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 .
Claim Interpretation
Claim 5 recites “the first pocket is connected to the second pocket in a one-to-many manner”. The term “one-to-many manner” is herein understood as one to a plurality.
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 20150259221 A1 (hereinafter US 221) in view of Yang, X.Y., Chen, L.H., Li, Y., Rooke, J.C., Sanchez, C. and Su, B.L., 2017. Hierarchically porous materials: synthesis strategies and structure design. Chemical Society Reviews, 46(2), pp.481-558 (hereinafter HAL) and Yang, M., Zhang, B., Xin, X., Liu, B., Zhu, Z., Dong, G., Zhao, Y., Lee, K. and Chen, B., 2022. Microplastic-oil-dispersant agglomerates in the marine environment: formation mechanism and impact on oil dispersion. Journal of Hazardous Materials, 426, p.127825 (hereinafter Yang)
OR
US 20150259221 A1 (hereinafter US 221) in view of Yang, X.Y., Chen, L.H., Li, Y., Rooke, J.C., Sanchez, C. and Su, B.L., 2017. Hierarchically porous materials: synthesis strategies and structure design. Chemical Society Reviews, 46(2), pp.481-558 (hereinafter HAL) and Nelms, S.E., Barnett, J., Brownlow, A., Davison, N.J., Deaville, R., Galloway, T.S., Lindeque, P.K., Santillo, D. and Godley, B.J., 2019. Microplastics in marine mammals stranded around the British coast: ubiquitous but transitory?. Scientific Reports, 9(1), p.1075 (hereinafter Nelms).
Regarding claim 1, US 221 discloses an oil-water separation structure(see US 221 abstract, claims 1-3, figures1-5, 10a-10b, paragraphs 0011-0012, 0016, 0056-0057, 0059-0062, 0127-0128), which is deemed microplastic recovery material.
US 221 discloses the structure comprises “a porous substrate comprising a plurality of protrusions forming a nano-pattern on at least one surface; and an inorganic particle disposed at an end of at least some portions of the protrusion” (see US 221 paragraph 0016; see also US 221 figures 10a-10b, paragraphs 0020, 0057-0059, 0068, 0089 (US 221 discloses the structure “a porous substrate including a plurality of protrusions forming a nano-pattern on at least one surface; and an inorganic particle disposed at an end of at least some portions of the protrusions” (see US 221 paragraph 0057) and that the “plurality of nano-sized protrusions 4 a are repeatedly disposed with uniform gaps therebetween over the entire surface of the substrate 1 to form a uniform nano-pattern, and an inorganic particle 3 is disposed at an end of the protrusion 4 a. In an alternate embodiment, the plurality of nano-sized protrusions 4 a are repeatedly disposed with uniform gaps therebetween over a partial surface of the substrate 1 to form a nano-pattern, and an inorganic particle 3 is disposed at an end of the protrusion 4 a” (see US 221 paragraph 0059).), which is deemed porous structure comprising a first pocket provided in an outer surface of the porous structure, and a nano-protrusion provided on the outer surface.
As noted above, the separation structure of US 221 is a porous substrate comprising a plurality of protrusions forming a nanopattern on at least one surface, which would necessarily include pores on the outside surface and the inside surface of the separation structure.
US 221 does not disclose a first hierarchical pocket and US 221 does not disclose the first hierarchical pocket comprises a first pocket and a second pocket that are connected to each other.
HAL discloses that “Hierarchical porosity is quite desirable for adsorption and separation processes. The high contact surface area, high storage volume, ready mass transport, shape selectivity and well controlled porosities over different length scales lead to very high adsorption capacities and high separation efficiencies” (see HAL section 1.2; see also HAL abstract; figures 3-6; Table 1 and Introduction; see also HAL figure 3 illustration of hierarchically mesoporous material and figure 4 illustration of hierarchically trimodal porous material (reproduced below)).
