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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 21, 27-33, 39 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9 and 11-15 of U.S. Patent No. 11,896,932. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the instant claims are respectively encompassed in the claims of patent ‘932, as summarized in the following side-by-side comparison of the instant claims with respect to the claims of patent ‘932, the portion of at least one claim of patent ‘932 having the corresponding claim limitation illustrated in “( )” symbols.
21. A method of using a filter component comprising a filtration membrane and a fluoropolymer end piece (‘932, claim 11, corresponding clauses),
the method comprising passing fluid through the filtration membrane (suggested by functional language of claim 9 concerning fluid flow and fluid passing through the membrane),
wherein the filtration membrane comprises:
a porous fluoropolymer membrane (claim 11, 1st clause),
thermally stable ionic groups, at least one ionic group-containing reactive compound, at least one nonionic group-containing reactive compound (all in claim 11, 3rd clause), and
an edge (claim 11, 4th clause);
wherein the edge of the filtration membrane is potted to the end piece with a melt-processable fluoropolymer to provide a fluid tight seal along the edge (claim 11, 5th clause); and
wherein, after exposure of the filtration membrane to a temperature of at least 240 degrees Celsius for a time sufficient to soften the melt-processable fluoropolymer so that the edge of the filtration membrane is potted to the end piece, the filtration membrane contains at least 50 percent of an amount of ionic groups present on the filtration membrane before the exposure (claim 11, “wherein” clause).
27. A filtration membrane comprising:
a porous fluoropolymer membrane (claim 1, 2nd clause and claim 11, 2nd clause), and
a coating on a surface of the porous fluoropolymer membrane, the coating comprising thermally stable ionic groups (claim 1, 3rd clause and claim 11, 3rd clause).
28. A filtration membrane of claim 27, wherein the thermally stable ionic groups, as part of the filtration membrane, are capable of being heated to a temperature of 240 degrees Celsius for 5 minutes, with no more than 50 mole percent of ionic groups being chemically degraded (claim 11, “wherein” clause) .
29. The filtration membrane of claim 27, wherein the ionic groups comprise negatively charged ionic groups (claims 2 and 12).
30. The filtration membrane of claim 27, wherein the ionic groups are selected from: an ionic sulfur-containing group and an ionic phosphorus-containing group (claims 3 and 13).
31. The filtration membrane of claim 27, wherein the ionic groups are selected from a phosphonic acid and a sulfonate (claim 4).
32. The filtration membrane of claim 27, wherein the ionic groups comprise positively charged ionic groups (claims 5 and 14).
33. The filtration membrane of claim 32, wherein the ionic group is an imidazole (claims 6 and 15 ).
39. A filter comprising the filtration membrane of claim 27 (claim 1 preamble).
40. A method of using the filter of claim 39, the method comprising passing fluid through the filtration membrane (suggested by functional language of claim 9 concerning fluid flow and fluid passing through the membrane).
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 21, 22 and 33 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In independent claim 21, recitations of “the end piece” lack antecedent basis.
In dependent claim 33, “the ionic group” (singular) lacks antecedent basis, being inconsistent with recitation of “ionic groups” (plural) in claims 27 and 32.
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.
Claims 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Pitt et al patent 4,908,236 (Pitt) in view of Allen et al PGPUBS Document US 2016/0166965 (Allen). Referenced paragraph numbers of the applied PGPUBS Documents are identified with “[ ]” symbols.
For independent claim 23, Pitt discloses a method of preparing a filter component that comprises a filtration membrane in contact with a melt-processable fluoropolymer (Abstract concerning membrane comprising the melt-processible fluoropolymer of polytetrafluoroethylene (PTFE)),
the filtration membrane comprising:
a porous fluoropolymer membrane (Abstract and column 3, lines 33-35 and 53-55 concerning a membrane comprising the fluoropolymer of polytetrafluoroethylene (PTFE));
thermally stable ionic groups (column 4, lines 10-30 coating of crosslinkable and free-radical polymerized monomers comprising acrylates and methacrylates, which may be polar-substituted or functionally substituted and have the inherent property of being thermally stable, with recitation of the monomers being cross-linkable or having free radicals suggesting the groups being ionic groups), and
an edge (column 6, lines 14-20 re periphery of closed end of treated membrane 18).
Claim 23 differs from what is disclosed in Pitt by requiring the method also comprising:
heating the filtration membrane and the melt-processable fluoropolymer to soften the melt-processable fluoropolymer.
