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 (JP2022-118544, filed 26 July 2022; and JP2022-047884, filed 24 March 2022) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11 June 2026 has been entered.
Drawings
The drawings were received on 29 May 2026. These drawings are acceptable.
Response to Amendments
Applicant did not file amendments to the claims. The most recent claim set is dated 15 December 2025.
Corrected drawings of FIGs. 3, 4, and 5, filed 29 May 2026, have been entered; these drawings are sufficient to overcome the Drawings Objections of FIGs. 3, 4, and 5, which are considered withdrawn.
Response to 37 CFR 1.132 Affidavit
The affidavit under 37 CFR 1.132 filed 05 June 2026 is insufficient to overcome the rejection 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) as set forth in the last Office action because: while Mr. Miyabe’s declaration would be sufficient to overcome a rejection solely based on ICHIRO, the pending prior art rejection is based on ICHIRO and LIU with evidentiary support from KOMORI and ROZENBAOUM, not on ICHIRO alone. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It remains that LIU discloses roughened surfaces to advantageously improve the adhesiveness of layers in a composite membrane thereby rendering obvious the limitations of Claim 1.
Response to Arguments
Applicant’s arguments filed 29 May 2026 have been fully considered.
Applicant argues that the prior art rejection is “based on the position that similarity between the products of Ichiro and the products of claim 1 can be assumed in view of general similarities in materials and processing conditions”; Applicant further submits the Rule 132 declaration of Mr. Miyabe as evidence (par. spanning pg. 3-4) and concludes that “the evidence shows that Ichiro cannot be assumed to possess the properties required by claim 1 inherently” (pg. 4, par. 2).
Applicant further argues that “the secondary references would not suggest to one of ordinary skill that glossy and non-glossy portions should be provided together on the coating layer of the Ichiro product and would provide one of ordinary skill with no guidance for achieving the selective formation of both glossy and nonglossy portions on the coating layer” (pg. 4, par. 2).
The Examiner respectfully disagrees.
Regarding the first argument, while Mr. Miyabe’s declaration would be sufficient to overcome a rejection solely based on ICHIRO, the pending prior art rejection is based on ICHIRO and LIU with evidentiary support from KOMORI and ROZENBAOUM, not on ICHIRO alone. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It remains that LIU discloses roughened surfaces to advantageously improve the adhesiveness of layers in a composite membrane thereby rendering obvious the limitations of Claim 1.
Regarding the second argument, the prior art certainly provides motivation for providing both glossy and non-glossy portions on the same coating layer. ICHIRO discloses PVA-coated reverse osmosis membranes in a spiral wound membrane module. KOMORI and ROZENBAOUM indicate that spiral wound membrane modules have known issues with delamination occurring at fold lines. LIU provides a solution for such delaminating areas especially for PVA surfaces by increasing surface adhesiveness via increased surface roughness. Therefore, ICHIRO in view of LIU with evidentiary support from KOMORI and ROZENBAOUM makes obvious to combine both glossy and non-glossy portions.
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 previously 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 previously 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). The polymer coating includes polyvinyl alcohol (p0017, p0018, p0033).
However, 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.
As evidenced by KOMORI, semipermeable membranes in spiral type elements require excellent adhesion between a membrane support and a flow passage material to be able to operate under high pressures typically encountered in the operation of the membranes (abstract). However, 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)—as is disclosed by ICHIRO—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) even with the use of reinforcing tape along the fold lines (e.g., these tapes are known to delaminate during use or cleaning; p0006). ROZENBAOUM identifies a specific example of this issue for a PVA-coated membrane where the PVA dissolves during 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).
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., 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 above described long-known issue of PVA adhesion, and the ICHIRO-disclosed surface coating primarily comprises polyvinyl alcohol. 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 along fold lines (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 therefore 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).
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ryan B Huang/Primary Examiner, Art Unit 1772
Prosecution Insights