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 .
Specification
The disclosure is objected to because of the following informalities: In paragraph [00115] line 1, the reactor is referred to as 112. The reactor was previously labeled as 120 in paragraph [00111] and there is no reference 112 in Fig. 3 or 4. Appropriate correction is required.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3, line 2 recites “m2/g”. The claim should read "m2/g”. Appropriate correction is required.
Claim 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the term “high density polyethylene”. The term is used in the claim to mean polyethylene having a molecular weight from about 1 to about 10 million g/mol. Conventionally the term “high density polyethylene” refers to polyethylene having a molecular weight less than about 300,000 g/mol. This term is indefinite because the specification does not clearly redefine the term. For the purpose of further examination, the term is interpreted to read as “ultrahigh molecular weight polyethylene”.
Claims 2-18 are indefinite due to dependence on indefinite claim 1.
Claim 13 recites the limitation "the first high density polyethylene particles" in line 4. There is insufficient antecedent basis for this limitation in the claim. It is suggested to identify the high density polyethylene particles from claim 1 as “the first high density polyethylene particles” to overcome the rejection.
Claims 14 and 15 are indefinite due to dependence on indefinite claim 13.
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 (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 the appropriate paragraphs of 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) 1-2, 5-16 and 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Prince et al (US 20140048741 A1).
Regarding Claims 1, 2 and 5: Prince teaches a filtration media/polymer composite (para. 8) comprising a porous matrix/substrate (para. 9) comprising a binder comprising three ultra high molecular weight polyethylene (UHMWPE)/high density polyethylene (HDPE) particles (para. 10-12) being sintered together to form a porous structure/matrix (para. 9) wherein one UHMWPE particle has a molecular weight from 4-5.5 million g/mol (para. 40), an average particle size (d50) of 28-36 microns (para. 116), and a bulk density of less than or equal to 0.25 g/cm3 (para. 40). Prince further teaches a chemical scavenger/ functionalized particles contained within the porous matrix/substrate (para. 9 and 18) such that the chemical scavenger/functionalized particles are capable of being exposed to fluids contacting the porous substrate (para. 64).
Regarding Claims 6 and 7: Prince teaches UHMWPE polymer particles that have a non-spherical and “popcorn-like”/multi-lobal shape (para. 116).
Regarding Claims 8: Prince teaches a chemical scavenger comprising cross-linked polyvinylpyrrolidone/polyvinyl lactam and polystyrene (Para. 122).
Regarding Claims 9-12: Prince teaches a chemical scavenger component immobilized on a solid carrier (para. 121,135, 142) where the solid carrier comprises precipitated silica particles, silica gels, activated aluminas, zeolite sorbents or mixtures thereof (para 35). The zeolite sorbents read on the claimed limitation of the solid carrier comprising porous particles. Prince further teaches a functional particle/chemical scavenger component comprising an imidazole, a thiol, or a thiourea (para. 135).
Regarding Claims 13-15: Prince teaches a binder comprising a first and second UHMWPE particle (Abstract) wherein the first UHMWPE particle has an average particle size (d50) of 28-36 microns and the second UHMWPE particle has an average particle size (d50) of 100-140 microns (para. 116). The difference in average particle size (d50) would result in the filtration media having a bimodal pore size distribution.
Regarding Claim 16: Prince teaches a polymer composite/matrix wherein the chemical scavenger/functionalized particles are present in an amount of 20 to 90% by weight (para. 142, table 2).
Regarding Claim 18: Prince teaches a self-supporting filtration media that is made by sintering in a cavity mold and being removed from the mold after it has cooled. Based on the specification net shape molded is being interpreted as meaning that the size and shape of the product is not changed after sintering and exiting the mold (US 20240150562 A1 para. 98). As the filtration media is complete after remove from the mold it is considered net shape molded.
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 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Prince et al (US 2014/00484741) in view of Hilder et al. (US 20140127669).
Regarding Claim 3: Prince teaches all of the limitations of claim 1, as set forth above. However, Prince is silent on a porous substrate with a BET surface area of greater than about 0.5 m2/g.
Hilder teaches a porous polymer matrix with a BET specific surface area of 0.5 to 1000 m2/g (para. 142). Prince and Hilder are analogous art because they are directed towards the same field of endeavor, namely porous polymer articles that can be made from sintering ultrahigh molecular weight polyethylene particles.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porous substrate of Prince with the BET surface area of Hilder. Hilder teaches that a higher surface area improves the loading capacity of fluids on the substrate (para. 13). Hilder further teaches that the porous structure should possess a large surface area obtain maximum analyte recovery (para. 130). One of ordinary skill in the art would be motivated to alter the BET surface area of the porous substrate as the ion-exchange capacity of the medium relies on the specific surface area.
Regarding Claim 17: Prince teaches all of the limitations of claim 1, as set forth above. However, Prince is silent on a polymer composite that has a non-planar and non-tubular shape.
However, Hilder teaches a polymer composite that can be sintered into a block, cone, or cylinder (para. 118). Prince and Hilder are analogous art because they are directed towards the same field of endeavor, namely porous polymer articles that can be made from sintering ultrahigh molecular weight polyethylene particles.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polymer composite of Prince to have the shape of the polymer composite in Hilder. Prince discloses that the polymer composite is held in a mold of a predetermined shape during the sintering process. It would have been obvious for one of ordinary skill in the art to mold the polymer composite into a desired shape that would improve the functionality of the polymer composite.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Prince et al (US 2014/00484741) in view of Srinivasan et al (US 2013/0046040).
