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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-6, in the reply filed on 03/27/2026 is acknowledged.
Claims 7-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/27/2026.
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.
Claim(s) 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ng et al. (WO 2009/035415) in view of Katayama et al. (JP 2015/160159).
Regarding claims 1-4, Ng discloses semipermeable membranes with nanotubes dispersed therein, and the methods of preparing the same (abstract). Figure 3 shows a schematic diagram illustrating Type 2 RO membrane (3) formed by interfacial polymerization method cast on a substrate (16) with a support layer (14). The rod like structures (12) which can be seen within the polymer film (18) symbolize the nanotubes (12) dispersed in the polymer film (18) [para 0022]. The polymer film 18 corresponds to second layer and support layer 14 corresponds to third layer. The support layers according to an illustrative example, can be for example, a woven fabric or a non- woven fabric. The woven or the non- woven fabric can be for example made of a material selected from the group consisting of polyesters, polypropylenes, polyamides, polyacrylonitriles, regenerated celluloses (para 0084). The nanotubes are CNT (para 0025). The CNT content is in a range of 0.5-4 (figure 5).
While there is no disclosure that the multilayer membrane is a RF driven actuator as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all 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”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. RF driven actuator, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Ng and further that the prior art structure which is a multilayer structure identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
However, Ng fails to disclose that the RO membrane (3) comprises a first layer having a thiol-ene polymer synthesized to have a formulation represented by PETMP-EDT-TMPAE-TVS in claimed molar percent.
Whereas, Katayama discloses a gas separation membrane includes a porous support body, a polymer layer arranged on the porous support body, and a gel layer arranged on the polymer layer. The polymer layer contains at least one kind of a polymer selected from a group of polydimethylsiloxane, polytrimethylsilyl propyne, polydiphenyl acethylene, perfluoropolymer, and polyethylene oxide. The gel layer contains a crosslinked polymer (abstract). Katayama discloses a high-strength gel layer is obtained by addition polymerization of the compound represented by the general formula (1) and the compound represented by the general formula (2) by an enethiol reaction (thiol-ene reaction) [page 6]. The gel layer 4 (see figure 1)which is the first layer and corresponds to first layer of the present invention.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include a gel layer comprising thiol-ene polymer of Katayama on to the polymer film 18 of Ng motivated by the desire to high permeability and strength.
Although, Ng in view of Katayama does not disclose thiol-ene polymer synthesized to have a formulation represented by PETMP-EDT-TMPAE-TVS in claimed molar percent, however it would have been obvious to one of ordinary skill in the art at the time the application was filed to form thiol-ene polymer synthesized from PETMP-EDT-TMPAE-TVS motivated by the desire for mechanical properties for end use applications, with respect to the molar ratio, It would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, 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. See In re Boesch, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05).
Regarding claim 6, with respect to the monomers mixed in the following order, Any difference imparted by product by process limitations would have been obvious to one having ordinary skill in the art at the time of the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct not the examiner to show the same process of making, see In re Brown, 173 USPQ 685, In re Fessmann, 180 USPQ 324, In re Spada, 15 USPQ2d 1655, In re Fitzgerald, 205 USPQ 594 and MPEP 2113.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ng et al. (WO 2009/035415) in view of Katayama et al. (JP 2015/160159) as applied to claim 1, further in view of Kucherovsky (US 5693416).
Regarding claim 5, Ng in view of Katayama fails to disclose that the third layer comprises cellophane with an adhesive backing.
Whereas, Kucherovsky discloses laminate, for bonding to exterior of spiral wound substrate, has inner protective web with an inner surface compatible with a bonding adhesive layer and a transparent, regenerated, cellulose web adhered to the adhesive layer. The cellulose web is impermeable to air and water and consists of a cellophane sheet coated with PVDC on both its surfaces (abstract).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to form PVDC layer as adhesive backing on to the third layer of Ng motivated by the desire to have improved adhesion.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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