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 .
StatusClaims(s) 1-8, 10, 12-22, is/are filed on 1/20/2026 are currently pending. Claim(s) 1-8, 10, 12-22 is/are rejected.
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 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 pre-AIA 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) 14-16, 19 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Hirokawa (US 20040182774 A1).
Regarding claim 14, Hirokawa discloses a filtration device comprising: a spiral wound filter element ([0008], [0029]); comprising: one or more spacing screens (spacing screen) having flow direction fibers (1) and cross flow direction fibers (2), the flow direction fibers oriented in the flow direction — each feed-side passage material (spacing screen) has warps (1) "extending almost parallel with the direction of flow of a feed liquid" and wefts (2) which are thinner than the warps ([0008], [0030]); and one or more membrane layers disposed in between the one or more spacing screens — two or more membrane leaves are wound around the central tube, placing the separation membranes between the feed-side passage materials ([0029]).
Regarding claim 15, Hirokawa discloses an element having a diameter of 20 cm and an overall length of 1 m (Example 4, [0050]), i.e., a height-to-width (length-to-diameter) ratio of 5:1, which is less than 8:1.
Regarding claim 16, Hirokawa discloses that the warps (1) and wefts (2) may have a circular cross section ([0012]), which falls within the recited group "circular, polygonal, oval, triangular, trilobal, lobular, mushroom shaped, and tubular."
Regarding claim 19, Hirokawa discloses that the wefts (2) are "thinner than the warps" (1) ([0008], [0030]), with a warp-diameter/weft-diameter ratio (D1/D2) of about 2/1 ([0040]); the flow-direction fibers (warps 1) are therefore larger than the cross-flow-direction fibers (wefts 2).
Claim(s) 1, 8, 10, 21 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Toray (US 20140224726 A1).
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Regarding claim 1, under the broadest reasonable of interpretation Toray discloses a filtration device comprising a first spiral wound filter element ([0005], [0110], [0153]); having two-or-more subassemblies (26 leaves, [0151]); first/second supporting layers = the two nonwoven-substrate faces of the folded leaf ([0103], [0113]); membrane layer(s) between = separation functional/porous support layers ([0025]–[0026]); plurality of spacing elements = "dots of semicircular PVC foam resin with a pitch of 3 mm, a diameter of 0.5 mm, and a height of 300 µm" ([0181]); first adhesive seam = three-side seal ([0151]); spacing layer between subassemblies = permeate spacer 3 of a different material arranged between leaves ([0018], [0110]–[0111], [0151]); second adhesive seam, opposite = three-side seal bonding each leaf to permeate spacer 3 opposite the fold ([0151]); aspect ratio < 8:1 = 8-inch element ([0134], [0153]).
Regarding claim 8, Toray discloses the filtration devices having a height of 8-inch element within 5–40 in ([0134], [0153]).
Regarding claim 10 Toray discloses the filtration devices having a spacer shapes "oval, circular, elliptic, trapezoid, triangular, rectangular, square, parallelogram, rhombic" ([0124], [0128]).
Regarding claim 21 Toray discloses the filtration devices having fluid-tight three-side seals on opposite edges ([0110], [0151]).
Claim Rejections - 35 USC § 103
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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) 17-18, 20 is/are rejected under 35 U.S.C. 103 as being obvious over Hirokawa (US 20040182774 A1).).
Regarding claim 17 Hirokawa teaches the flow direction fibers - warp (1) ≈ 600 µm ([0039]) is marginally above the claimed limitation. It would have been obvious to one having ordinary skill in the art at the time the invention was filed since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.Because the reference recognizes the claimed parameter (fiber sizes) as affecting pressure loss/flow [0039-0042]. It would have been obvious to matter of routine optimization (MPEP 2144.05).
Regarding claim 18, Hirokawa teaches the weft (2) is about 300 µm ([0039]) — within range.
Regarding claim 20, Hirokawa does not teach spacing screens having 10 to 90 percent open area. However, the reference mentions enlarging open/passage area by thinning wefts and increasing weft pitch ([0030]–[0031], [0039]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.Because the reference recognizes the claimed parameter (open area) as affecting pressure loss/flow [0030]–[0031], [0039]. It would have been obvious to matter of routine optimization (MPEP 2144.05).
Claim(s) 1-8, 10, 12-13, 21, is/are rejected under 35 U.S.C. 103 as being unpatentable over Toray (US 20140224726 A1) in view of Bradford (US 7311831 B2) (Alternative rejection).
