DETAILED ACTION
This action is in response to an application filed with the US on 04/27/2023 and having an Effective Filing Date of 11/23/2020, in which claims 1-20 are pending and ready for examination.
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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 27 APRIL 2023, 27 OCTOBER 2025 and 09 FEBRUARY 2026 is/are in compliance with the provisions of 37 CFR 1.97 and has/have been considered. An initialed copy of Form 1449 is enclosed herewith.
Claim Interpretation
Claim 1 recites “a rectangular cross section defined by two long sides parallel to each other and two short sides parallel to each other”. The terms “long” and “short” are interpreted as relative to the other sides, i.e. “two sides longer than two other sides” and not to imply any specific length.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) 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.
Claim 1 recites the limitation “at least one internal connection system for the distribution…” and “at least one internal connection system for the collection…”, there is insufficient antecedent basis for “the distribution” and “the collection”. The suggested correction is “at least one internal connection system for
Claim 1 recites the limitation “in a series of at least two circulation ducts” at line 17. This conflicts with the previous limitation to “a series of at least two circulation ducts”. The suggested correction is “in the series of at least two circulation ducts”.
Claim 1 recites the limitation “the retentate coming from the series of at least two circulation ducts, the internal connection system for the distribution (10), the circulation ducts (6) and the internal connection system for the collection (12) being provided with at least one separating layer”. It is not clear if the retentate is coming from just the series of at least two circulation ducts or additionally from “the internal connection system for the distribution (10), the circulation ducts (6) and the internal connection system for the collection (12)”, and similarly if just “the internal connection system for the collection (12)” is provided with the at least one separating layer, or if additionally ““the internal connection system for the distribution (10), the circulation ducts (6)” are provided with the at least one separating layer.
Claim 2 recites the limitation “the separating layer or layers”, which conflicts with the earlier limitation “the at least one separating layer”. The suggested correction is “the at least one separating layer
Claim 6 recites the limitation “several circulation ducts”, which conflicts with the earlier limitation “the at least two circulation ducts”. The suggested correction is “the at least two circulation ducts”.
Claim 6 and 7 recite the limitation “at last one circulation duct”, which conflicts with the earlier limitation “the at least two circulation ducts”. The suggested correction is “at least one of the at least two circulation ducts”.
Claim 8 recites the limitation “each circulation duct”, which conflicts with the earlier limitation “the at least two circulation ducts”. The suggested correction is “each of the at least two circulation ducts”.
Claim 9 recites the limitation “the circulation ducts” which conflicts with the earlier limitation “the at least two circulation ducts”. The suggested correction is “the at least two circulation ducts”.
Claim 9 recites the limitation “at least two outer planer surfaces”, which conflicts with the earlier limitations “a first outer planer surface” and “a second outer planer surface”. The suggested correction is “the first and second outer planer surfaces”.
Claim 10 recites the limitations “an outer planer surface” and “an outer connecting surface”, which conflicts with the earlier limitations “a first outer planer surface”, “a second outer planer surface” and “at least one outer connecting surface”. The suggested correction is “the first or second outer planer surface” and “at least one of the at least one outer connecting surface”.
Claim 11 recites the limitation “the circulation ducts”, which conflicts with the earlier limitation “the at least two circulation ducts”. The suggested correction is “the at least two circulation ducts”.
Claim 12 recites the limitation “the circulation ducts” which conflicts with the earlier limitation “the at least two circulation ducts”. The suggested correction is “the at least two circulation ducts”.
Claim 13 recites the limitation “the separating layer or layers”, which conflicts with the earlier limitation “the at least one separating layer”. The suggested correction is “the at least one separating layer
Claim 15 recites the limitation “the outer connecting surface”, which conflicts with the earlier limitation “at least one outer connecting surface”. The suggested correction is “the at least one outer connecting surface”.
Claim 16 recites the limitation “at least one outer planer surface”, which conflicts with the earlier limitations “a first outer planer surface” and “a second outer planer surface”. The suggested correction is “at least one of the first or second outer planer surface”.
