DETAILED ACTION
Status of Claims:
Claims 1 and 21-34 are pending.
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 without traverse of Group I in the reply filed on 2/10/2026 is acknowledged.
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.
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, 21, 22, and 25-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,781,119. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1:
The claims of the patent disclose gas transfer membrane cord comprising, one or more longitudinally extending yarns (plurality of yarns configured to provide a core) (see claims 1 and 11), a plurality of longitudinally extending gas transfer membranes (hollow fiber gas transfer membranes/untwisted multifilament gas transfer membrane yarn) (see claims 1 and 11) spaced radially around the one or more longitudinally extending yarns(gas transfer membranes as a wrap) (see claim 11), and one or more yarns wrapped in a spiral around the gas transfer membranes (see claims 2 and 11).
Regarding Claim 21:
The claims of the patent disclose the cord of claim 1, wherein the one or more longitudinally extending yarns comprises a center yarn that is made up of multiple filaments that are twisted (braided) together (see claim 11).
Regarding Claim 22:
The claims of the patent disclose the cord of claim 1, wherein each of the gas transfer membranes comprises a hollow fiber (see claims 1 and 11).
Regarding Claim 25:
The claims of the patent, disclose the cord of claim 22, wherein the hollow fiber has an outside diameter less than 200 µm (see Patent claim 4). Given that the disclosed range of 200 µm or less fully encompasses the claimed range of 100 µm or less one skilled in the art would have found it obvious to use a fiber diameter within the claimed range (see MPEP 2144.05).
Regarding Claim 26:
The claims of the patent disclose the cord of claim 22, wherein the hollow fiber has a wall thickness of 50µ or less (see claim 6). Given that the disclosed range of 50µm or less fully encompasses the claimed range of 15 µm to 20 µm a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use a fiber with a wall thickness within the claimed range (see MPEP 2144.05).
Regarding Claim 27:
The claims of the patent disclose the cord of claim 1 having an outside diameter of 0.3 mm to 2.0 mm (see claim 3). Given that the disclosed range of 0.3 mm to 2.0 mm overlaps the claimed range of approximately 1 mm or less a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use an outside diameter within the claimed range (see MPEP 2144.05).
Regarding Claim 28:
The claims of the patent disclose the cord of claim 1 further comprising a biofilm (see claim 8). The claims do not disclose a ratio of membrane surface area to biofilm surface area of 2 to 5, however the surface area of the biofilm is dependent on the operation of the gas transfer membrane and the growth of the biofilm and is therefore a method limitation. As the cord of the claims of the patent could be operated in any reactor it could have the same surface area ratios. Alternatively the cord disclosed by the claims of the patent has the same dimensions as the claimed cord and would therefore inherently have the same surface areas.
Regarding Claim 29:
The claims of the patent disclose the cord of claim 1 wherein the plurality of longitudinally extending gas transfer membranes form a substantially continuous layer surrounding the one or more longitudinally extending yarns (wrap around) (see claim 11).
Claims 23, 24 and 30-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,781,119 in view of Cote et al (WO 2004/071973).
Regarding Claim 23:
The claims of the patent disclose the cord of claim 22.
The claims do not disclose the hollow fiber is made of an oxygen- permeable polymer.
Cote teaches a hollow fiber made of an oxygen- permeable polymer (gas-permeable) (see para. 0011).
The patent and Cote are analogous inventions in the art of gas transfer membranes. It would have been obvious to use the oxygen permeable membrane material as disclosed by Cote and the membrane material in the claims of the patent because it allows the membrane to be gas permeable (see Cote para. 0011) which is required by the claims of the patent (it is a gas transfer membrane) (see Patent claims 1 and 11).
Regarding Claim 24:
The claims of the patent, as modified, disclose the cord of claim 23, wherein the oxygen-permeable polymer is poly methyl pentene (PMP) (see Cote para. 0011).
