DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
2. Claims 1-3 are canceled.
Claims 7-23 are newly added.
Claims 4-23 are under consideration.
Priority
3. Receipt is acknowledged of certified copies of papers required by 35 CFR 1.55. Should Applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CRF 41.154(b) and 41.202(e). Therefore, the effective filing date for purposes of applying prior art is 31 January 2022.
Failure to provide a certified translation may result in no benefit being accorded for the non-English translation.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 18 March 2026 was filed after the mailing date of the Non-Final Office Action on 13 March 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Objections Withdrawn
Claim Objections
5. The objection of claim 1 for informalities is withdrawn in view of Applicant’s amendments.
Rejections Withdrawn
Claim Rejections - 35 USC § 112
6. The rejections of claims 1-6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite are withdrawn in view of Applicant’s amendments.
Claim Interpretation
7. In claim 4, “a washing solution supply pipe…. configured to supply a washing solution of strong acid having a pH of 2 or lower…” is being interpreted by Examiner as the supply pipe being acid resistant due to the “configured to” language.
Rejections Maintained
8. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
9. It is noted that Applicant amended the claims but reproduced claim scope that was present at the time of the Non-Final Office Action mailed 13 March 2026.
Claim Rejections - 35 USC § 103
10. Claims 4-23 remain/are rejected under 35 U.S.C. 103 as being unpatentable over Kitade (JP 2007098321 A; published 19 April 2007) (See PTO-892 mailed 13 March 2026) in view of TORAY (TORAY Pressurized PVDF Hollow Fiber Membrane Module “TORAYFIL™” Instruction Manual, Model: “HFU-2020HN”, October 2016) (See PTO-892 mailed 13 March 2026), Boo (Environ. Sci. Technol., 20 October 2016, 50: 12275-12282) (See PTO-892 mailed 13 March 2026), Lenntech (Lenntech, Molecular weight cutoff (MWCO)) (See PTO-892 mailed 13 March 2026), and Iwai (JP 2016203034 A; published 08 December 2016) (See PTO-892 mailed 13 March 2026).
Regarding claims 4-5, 8-11, 14, 16, and 19-22, Kitade teaches a membrane filtration apparatus (Best Mode, ¶ 1) using an external pressure PVDF precision hollow fiber membrane module HFS-1010 (manufactured by Toray Industries, Inc.) (Example 1, ¶ 1). Kitade does not explicitly teach the membrane characteristics. However, TORAY teaches a PVDF hollow fiber membrane module HFU-2020HN, wherein the cleaning pH range is between 0-12, the operating pH range is from 1-10, and the MWCO is 150,000 (Pages 10-11). Thus, it is clear that the material is acid resistant owed to safe cleaning and operating acidic pHs. Since there is a permissive molecular weight (below 150,000), pores must be present. PVDF membranes are negative at a neutral to alkaline pH, as evidenced by Boo: “The control PVDF substrate was found to be negatively charged over the entire pH range investigated, consistent with other reported data. […] Zeta potential of the PVDF substrate became more negative and stable over the whole pH range after treatment with alkaline solution (7.5 M NaOH).” (Results and Discussion, ¶ 3). In addition, a MWCO of 150,000 will filter out microorganisms, as evidenced by Lenntech, which details that ultrafiltration MWCO ranges from 1-500 kDa and rejects “suspended solids, bacteria, viruses, colloidal silica, polypeptides, proteins, antibiotics, etc.”.
Therefore, it would have been obvious to one of ordinary skill at the time of filing to take the apparatus of Kitade and replace the Toray HFS-1010 filter with a Toray HFU-2020HN filter as they are both PVDF hollow fiber membranes used in water filtration. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). One of ordinary skill in the art would have had a reasonable expectation of success for using the methods of Kitade and replacing the filter with a similar one from the same brand. There would have been a reasonable expectation of success given the underlying materials and methods are known, successfully demonstrated, and commonly used as evidenced by the applied prior art.
Kitade further teaches the apparatus below (FIG. 1 & Best Mode, ¶ 2-6):
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wherein seawater or brine is stored in tank 10 (sample water supply) and supplied to membrane module 2 via pump 1, which is connected by pipes (which reads on the upstream pipe configured to supply the sample water), as seen in the figure above. Tanks 7 and 5 hold an alkaline solution and acid solution, respectively. These solutions are used with the water in tank 3 to backwash the membrane module 2 and are connected via pipe 11 (which reads on the washing solution supply pipe). Tank 3 is the collection container as it holds the filtrate, the water after it undergoes filtration through the membrane module 2. Part of this filtrate is mixed with the alkaline or acid solution when backwashing occurs. The backwash water is discharged out of the system via one of the pipes (which reads on the outlet to discharge fluid externally) on the raw water side of membrane module 2. This reads on claim 10. The membrane filtration apparatus made obvious supra would be the membrane module 2. Kitade further teaches that a number of acids can be used as the acid solution, including hydrochloric acid (¶ [0020]). As evidenced by aqion (17 January 2017, pH of Common Acids and Bases), HCl has a pH of 1.08 at 100 mM. Therefore, pipe 11 must be acid resistant to acids of pH 2 or lower. Kitade does not disclose the sample water, acid tank, and alkaline tank all being upstream and in parallel.