Claim 16 recites the limitation “the separating layer or layers”, which conflicts with the earlier limitation “the at least one separating layer”. The suggested correction is “the at least one separating layer
Claim 16 recites the limitation “the outer planer surface”, which conflicts with the earlier limitations “a first outer planer surface” and “a second outer planer surface”. The suggested correction is “the first and second outer planer surfaces”.
Claim 20 recites the limitation “the nozzles”, and “the nozzle or nozzles”. There is insufficient antecedent basis for this limitation in 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 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, 4-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0321607 A1 (hereinafter “Meyer-Blumenroth”) in view of US 6,077,436 (hereinafter “Rajnik”) and KR 20160113437 A (hereinafter “Song”).
Regarding Claim 1 Meyer-Blumenroth discloses a monolithic membrane filer (i.e. an element) for separating a liquid medium into a permeate and a retentate (Figs. 3-3B, Abstract, [0136]-[0139], while the terms “retentate” and “permeate” are not used the filter element is disclosed to provide a feed/carrier fluid which enters and exits one side of the filter and a shell side fluid, thus the carrier fluid/feed may be considered a liquid medium when it enters and a retentate when it exits and the shell side fluid may be considered the permeate), comprising:
an inorganic one-piece rigid porous support (monolithic component 50) having, on one side, a first outer surface (5) and, on an opposite side, a second outer surface (5) connected to the first outer planar surface by at least one outer connecting surface (5);
at least one series of at least two circulation ducts (membrane tubes 1) for the liquid medium that are formed in the porous support so as to each have a circular cross section;
at least one internal connection system for the distribution (carrier fluid chamber 54 by inlet 7) of the liquid medium, arranged in the porous support to distribute from an inlet (7) formed in the porous support, the liquid medium, in the series of at least two circulation ducts, and
at least one internal connection system for the collection (carrier fluid chamber 54 by outlet 7a) of the retentate, arranged in the porous support to collect up to an outlet (7a) formed in the porous support, the retentate coming from the series of at least two circulation ducts,
the internal connection system for the distribution, the circulation ducts and the internal connection system for the collection being provided with at least one separating layer (membrane tubes 1 may have an additional layer of the side surfaces 9, which may be applied monolithically or as a coating, and may extend to the surface of the end plate 2 [0165]-[0166], Figs. 13-13b, and thus is included on the claimed “circulation ducts” (surfaces 9) and “the internal connection system for the distribution and “the internal connection system for the collection” (surfaces on end plates 2)),
the porous support having a continuity of material and of porous texture (i.e. monolithic component 50 is one piece and porous [0035], [0137]-[0138]) and
a collection system (outlet 8, 8a, and/or the hollow spaces forming shell side 10) for the permeate that has passed through the separating layer or layers.
With regard to a mechanical strength allowing to prevent the breaking of the porous support for a pressure difference of the liquid medium of at least one bar between the separating layer and the outlet surface of the permeate while Meyer-Blumenroth is silent to specific pressure breakage values, it is disclosed that for many applications it would be desirable to withstand transmembrane pressures “above 3 bar” which would cause some prior art filters to fail [0005], where a transmembrane pressure is a pressure difference of the liquid medium between the separating layer and the outlet surface of the permeate, and that their invention desires to improve on these limitations of the prior art such as “the mechanical load capacity or resistance to mechanical influences” and limited pressure range of use [0022], [0034]).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the element/porous support to withstand transmembrane pressures above 3 bar as desired for some applications, and thus the element/porous support would have a mechanical strength allowing to prevent the breaking of the porous support for a pressure difference of the liquid medium of at least one bar between the separating layer and the outlet surface of the permeate as claimed.
Meyer-Blumenroth does not disclose (1) the support has first or second outer planer surfaces (i.e. because it is a cylinder) or the at least two circulation ducts each have a rectangular cross section defined by two long sides parallel to each other and two short sides parallel to each other, or (2) the at least one separating layer continuously deposited between the inlet and the outlet of the porous support so that the liquid medium circulating in the porous support between the inlet and the outlet is only in contact with said separating layer.
