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 .
Response to Amendment
Applicant’s amendments filed 02 February 2026 have been fully considered.
Regarding the Specification objection, Applicant has addressed the misspelling of “Eriochrome Black T”; however, the inconsistent usage of the “TM” indicator throughout the disclosure remains.
Regarding the Claim Objections of Claims 1 and 11, Applicant’s amendments to Claim 1 and cancellation of Claim 11 have obviated these objections, which are withdrawn.
Regarding the rejection(s) of Claim(s) 1-11 under 35 U.S.C. 103 as being unpatentable over HUANG et al. (Journal of Membrane Science, 499, 2016, pg. 269-281) in view of SHUMBULA et al. (Arabian Journal of Chemistry, 15, 2022, 103798), Applicant’s amendments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of HUANG et al. (Journal of Membrane Science, 499, 2016, pg. 269-281), SHUMBULA et al. (Arabian Journal of Chemistry, 15, 2022, 103798), and CHEN et al. (US 2016/0101390 A1)
Response to Arguments
Applicant's arguments filed 02 February 2026 have been fully considered but they are not persuasive.
With respect to the as-amended and newly claimed features, Applicant cites examples from their disclosure as demonstrating that such a claimed membrane possesses functional features attributed to the structural features of as-amended Claim 1. Applicant argues “the assertions and conclusion in the Office Action imply that the claim features would have been simple to achieve or otherwise somehow easily met after the fact. But the Office Action's assertions and conclusion are demonstrative of precisely the type of ex post facto analysis-using Applicant's disclosure as a guidepost-that is improper during examination. "However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art." M.P.E.P. § 2142” (pg. 9, top).
The Examiner respectfully disagrees.
First, regarding Applicant’s argument of hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Second, if arguendo Claims 21-23 are indeed considered functional features as argued by Applicant, regarding Applicant’s argument that such functional features are associated with the structural features recited in Claim 1 and therefore, the functional features reflect the nonobviousness of the claimed membrane, it is noted that while the primary prior art HUANG is deficient in explicitly disclosing the claimed contact angle of the membrane, HUANG does note that treatment of the PSF membrane with PDA and AgNPs reduced the water contact angle from 76° to 48-52° (§3.3). While the focus of the HUANG art was not on optimizing the water contact angle, other studies, such as the now-cited CHEN et al. (US 2016/0101390 A1) reference teaches optimization of water contact angle under similar conditions. CHEN not only discloses a water contact angle well within the claimed range of 25-30°, but also provides sufficient reasoning as to why one of ordinary skill in the art would be motivated to achieve such values. As such, all structural features and hence, all claimed functional features, of the membrane of Claim 1 are obvious over the prior art.
The limitations of Claims 21-23 are not considered functional features of the membrane of Claim 1. The claimed invention is directed to a membrane comprising a PSF support with a PDA and Ag/PDA layer disposed upon the support. The prior art either discloses or makes obvious all claimed structural features. Claims 21-23 merely recite various applications of the membrane, e.g., for measuring DI water permeate flux (Claim 21) and for measuring EBT and MgSO4 rejection rates (Claims 22 and 23). 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). Whether the claimed membrane is being utilized to filter DI water or EBT or MgSO4 solutions has no impact on structural or functional limitations of the membrane itself. As claimed in Claim 1, all features are known or obvious over the art; any such use of the membrane would necessarily result in the same outcome whether recited or not in the prior art.
Furthermore, Applicant seems to be attempting to characterize the inventive membrane based on its ability to perform certain filtrations/rejections; 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). The subject of patentability is not determined by the water or fluids or material on which the membrane is operating.
Specification
The disclosure is objected to because of the following informalities:
Inconsistent usage of the “TM” indicator throughout the disclosure (e.g., “Drop Shape Analyzer” on pg. 24, lines 20-21; “ESCALAB 250Xi XPS” on pg. 24, line 22; “ProtocoL3 SYNBIOSIS” on pg. 28, line 7—note that this is not an exhaustive list as there are too many instances to be listed of inappropriate indicators or lack thereof of trade names or marks). Trade names or marks used in commerce should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
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) 1, 6, 7, 10, and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over HUANG et al. (Journal of Membrane Science, 499, 2016, pg. 269-281) in view of SHUMBULA et al. (Arabian Journal of Chemistry, 15, 2022, 103798) and CHEN et al. (US 2016/0101390 A1).
Regarding Claim 1, HUANG discloses a polysulfone membrane modified by the deposition of a polydopamine layer and the immobilization of silver nanoparticles on the polydopamine layer (i.e., a membrane comprising a polysulfone polymer support; a polydopamine (PDA) layer disposed on a surface of the polysulfone-based support; §1, par. 6 found in pg. 270, col. 2). The use of polyvinylpyrrolidone provides a uniform dispersion of the silver nanoparticles on the polydopamine surface (i.e., wherein… particles are uniformly disposed on the surface of the polydopamine layer; §3.2, par. 4, pg. 273, col. 2).
The polysulfone membrane has a porous surface structure having a pore size around 5-12 nm (§3.2, par. 2, pg. 273, col. 1-2), which reads on the claimed range of a polysulfone polymer support having a pore size up to 100 nanometers. After polydopamine modification, HUANG discloses the surface pore size did not significantly change (§3.2, par. 2, pg. 273, col. 1-2). Thus, the disclosed surface pore size overlaps with the claimed range of the membrane [having] a pore size of from 3 nm to 8 nm and therefore establishes a case of prima facie obviousness (MPEP 2144.05).
