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 Amendment
The examiner acknowledges the amendments set forth on 07/21/2026 to claims 8, 13, 16, 21, and 25; as well as the cancellation to claim 24.
Response to Arguments
Applicant’s amendments with respect to the prior 112(b) rejection over claims 8, 16, and 25 regarding units for the molecular weight limitations were entered and considered to overcome the 112(b) rejections, thus the rejections are withdrawn.
The examiner thanks the applicant for the clarification on the record regarding the mechanically instable molecular weight for components.
Applicant’s arguments with respect to claims 1-26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specification
The disclosure is objected to because of the following informalities: The applicant references Chau (US 4,957,917) in the specification at Pages 16 and 19, with the incorrect patent number. The correct number is (US 4,957,817). Appropriate correction is required.
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.
Claims 1-7, 9-15, 17-23, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Mahoney (US5227101A).
Regarding claims 1, 3, and 4; Mahoney teaches a porous polyether ether ketone membrane. (Claim 1) {Column 2 lines 24-26, "microporous membranes from an unsulfonated poly(ether etherketone)- type membrane}
Mahoney is silent to:
a flow time of less than 10,000 seconds measured using isopropyl alcohol (500 milliliters) with a membrane surface area of 13.5 cm2, and a pressure of 14.5 psia, and an initial bubble point of at least 25 pounds per square inch (psig), measured using HFE-7200 at a temperature of 21 degrees Celsius; (Claim 1)
having a flow time of less than 4,000 seconds measured using isopropyl alcohol (500 milliliters) with a membrane surface area of 13.5 cm2, and a pressure of 14.5 psia, and an initial bubble point of at least 30 psig, measured using HFE-7200 at a temperature of 21 degrees Celsius; (Clam 3)
having a mean bubble point of at least 40 psig, measured using HFE-7200 at a temperature of 21 degrees Celsius; (Claim 4)
The Applicant’s instant specification discloses specific method steps {[0022]}, then specific examples {Pages 17-19}. The examiner has determined the integral portions and parameters of the method steps for preparation of the membrane, all disclosed in the instant specification, to be:
PEEK (20-30% total weight) dissolved at elevated temperature in a non-polar solvent (triphenylmethane @ 5-40% total weight) until the solution is in full liquid form.
Shaping the casting solution on a flat, smooth surface (smooth glass plate) using a casting knife with a speed of 30mm/sec.
Cooling the cast.
Removing the original solvent.
Mahoney teaches each and every integral portion of this method in the following locations:
PEEK (20-30% total weight) {Column 8 lines 19-21, "concentration of poly(etheretherketone)-type polymer … about 10 to about 90 weight percent") and lines 24-26, "concentration of … crystallizable polymer … about 3 to about 80 weight percent"} dissolved at elevated temperature {Column 8 lines 33-35, "The elevated temperature at which the mixture is mixed} in a non-polar solvent (triphenylmethane @ 5-40% total weight) {Column 5 lines 36, "Preferred solvents useful in this invention include triphenylmethane" & Column 7 line 65-Column 8 line 9 re. the variable of concentrations of components of the membranes to fit targets and uses of the membrane. Note that given Mahoney teaches the concentrations of two out of the three components of the membrane (PEEK and crystallizable polymers), one of ordinary skill in the art would be able to deduce the concentration of the third and final component (solvent), which given the disclosed ranges of polymer weights, could be 5-40% (claimed) by weight} until the solution is in full liquid form. {Column 8 lines 33-35, "The elevated temperature … at which the mixture is a fluid"}
Shaping the casting solution on a flat, smooth surface (smooth glass plate) {Column 8 lines 45-65 re. glass plate for casting} using a casting knife {Column 8 lines 48-49 re. doctor blade} with a speed of 30mm/sec. {Column 12 lines 4-10 re. line speeds of 3 meters/min or 50 mm/sec (while not identical, similar ranges are obvious over one another, See MPEP 2144.05(I). Additionally, Mahoney specifically mentions the line speeds are not critical and may vary significantly, {Column 12 lines 4-5} thus resulting in a claimed limitation that does not hold patentable weight}
Note that Mahoney separates the instant’s “Casting step” into the “Extrusion then Drawing steps”. However, the drawing step of Mahoney falls within the overarching “Casting step” of the instant application referring to the draw speed of Mahoney being equivalent to the casting speed of the instant specification. Test
Cooling the cast. {Column 9 lines 5-10 re. cooling the extruded portion}
Removing the original solvent. {Column 10 lines 35-40 re. removing the optional plasticizer (solvent)}
Given Mahoney teaches the integral method steps regarding the method of making the PEEK membrane, one of ordinary skill in the art prior to the effective filing date of the claimed invention would conclude the membrane created through the steps taught by Mahoney, would exhibit the same properties, as claimed in claims 1, 3, and 4. See MPEP § 2112.01(I) regarding a product being produced by a substantially identical process, resulting in properties of functions of said product to be inherent.