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HAL discloses hierarchically micro-macroporous structures (see HAL section 3.3 and figures 38-41 & 45-46) and micro-meso-macroporous structure (see HAL section 3.4 and figures 48-51, 53, 55-58) and discloses that numerous synthesis methods for achieving various hierarchical porous materials (see HAL section 1.1 and Table 2 (figure 46 of a hierarchically micro–macroporous structure is reproduced below).
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HAL discloses a hierarchically micro-macroporous structure adsorption capabilities (see HAL section 3.3 and Figure 46) and discloses hierarchically micro–meso–macroporous structures are used for separation and adsorption (see HAL section 3.4.2).
HAL is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. porous structures for adsorption and/or separation.
HAL is considered to be analogous to the claimed invention. “[a] reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.” See MPEP 2141.01(a). HAL is reasonably pertinent to the problem faced by the inventor, i.e. adsorption and/or separation of microplastics from water (see Applicant’s specification paragraphs 0002-0004).), because HAL discloses a hierarchically micro-macroporous structure or a micro-meso-macroporous structure that improves adsorption and/or separation capabilities (see HAL section 1.2; see also HAL abstract, Table 1 and Introduction).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify or substitute the porous structure of US 221 with the hierarchically micro-macroporous structure or a micro-meso-macroporous structure, as disclosed in HAL, because the hierarchically micro-macroporous structure or a micro-meso-macroporous structure would assist with the adsorption and/or separation, as disclosed in HAL and US 221.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify or substitute the porous structure of US 221 with the hierarchically micro-macroporous structure or a micro-meso-macroporous structure, as disclosed in HAL, and reasonably expect the resulting apparatus to work as the prior art intended, i.e. achieve separation or adsorption by the separation structure.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify or substitute the porous structure of US 221 with the hierarchically micro-macroporous structure or a micro-meso-macroporous structure, as disclosed in HAL, and the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). This substitution would yield the predictable result of separation or adsorption.
Hence, US 221 in view of HAL is deemed to disclose microplastic recovery material comprising a porous structure comprising a first hierarchical pocket provided in an outer surface of the porous structure, and a nano-protrusion provided on the outer surface, wherein the first hierarchical pocket comprises a first pocket and a second pocket that are connected to each other.
US 221 in view of HAL discloses the first pocket has a diameter of about 1 mm to about 5 mm, and the second pocket has a diameter of about 1 μm to about 100 μm (see HAL section 1, 2.4.4, 3.6.5, 3.2 and 3.4 and figures 39, 71 & 91; see also HAL figures 38-41 & 45-46, 48-51, 53, 55-58) and figures 3-4 (HAL discloses “a multimodal hierarchically porous structure made of interconnected pores with different lengths ranging from micro (<2 nm), meso (2–50 nm) to macro pores (>50 nm)” (see HAL section 1), the “average pore diameters between 500 nm and 5 mm can be synthesized by using the leaching method” (see HAL section 2.4.4).).
In the alternative, even if US 221 in view of HAL does not disclose “the first pocket has a diameter of about 1 mm to about 5 mm, and the second pocket has a diameter of about 1 μm to about 100 μm”, then this feature is nonetheless rendered obvious by US 221 in view of HAL.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 221 in view of HAL to have a first pocket with a diameter of about 1 mm to about 5 mm, and a second pocket with a diameter of about 1 μm to about 100 μm because would assist with creating a space of the pocket/pore.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the micropore/macropore or first pocket/second pocket of US 221 in view of HAL to have a first pocket with a diameter of about 1 mm to about 5 mm, and a second pocket with a diameter of about 1 μm to about 100 μm because one of ordinary skill in the art would modify the diameter of each pore/pocket to assist with the adsorption of microplastics in an aqueous environment. HAL provides guidance on how to achieve various sizes and depths of pockets/pores in the separation structure of US 221 in view of HAL.
It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the diameter of the pores/pockets and, in the course of routine experimentation, arrive at the claimed invention.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the diameter of the micropore/macropore or first pocket/second pocket of US 221 in view of HAL because one of ordinary skill in the art would modify the diameter of each pores/pocket to assist with the adsorption of microplastics in an aqueous environment.
