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 .
Response to Arguments
The Amendment filed 24FEB2026 has been entered. No new matter has been entered. Applicant’s amendments have overcome each and every 102(a)(1) rejections and claim objections previously set forth in the Non-Final Office Action mailed 03NOV2025.
Applicant's arguments filed 24FEB2026 have been fully considered and they are persuasive. See new rejections below.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8,11-12 are rejected under 35 U.S.C. 103 as being unpatentable over WANG (US20120080380) in view of AL-HOBAIB et. al. 2017 “Modification of thin-film polyamide membrane with multi-walled carbon nanotubes by interfacial polymerization”.
Regarding claims 1-2, WANG teaches thin film composite membranes incorporating carbon nanotubes (title) including a membrane material comprising:
a base substrate (of e.g. polyethersulfone) having a plurality of pores defined therein (abstract; par. [0018]); and
a plurality of carbon nanotubes disposed upon the base substrate (abstract);
wherein the plurality of carbon nanotubes include a reaction with a polyamine compound (of e.g. m-phenylene diamine or MPD; par. [0012]) via a first amine group of the polyamine compound to form a plurality of amide-linked polyamines, and at least a second amine group of the polyamine compound is further functionalized as a reaction product of an active acyl compound comprising up to two active acyl groups (e.g. isophthaloyl chloride; par. [0014]; standard interfacial polymerization; abstract; par. [0007]).
WANG does not teach the plurality of carbon nanotubes comprises oxidized carbon nanotubes having a plurality of carboxylic acid groups. However, AL-HOBAIB teaches modification of thin-film polyamide membrane with multi-walled carbon nanotubes by interfacial polymerization (title) including a membrane material comprising:
a base substrate (e.g. polysulfone; abstract) having a plurality of pores defined therein (inherent or apparent as the membrane has a water permeate flux; abstract); and
a plurality of carbon nanotubes (CNT) disposed upon the base substrate (abstract);
wherein the plurality of carbon nanotubes comprises oxidized carbon nanotubes having a plurality of carboxylic acid groups (MWCNT-COOH; abstract);
wherein the carboxylic acid groups have been reacted with a polyamine compound (e.g. m-phenylenediamine or MPD; abstract) and functionalized as a reaction product of an active acyl or acid chloride compound (e.g. 1,3,5-benzenetricarbonyl trichloride or TMC; abstract).
AL-HOBAIB teaches such membranes with oxidized carbon nanotubes having a plurality of carboxylic acid groups have a high flux along with a high salt rejection (“conclusion” P4349).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the membrane material of WANG to include oxidized carbon nanotubes having a plurality of carboxylic acid groups in order to improve membrane performance such flux. The references are combinable, because they are in the same technological environment of filter membranes. See MPEP 2141 III (A) and (G).
Note that WANG’s modified membrane provides for the claimed structure. AL- WANG’s modified membrane material has the same structure and function. This includes the structure of amide-linked polyamines and reaction products. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01).
Regarding claims 3-4, WANG teaches the polyamine compound comprises a amine containing monomers such as polyethylenimines (par. [0012]).
Regarding a linear polyethylenimine, it has been held that species (e.g. a linear polyethylenimine) are obvious of when the prior art teaches the genus (polyethylenimines). Before the effective filing date of the claimed invention, it is obvious to one having ordinary skill in the art to select the species as claimed from the genus as taught in the art, because one would reasonably expect a predictable or similar result. See MPEP 2144.08.
Regarding claims 5-8, WANG teaches the active acyl compound comprises e.g. an acid halide compound comprising at least two acid chloride groups (e.g. isophthaloyl chloride; par. [0014]);
wherein a first acid chloride group of the acid halide compound is reacted with the second amine group of the polyamine compound in the presence of a diamine compound to form the reaction product of the active acyl compound as a polyamide block attached to at least a portion of the amide-linked poly amines; and,
the diamine compound comprises a phenylenediamine (par. [0012]; interfacial polymerization of MPD and isophthaloyl chloride).
Regarding claim 11, WANG teaches that the concentration of the multi-walled carbon nanotubes ranges from about 0.05% w/w to about 1% w/w, which overlaps the instantly claimed range and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
WANG teaches CNT concentration is a results-effective variable that affects the membrane structure and properties (par. [0007]). Therefore, at the time the invention was made, it would have been obvious to one of ordinary skill in the art to select the claimed CNT concentration range because WANG teaches CNT concentration is a results-effective variable. See MPEP 2144.05 II, A & B.
Regarding claim 12, WANG’s modified device teaches a filtration system comprising the membrane material of claim 1 (the rejection of claim 1 is incorporated by reference). WANG teaches e.g. a reverse osmosis (RO) desalination system (par. [0002]; WANG claims 20-21).
Cited Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
FIBIGER (US 4769148) discloses novel polyamide reverse osmosis membranes (title) including linear polyethylenimine; C3/L39).
Telephonic Inquiries
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 LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1777
Prosecution Insights