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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (PRO 63/371,548, filed 16 August 2022) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-28, in the reply filed on 08 June 2026 is acknowledged.
Claims 29 and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08 June 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
The claimed invention recites “silk nanomaterials” (e.g., Claim 1); however, the claims further recite that “the silk nanomaterials are silk fibers, and optionally wherein the silk fibers have an average diameter in a range from about 10 µm to about 60 µm…” (Claim 5). This claiming of silk fibers being “nanomaterials” yet also claiming the silk fibers having diameters of micron-sized dimensions is confusing and contradictory. It is further noted that the disclosed invention seems to be directed toward naturally-produced silk fibers, i.e., silk fibroin (see Claim 2) from the silkworm Bombyx mori, which naturally has fiber diameters in the range of 10 to 25 µm but does contain individual fibrils measuring 20 to 30 nm in diameter.
The claimed invention recites “collogen” in Claims 6 and 7. The Specification further recites “collogen” throughout but also utilizes the spelling “collagen”. The Examiner will interpret “collogen” and “collagen” to be variant spellings of the same protein. However, it is suggested to amend the claims and/or Specification to reference a consistent term to avoid confusion.
Specification
The disclosure is objected to because of the following informalities:
Regrading Claim 24, the use of the terms “DuPont FilmTecTM NF270” and “DuPont FilmTecTM NF90”, which are trade names or marks used in commerce, has been noted in this application (pg. 1, line 19; pg. 2, lines 15-16; pg. 5, line 13; pg. 8, lines 2-3; pg. 14, lines 30-31; pg. 29, lines 7-8). The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Drawings
The drawings are objected to because figures are of poor resolution (i.e., FIG. 1B-scale bar is not clear). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 14 is objected to because of the following informalities:
“an inorganic material selected from the group consisting of… zeolite nanoparticles, and a ceramic…”.
Claim 16 is objected to because of the following informalities:
“wherein the porous substrate has a thickness…”.
Appropriate correction is required.
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.
Claims 14, 24, and 26 are 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.
Regarding Claim 14, the phrase “e.g.” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See lines 3-5 and lines 9-10. See MPEP § 2173.05(d).
Regarding Claim 14, the phrase “etc.” (line 5) renders the claim indefinite because it is unclear what is encompassed or considered to be part of a “poly(ether ketone)”.
Regrading Claim 24, the use of the terms “DuPont FilmTecTM NF270” and “DuPont FilmTecTM NF90”, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Regarding Claim 24, the phrase “such as” (lines 3-4) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 26, the phrase “such as” (line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-5, 8-11, and 21-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SISKOVA et al. (Polymers, 29 July 2021, 13, 2499).
Regarding Claim 1, SISKOVA discloses preparation of fibrous membranes from recycled poly(ethylene terephthalate)/silk fibroin (r-PSF) (abstract), said nanofibers having average diameters in the nanometer range (i.e., [a] nanofiltration membrane… comprising a silk layer, wherein the silk layer comprises silk nanomaterials; abstract; FIG. 1; §3.1; Table 2).
The limitation “for filtering water” is directed to an intended use of the claimed nanofiltration membrane and is not considered for patentability. If a prior art structure is capable of performing the intended use as recited, then it meets the limitations of the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); MPEP §2111.02 II).
Furthermore, the limitation “for filtering water” is merely a preamble limitation and bears no patentable weight. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (MPEP 2111.02 II).
Regarding Claim 2, SISKOVA discloses the nanofiltration membrane of Claim 1. As indicated earlier, SISKOVA further discloses silk fibroin (i.e., wherein the silk nanomaterials comprise fibroin; abstract; §3, par. 1).
Regarding Claims 3 and 4, SISKOVA discloses the nanofiltration membrane of Claim 1. As shown in FIG. 1, SISKOVA discloses the silk nanomaterials in the form of fibers, e.g., nanofibers (i.e., wherein the silk nanomaterials are in the form of fibers, foams, meshes, or sponges, or a combination thereof (Claim 3); wherein the silk nanomaterials are in the form of nanofibers (Claim 4)).
Regarding Claim 5, SISKOVA discloses the nanofiltration membrane of claim 1. As shown in FIG. 1, SISKOVA discloses the silk nanomaterials in the form of fibers (i.e., wherein the silk nanomaterials are silk fibers).