However, with regard to (1) outer planer surfaces and circulation ducts with rectangular cross section, Rajnik discloses a similar multichannel unibody structure filter element for separating a feed into a permeate and retentate (C5/L30-48 ), which comprises primary channels (i.e. for a feed and retentate) and egress conduits (i.e. for permeate), where the overall shape of the element may be cylindrical or rectangular and the channels and conduits are in some embodiments circular and in other rectangular in cross section, and the shapes and dimensions may be varied to suit the needs of a particular application (see Figures and C8/L7-24).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the element and porous support of Meyer-Blumenroth to be overall rectangular as well as modify the circulation ducts to be rectangular in cross section because as disclosed by Rajnik these are known alternative shapes to the cylindrical element and circulation ducts used in similar multichannel monolithic inorganic separation elements filtration to suit the needs of particular applications, and would thus result in a reasonable expectation of success. This would thus result in the inorganic one-piece rigid porous support having, on one side, a first outer planar surface and, on an opposite side, a second outer planar surface connected to the first outer planar surface by at least one outer connecting surface (5) ; at least one series of at least two circulation ducts for the liquid medium that are formed in the porous support so as to each have a rectangular cross section defined by two long sides parallel to each other and two short sides parallel to each other.
With regard to the at least one separating layer continuously deposited between the inlet and the outlet, Meyer-Blumenroth discloses the separation layer (i.e. the membranes tube additional coating 30) may be applied as a coating, including after forming and firing the base body [0165]-[0167], but does not provide details of such coating, and while the coating 30 is shown on only one side (the permeate/shell side) of the membranes, no reason for the coating on specifically this side is given.
Further, Song discloses a method for coating a porous support body in an additional layer for form a membrane, where the membrane may be on either side of the support, and is formed by flowing a coating solution/slurry through the membrane to deposit the coating layer, where the coating solution is supplied to the desired side of the membrane and filtered through the support to the other side to form the coating layer on the desired side (Abstract, Pg. 6, first full para, Pg. 8, para starting “In addition…”, Examples).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the element and porous support of Meyer-Blumenroth in view of Rajnik by using the process of Song to deposit the coating layer via filtering a coating solution/slurry through the porous support because this is a known method for applying a coating to form an additional layer on a porous support for filtration. Where it would have been obvious to apply the coating to either side of the porous support, as desired for the particular filtration application to produce desired filtration properties. Thus in combination, when the coating solution is filtered to apply the coating to the “carrier/tube side”, the separation layer would inherently be applied to all “carrier/tube side” surfaces, and thus the internal connection system for the distribution, the circulation ducts and the internal connection system for the collection will be provided with at least one separating layer continuously deposited between the inlet and the outlet of the porous support so that the liquid medium circulating in the porous support between the inlet and the outlet is only in contact with said separating layer
Regarding Claim 2 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein the porous support is obtained by the implementation of an additive method configured so that the porosity of the porous material ensures the routing of the permeate that has passed through the separating layer or layers (Meyer-Blumenroth [0026], [0029], [0034], [0035]).
Regarding Claim 4 Meyer-Blumenroth in view of Rajnik and Song discloses the element according to claim 1, wherein the rectangular cross section of the circulation ducts has two dimensions, one of the dimensions of which is smaller than the other dimension; see supra with regard to rectangular cross section of the circulation ducts, where a rectangle may have two sides shorter than the other two sides, as shown in Rajnik Figs. 24-25a, which includes channels wherein one of the dimensions of which is at least four times smaller than the other dimension, and this would therefore have been an obvious shape of circulation ducts to use in the combined invention.
Regarding Claim 5 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein several circulation ducts are formed in the porous support parallel to each other (Meyer-Blumenroth Figs. 1-3).
Regarding Claim 6 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein at least one circulation duct has a flexible shape while following the main direction of circulation of the fluid to be treated (Meyer-Blumenroth Figs. 8, 10, 11).