Pitt does teach heating of the membrane at temperatures up to about 95 degrees C for initiating free radical polymerization at column 5, lines 45-52) and at column 6, lines 14-20 teaches the entire periphery of closed end 16 of the membrane being heat sealable, thus suggests the fluoropolymer membrane having the property of being melt-processible.
Allen teaches such heating of the filtration membrane and the melt-processable fluoropolymer to soften the melt-processable fluoropolymer (Abstract and [0043-0044]).
Allen teaches such process step as effective to yield a seal between membrane components that is impervious to liquid, gas and bacteria [0044].
Thus, it would have been obvious to one of ordinary skill in the art of manufacturing filtration membranes to have modified the Pitt method, by also heating the filtration membrane and the melt-processable fluoropolymer to a degree effective to soften the melt-processable fluoropolymer, as taught or suggested by Allen, in order to yield a seal between membrane components that is impervious to liquid, gas and bacteria.
Pitt further discloses or suggests:
for claim 24, wherein the filtration membrane, after the heating, contains at least 50 percent of an amount of ionic groups present on the filtration membrane before the heating step (column 4, lines 59-67 regarding processing including cross-linking being without the formation of a significant amount of by-products);
for claim 25, wherein the melt-processable fluoropolymer is selected from: a laminating film adhered to the filtration membrane, an end piece, and a potting compound (suggested by column 6, lines 16-19 re heat sealing of the entire periphery of end piece16 of the membrane);
for claim 26, the method further comprising potting an edge of the filtration membrane to an end piece (suggested by column 6, lines 16-19 re heat sealing of the entire periphery of end 16 of the membrane).
Claims 27, 29, 32 and 37-40 are rejected under 35 U.S.C. 103 as being unpatentable over Pitt et al patent 4,908,236 (Pitt).
For independent claim 27, Pitt discloses a filtration membrane comprising:
a porous fluoropolymer membrane(Abstract and column 3, lines 33-35 and 53-55 concerning a membrane comprising the fluoropolymer of polytetrafluoroethylene (PTFE)), and
a coating on a surface of the porous fluoropolymer membrane, the coating comprising thermally stable ionic groups (column 4, lines 10-30 coating of crosslinkable and free-radical polymerized monomers comprising acrylates and methacrylates, which may be polar-substituted or functionally substituted and have the inherent property of being thermally stable, with recitation of the monomers being cross-linkable or having free radicals suggesting the groups being ionic groups, also ).
Pitt lacks explicit disclosure of the ionic groups being thermally stable. However, Pitt does teach heating of the membrane at temperatures up to about 95 degrees C for initiating free radical polymerization at column 5, lines 45-52) and at column 6, lines 14-20 teaches the entire periphery of closed end 16 of the membrane being heat sealable, thus suggests the fluoropolymer membrane having the property of being thermally stable.
Hence, it would have been obvious to one of ordinary skill in the art of manufacturing filtration membranes to have recognized the coating of the Pitt membrane as being thermally stable because of the disclosed tolerance for heating and heat-sealing of the entire membrane including the coating, or alternately to have selected the coating composition to be thermally stable, so as to be resistant to or tolerant of the heat sealing and free radical polymerization process steps to be employed.
Pitt further discloses:
for claim 29, wherein the ionic groups comprise negatively charged ionic groups (suggested by initiating free radical polymerization of the groups at column 5, lines 45-52);
for claim 32, wherein the ionic groups comprise positively charged ionic groups (suggested by initiating free radical polymerization of the groups at column 5, lines 45-52);
for claim 37, wherein the porous fluoropolymer membrane comprises perfluoropolymer selected from poly (tetrafluoroethylene) (PTFE), poly(tetrafluoroethylene-co-hexafluoropropylene) (FEP), and poly(tetrafluoroethylene-co-perfluoro(alkylvinyl ether)) (FPA), (again, see column 3, lines 33-35 and 53-55 concerning a membrane comprising the fluoropolymer of polytetrafluoroethylene (PTFE)) ;
for claim 38, wherein the fluoropolymer membrane comprises polytetrafluoroethylene (PTFE), (again, see column 3, lines 33-35 and 53-55 concerning a membrane comprising the fluoropolymer of polytetrafluoroethylene (PTFE));
for claim 39, A filter comprising the filtration membrane of claim 27 (suggested in column 1, lines 31-34);
for claim 40, a method of using the filter of claim 39, the method comprising passing fluid through the filtration membrane (inherent and encompassed in the terms “membrane technology and “membrane filter” as used in column 1, lines 31-34); and,
for claim 41, wherein the fluid comprises solvent selected from: n-butyl acetate (nBA), isopropyl alcohol (IPA), 2-ethoxyethyl acetate (2EEA), a xylene, cyclohexanone, ethyl lactate, methyl isobutyl carbinol (MIBC), methyl isobutyl ketone (MIBK), isoamyl acetate, undecane, propylene glycol methyl ether (PGME), and propylene glycol monomethyl ether acetate (PGMEA), (see column 4, lines 60-64 and column 5, lines 3-19 concerning similar solvents such as methanol, ethanol and 2-propanol, thus suggesting at least isopropyl alcohol solvent) .
