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 § 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.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 14 recites “a porosity of said porous polymers ranges from 0.1 to 1.0 micrometres”. Porosity is defined as a void volume divided by a total volume and is given as a dimensionless number and/or a percentage. Therefore, it is unclear what is meant by a porosity given a range in micrometers.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 – 5, 9 – 13, and 15 – 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication No. 2021/0394127 to Ho et al. (hereinafter referred to as Ho).
In regard to claim 1, as discussed in the abstract and paragraph [0058], Ho discloses a filtering membrane embedded with carbon nanotubes, which are carbon nanoparticles.
In regard to claim 2, as discussed above, Ho includes carbon nanotubes which are carbon nanoparticles.
In regard to claims 3 and 4, as discussed in paragraph [0062], the carbon nanotubes in Ho can be functionalized by strong acid oxidation. The resulting functionalized carbon nanotubes are considered to have the same structure as carbon nanotubes functionalized by the method recited in claims 3 and 4.
In regard to claims 5 and 13, as discussed in the abstract and paragraphs [0004] and [0005], the membrane includes a polymer membrane, which is an organic membrane. The polymers recited are porous polymers.
In regard to claims 9 – 12, how the membrane is used is not considered to affect its structure. The membrane of Ho includes all of the required structural limitations and is considered to be capable of being used as recited in claims 9 – 12.
In regard to claim 15, as discussed in paragraph [0059], the carbon nanotubes can have a diameter, which is a size of the nanoparticle, that falls within the claimed range of 1 to 100 nanometers.
In regard to claim 16, as discussed in paragraph [0058], the carbon nanotubes, or carbon nanoparticles, are dispersed on the filtering membrane.
In regard to claims 17 – 19, the claims do not add any additional structural limitations. The membrane of Ho includes all of the required structural limitations and is considered to be capable of functioning as recited in claims 17 – 19.
Claims 1, 2, 5 – 7, 9 – 13, and 15 – 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent Application Publication No. 2024/0091689 to Bland et al. (hereinafter referred to as Bland).
In regard to claims 1 and 2, as discussed in the abstract, Bland discloses a filter substrate having diamond particles fixed thereto. The diamond particles can be diamond nanoparticles, detonation diamond, or ultra-dispersed diamond, as discussed in paragraphs [0040] – [0042]. As discussed in paragraphs [0057], [0063], and [0066], the filter substrate can include a filtering membrane. Therefore, Bland discloses a filtering membrane embedded with carbon nanoparticles.
In regard to claims 5 and 6, as discussed in paragraphs [0064], [0067], and [0069], the filtering membrane can be an organic or an inorganic membrane.
In regard to claims 7 and 13, as discussed in paragraph [0067], the organic membrane can include polyether sulfone, polyvinylidene fluoride, or polycarbonate, which form porous polymer membranes.
In regard to claims 9 – 12, how the membrane is used is not considered to affect its structure. The membrane of Bland includes all of the required structural limitations and is considered to be capable of being used as recited in claims 9 – 12.
In regard to claim 15, as discussed in paragraph [0035], the diamond particles preferably having a diameter, or size, from 1 nm to 10 nm, which falls in the claimed range.
In regard to claim 16, as discussed in paragraphs [0099] and [0100], the diamond nanoparticles can be dispersed in the filtering membrane.
In regard to claims 17 – 19, the claims do not add any additional structural limitations. The membrane of Bland includes all of the required structural limitations and is considered to be capable of functioning as recited in claims 17 – 19.
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.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Bland in view of US Patent Application Publication No. 2012/0079943 to VO et al. (hereinafter referred to as VO).
Bland is discussed above in section 7. As discussed in paragraphs [0063] and [0064] of Bland the filter membrane can be made from various materials. Bland, however, does not specifically recite membrane made from one of the materials recited in claim 7 of the instant application. VO is directed to a process of making carbon membranes. As discussed in paragraph [0006] of VO, nanoporous carbon is known to be used as a membrane material and can achieve high permeances with simultaneously high selectivity.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bland to use a nanoporous carbon material as the material for the filter membrane as suggested by VO as this is a well known membrane material and predictably can similarly benefit by the inclusion of diamond nanoparticles.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Other prior art references listed on the PTO-892 (Notice of References Cited) are considered to be of interest disclosing similar membranes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Magali Slawski can be reached at 571-270-3960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773