Regarding Claim 8, SISKOVA discloses the nanofiltration membrane of Claim 1. The instant limitation requiring “the silk nanomaterials have a weight loading range in a range from about 40 µg/cm2 to about 150 µg/cm2 in the nanofiltration membrane” is directed toward properties inherent in the claimed silk nanomaterials. The 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; MPEP §2112 I). Applicants have only claimed “silk nanomaterials”; because the prior art teaches at least this similarly broad limitation, further claimed inherent properties such as the cited “weight loading” is necessarily inherent unless shown otherwise.
Regarding Claim 9, SISKOVA discloses the nanofiltration membrane of Claim 1. SISKOVA further recites the mean pore sizes of various membrane formulations in the hundreds of nanometer range (Table 2), which reads on the claimed range of from about 10 nm to about 1.5 µm.
Regarding Claim 10, SISKOVA discloses the nanofiltration membrane of Claim 1. SISKOVA further recites the thicknesses of silk layer, e.g., 0.08 mm or 0.07 mm (Table 6), which reads on the claimed range of from about 100 nm to about 100 µm.
Regarding Claim 11, SISKOVA discloses the nanofiltration membrane of Claim 1. The instant limitation requiring “wherein the silk layer has a transport rate in a range from about 160 L m-2 h-1 bar-1 to about 16000 L m-2 h-1 bar-1…” is directed toward properties inherent in the claimed silk nanomaterials. The 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; MPEP §2112 I). Applicants have only claimed “silk nanomaterials”; because the prior art teaches at least this similarly broad limitation, further claimed inherent properties such as the cited “transport rate” is necessarily inherent unless shown otherwise.
Regarding Claim 21, SISKOVA discloses the nanofiltration membrane of Claim 1. The instant claim broadly requires that the nanofiltration membrane is either neutral, positive, or negative in charge, i.e., any disclosed membrane satisfying the limitations of Claim 1 necessarily meets the instant limitation of Claim 21.
Regarding Claim 22, SISKOVA discloses the nanofiltration membrane of Claim 1. SISKOVA further discloses the production of fibrous “mats” (i.e., wherein the nanofiltration membrane is in the form of a long cylinder, a sheet, or a monolithic; §3.1, par. 1).
Regarding Claim 23, SISKOVA discloses the nanofiltration membrane of Claim 1. The instant limitation requiring “wherein the nanofiltration membrane has a water permeance of at least 15 L m-2 h-1 bar-1…” is directed toward properties inherent in the claimed silk nanomaterials. The 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; MPEP §2112 I). Applicants have only claimed “silk nanomaterials”; because the prior art teaches at least this similarly broad limitation, further claimed inherent properties such as the cited “water permeance” is necessarily inherent unless shown otherwise.
Regarding Claim 24, SISKOVA discloses the nanofiltration membrane of Claim 1. The instant limitation requiring “wherein the nanofiltration membrane has a water permeance that is at least 2-fold…” is directed toward properties inherent in the claimed silk nanomaterials. The 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; MPEP §2112 I). Applicants have only claimed “silk nanomaterials”; because the prior art teaches at least this similarly broad limitation, further claimed inherent properties such as the cited “water permeance” is necessarily inherent unless shown otherwise.
Regarding Claim 25, SISKOVA discloses the nanofiltration membrane of Claim 1. The instant limitation requiring “wherein the nanofiltration membrane has an ion rejection rate of at least 90%... against a target ion, optionally wherein the target ion is a divalent ion or a multivalent ion, or a combination thereof” is directed toward properties inherent in the claimed silk nanomaterials. The 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; MPEP §2112 I). Applicants have only claimed “silk nanomaterials”; because the prior art teaches at least this similarly broad limitation, further claimed inherent properties such as the cited “ion rejection rate” is necessarily inherent unless shown otherwise.
Furthermore, the limitation “against a target ion, optionally wherein the target ion is a divalent ion or a multivalent ion, or a combination thereof” is directed toward materials or articles worked upon by the claimed membrane and is not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935); MPEP §2115).
Regarding Claim 26, SISKOVA discloses the nanofiltration membrane of Claim 25. The instant limitation requiring “the target ion is a divalent ion, such as a sulfate ion, magnesium ion, or calcium ion, or a combination thereof” is directed toward materials or articles worked upon by the claimed membrane and is not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935); MPEP §2115).
Regarding Claim 27, SISKOVA discloses preparation of fibrous membranes from recycled poly(ethylene terephthalate)/silk fibroin (r-PSF) (abstract), said nanofibers having average diameters in the nanometer range (i.e., one or more of the nanofiltration membrane of claim 1; abstract; FIG. 1; §3.1; Table 2).