However, Iwai teaches this apparatus for wastewater treatment (Abstract & FIG. 2):
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wherein 50 is the sample water input stream, tank 90 stores a hypochlorite (basic) aqueous solution, and tank 92 stores an acid aqueous solution (Membrane separation activated sludge treatment system). 90 and 92 are parallel. All three of these streams are upstream of the membrane module 35, activated sludge treatment apparatus 30, and the tank main body 31 (Membrane separation activated sludge treatment equipment). Therefore, it would have been obvious to one of ordinary skill at the time of filing to take the apparatus of Kitade and further use the design of Iwai with respect to certain pieces to place the acid solution tank, alkaline solution tank, and sample water all upstream of the membrane, as well as making the acid and alkaline solution tanks in parallel with each other. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.). A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 (2007) (see MPEP §§ 2143, A. and 2143.02).
Neither of the references teach all three input streams in parallel. However, it would have been obvious to make the sample water supply, acid solution tank, and alkaline solution tank in parallel so that they all flow through one input pipe to the membrane. It would further be obvious that there would be a branching point in this input pipe between the pipe connecting the sample water supply and the washing solution supply pipe, which connects the acidic and alkaline solution storage tanks. This reads on claim 16. This is advantageous in that the amount of piping used will be minimized, thus saving economy and construction labor. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, F.). The results are predictable since the obvious apparatus with upstream parallel inputs can each still contact the filter.
One of ordinary skill in the art would have had a reasonable expectation of success for taking the apparatus of Kitade, further using the design of Iwai to modify the acid tank and alkaline tanks to be upstream, and putting the tanks and the supply sample stream in parallel for cost-effectiveness. There would have been a reasonable expectation of success given the underlying materials and methods are known, successfully demonstrated, and commonly used as evidenced by the applied prior art.
Regarding claim 6, Kitade, TORAY, Boo, Lenntech, and Iwai make the concentration apparatus obvious, as seen supra. As discussed, Kitade also teaches filtering the sample water with the membrane filtration apparatus, acid washing, and supplying the alkaline solution to the membrane. While Kitade teaches washing, they do not explicitly teach having multiple acid washing steps. However, TORAY further teaches “In the case of cleaning with acid and with sodium hypochlorite alternatively, rinse the cleaning line and the module with clean water thoroughly after each cleaning.” (Page 30). “Alternatively” implies that the acid and base washes can be done one after each other, so long as the line and module are rinsed with water between washes. In addition, cleaning the membrane module an additional time with acid should not impact the outcome of the process. Therefore, it would have been obvious to one of ordinary skill at the time of filing to take the acid and alkaline tanks of Kitade, and further apply the method of TORAY to alternate between acid and base washes, as claimed. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.). A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 (2007) (see MPEP §§ 2143, A. and 2143.02). One of ordinary skill in the art would have had a reasonable expectation of success for taking the apparatus of Kitade and applying the method of alternating acid and alkaline washes of TORAY. There would have been a reasonable expectation of success given the underlying materials and methods are known, successfully demonstrated, and commonly used as evidenced by the applied prior art.
Regarding claims 7, 13, and 18, the claim scope of previously presented claim 3 is recreated here. The TORAY filter discussed above is a “hallow fiber membrane module”, wherein the membrane is housed inside a module that is pressure-resistant up to the maximum inlet pressure of 600 kPa (Page 11) and maximum trans-membrane pressure of 300 kPa (Page 10), which reads on a pressure-resistant pressure vessel that houses the membrane, as claimed. 300 and 600 kPa are equivalent to 0.3 MPa and 0.6 MPa, respectively.
Regarding claims 12 and 23, Kitade teaches that a number of acids can be used as the acid solution, including sulfuric acid (¶ [0020]). As evidenced by aqion, sulfuric acid has a pH of 2.5 at 1 mM. Therefore, it would be obvious to use an acid solution with a pH between 2.5 and 3.5.