Regarding Claim 7 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein at least one circulation duct (6) has a periodic flexible shape (Meyer-Blumenroth Figs. 8, 10, 11).
Regarding Claim 8 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein each circulation duct has a constant cross section over its entire extent between the internal connection system for the distribution and the internal connection system for the collection (Meyer-Blumenroth Figs. 1-3).
Regarding Claim 9 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein the circulation ducts are delimited by two parallel faces (end plates 2, Meyer-Blumenroth Figs. 1-3), and where in the rectangular shape of the combined invention (detailed supra) it would have been obvious to provide the parallel faces perpendicular or parallel to at least two outer planar surfaces of the porous support, such as shown in Rajnik Figs. 24-25a.
Regarding Claim 10 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein the internal connection system for the distribution and the internal connection system for the collection open onto the outside of the porous support via one or more orifices or nozzles (7, 7a) arranged at an outer connecting surface (Meyer-Blumenroth Figs. 1-3).
Regarding Claim 12 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein the internal connection system for the distribution and the internal connection system for the collection are arranged symmetrically on either side of the circulation ducts (Meyer-Blumenroth Figs. 1-3).
Regarding Claim 13 Meyer-Blumenroth in view of Rajnik and Song discloses the element according to claim 1, wherein the collection system for the permeate includes spaces (shell sides space 10) arranged inside the porous support to collect the permeate that has passed through the separating layer or layers (Meyer-Blumenroth Figs. 1-3).
Regarding Claim 14 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 13, wherein the collection system for the permeate opens onto the outside of the porous support via one or more orifices or nozzles (8, 8a) for collecting said permeate; (Meyer-Blumenroth Figs. 1-3).
Regarding Claim 15 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein the first outer planar surface (3), the second outer planar surface (4) and the outer connecting surface (5) are sealed. (the housing, thus including outer planar surface, the second outer planar surface and the outer connecting surface, is disclosed to be nonporous, i.e. sealed, [0033], [0045], [0063], [0091], [0160], [0161], [0173], [0181], [0193]).
Regarding Claim 16 Meyer-Blumenroth in view of Rajnik and Song discloses the element according to claim 1, but does not disclose wherein the collection system for the permeate is recessed in at least one outer planar surface of the porous support to collect the permeate that has passed through the separating layer or layers, the rest of the outer planar surface not recessed being sealed.
However Rajnik discloses used notches 85 in the side of the structure to optimize removal of the permeate stream, i.e. which are recessed in at least one outer planar surface of the porous support to collect the permeate that has passed through the separating layer or layers, where the rest of the outer planar surface not recessed being sealed (C4/L56-63, C12/L45-55, Fig. 26a).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the element of Meyer-Blumenroth in view of Rajnik and Song by providing notches which are recessed in at least one outer planar surface of the porous support to collect the permeate that has passed through the separating layer or layers, where the rest of the outer planar surface not recessed being sealed (i.e. because the housing 5 is nonporous/sealed except for shell side/permeate outlets 8, 8a) as disclosed by Rajnik to optimize removal of the permeate stream.
Regarding Claim 17 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, wherein the porous support includes nozzles (7, 7a, 8, 8a), delimiting the inlet of the internal connection system for the distribution and the outlet of the internal connection system for the collection; (Meyer-Blumenroth Figs. 1-3), which are sealed on the outside because the housing 5 is nonporous/sealed except for shell side/permeate outlets 8, 8a, Meyer-Blumenroth [0181].
Regarding Claim 18 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 17, wherein said nozzles (7, 7a, 8, 8a) extend along directions whose angles relative to the main direction of circulation of the liquid medium are comprised between 0° and 90°; (Meyer-Blumenroth Figs. 1-3).
Regarding Claim 19 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, which is not shown to be used in a separation unit comprising said separating element mounted in an apparatus provided with connections to ensure on the one hand the entry of the liquid medium to be treated and the exit of the retentate as well as on the other hand the collection of the permeate, as claimed.