One would be motivated to one of ordinary skill prior to the effective filing date of the claimed invention to utilize the steps of Mahoney as Mahoney teaches the effectiveness of PEEK-type polymer membranes for their high temperature and solvent resistance {Column 1 lines 51-55}, however Mahoney further teaches these membranes are difficult to manufacture in their unsulfonated form, which is the desirable form of the polymer, for maximum aqueous separation abilities. {Column 2 lines 1-9} Given Mahoney claims to solve the issues regarding creating an unsulfonated form of the PEEK membrane, retaining their high strength and temperature and solvent resistance, {Column 2 lines 12-16} it would be obvious to one of ordinary skill in the art to utilize the method disclosed by Mahoney to create the structure of the instant claims.
Regarding claim 2, Mahoney teaches a porosity in a range from 70 to 85 percent. {Column 13 lines 19-22, "at least about 25%; the membranes … less than about 90%}
Regarding claim 5, Mahoney teaches having a thickness in a range from 50 to 200 microns. {Column 12 lines 15-20 re. thickness of membrane preferably 25 to 250 microns}
Regarding claim 6, Mahoney teaches the membrane comprising a sheet. {Column 14 line 54, "The membranes are fabricated into a flat sheet"}
Regarding claim 7, Mahoney teaches wherein the polyether ether ketone is nonsulfonated. {Column 2 lines 24-26, "microporous membranes from an unsulfonated poly(ether ether-ketone)-type membrane}
Regarding claims 9-10, Mahoney teaches a residual solvent {Column 5 lines 36, "Preferred solvents useful in this invention include …"} having a boiling point that is higher than a melting point of the polyether ether ketone; (Claim 9) {Column 5 lines 36, "Preferred solvents useful in this invention include triphenylmethane"} and wherein the residual solvent is triphenylmethane. (Claim 10) {Column 5 lines 36, "Preferred solvents useful in this invention include triphenylmethane"}
Although Mahoney is silent to the boiling point of triphenylmethane, given instant claim 10 depends on claim 9, it can be inferred that triphenylmethane has a higher boiling point than the polyether ether ketone.
Regarding claim 11, Mahoney teaches a filter product containing a membrane of claim 1. {Column 2 lines 24-26, "microporous membranes from an unsulfonated poly(ether etherketone)- type membrane}
Regarding claim 12, Mahoney teaches a method of purifying a liquid, the method comprising passing the liquid through a membrane of claim 1. {Column 2 lines 66-67, The membranes are useful as microporous membranes for liquid separations"}
Regarding claim 13, Mahoney teaches a method of preparing a porous polyether ether ketone membrane, the method comprising: the polymer comprising at least 90 weight percent polyether ether ketone based on total weight polymer, {Column 8 lines 19-21, "concentration of poly(ether ether ketone)-type polymer … about 10 to about 90 weight percent") and lines 24-26, "concentration of … crystallizable polymer … about 3 to about 80 weight percent"}
that has a boiling point that is higher than a melting point of the polymer, based on total weight of the combination, {Column 5 lines 36, "Preferred solvents useful in this invention include triphenylmethane"}
heating the combination to form a homogeneous casting solution, {Column 8 lines 33-35, "The elevated temperature at which the mixture is mixed is that temperature at which the mixture is a fluid"} causing polyether ether ketone of the casting solution to coagulate to form a porous membrane, {Column 8 lines 61-64, "membrane is thereafter subsequentially quenched or coagulated"}
and removing solvent from the porous membrane. {Column 10 lines 29-33, "Following the … coagulation … passed through … leach zones to remove at least a portion … of the plasticizer"}
Mahoney teaches the concentrations of the two polymer components (PEEK and the crystallizer) within the filter and further discloses all of the concentrations of components may vary to fit the targets and uses of the membrane {Mahoney, Column 7 line 65-Column 8 line 9}, as well as one of ordinary skill in the art being capable of determining the solvent necessary for the specific polymer empirically {Mahoney, Column 5 lines 65-66}. As Mahoney teaches concentrations of both of the required polymers, PEEK and the crystallizer polymer {Column 8}, it is clear that a person having ordinary skill in the art would be able to deduce the concentration of the third component (solvent) with the disclosed concentrations of the other two components The combination of these teachings show the possibility through a preferred embodiment of the total “combination” as claimed. Example: a 36% weight PEEK, 4% weight crystallizer, and a 60% weight solvent (optional plasticizer).