Regarding claim 15, Kitade teaches that the membrane can be a number of materials, including polyethylene and PVDF (¶ [0025]). Therefore, it would have been obvious to one of ordinary skill before the filing date to take the PVDF membrane and substitute it for a polyethylene membrane. Both membranes will serve the same purpose of filtering out unwanted materials. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
It would be equally obvious to combine PVDF and polyethylene in one membrane with multiple materials as they are both taught for the same purpose. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.). A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 (2007) (see MPEP §§ 2143, A. and 2143.02).
Regarding claim 17, the sample water in tank 10 of Kitade has not been filtered yet and thus it is a solution that has not been filtered by the membrane filtration apparatus.
Double Patenting
11. Claims 4-23 remain/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/274,490 (now claims 1 and 11 of U.S. Patent No. 12,722,120) in view of Kitade (JP 2007098321 A; published 19 April 2007), TORAY (TORAY Pressurized PVDF Hollow Fiber Membrane Module “TORAYFIL™” Instruction Manual, Model: “HFU-2020HN”, October 2016), Boo (Environ. Sci. Technol., 20 October 2016, 50: 12275-12282), Lenntech (Lenntech, Molecular weight cutoff (MWCO)), and Iwai (JP 2016203034 A; published 08 December 2016).
Claim 1 of ‘120 recites a concentration apparatus comprising a negatively charged membrane, a sample water supply disposed upstream of the membrane, an acidic solution storge tank disposed upstream and in parallel with the sample water supply, an alkaline solution storage tank disposed upstream and in parallel with the sample water supply and acid solution storage tank, a first solenoid valve disposed on the flow path from the sample water supply to the membrane, an outlet disposed downstream of the membrane and operable to discharge fluid externally, and a collection container disposed downstream of the membrane and in parallel with the outlet and configured to collect fluid. Claim 1 of ‘120 further recites a controller to execute a sequence of opening and closing the solenoid valves. Claim 1 of ‘120 does not discuss the membrane filtration apparatus or a washing solution tank/supply pipe. However, this claim in view of Kitade, TORAY, Boo, Lenntech, Iwai, and agion (17 January 2017, pH of Common Acids and Bases) make claims 4-23 of the Instant Application obvious, as discussed supra.
Claim 11 of ‘120 recites the concentration apparatus as discussed above, but further discloses a concentration method where solenoid valves are opened and closed. While not explicitly stated in the claims, the first step of opening valve 1 and 4 and closing the others drives the sample water through the membrane, the second step of opening valve 2 and 4 and closing the others will push the acid solution through the membrane, and the third step of opening valve 3 and closing the others will push the alkaline solution through the membrane. Claim 11 of ‘120 does not explicitly talk about a wash step. This claim in view of Kitade, TORAY, Boo, Lenntech, Iwai, and aqion make claim 6 of the Instant Application obvious, as discussed supra.
Due to the copending application being patented, this is no longer a provisional rejection.
is withdrawn in view of Applicant’s amendments.
Response to Traversal
12. Applicant argues that Iwai’s wastewater flow path 50 is located upstream of the membrane module 35 and the first and second chemical solution tanks are located downstream of the membrane module 35. However, Examiner respectfully states that both chemical solution tanks are physically located upstream of the membrane module 35, as noted on page 7 of the Non-Final Office Action mailed 13 March 2026.
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).
New Objections
Claim Objections
13. Claims 4 and 15-16 are objected to because of the following informalities:
Regarding claim 4, there should be a comma after “capturing microorganisms”.
Regarding claim 15, the comma before “and/or” should be a semicolon for clarity.
Regarding claim 16, there should be a comma after “acidic solution storage tank”.
Appropriate correction is required.
New Rejections
Claim Rejections - 35 USC § 112(d)
14. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
15. Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 requires the membrane to be made of an acid-resistant material that withstands pH 2 or lower. However, cellulose acetate and stainless steel are not resistant to pH of 2 or lower. The lack of pH resistance of cellulose acetate is demonstrated by Daems (26 February 2018, RSV Adv., 8(16): 8813-8827): “Most commercially available NF membranes that are applied in industrial environments are either amide or cellulose acetate based and have thus far shown limited stability at extreme pH conditions (above 12 or below 2) as they obviously suffer from hydrolysis under these conditions.” (1. Introduction, ¶ 1). The lack of pH resistance of stainless steel is demonstrated by UnifiedAlloys (08 August 2020, Accessed via WayBack Machine): “Hydrochloric acid is an exception to the general acid resistance of stainless steel and should be avoided.” (Acids, last ¶). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form so long as no duplicates are made, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
16. No claim is allowed. 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 KRISTINA E LY whose telephone number is (571)272-5169. The examiner can normally be reached Monday - Thursday, 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Allen can be reached at (571) 270-3497. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTINA E. LY/Examiner, Art Unit 1671
/Michael Allen/Supervisory Patent Examiner, Art Unit 1671