Allowable Subject Matter
Claims 28, 30, 31 and 33 would be allowable if rewritten to overcome the rejection(s) under Obviousness Double Patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 28 would distinguish and be non-obvious over all of the prior art in view of recitation of: “wherein the thermally stable ionic groups, as part of the filtration membrane, are capable of being heated to a temperature of 240 degrees Celsius for 5 minutes, with no more than 50 mole percent of ionic groups being chemically degraded”. None of the prior art of record teaches or suggests such coating material.
Claim 30 would distinguish and be non-obvious over all of the prior art in view of recitation of: “wherein the ionic groups are selected from: an ionic sulfur-containing group and an ionic phosphorus-containing group”. None of the prior art of record teaches or suggests such coating material.
Claim 31 would distinguish and be non-obvious over all of the prior art in view of recitation of: “wherein the ionic groups are selected from a phosphonic acid and a sulfonate”. None of the prior art of record teaches or suggests such coating material.
Claim 33 would distinguish and be non-obvious over all of the prior art in view of recitation of: “wherein the ionic group is an imidazole”. None of the prior art of record teaches or suggests such coating material.
Claims 34-36 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.
Claim 34 would distinguish and be non-obvious over all of the prior art in view of recitation of: “The filtration membrane of claim 27, wherein the coating is derived from a liquid coating solution comprising: from 25 to 90 parts by weight ionic group-containing reactive compound, and from 10 to 75 parts by weight non-ionic group-containing reactive compound, based on total weight reactive compounds in the liquid coating solution. None of the prior art of record teaches or suggests such coating content.
Claims 35 and 36 would distinguish and be non-obvious in view of its dependence on claim 34 which distinguishes and is non-obvious.
Claims 21 and 22 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) and Obviousness Double Patenting rejection set forth in this Office action.
Claim 21 would distinguish and be non-obvious over all of the prior art in view of recitation of: “A method of using a filter component comprising a filtration membrane and a fluoropolymer end piece,
the method comprising passing fluid through the filtration membrane,
wherein the filtration membrane comprises: a porous fluoropolymer membrane,
thermally stable ionic groups, and
an edge;
wherein the edge of the filtration membrane is potted to the end piece with a melt-processable fluoropolymer to provide a fluid tight seal along the edge; and wherein, after exposure of the filtration membrane to a temperature of at least 240 degrees Celsius for a time sufficient to soften the melt-processable fluoropolymer so that the edge of the filtration membrane is potted to the end piece,
the filtration membrane contains at least 50 percent of an amount of ionic groups present on the filtration membrane before the exposure; and the membrane further comprising: at least one ionic group-containing reactive compound, and, at least one nonionic group-containing reactive compound.
None of the prior art of record teaches or suggests such combination of ionic groups or content of the ionic groups.
Claim 22 would distinguish and be non-obvious in view of its dependence on claim 21 which distinguishes and is non-obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner Joseph Drodge at his direct government formal facsimile phone number telephone number of 571-272-1140. The examiner can normally be reached on Monday-Friday from approximately 8:00 AM to 1:00PM and 2:30 PM to 5:30 PM.
If attempts to reach the examiner are unsuccessful, the examiner' s supervisor, Benjamin Lebron, of Technology Center Unit 1773, can reached at 571-272-0475.
The telephone number, for official, formal communications, for the examining group where this application is assigned is 571-273-8300.
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JWD
03/07/2026
/JOSEPH W DRODGE/ Primary Examiner, Art Unit 1773