Prince teaches all of the limitations of claim 1, as set forth above.
However, Prince is silent on the average pore size of the porous substrate. Srinivasan teaches a porous sintered polyethylene article with an average pore size of about 30 to about 330 micron/30,000-300,000 nm (para. 48). Prince and Srinivasan are analogous art because they are directed toward the same field of endeavor, namely porous sintered articles made of polyethylene powder.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the porous substrate of Prince with the pore size of Srinivasan. Srinivasan discloses that a larger pore size ensures a low pressure drop (para. 48). They would be motivated to have a large pore size as it contributes to lower pressure drops and thus a consistence high flow rate through the sintered porous article.
Double Patenting
Claims 1-18 of this application is patentably indistinct from claims 2 and 8-19 of Application No. 18/500,437. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 9-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 8-19 of copending Application No. 18/500,437 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application contain all the limitations of the claims of the instant application.
Regarding Claims 1, 5, 9 and 12: Reference claim 11 teaches all of the limitations of instant claim 1, a porous substrate comprising a binder comprising high density polyethylene polymer particles with a molecular weight from about 1-10 million g/mol sintered together to form a porous structure and a chemical scavenger immobilized on a solid carrier as in claim 9 of the instant exposed to fluids contacting the porous structure wherein the chemical scavenger is an aminoalkyl compound, a mercaptoalkyl compound, a thiourea, or mixtures thereof as in claim 12 of the instant. Claim 11 of the reference application further teaches high density polyethylene particles that have an average particle size (d50) of less than about 50 microns as in claim 5 of the instant.
Regarding Claim 2: Reference claim 8 teaches all of the limitations of reference claim 1 and further teaches HDPE polymer particles that have a bulk density of less than about 0.34 g/cc prior to sintering.
Regarding Claim 3: Reference claim 10 teaches all of the limitations of reference claim 1 and further teaches a porous substrate has a BET surface area of greater than about 0.5 m2/g.
Regarding Claim 4: Reference claim 9 teaches all of the limitations of reference claim 1 and further teaches a porous substrate has an average pore size of greater than about 4.5 nm.
Regarding Claims 6 and 7: The reference claims 12 and 13 teach all of the limitations of reference claim 1 and further teach HDPE particles with a non-spherical (claim 12) and multi-lobal (claim 13) shape.
Regarding Claims 10 and 11: Reference claim 2 teaches all of the limitations of reference claim 1 and further teaches a solid carrier comprising silica particles, alumina particles, zeolite particles, clay particles, silicate particles, or mixtures thereof. The zeolite particles read on the limitation of the solid carrier comprising porous particles.
Regarding Claims 13-15: Reference claims 14-16 teach all of the limitations of reference claim 1 and further teach a second HDPE particle with a greater average particle size (D50) than a first HDPE particle (claim 14) wherein the average of particle size (D50) of the first high density polyethylene particles is from about 10 microns to about 100 microns and the average particle size (D50) of the second high density polyethylene particles is from about 80 microns to about 200 microns (claim 15) which overlaps with the range of the claim in the instant application. The reference claims further teach a polymer composite wherein the first and second high density polyethylene particles form a porous structure having a bimodal pore size distribution (claim 16).
Regarding Claim 16: Reference claim 17 teaches all of the limitations of reference claim 1 and further teaches the chemical scavenger is contained in the polymer composite in an amount greater than about 20% by weight.
Regarding Claim 17: Reference claim 18 teaches all of the limitations of reference claim 1 and further teaches composite has a non-planar and non-tubular shape.
Regarding Claim 18: Reference claim 19 teaches all of the limitations of reference claim 1 and further teaches the polymer composite has been net shape molded.
Regarding Claims 2-4, 6-7, 9-10, and 13-18: Claim 11 of the reference application teaches HDPE particles with an average particle size (D50) of less than about 50 microns. This overlaps the range set by claim 1 of the instant application. It would have been obvious for one of ordinary skill in the art to modify Claims 2 and 8-19 of the reference application with the average particle size of claim 11 of the reference application. They would be motivated make this modification as smaller particle size would increase the surface area of the porous structure allowing for greater interaction between the chemical scavengers and fluids with contaminants.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/500,437 in view of Prince et al. (US 20140048741 A1).
The claim of the reference application teaches a porous substrate comprising a binder comprising high density polyethylene polymer particles with a molecular weight from about 1-10 million g/mol and an average particle size (d50) of less than 50 microns, sintered together to form a porous structure. The claim further teaches a chemical scavenger immobilized on a solid carrier and exposed to fluids contacting the porous structure (Claim 11).
The claims of the reference applications are silent on the chemical scavenger comprising a polyvinyl lactam.
However, Prince teaches a chemical scavenger comprising cross-linked polyvinylpyrrolidone/polyvinyl lactam (Para. 122). It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the claimed invention to replace the chemical scavenger of the reference application with the polyvinyl lactam of Prince. They would have been motivated to make the replacement as the chemical scavenger could be formulated to a specific task such as targeting one contaminant only or one group of contaminants, such as for example heavy metals.
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J BELUNIS whose telephone number is (571)270-3186. The examiner can normally be reached Monday-Friday 8am-4pm.
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/T.J.B./Examiner, Art Unit 1767
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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