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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 6 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US 2019/0224623A1).
Regarding claim 1, Fan teaches a draw solute for forward osmosis membrane process (refer abstract), the draw solute comprising a compound include structural site derived from an amine compound (refer abstract, [0046]) and a polyoxyalkylene structural site (refer [0042]), wherein two or more oxyalkylene groups are randomly bonded (refer [0042]), the two or more oxyalkylene groups comprise oxyethylene group and oxybutylene group (refer [0042]). Fan further teaches that “The monomer ratio (EO/PO ratio) plays a critical role in material properties and membrane performance as the ratio affects osmotic pressure, cloud point, residual draw compound level in product water, and to a lesser degree the reverse solute diffusion. The presently disclosed draw compound may have a EO/PO ratio of from about 0.01 to about 10” (refer [0041]). Optimizing ratio of oxyethylene group and oxybutylene group would have been obvious to one of ordinary skill in the art to achieve desired osmotic pressure, cloud point, and residual draw compound level in water. "[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).
Regarding claim 2, Fan teaches limitations of claim 1 as set forth above. Fan further teaches that cloud point temperature is from about 20 °C to about 100 °C (Refer [0072]). Fan further teaches that “The monomer ratio (EO/PO ratio) plays a critical role in material properties and membrane performance as the ratio affects osmotic pressure, cloud point, residual draw compound level in product water, and to a lesser degree the reverse solute diffusion” (refer [0041]). It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the monomer ratio to achieve desired cloud point. "[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).
Regarding claim 6, Fan teaches limitations of claim 1 as set forth above. Fan further teaches a draw solution comprising the draw solute (refer abstract, [0002]).
Regarding claims 9-10, Fan teaches limitations of claim 1 as set forth above. Fan further teaches that “presently disclosed draw compounds may consist of various numbers and orders of monomers, which impact the required solution properties. Osmotic pressure, cloud point temperature, molecular weight, molecular structure and architecture of the presently disclosed draw compounds may be adjusted by adding or subtracting the various monomer units and/or chemical elements” (Refer [0060]), and further discloses that “the molecular weight of the draw compound may be from about 100 to about 25,000 in forward osmosis process. In other cases, the molecular weight of the draw solute may be from about 200 to 15,000” (Refer [0071]). "[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) 3, 8 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US 2019/0224623A1), in view of Koyama et al. (WO 2020/045525A1, refer US 2021/0253450A1 as English language equivalent for claim mapping).
Regarding claims 3 and 8, Fan teaches limitations of claim 1 as set forth above. Fan does not disclose that the number of moles of the oxyalkylene group per 1 mol of the structural site derived from an amine compound is 5 mol or more.
Koyama teaches a draw solute for a forward osmosis membrane process (refer abstract), comprising a compound including a structural site derived from an amine compound (refer [0019] disclosing draw solute of the present embodiment comprises an addition polymer obtained by addition polymerization of an alkylene oxide having 2 to 10 carbon atoms to an amine compound) and a polyoxyalkylene structural site wherein two or more oxyalkylene groups are randomly bonded (refer [0030] disclosing random polymerization). Koyama teaches that average number of moles added of alkylene oxide in the above addition polymer is preferably 0.5 to 20 moles, more preferably 0.5 to 10 moles, further preferably 0.8 to 8 moles, and particularly preferably 1 to 6.5 moles per 1 mole of the nitrogen atom contained in the amine compound (in particular, polyethyleneimine) (refer [0031], and that When two alkylene oxides (for example, EO and BO) are subjected to addition polymerization, the mole ratio of two alkylene oxides in the above addition polymer is, for example, preferably 9:1 to 1:9, more preferably 8:2 to 2:8, and further preferably 6:4 to 4:6 (refer [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the draw solute of Fan to comprise the number of moles of the oxyalkylene group per 1 mol of the structural site derived from an amine compound to be 5 mol or more to provide an optimums draw solute that can be suitably used in forward osmosis membrane process as taught by Koyoma.
Regarding claims 11 and 12, Fan teaches limitations of claim 1 as set forth above. Fan does not disclose that the amino acid compound comprises an aliphatic polyamine having molecular weight of 50 to 5000.
