DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-9 and 16-20 in the reply filed on 9/30/25 is acknowledged.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 1-9 and 16-21 are rejected under 35 U.S.C. 102(a1) as being anticipated by WO 2018/065526.
Claim 1 recites a microporous article having PEDEK-PEEK copolymer, the PEEK and PEDEK are defined by formulae I and II. Claim 9 further narrows down the formulae to (Ia) and (IIa). Further, claim 1 requires PEDEK:PEEK in the range 55:45 to 99:1. Claim 8 narrows this down to 60:40 – 95:5 in the first alternative. Claim 1 also has a pore size range of 0.005-0.5 microns, which is further limited in claim 3 to 0.008-0.250 and in claim 17 to 0.01-0.15 microns. Claims 6 and 7 defines the porous article as tubular or flat sheet membrane.
The WO reference teaches tubular and flat sheet membranes (page 27, lines 13-27) made from formula (Ia) and (IIa) as claimed – see abstract, page 4 teaching the polymer as copolymer (PEEK-PEDEK), and pages 6 and 7 teaching formulae (Ia) and (IIa). Page 7 teaches: “[t]he PEEK-PEDEK copolymer may include relative molar proportions of recurring units (J'-A) and (J'-D) (PEEK/PEDEK) ranging from 95/5 to 60/40,” and also >50 mol.% of PEEK on the same page.
In the response to the non-final action of 2/3/26, applicant argues that the claimed ratio of PEDEK/PEEK of 55/45 to 99/1 is not met by this range. However, further study of the claims with respect to this argument revealed that the structure of the repeat unit of PEEK:
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is present in seral of the strictures of PAEK presented in claims 8 and 20, which can be up to 20% in claim 20 and 30% in claim 8. For example, see the boxed portion of formula (K-E) in claim 8:
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This would add 20%-30% more PEEK units in the claimed structure of claim 1, and reduce PEDEK in claim 1 from 0.55 to 0.44 or 0.39, bringing the claimed ratio to within the range in the reference. Note that the claimed structure and ratio only requires PEEK links and PEDEK links, which can be random. Therefore, this would anticipate the claims.
Porosity and pore size range are taught as claimed in page 28, lines 21-26. These anticipate claims 1-3, 6-9, and 16-17.
For claim 20, the sum of PEDEK and PEEK is 80% or more – see page 7, lines 8-10.
Water flux as in claims 4 and 18, see working examples showing significantly more than the lower limit claimed. While the membrane in the examples are not the PEEK-PEDEK copolymer, these are shown as equivalent examples. Nonetheless, the water flux is also an inherent material property of the article which is controlled by porosity and pore-size. Therefore, the water flux required can be achieved by manipulating these parameters, which would have been obvious to one of ordinary skill in the art.
Tensile modulus as in claims 5 and 19: while WO does not teach actual tensile modulus, this is also an inherent property of the membrane – same material and physical structure.
Claim 21 is not patentable – product by process – MPEP 2113.
Response to Arguments
Applicant's arguments filed 2/3/26 have been fully considered but they are not persuasive. They are addressed in the rejection..
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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777