However, it is disclosed that the connections 52 (i.e. at inlet 7 and outlet 7a) are designed to be connected to connecting lines for the carrier fluid/feed and the connections 56 (i.e. shell fluid inlet/outlets 8, 8a) are designed so that a connecting line for the shell fluid can be connected [0137], [0145], and that the separation element may be used for a variety of filtration applications [0003], [0019], [0022], [0024], [0026].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to provide the separating element of Meyer-Blumenroth in view of Rajnik and Song according to claim 1, in an apparatus provided with connections to ensure on the one hand the entry of the liquid medium to be treated (carrier fluid/feed) and the exit of the retentate (carrier fluid/feed) as well as on the other hand the collection of the permeate (shell side fluid) in order to provide fluid flow for use of the separation element in a fluid filtration process. Where it would have been further obvious to mount the separation element in said apparatus, in order to secure said filter during use for safety and maintain the connections, and where thus said apparatus with separation element would be considered a separation unit.
Regarding Claim 20 Meyer-Blumenroth in view of Rajnik and Song discloses the separation unit according to claim 19, wherein nozzles (7, 7a or 52) which delimit the inlet of the internal connection system for the distribution of the liquid medium to be treated and the outlet of the internal connection system for the collection of the retentate, as well as the nozzles (8, 8a, or 56) for collecting the permeate (Meyer-Blumenroth Figs. 1-3), would obviously be equipped with the connections fixed in a sealed manner to said nozzles, so that fluid flow can be maintained without leaks/waste or contamination.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Meyer-Blumenroth in view of Rajnik and Song further in view of US 20190292108 A1 (hereinafter “Tsuboi”).
Regarding Claim 3 Meyer-Blumenroth in view of Rajnik and Song discloses the element according to claim 1, wherein the material constituting the porous support (2) has a maximum admissible bending stress of at least 10 MPa.
However, Tsuboi discloses a similar multichannel (honeycomb) inorganic separation element (Abstract, [0023]) wherein the bending strength (i.e. seen as equivalent to the claimed maximum admissible bending stress) is higher than or equal to 7.0 MPa to 40 MPa [0045].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the element of Meyer-Blumenroth in view of Rajnik and Song by forming the porous support (i.e. the material constituting the porous support) to have a maximum admissible bending stress of higher than or equal to 7.0 MPa to 40 MPa as disclosed by Tsuboi because this involves using a maximum admissible bending stress which is known to provide suitable results in similar multichannel inorganic separation elements and would therefore provide a reasonable expectation of success.
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).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Meyer-Blumenroth in view of Rajnik and Song further in view of US 4,231,878 A (hereinafter “Esmond”).
Regarding Claim 11 Meyer-Blumenroth in view of Rajnik and Song discloses the separating element according to claim 1, but does not disclose wherein the internal connection system for the distribution and the internal connection system for the collection are arranged asymmetrically on either side of the circulation ducts.
However Esmond discloses a capillary mass transfer device (i.e. a similar multichannel separation element) wherein an inlet manifold for a first fluid (i.e. an internal connection system for the distribution of a first fluid) and a discharge manifold for the first fluid (i.e. an internal connection system for the collection of a first fluid) are provided on opposite ends of the separation element, and are arranged asymmetrically on either side of the capillary tubes (i.e. circulation ducts); and an inlet manifold 33 for a second fluid and a discharge manifold 34 for the second fluid are also provided on opposite ends of the separation element, and are arranged asymmetrically on either side of the capillary tubes (Figs. 1-3, Abstract, C3/L42-65).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the element of Meyer-Blumenroth in view of Rajnik and Song by… as disclosed by Esmond because this is a known alternative arrangement of inlet/outlet flow manifolds for distribution of a fluid to, and collection from, a plurality of separation membrane channels which would provide a reasonable expectation of success and allows alternative positioning of fluid lines as desired for engineering and design purposes.
Conclusion
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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