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 with traverse of claims 7-11 in the reply filed on 3/18/26 is acknowledged. The traversal is on the ground(s) that request rejoinder upon allowance of claims elected. Rejoinder will be considered if the withdrawn claims are amended commensurate in scope with the claims found allowable.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 7, 8, 10 and 11 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 7 recites “an organic salt composed only of monovalent cations and monovalent anions.” The monovalent cations and anions recited are only inorganic. This is confusing. Also molecular weight of potassium nitrate is 101.10.
Examiner assumes that the monovalent cations and anions are only for the inorganic salt.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The added elements in claim 11, bisulfite, etc., change he scope of claim 7, because claim 7 is limited to only the recited salts. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
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) 7, 8, 10 and 11 are rejected under 35 U.S.C. 102(a1) as being anticipated by, or in the alternative, under 35 USC 103 as unpatentable over Marsh et al (US 2003/0098272).
Claims are directed to a spiral wound membrane having a preservative solution in it, which is a salt composed of inorganic and/or organic salt in claim 7. Therefore, claim 7 is met when the preservative is only an organic salt (like acetates.) The membrane has a porous support and the polyamide layer composed of piperazine in claim 8. The preservation solution has the salt at 0.5% or more by mass in claim 10.
Marsh teaches commercially available NF45 and SR90 membranes which are available [0006] as spiral wound [0007] and which are preserved with 1% sodium bisulfite at pH 4.4 – see the table I, example 1 and example 8 for spiral wound element bagged in 1% sodium bisulfite solution.
Marsh teaches that the preservative solution is buffered with anions -HCO3 (bicarbonate) in claim 12, or salts of formic or acetic acids in claim 14. Na or K or NH4 is implied as cation in these cases, or at the last obvious to one of ordinary skill as immediately envisaged, since these are applied as pH buffer in Marsh. Sodium acetate and sodium bicarbonate, for example, are a well-known pH buffers. This along with the bisulfite meets the bacteriostat or bactericide of claim 11.
MPEP 2131.02-III: A GENERIC DISCLOSURE WILL ANTICIPATE A CLAIMED SPECIES COVERED BY THAT DISCLOSURE WHEN THE SPECIES CAN BE "AT ONCE ENVISAGED" FROM THE DISCLOSURE
"[W]hether a generic disclosure necessarily anticipates everything within the genus … depends on the factual aspects of the specific disclosure and the particular products at issue." Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083, 89 USPQ2d 1370, 1375 (Fed. Cir. 2008). See also Osram Sylvania Inc. v. American Induction Tech. Inc., 701 F.3d 698, 706, 105 USPQ2d 1368, 1374 (Fed. Cir. 2012) ("how one of ordinary skill in the art would understand the relative size of a genus or species in a particular technology is of critical importance").
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)
In the instant case, Na, K, NH4, etc., are at once envisaged by one of ordinary skill in the art as the common cationic species (from the genus of cations) by one of ordinary skill as the cations associated with the cited anions in Marsh, especially when used as a buffer. Also, since Marsh adds sodium bisulfite, the solution does contain sodium ions. Nonetheless, since claim 7 is recited in the alternative, that is, only one of organic and inorganic sat be present, which makes the presence of monovalent ions moot.
Claim(s) 7, 8, 10 and 11 are rejected under 35 U.S.C. 102(a1) as being anticipated by, or in the alternative, under 35 USC 103 as unpatentable over CN 101219345 A.
This reference teaches polyamide spiral wound membrane with piperazine, and is preserved with combinations of sodium bisulfite, sodium acetate, sodium chloride, etc., which anticipates the claims. However, since the reference teaches combinations of many compounds as possible preservatives, it would have also been obvious to one of ordinary skill to pick and choose the commonly known and readily available compounds from the teaching of CN. The concentration recommended is 500 ppm to 10%.
Response to Arguments
Applicant's arguments filed 6/26/26 have been fully considered but they are not persuasive. They are addressed in the rejection.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant submitted several references in IDSs that are relevant prior arts, but not applied at this time. Notable among them is JP2020142191A, which teaches 3% or more salt solution as a preservative for hollow fiber membranes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vickie Kim can be reached at 5712720579. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/Primary Examiner, Art Unit 1777
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