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 Rejoinder will be considered if the withdrawn claims are amended commensurate in scope with the claims found allowable.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.
Claim 11 is 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 11 recites “wherein the preservation solution further contains a chemical having a bacteriostatic effect or a bactericidal effect.” The disclosure has similar language repeated several times, but does not show what the said chemical is.
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 and 10 are rejected under 35 U.S.C. 102(a1) as being anticipated by Marsh et al (US 2003/0098272).
Claims are directed to a spiral wound reverse osmosis membrane having a preservative solution in it, which is a salt composed of monovalent cations and anions in claim 7. 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. This would anticipate claims 7,8 and 10.
Claim(s) 9 and 11 are rejected under 35 USC 102(a1) as being anticipated by, or under 35 U.S.C. 103 as unpatentable over Marsh et al (US 2003/0098272).
For claims 9 and 11, 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.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRISHNAN S MENON/Primary Examiner, Art Unit 1777