Koyama teaches a draw solute for a forward osmosis membrane process (refer abstract), comprising a compound including a structural site derived from an amine compound (refer [0019] disclosing draw solute of the present embodiment comprises an addition polymer obtained by addition polymerization of an alkylene oxide having 2 to 10 carbon atoms to an amine compound) and a polyoxyalkylene structural site wherein two or more oxyalkylene groups are randomly bonded (refer [0030] disclosing random polymerization). Koyama further discloses that the amine compound is polyethyleneimine, wherein the weight average molecular weight of the polyethyleneimine is 100 to 5000 (refer [0007]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the draw solute of Fan to comprise an aliphatic polyamine having molecular weight of 50 to 5000 to provide an optimums draw solute that can be suitably used in forward osmosis membrane process as taught by Koyoma.
Regarding claims 13 and 14, Fan teaches limitations of claim 1 as set forth above. Fan does not disclose that the number of moles of alkylene oxide per 1 mol of the amine compound is 70 mol or less, or the number of moles of alkylene oxide per 1 mol of the amine compound is 20 mol or more.
Koyama teaches a draw solute for a forward osmosis membrane process (refer abstract), comprising a compound including a structural site derived from an amine compound (refer [0019] disclosing draw solute of the present embodiment comprises an addition polymer obtained by addition polymerization of an alkylene oxide having 2 to 10 carbon atoms to an amine compound) and a polyoxyalkylene structural site wherein two or more oxyalkylene groups are randomly bonded (refer [0030] disclosing random polymerization). Koyama further discloses that “average number of moles added of alkylene oxide in the above addition polymer is preferably 0.5 to 20 moles, more preferably 0.5 to 10 moles, further preferably 0.8 to 8 moles, and particularly preferably 1 to 6.5 moles per 1 mole of the nitrogen atom contained in the amine compound (in particular, polyethyleneimine)” (refer [0031]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the draw solute of Fan wherein the number of moles of alkylene oxide per 1 mol of the amine compound is 70 mol or less, or the number of moles of alkylene oxide per 1 mol of the amine compound is 20 mol or more to provide an optimums draw solute that can be suitably used in forward osmosis membrane process as taught by Koyoma.
Claim(s) 1-3, 6 and 8-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koyama et al. (WO 2020/045525A1, refer US 2021/0253450A1 as English language equivalent for claim mapping).
Regarding claim 1, Koyama teaches a draw solute for a forward osmosis membrane process (refer abstract), comprising a compound including a structural site derived from an amine compound (refer [0019] disclosing draw solute of the present embodiment comprises an addition polymer obtained by addition polymerization of an alkylene oxide having 2 to 10 carbon atoms to an amine compound) and a polyoxyalkylene structural site wherein two or more oxyalkylene groups are randomly bonded (refer [0030] disclosing random polymerization), wherein the two or more oxyalkylene groups comprise oxyethylene and oxybutylene (refer [0033]). Koyama further teaches that mole ratio of the ethylene oxide and butylene oxide is 9:1 to 1:9 (refer [0034]). Koyama also teaches that oud point of above draw solution can be appropriately adjusted by changing the configuration of the above addition polymer, for example, the structure of the amine compound, the type and the number of moles added of the alkylene oxide, and the like, and a draw solution having an appropriate cloud point can be selected according to the intended use (refer [0042] indicating/suggesting that mole ratio of ethylene oxide and butylene oxide can be optimized to achieve desired properties of the draw solution. "[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).
Regarding claim 2, Koyama teaches limitations of claim 1 as set forth above. Koyama further teaches that the draw solution have a cloud point (refer [0041]), and “Suitable cloud points of the draw solution used in such applications vary depending on the concentration of the draw solute in the draw solution, and for example, it is preferably 35 to 80° C., and more preferably 40 to 75° C” (refer [0043]). Koyoma calculates cloud point using 2% and 40% aqueous solutions (refer [0060]-[0061]). However, Koyoma discloses that “cloud point of above draw solution can be appropriately adjusted by changing the configuration of the
above addition polymer, for example, the structure of the amine compound, the type and the number of moles added of the alkylene oxide, and the like, and a draw solution having an appropriate cloud point can be selected according to the intended use” (refer [0042]). Adjusting concentration of the draw solute to determine cloud point would have been an obvious matter of choice to one of ordinary skill in the art because Koyoma suggest using draw solute having cloud point between 35 to 80° C to facilitate phase separation.
