the prior art does disclose that only the edges of the membrane fold lines should have increased roughness to improve adhesiveness. Where 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 absent unexpected results or evidence indicating such optimum or workable ranges are critical (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP§2144.05).
Regarding the limitation “an attachment area adapted for attachment to a protective tape”, as noted earlier, ROZENBAOUM discloses that for spiral wound modules comprising reverse osmosis membranes (p0002), a known issue is that the fold lines of membrane sheets (at the edge of a spacer or feed carrier material of membrane leaves) are susceptible to cracking and leakage resulting in undesirable lower rejection rates (p0005). One known solution to this issue is to use reinforcing tape along the fold lines (p0006). However, tapes are known to delaminate/come off during use or cleaning; ROZENBAOUM identifies a specific example of this issue for a PVA-coated membrane wherein the PVA dissolves during membrane use thereby affecting tape adhesion to the active layer side of the membrane (p0007). As a solution, KOMORI suggests enhancing the adhesiveness of the surface to provide an excellent seal bond to reduce or minimize line leakage (pg. 3, bottom paragraph). Thus, the prior art provides one of ordinary skill in the art sufficient motivation to increase the adhesiveness of regions of the spiral wound membrane where this reinforcing tape is applied (i.e., an attachment area adapted for attachment to a protective tape); therefore, it would be obvious to one of ordinary skill to apply such a claimed ratio at least in an attachment area adapted for attachment to a protective tape in the membrane made obvious by modified ICHIRO.
Regarding Claim 3, modified ICHIRO makes obvious the composite semipermeable membrane of Claim 1. As noted earlier, LIU discloses a layer having surface roughness of greater than 20 nm or greater than 50 nm to advantageously provide better contact with other layers to improve mechanical and structural integrity (p0050). (It is noted that LIU in teaching that the areas of the substrate layer having increased roughness being at least 20 nm or at least 50 nm implies that the areas that do not have increased roughness have less than 20 nm roughness). Thus, LIU discloses ranges that overlap with the claimed ranges of the surface roughness Ra of the glossy portion is 5-25 nm and the surface roughness Ra of the non-glossy portion is 50 to 80 nm and therefore establishes cases of prima facie obviousness (MPEP 2144.05).
Regarding Claim 4, modified ICHIRO makes obvious the composite semipermeable membrane of Claim 1. As noted earlier, LIU discloses a layer having surface roughness of greater than 20 nm or greater than 50 nm to advantageously provide better contact with other layers to improve mechanical and structural integrity (p0050). (It is noted that LIU in teaching that the areas of the substrate layer having increased roughness being at least 20 nm or at least 50 nm implies that the areas that do not have increased roughness have less than 20 nm roughness). Thus, LIU discloses ranges that overlap with the claimed ranges of the surface roughness Ra of the glossy portion is 5-25 nm and the surface roughness Ra of the non-glossy portion is 50 to 80 nm and therefor establishes cases of prima facie obviousness (MPEP 2144.05).
Although the prior art is deficient in explicitly disclosing an area percentage of the limited roughness glossy portion to a total area of the limited roughness glossy portion and the limited roughness non-glossy portion is 5 to 50%, the prior art does disclose that only the edges of the membrane fold lines should have increased roughness to improve adhesiveness, i.e., only a portion of the membrane is glossy. Where 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 absent unexpected results or evidence indicating such optimum or workable ranges are critical (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP§2144.05).
Regarding Claim 5, modified ICHIRO makes obvious the composite semipermeable membrane of Claim 1. ICHIRO further discloses the composite film is a polyamide film formed by interfacial polymerization of, e.g., m-phenylene diamine and trimesic acid chloride (i.e., wherein the separation functional layer is formed of a polyamide-based resin; p0019), and that the organic coating is polyvinyl alcohol (i.e., the coating material contains a hydrophilic resin; p0017).
Response to Amendments/Arguments
Applicant’s amendments filed 15 December 2025 have been fully considered.
Regarding the Drawings Objections, newly submitted drawings remain objected to in particular for indiscernible scale bars in FIGs. 3-5.
Regarding the objections to Claims 3 and 4, Applicant’s amendments are sufficient; these objections have been withdrawn.
Regarding the rejections of Claim(s) 1-5 under 35 U.S.C. 103 as being unpatentable over ICHIRO (JP 11047566) in view of LIU et al. (US 2023/0234001 A1) with evidentiary support from KOMORI et al. (JP 2013158713 A) and ROZENBAOUM et al. (US 2016/0236156 A1), Applicant’s amendments and arguments have been fully considered but are not persuasive. The rejections are sustained; please note that the rejection of Claim 2 has been modified in response to Applicant’s amendments regarding the “attachment area” limitation.
Applicant states that the “cited references, even considered in combination, do not suggest the invention of claim 1” and compares Table 1 of ICHIRO reporting a near zero surface zeta potential (0.2 mV) at pH 6 with Applicant’s own membrane: “In contrast, the Applicant has confirmed that the surface zeta potential of the composite semipermeable membranes of the Examples of the present specification are around -5 m V at pH 6, which is substantially larger than that found with Ichiro”, thereby arguing that “it cannot be assumed that Ichiro satisfies the requirement of the glossy and non-glossy portions for the coating layer surface required by claim 1” (pg. 6, par. 1-2).
The Examiner respectfully disagrees.
Applicant cites that they have confirmed a surface zeta potential measurement significantly different from those presented in the prior art. However, no such evidence is disclosed in the Specification. Such presented arguments are merely arguments of counsel and cannot take the place of evidence in record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence." "[A]ppellants have not presented any experimental data showing that prior heat-shrinkable articles split. Due to the absence of tests comparing appellant’s heat shrinkable articles with those of the closest prior art, we conclude that appellant’s assertions of unexpected results constitute mere argument."). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991). MPEP 716.01(c)
Applicant further argues “The secondary references do not suggest the modification of Ichiro to meet the requirements of claim 1” (pg. 6, par. 3) and further states that the secondary reference LIU teaches surface roughness for a support substrate instead of the claimed coating layer (pg. 6, bottom par.). Thus, Applicant argues, “the rejection should be withdrawn” (pg. 7, par. 2).
The Examiner respectfully disagrees.
While it is acknowledged that LIU discloses surface roughness for a substrate instead of the active layer or coating layer, LIU teaches that the substrate layer comprises PVA. ICHIRO discloses a PVA-based coating layer; KOMORI and ROZENBAOUM show evidence of existing problems known in the art associated with PVA layers in spiral wound membranes and their tendency to delaminate from reinforcing tape. Thus, one of ordinary skill in the art, in considering both LIU and ICHIRO, would find it obvious that given the known problems associated with spiral wound membrane surfaces, especially PVA surfaces (as evidenced by KOMORI and ROZENBAOUM), to incorporate the LIU-taught surface roughness properties to the PVA coating layer of ICHIRO to advantageously enhance the adhesiveness of the PVA coating layer and enhance overall structural integrity to prevent delamination when the spiral wound reverse osmosis membrane is in use.
Conclusion
THIS ACTION IS MADE FINAL. 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