It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the diameter of the pores/pockets and, in the course of routine experimentation, arrive at the claimed invention.
US 221 in view of HAL discloses that the oil-water separation structure is capable of selectively separating out and retrieving oil from a mixture of water and oil (see US 221 abstract). US 221 in view of HAL does not disclose that the water comprises microplastic and does not disclose that the structure separates out and retrieves microplastics from a mixture of water and oil.
Yang discloses “Microplastics (MPs) can interact with spilled oil to form MP-oil-dispersant agglomerates (MODAs) in oceans” (see Yang abstract). Yang discloses that crude oil and microplastics are known pollutants in marine environments, such as the seawater/ocean, Gulf of Mexico, Persian Gulf, etc. (Yang, pages 1-2/Section 1). Yang discloses that microplastics and oil interact with one another to form an agglomerate in the marine environment (see Yang abstract, pages 3-5/Sections 3.1.1-3.1.3; Figure 1 and Table 1).
Yang is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. microplastic pollution in the ocean.
Nelms discloses that microplastics in marine environments are ubiquitous (see Nelms title) and examined the amount of microplastics found within the digestive tract of marine animals to establish the presence of microplastics in the marine environment (see Nelms figures 1-4; pages 2-4/ Sections Results – Conclusions).
Nelms is considered to be analogous to the claimed invention because it is in the same field of endeavor, i.e. microplastic pollution in the ocean.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use the separation structure of US 221 in view of HAL, on water, which would comprise oil, microplastics and/or MODAS (MP- oil-dispersant agglomerates), as disclosed by Yang, and/or on water, which would comprise microplastics that are ubiquitous in marine environments, as disclosed in Nelms, because it would assist with the removal of pollutants from water, which would include microplastics, oil, and/or MODAS.
The structure of US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms, when being applied to a water environment, will necessarily result in microplastic recovery. Microplastic is ubiquitous in water and when oil is present in water, the microplastic and oil will form an agglomerate. Hence, the structure of US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms appears to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed. “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.” See MPEP 2112, II.
Hence, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms is deemed to disclose a microplastic recovery material comprising a porous structure comprising a first hierarchical pocket provided in an outer surface of the porous structure, and a nano-protrusion provided on the outer surface, wherein the first hierarchical pocket comprises a first pocket and a second pocket that are connected to each other, wherein the first pocket has a diameter of about 1 mm to about 5 mm, and the second pocket has a diameter of about 1 μm to about 100 μm.
Regarding claim 2, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the porous structure comprises a polymer fiber (see US 221 paragraphs 0063-0065; see HAL section 1.2, 2.1, 3.3; Table 2, figures 3-4, 47 and 68).
Regarding claim 3, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 2. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the porous structure comprises cellulose or poly(vinyl alcohol) (see US 221 paragraphs 0064-0065; see HAL section 2.4.2; section 2.4.3 (between figures 23 & 24); section 3.7 (between figures 88 & 89)).
Regarding claim 4, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses each of the first pocket and the second pocket has a shape of an unevenness groove having a semi-spherical shape (see rejection of claim 1; see HAL section 1.2 (HAL discloses shape selectivity of the micropores, mesopores and macropores); section 2.2.3; section 3; section 3.2 (between figures 39-40)).
Further, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms to have a first pocket and a second pocket has a shape of an unevenness groove having a semi-spherical shape because it would assist with increasing the surface area of the pocket/pore and/or because it would assist forming an opening that would assist adsorbing microplastics.
Regarding claim 5, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the first pocket is connected to the second pocket in a one-to-many manner (see rejection of claim 1).
Regarding claim 6, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the nano-protrusion has a shape of a nano-fiber, a nano-pillar, or a combination thereof (see US 221 figures 1, 10b; paragraphs 0016, 0020, 0068).
Regarding claim 7, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the surface of the porous structure has hydrophilicity (see US 221 abstract, paragraphs 0071-0072, 0080, 0085,
Regarding claim 8, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1.
Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms does not disclose the first pocket has a depth of about 1 mm to about 5 mm, and the second pocket has a depth of about 1 μm to about 100 μm.