Regarding claim 14, Mahoney teaches the solvent has a boiling point of at least 320 degrees Celsius. {Column 16 Table 1, Triphenylmethane boiling point of 359 Celsius}
Regarding claim 15, Mahoney teaches wherein the solvent is triphenylmethane. {Column 5 lines 36, "Preferred solvents useful in this invention include triphenylmethane"}
Regarding claims 17, 19, and 20; Mahoney is silent to:
the membrane has a flow time of less than 10,000 seconds measured using isopropyl alcohol (500 milliliters) with a membrane surface area of 13.5 cm2, and a pressure of 14.5 psia; (Claim 17)
the membrane having an initial bubble point of at least 25 psig, measured using HFE-7200 at a temperature of 21 degrees Celsius; (Claim 19)
the membrane having a mean bubble point of at least 40 psig, measured using HFE-7200 at a temperature of 21 degrees Celsius. (Claim 20)
The Applicant’s instant specification discloses additional specific method steps [0022], then specific examples {Pages 17-19}, that were not claimed in the method claim 13. The examiner has determined additionally integral portions and parameters of the unclaimed method steps for preparation of the membrane, to be:
Shaping the casting solution on a flat, smooth surface (smooth glass plate) using a casting knife with a speed of 30mm/sec.
Cooling the cast.
Mahoney teaches the remainder of the method steps that were not mentioned in claim 13, in the following locations:
Shaping the casting solution on a flat, smooth surface (smooth glass plate) {Column 8 lines 45-65 re. glass plate for casting} using a casting knife {Column 8 lines 48-49 re. doctor blade} with a speed of 30mm/sec. {Column 12 lines 4-10 re. line speeds of 3 meters/min or 50 mm/sec (while not identical, similar ranges are obvious over one another, See MPEP 2144.05(I). Additionally, Mahoney specifically mentions the line speeds are not critical and may vary significantly, {Column 12 lines 4-5} thus resulting in a claimed limitation that does not hold patentable weight}
Note that Mahoney separates the instant’s “Casting step” into the “Extrusion then Drawing steps”. However, the drawing step of Mahoney falls within the overarching “Casting step” of the instant application referring to the draw speed of Mahoney being equivalent to the casting speed of the instant specification.
Cooling the cast. {Column 9 lines 5-10 re. cooling the extruded portion}
Given Mahoney teaches the integral method steps in the specification that were not claimed, in addition to the claimed steps in claim 13, regarding the method of making the PEEK membrane, one of ordinary skill in the art prior to the effective filing date of the claimed invention would conclude the membrane created through the steps taught by Mahoney, would exhibit the same properties, as claimed in claims 17, 19, and 20. See MPEP § 2112.01(I) regarding a product being produced by a substantially identical process, resulting in properties of functions of said product to be inherent.
One would be motivated to one of ordinary skill prior to the effective filing date of the claimed invention to utilize the steps of Mahoney as Mahoney teaches the effectiveness of PEEK-type polymer membranes for their high temperature and solvent resistance {Column 1 lines 51-55}, however Mahoney further teaches these membranes are difficult to manufacture in their unsulfonated form, which is the desirable form of the polymer, for maximum aqueous separation abilities. {Column 2 lines 1-9} Given Mahoney claims to solve the issues regarding creating an unsulfonated form of the PEEK membrane, retaining their high strength and temperature and solvent resistance, {Column 2 lines 12-16} it would be obvious to one of ordinary skill in the art to utilize the method disclosed by Mahoney to create the structure of the instant claims.