Regarding claims 3 and 8, Koyama teaches limitations of claims 1 and 2 as set forth above. Koyama teaches that average number of moles added of alkylene oxide in the above addition polymer is preferably 0.5 to 20 moles, more preferably 0.5 to 10 moles, further preferably 0.8 to 8 moles, and particularly preferably 1 to 6.5 moles per 1 mole of the nitrogen atom contained in the amine compound (in particular, polyethyleneimine) (refer [0031], and that When two alkylene oxides (for example, EO and BO) are subjected to addition polymerization, the mole ratio of two alkylene oxides in the above addition polymer is, for example, preferably 9:1 to 1:9, more preferably 8:2 to 2:8, and further preferably 6:4 to 4:6 (refer [0034]). "[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). Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). It would have been obvious to one of ordinary skill in the art to select desired ratio of oxyalkylene group to amine compound through routine experimentation to provide an optimal draw solution depending on process.
Regarding claim 6, Koyama teaches limitations of claim 1 as set forth above. Koyama teaches that the draw solute is formed into a draw solution for a forward osmosis process (refer abstract, paragraph [0007], [0038]).
Regarding claims 9 and 10, Koyama teaches limitations of claim 1 as set forth above. Koyama teaches that weight average molecular weight of amine compound (polyethyleneimine) sis preferably 100 to 5000 (refer [0023]), and that an addition polymer obtained by addition polymerization of an alkylene oxide having 2 to 10 carbon atoms to an amine compound (refer [0019]), and average number of moles added of alkylene oxide in the above addition polymer is preferably 0.5 to 20 moles, more preferably 0.5 to 10 moles, further preferably 0.8 to 8 moles, and particularly preferably 1 to 6.5 moles per 1 mole of the nitrogen atom contained in the amine compound (in particular, polyethyleneimine) (refer [0031]). "[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). Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). It would have been obvious to one of ordinary skill in the art to select a compound having molecular weight of 500 to 10000 through routine experimentation to provide an optimal draw solution depending on process.
Regarding claims 11 and 12, Koyama teaches limitations of claim 1 as set forth above. Koyama further discloses that the amine compound is polyethyleneimine, wherein the weight average molecular weight of the polyethyleneimine is 100 to 5000 (refer [0007]).
Regarding claims 13 and 14, Koyama teaches limitations of claim 1 as set forth above. Koyama further discloses that “average number of moles added of alkylene oxide in the above addition polymer is preferably 0.5 to 20 moles, more preferably 0.5 to 10 moles, further preferably 0.8 to 8 moles, and particularly preferably 1 to 6.5 moles per 1 mole of the nitrogen atom contained in the amine compound (in particular, polyethyleneimine)” (refer [0031]). "[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).
Response to Arguments
Applicant's arguments filed 02/13/2026 have been fully considered but they are not persuasive.
Regarding rejection of claim 1, applicant argued that claim 1 is not anticipated for failing to teach the limitation of “a molar ratio of the oxyethylene group and the oxybutylene group contained at the polyoxyalkylene structural site in the compound is 1:1or more and 1:30 or less”. However, Koyama discloses that mole ratio of the ethylene oxide and butylene oxide is 9:1 to 1:9 (refer [0034]). The range disclosed by Koyama overlaps the claimed ranges.
Applicant’s argument regarding the claimed draw solute possessing unexpectedly superior high osmotic pressure and favorable phase separation properties is not found to be persuasive because if the composition is physically the same, it must have the same properties. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Applicant further argued that the comparative example 1 having block structure has inferior performance compared to the examples of the instant disclosure. However, Koyama discloses random polymerization. The composition produced by random polymerization is not same as the block polymer of comparative example 1.
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.
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/PRANAV N PATEL/Primary Examiner, Art Unit 1777
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