Nevertheless, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms to have a pocket with a depth of about 1 mm to about 5 mm and a second pocket with a depth of about 1 μm to about 100 μm, because would assist with creating a space of the pocket/pore.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the micropore/macropore or first pocket/second pocket of US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms to have a pocket with a depth of about 1 mm to about 5 mm and a second pocket with a depth of about 1 μm to about 100 μm because one of ordinary skill in the art would modify the depth of each pore/pocket to assist with the adsorption of microplastics in an aqueous environment.
Yang discloses that microplastics range from 12 µm, 45 µm and 125 µm (see Yang abstract, table 1 and section 2.1) and Nelms discloses that microplastics are < 5 mm in size (see Nelms page 1/section Introduction) and discloses a size range of microplastic particles being less than 500 µm to greater than 5000 µm within the digestive tract of marine animals (see Nelms figure 1). Hence, one of ordinary skill in the art would form pockets/pores with a sufficient depth to adsorb the various sizes of microplastics, as disclosed in Yang and Nelms, and HAL provides guidance on how to achieve various sizes and depths of pockets/pores in the separation structure of US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms.
It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the depth of the pores/pockets and, in the course of routine experimentation, arrive at the claimed invention.
Regarding claim 9, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the porous structure further comprises a second hierarchical pocket disposed therein, wherein the second hierarchical pocket comprises a hole and a third pocket connected to the hole (see rejection of claim 1; see HAL figures 6, 39, 42-43, 46, 48-51; section 2.1.4; section 2.3.1 (between figures 16 and 17); section 3.6.5 & figure 71; section 3.6.3 & figure 65; section 3.4.1 & figure 51 (between figures 50 & 51); section 3.4.2 & figure 55).
US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses a separation structure/microplastic recovery material that will necessarily possess a second hierarchical pocket disposed therein, wherein the second hierarchical pocket comprises a hole and a third pocket connected to the hole. The separation structure/microplastic recovery material of US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms appears to be substantially identical to the claimed material and thus inherently would possess the claimed functional properties—unless these properties arise from features not yet claimed.
Regarding claim 10, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the invention as discussed above in claim 1. Further, US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms discloses the hole has a diameter of about 1 mm to about 5 mm, and the third pocket has a diameter of about 1 μm to about 100 μm (see rejection of claim 9 and claim 8).
In the alternative, even if US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms does not disclose “the hole has a diameter of about 1 mm to about 5 mm, and the third pocket has a diameter of about 1 μm to about 100 μm”, then this feature is nonetheless rendered obvious by US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms to have the hole with a diameter of about 1 mm to about 5 mm, and the third pocket with a diameter of about 1 μm to about 100 μm because would assist with creating a space of the pocket/pore.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the micropore/macropore or first pocket/second pocket of US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms to have the hole with a diameter of about 1 mm to about 5 mm, and the third pocket with a diameter of about 1 μm to about 100 μm because one of ordinary skill in the art would modify the diameter of each pore/pocket to assist with the adsorption of microplastics in an aqueous environment.
Yang discloses that microplastics range from 12 µm, 45 µm and 125 µm (see Yang abstract, table 1 and section 2.1) and Nelms discloses that microplastics are < 5 mm in size (see Nelms page 1/section Introduction) and discloses a size range of microplastic particles being less than 500 µm to greater than 5000 µm within the digestive tract of marine animals (see Nelms figure 1). Hence, one of ordinary skill in the art would form pockets/pores with a sufficient diameter to adsorb the various sizes of microplastics, as disclosed in Yang and Nelms, and HAL provides guidance on how to achieve various sizes and depths of pockets/pores in the separation structure of US 221 in view of HAL and Yang OR US 221 in view of HAL and Nelms.
It has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the diameter of the pores/pockets and, in the course of routine experimentation, arrive at the claimed invention.
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Conclusion
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/BERNADETTE KAREN MCGANN/Examiner, Art Unit 1773
/JOSEPH W DRODGE/Primary Examiner, Art Unit 1773