Regarding claim 18, Mahoney teaches the membrane having a porosity in a range from 70 to 85 percent. {Column 13 lines 19-22, "at least about 25%; the membranes … less than about 90%}
Regarding claim 21, Mahoney teaches a homogeneous polymer-containing liquid comprising polyether ether ketone polymer melted in solvent, {Column 8 lines 1-5, "poly(ether ether ketone)-type polymer, the low melting point crystallizable polymer, and the optional plasticizer in the mixture"}
the liquid comprising a polymer that comprises polyether ether ketone, the polymer comprising at least 90 weight percent polyether ether ketone based on total weight polymer, {Column 8 lines 19-21, "concentration of poly(ether ether ketone)-type polymer … about 10 to about 90 weight percent") and lines 24-26, "concentration of … crystallizable polymer … about 3 to about 80 weight percent"}
that has a boiling point that is higher than a melting point of the polyether ether ketone, based on total weight polymer-containing liquid. {Column 5 lines 36, "Preferred solvents useful in this invention include triphenylmethane"}
Mahoney teaches the concentrations of the two polymer components (PEEK and the crystallizer) within the filter and further discloses all of the concentrations of components may vary to fit the targets and uses of the membrane {Mahoney, Column 7 line 65-Column 8 line 9}, as well as one of ordinary skill in the art being capable of determining the solvent necessary for the specific polymer empirically {Mahoney, Column 5 lines 65-66}. As Mahoney teaches concentrations of both of the required polymers, PEEK and the crystallizer polymer {Column 8}, it is clear that a person having ordinary skill in the art would be able to deduce the concentration of the third component (solvent) with the disclosed concentrations of the other two components The combination of these teachings show the possibility through a preferred embodiment of the total “combination” as claimed. Example: a 36% weight PEEK, 4% weight crystallizer, and a 60% weight solvent (optional plasticizer).
Regarding claim 22, Mahoney teaches wherein the solvent has a boiling point of at least 320 degrees Celsius. {Column 16 Table 1, Triphenylmethane boiling point of 359 Celsius}
Regarding claim 23, Mahoney teaches wherein the solvent is triphenylmethane. {Column 5 lines 36, "Preferred solvents useful in this invention include triphenylmethane"}
Regarding claim 26, Mahoney teaches consisting essentially of the polymer and the solvent. {Column 8 lines 19-21, "concentration of poly(ether ether ketone)-type polymer … about 10 to about 90 weight percent") and lines 24-26, "concentration of … crystallizable polymer … about 3 to about 80 weight percent"}
Claims 8, 16, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Mahoney (US5227101A), as applied to the claims above in view of Taylor (US20150344610A1).
Regarding claims 8, 16, and 25; Mahoney fails to teach the polyether ether ketone has a weight average molecular weight in a range from above 75 kilodaltons (kDa) and 125 kDa. (Claims 8, 16, and 25)
Taylor, drawn to a PEEK polymer compound {Taylor, abstract} teaches the polyether ether ketone has a weight average molecular weight in a range from above 75 kilodaltons (kDa) and 125 kDa. (Claims 8, 16, and 25) {[0029] re. molecular weight of PEEK from 30,000 to 150,000 mW (30-150 kDa)}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Mahoney with Taylor’s teachings the polyether ether ketone has a weight average molecular weight in a range from above 75 kilodaltons (kDa) and 125 kDa (Claims 8, 16, and 25) as Taylor, similar to Mahoney, teaches a PEEK polymer for membranes intended for contact within aqueous media. {Taylor, [0068]} One would be motivated to utilize this polymer, as it can be converted to a finished product using convention techniques, to result in a casted membrane, {Taylor [0067]} similar to that of Mahoney.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR J ROTONDI whose telephone number is (571)272-2058. The examiner can normally be reached M-F 8:00am-4:30pm.
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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.
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/CONNOR J ROTONDI/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773