HUANG is deficient in disclosing a silver/polydopamine (Ag/PDA) composite layer disposed on a surface of the polydopamine layer; wherein the Ag/PDA composite layer comprises core-shell structure particles and spherical particles, the core-shell structure particles have a silver nanoparticle core and a polydopamine shell, and the spherical particles are silver-decorated polydopamine particles.
SHUMBULA acknowledges that silver nanoparticles are known antimicrobial agents for use in combination with biocompatible surfaces, such as polydopamine-coated surfaces, for water treatment and biological applications—however, their use in practical applications are limited due to nanoparticle agglomeration (§1, par. 1-2, pg. 2, col. 1-2; abstract). SHUMBULA discloses solutions for such issues by fabricating nanocomposites based on silver nanoparticles and polydopamine, namely silver nanoparticles encapsulated within a polydopamine layer in a core-shell manner and silver nanoparticles incorporated onto the outside of polydopamine particles (§1, par. 3, pg. 2, col. 2; §3.1, par. 2, pg. 4, col. 2). Such nanocomposites advantageously prevent the challenges of silver nanoparticle agglomeration and offer improved biocompatibility (§3.2) and antibacterial and antimicrobial effects (§3.3). The claim would have been obvious to one of ordinary skill in the art because the substitution of one known element for another would have yielded predictable results (MPEP §2143.01 B). Thus, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious to substitute the silver nanoparticles of HUANG with the disclosed core-shell silver nanoparticle-polydopamine and silver-decorated polydopamine particle nanocomposites disclosed by SHUMBULA.
Modified HUANG is deficient in disclosing the membrane has a water contact angle of from 25° to 30°.
CHEN discloses polysulfone membrane modification with polydopamine and silver nanoparticles (abstract). Briefly, a polysulfone membrane (p0026) was treated with a dopamine hydrochloride solution in Tris buffer at pH 8.5 to form a PDA-modified membrane (p0027); the PDA-modified membrane was subsequently exposed to silver nitrate solution for up to 24 hrs (p0028). Water contact angle measurements (p0029, p0045; FIG. 5) were made and demonstrated that the PDA and PDA/AgNP modifications significantly increased the hydrophilicity, e.g., yielding an approximately 26-27° water contact angle for a modified membrane (FIG. 5, PDA-720), which reads on the claimed range of a water contact angle of from 25° to 30°. Advantageously, this greater hydrophilicity enhances membrane biofouling resistance (p0022) and further facilitates the recharging of silver nanoparticles on the membrane (p0023). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to further provide greater hydrophilicity, i.e., having a water contact angle of from 25° to 30°, as suggested by CHEN for the membrane made obvious by modified HUANG.
Regarding Claim 6, modified HUANG makes obvious the membrane of Claim 1. SHUMBULA further discloses that the monodispersed polydopamine spheres have an average diameter of 238 nm (and the average diameters of the silver nanoparticles were less than 10 nm; §3.1, par. 2, pg. 4, col. 1-2), which reads on the claim that the silver-decorated polydopamine particles have a particle size in a range of 50 to 900 nm.
Regarding Claim 7, modified HUANG makes obvious the membrane of Claim 1. SHUMBULA further discloses silver nanoparticles incorporated onto the outside of polydopamine particles (i.e., wherein the silver-decorated polydopamine particles are decorated with Ag nanoparticles immobilized on a surface of the spherical particles; §1, par. 3, pg. 2, col. 2; §3.1, par. 2, pg. 4, col. 2; see FIG. 1(d)-(f)).
Regarding Claim 10, modified HUANG makes obvious the membrane of Claim 1. Modified HUANG is deficient in explicitly disclosing that the overall membrane has an average surface roughness of 30 to 80 nm because the claimed membrane is made obvious over a combination of references, i.e., no actual measurement of such a property is possible to perform in the prior art. However, it is noted that HUANG teaches that the surface roughness of a silver nanoparticle-patterned polysulfone-polydopamine membrane ranges from 9 to 24 nm and that such a roughness is dependent on silver ion concentration (§3.2, par. 5, pg. 273, col. 2). It stands to reason that the incorporation of the silver nanoparticle-polydopamine nanocomposites taught by SHUMBULA to have improved antifouling capabilities would further enhance the surface roughness of the membrane surface to levels comparable with the claimed range of 30 to 80 nm. Thus, even though the prior art may not have explicitly disclosed the claimed average surface roughness, such a range would be expected or optimizable by routine experimentation (i.e., by adjusting silver content in the silver nanoparticle nanocomposites; HUANG, §323, par. 5). 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 21, modified HUANG makes obvious the membrane of Claim 1. The instant limitation of “having a DI water permeate flux of from 50 to 71 liters per square meter per hour per bar” is directed toward a material or an article worked upon by the claimed membrane or a manner or method by which the claimed membrane is used and thus, is not subject to patentability, namely the use of the membrane for producing a permeate. 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). 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).
Regarding Claims 22 and 23, modified HUANG makes obvious the membrane of Claim 21. The instant limitations of “having a Eriochrome Black T (EBT) rejection rate of at least 95% and a MgSO4 rejection rate of no more than 14%” (Claim 22) and “having a Eriochrome Black T (EBT) rejection rate of at least 99% and a MgSO4 rejection rate of no more than 14%” (Claim 23) are directed to materials or articles worked upon by the claimed membrane or manners or methods by which the claimed membrane is used and thus, are 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). 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).
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
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