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 .
Claim Rejections - 35 USC § 103
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, 2, 5, 8, 10, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Bzdek et al (US 2008/0092435) in view of Haan et al (US 2021/0355388.)
Bzdek teaches filtering biodiesel (contains vegetable oils [0017]) to remove impurities using a hydrophilic membrane [0008] which is periodically backflushed [0009]. The membranes are preferably hydrophilic – see [0027]. It also teaches that hydrophobic materials are not preferred. Nanofiltration membrane – see [0026], [0035], and claim 7. The pore size range claimed, at most 30 nm, is for a nanofiltration membrane, which by definition is met by the reference, unless otherwise shown.
Regarding the listed impurities in the oil: applicant’s feed source is vegetable oils as disclosed in [0003] and [0004]. Bzdek teaches biodiesel containing vegetable oils with similar impurities as disclosed by the applicant in [0017] and [0023]. In the arguments of 2/12/26, applicant tries to distinguish their process as filtering the raw materials for biodiesel as compared to Bzdek filtering the processed biodiesel. Irrespective, under the broadest reasonable interpretation of the claims in the light of the specification, the feed source is similar. While many of the contaminants in applicant’s feed are not listed by Bzdek, they could be inherently present is the biodiesel, and if present, they would be removed by the filter.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986)
Bzdek does not teach TiO2 based nanofiltration or ultrafiltration membrane. Haan teaches ceramic and titania nanofiltration membranes for purifying hydrocarbons (related filed) for the express purpose of removing FCC catalyst, which are heavy metal based, which is similar to applicant’s objective. In [0038] and [0039] Haan teaches the advantages of using ceramic NF membranes having pore size < 30 nm. The ceramic is Titanium oxide, which is well-known as hydrophilic. While Haan teaches using membranes made hydrophobic for the express purpose of removing water along with the FCC catalyst form the hydrocarbon, the underlying teaching of having the ceramic membrane for their excellent properties cited in [0039] is notable. Particularly, the following from the paragraph [0039]:
“Ceramic nano filtration membranes are known to comprise chemically inert, high-temperature stability, and anti-swelling properties when subjected to optimal conditions. Such membranes include narrow and well-defined pore size distribution, in comparison to polymeric membranes, which allows ceramic membranes to achieve a high degree of particulate removal at high flux levels.”
In [0040], Haan teaches the ceramic nanofiltration membrane as titanium oxide and mesoporous titania as the first and second options, and because Haan uses titania as the ceramic membrane, these are immediately envisaged.
Therefore, it would have been obvious to one of ordinary skill in the art to use hydrophilic functionalized titania membranes in the teaching of the hydrophilic membranes of Bzdek for purifying biodiesel. (Note: applicant uses commercially available or previously known hydrophilized TiO2 membranes – specification at [0042].)
MPEP 2143: Also, the rationales for combining the references apply:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way;
For claim 8, see [0035], teaching a combination of ultra filtration and nanofiltration, which meets two different types of membranes. Having two nanofiltration membranes in place of one would also have been obvious for providing added capacity or throughput for the process. Note that applicant’s NF membrane significantly overlaps the UF membrane ranges by the industrial standards (see rejection 2 below).
Claim 10: biodiesel in Bzdek is from vegetable oil, etc.[0017]
Claim(s) 2-3 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Bzdek et al (US 2008/0092435) in view of Haan et al (US 2021/0355388) and further in view of Nesc Techbrief (citation in 892).
Teaching of Bzdek with respect to claim 1 is detailed in rejection 1. Instant claims recite the pore size range (30 nm or less) and molecular weight cut-off range 8,000-100,000) of the membrane. The Nesc Tech brief shows (fig. 2) standards for these ranges for both ultrafiltration and nanofiltrations membranes. The ranges applicant claim covers the nanofiltration range and significantly overlaps the ultrafiltration range. Bzdek teaches both nanofiltration and ultrafiltration membranes in combination. The molecular weight cut-off in Bzdek is 1000-250,000D [0027], which significantly overlaps the claimed range, which is prima facie obvious. It is a result-effective variable that can be optimized, depending on what impurities need be filtered. The pore size corresponds to the molecular weight cut-off.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim(s) 12 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bzdek et al (US 2008/0092435) in view of Haan et al (US 2021/0355388) further in view of Gao et al, “Backpulsing technology applied to MF and NF …” Journal of Membrane Science, 587, (2019,) 117136.
Teaching of Bzdek with respect to claim 1 is detailed in rejection 1. Bzdek teaches backwashing the filter in claim 17 and [0009]. Back-pulsing is only backwashing for shorter time periods. Back-pulsing is also well-known in the industry for quick and efficient cleaning of the membranes without significant downtimes. Gao NPL teaches details of back-pulsing technology and how to optimize the frequency, duration and pulse pressure. Therefore, it would have been obvious to one of ordinary skill to use the teaching of Gao to design and use back-pulsing for a more efficient membrane process.
Claim(s) 14, 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Bzdek et al (US 2008/0092435) in view of Haan et al (US 2021/0355388) and further in view of WO 2011/105966,
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Teaching of Bzdek with respect to claim 1 is detailed in rejection 1. Bzdek teaches self-cleaning (clean-in-place) and backwash filtration in multi-stage filtration (combination) in [0025] and [0026], but does not teach added filtration steps upstream as claimed. WO 2011/105966 teaches various filtration steps prior to nanofiltration of used vegetable and other organic oils. WO, while teaching a PDMS membrane, also teaches various prefiltration steps to make the process more efficient. Therefore, it would have been obvious to one of ordinary skill to use the teaching of WO in the teaching of Bzdek in the purification of biodiesel.
Response to Arguments
Applicant's arguments filed 2/12/26 have been fully considered but they are not persuasive.
The added limitation of contaminants in the feed is addressed in the rejection. The examiner has split the rejection of the claims into four separate groups to bring more clarity.
Argument that Bzdek teaches away from hydrophilic membrane – this does not make sense because Bzdek clearly teaches hydrophilic membrane and teaches that hydrophobic membranes are not preferred.
In response to applicant's arguments against the references individually, 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). In this case argument that Haan teaches hydrophobic membrane is unpersuasive. Haan’s teaching of titania membrane is whet is used in the rejection, as is clearly shown in the rejection.
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.")
Conclusion
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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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
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