Regarding claim 1, Toray discloses a filtration device comprising a first spiral wound filter element (spiral-type element wound around a water collecting pipe, [0005], [0110], [0153]) comprising: two or more membrane subassemblies — an element of 26 leaves, "joined to adjacent leaves at three sides other than the folded side" ([0151]); first/second supporting layer with membrane layer(s) between — the membrane comprises a nonwoven fabric substrate providing mechanical strength ([0103], [0113]) with the separation functional/porous support layers ([0025]–[0026], [0100]). Toray discloses one integral substrate on the permeate face and a permeate spacer that prevents membrane sagging ([0111]), but it does not teach a second supporting layer so that the membrane is between two supports.
Bradford discloses a membrane comprising "a polypropylene fiber support sheet" with "at least one other membrane layer … present for physical support of the active layer" (C5/3-36). It would have been obvious before the effective filing date to provide a support/scrim on both faces of Toray's membrane as would amount a duplication of a known support element (MPEP 2144.04(VI)(B), In re Harza) — to reinforce the membrane against transmembrane pressure and prevent collapse during forward flow and backwash, yielding a predictable result. Moreover, Applicant's own disclosure treats a membrane "sandwiched between a first and second scrim layer" as conventional ([0186]).
Toray further teaches a plurality of spacing elements — discontinuous discrete spacers formed on the membrane ([0114]–[0116]; feed-side dots, [0128], [0181]); a first adhesive seam along a first length adhering the layers — leaves sealed along "three sides other than the folded side" ([0151]); one or more spacing layers between the subassemblies — feed spacer (net or discontinuous) between adjacent leaves ([0126]–[0130], [0134]); second adhesive seam along a second length, opposite the first — leaf sealed on opposing edges with the fold on the opposite side ([0151]); and aspect ratio less than 8:1 — an 8-inch element ([0134], [0153]) is well within 8:1 height-to-width.
Regarding claims 2 and 3, Toray in view of Bradford teach (second–fourth; fifth–eighth elements, each < 8:1) — rejected over Toray in view of Bradford as in claim 1; additional identical elements are a duplication of parts (MPEP 2144.04(VI)(B)).
Regarding claims 4-6, Toray teaches that elements "can further be connected in series or in parallel" ([0135]).
Regarding claim 7, Toray does not teach having a height between two and ten inches. However, this merely a design choice. Without special functional significance are not patentable. Research Corp. v. Nasco Industries, Inc., 501 F2d 358; 182 USPQ 449 (CA 7), cert, denied 184 USPQ 193; 43 USLW3359 (1974). It would have been obvious to one of ordinary skill to have to selected to appropriate shape that provides best function in terms of design and filtration to be provided in limited spacing.
Regarding claim 8, Toray teaches having a diameter between 5 to 40 inches: Toray's 8-inch element ([0134], [0153]) is within range.
Regarding claim 10, Toray teaches wherein the plurality of spacing elements comprises a variety of shapes comprising one: Toray discloses "oval, circular, elliptic, trapezoid, triangular, rectangular, square, parallelogram, rhombic" ([0124], [0128]).
Regarding claim 12, Toray does not teach wherein the plurality of spacing elements is arranged in a size gradient. However, Bradford arranges spacing elements in rows spacing "gradually decreases" toward an edge (Bradford, claim 1; FIG. 8, posts 32) and that "need not have uniform … characteristics." It would have been obvious to one of ordinary skill in the art before the effective filing date to have to arrange Toray's spacing elements according to the teachings of Bradford in a gradient to optimize flux and loading (C15/25-55).
Regarding claim 13, Toray teaches wherein the plurality of spacing elements is unsymmetrically distributed. Toray's discontinuous spacers at set intervals/pitches ([0117]–[0118], [0128]) render an asymmetric distribution.
Regarding claim 21, Toray seals each leaf along three sides ([0151]) to form fluid-tight permeate seals on opposing edges; reads on first/second impermeable seams disposed on opposite edges.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being obvious over Hirokawa (US 20040182774 A1) in view of Toray (US 20140224726 A1).
Regarding claim 22, Hirokawa teaches a filtration device comprising: a spiral element with flow-direction warps (1), thinner wefts (2), membranes between screens ([0008], [0029]–[0030]) (see rejection of claim 17 above) but not being in stack. Toray teaches connecting elements "in series or in parallel" ([0135]) hence being in stack architecture. It would have been obvious to one of ordinary skill in the art before the effective filing date to have to arrange three or more of Hirokawa's elements in parallel stacks and plural stacks in series per Toray, to scale capacity and recovery (KSR); "three or more" / "two or more" are duplications of parts (MPEP 2144.04(VI)(B)).
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It is noted that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
Response to Arguments
Applicant' s arguments with respect to the claims have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Waqaas Ali whose telephone number is (571) 270-0235. The examiner can normally be reached on M-F 9-5 PM.
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/WAQAAS ALI/Primary Examiner, Art Unit 1777
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