The limitation “a water filtration system” is directed to a preamble limitation and bears no patentable weight. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) (MPEP 2111.02 II).
Regarding Claim 28, SISKOVA discloses the water filtration system of Claim 27. The instant claim requires that the claimed water filtration system is either “a gravity-driven system” or “a vacuum-driven system”. Such a limitation encompasses all types of filtration systems, e.g., non-pressure driven (i.e., gravity-based) and pressure driven (i.e., vacuum-driven). Hence, any prior art that discloses any membrane or filter inherently anticipates such a claim regardless of whether the prior art explicitly discloses a gravity-driven system or a vacuum-driven system.
Claim(s) 6/1, 7, 12-14, and 16 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by TONG et al. (US 2015/0157971 A1).
Regarding Claim 1, TONG discloses a filtration barrier comprising at least one barrier layer of a plurality of polymer-based nanofibers and at least one substrate layer comprising polymer-based microfibers (p0030); said nanofibers comprise a polymer selected from the group consisting of collagen and silk fibroin and combinations thereof (p0075).
Regarding Claims 6 and 7, TONG discloses the nanofiltration membrane of Claim 1. As noted, TONG discloses that the nanofibers comprise a polymer selected from the group consisting of collagen and silk fibroin and combinations thereof (i.e., the silk layer further comprises a collagen or a polymer, or a combination thereof (Claim 6); the collagen is in the form of fibers, foams, meshes or sponges, or a combination thereof (Claim 7); p0075).
Regarding Claim 12, TONG discloses the nanofiltration membrane of Claim 1. TONG further discloses the barrier layer is attached to a substrate layer (i.e., a… substrate, and wherein a first surface of the silk layer is in contact with a first contact surface of the porous substrate; p0030). As further noted, the disclosed polymer0based filtration barrier is intended for use for filtration (p0003), i.e., all layers are therefore, inherently porous (i.e., a porous substrate).
Regarding Claim 13, TONG discloses the nanofiltration membrane of Claim 12. TONG further discloses the substrate layer comprises, e.g., polypropylene (p0035) and a number of other organic polymers (i.e., the porous substrate is an organic polymer support, a hollow fiber support, a metal support, an inorganic support, or an organic-inorganic hybrid support; p0057).
Regarding Claim 14, TONG discloses the nanofiltration membrane of Claim 13. TONG further discloses the substrate layer comprises, e.g., polypropylene (i.e., the porous substrate comprises a polymer selected from the group consisting of… polypropylene; p0035).
Regarding Claim 16, TONG discloses the nanofiltration membrane of Claim 12. TONG further discloses the barrier has a thickness of 90 to 200 microns (p0032), which reads on the claimed range of from about 1 µm to about 500 µm.
Allowable Subject Matter
Claims 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The claimed invention is directed to a silk-based nanomaterial membrane ostensibly usable for filtering or purifying water. It is noted that silk-based membranes are well-known in the art, especially silk fibroin-based nonwoven spun mats/webs such as that disclosed by SISKOVA et al. (Polymers, 29 July 2021, 13, 2499). Even further, silk-based membranes are well-known to be supported by a support layer, e.g., TONG et al. (US 2015/0157971 A1). However, there seems to be a lack of prior art that discloses or suggests a nanofiltration membrane comprising the combination of a silk-based layer, a selective layer on one side of the silk-based layer, and a supportive layer on the other side of the silk-based layer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
GAO et al. (RSC Adv., 20 February 2018, 8, 8181) “A silk fibroin based green nano-filter for air filtration”.
LING et al. (Nano Lett., 14 April 2016, 16, 3795-3800). “Ultrathin Free-Standing Bombyx mori Silk Nanofibril Membranes”.
LING et al. (Sci. Adv., 5 April 2017, 3:e1601939). “Design and function of biomimetic multilayer water purification membranes”.
SIVAKUMAR et al. (Journal of Membrane Science 606, 118142, 9 April 2020). “Synergistic effect of one-dimensional silk nanofiber and two-dimensional graphene oxide composite membrane for enhanced water purification”.
WANG et al. (Chemical Engineering Journal, 426, 131947, 22 August 2021). “A versatile Silk Fibroin based filtration membrane with enhanced mechanical property, disinfection and biodegradability”.
ZHAO et al. (ACS Appl. Mater. Interfaces, 12, 24521-24530, 5 May 2020). “Transition Metal Dichalcogenide−Silk Nanofibril Membrane for One-Step Water Purification and Precious Metal Recovery”.
KAPLAN et al. (US 2019/0247803 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
Prosecution Insights