Regarding Claim 30:
The claims of the patent, disclose the cord of claim 24, wherein the hollow fiber has an outside diameter less than 200 µm (see Patent claim 4). Given that the disclosed range of 200 µm or less fully encompasses the claimed range of 100 µm or less one skilled in the art would have found it obvious to use a fiber diameter within the claimed range (see MPEP 2144.05).
Regarding Claim 31:
The claims of the patent disclose the cord of claim 30, wherein the hollow fiber has a wall thickness of 50µm or less (see claim 6). Given that the disclosed range of 50µm or less fully encompasses the claimed range of 15 µm to 20 µm a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use a fiber with a wall thickness within the claimed range (see MPEP 2144.05).
Regarding Claim 32:
The claims of the patent disclose the cord of claim 30 having an outside diameter of 0.3 mm to 2.0 mm (see claim 3). Given that the disclosed range of 0.3 mm to 2.0 mm overlaps the claimed range of approximately 1 mm or less a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use an outside diameter within the claimed range (see MPEP 2144.05).
Regarding Claim 33:
The claims of the patent disclose the cord of claim 30 further comprising a biofilm (see claim 8). The claims do not disclose a ratio of membrane surface area to biofilm surface area of 2 to 5, however the surface area of the biofilm is dependent on the operation of the gas transfer membrane and the growth of the biofilm and is therefore a method limitation. As the cord of the claims of the patent could be operated in any reactor it could have the same surface area ratios. Alternatively the cord disclosed by the claims of the patent has the same dimensions as the claimed cord and would therefore inherently have the same surface areas.
Regarding Claim 34:
The claims of the patent disclose the cord of claim 30 wherein the plurality of longitudinally extending gas transfer membranes form a substantially continuous layer surrounding the one or more longitudinally extending yarns (wrap around) (see claim 11).
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 28 and 33 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.
Regarding Claims 28 and 33:
The claims state “a ratio of membrane surface area to biofilm surface area of 2 to 5” however it is not clear how a surface area of the biofilm is determined. Specifically it is not clear if this is a somehow fixed value for the membrane, a maximum value, a minimum value, or something else. The surface area of the biofilm would be expected to change as the biofilm grows (a thicker biofilm would have a greater surface area since it is being grown around a cord and will have a larger diameter).
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.
Claim(s) 1, 21, 22, and 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pasquali et al (USPN 5,725,949).
Regarding Claim 1:
Pasquali teaches the gas transfer membrane cord comprising, one or more longitudinally extending yarns (carrier thread), a plurality of longitudinally extending gas transfer membranes (hollow fibers) spaced radially around (arranged around) the one or more longitudinally extending yarns, and one or more yarns (winding thread) wrapped in a spiral around the gas transfer membranes (see col. 2 lines 3-10, fig. 1).
Regarding Claim 21:
Pasquali teaches the cord of claim 1, wherein the one or more longitudinally extending yarns comprises a center yarn that is made up of multiple filaments that are twisted together (carrier thread is a multifilament thread) (see col. 2 lines 26-27, fig. 1).
Regarding Claim 22:
Pasquali teaches the cord of claim 1, wherein each of the gas transfer membranes comprises a hollow fiber (see col. 1 line 15).
Regarding Claim 29:
Pasquali teaches the cord of claim 1, wherein the plurality of longitudinally extending gas transfer membranes form a substantially continuous layer surrounding the one or more longitudinally extending yarns (see fig. 1).
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.
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.
Claim(s) 23-26, 28, 30, 31, 33, and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pasquali et al (USPN 5,725,949) as applied to claim 22 above, and further in view of Cote et al (WO 2004/071973).
Regarding Claim 23:
Pasquali teaches the cord according to claim 22.
Pasquali does not explicitly teach the hollow fiber is made of an oxygen- permeable polymer.
Cote teaches a hollow fiber is made of an oxygen- permeable polymer (see para. 0011).
Pasquali and Cote are analogous inventions in the art of hollow fiber membranes. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the hollow fibers of Pasquali with the oxygen permeable hollow fibers of Cote because it is the simple substitution of one known membrane material for another known membrane material, obviously resulting in gas flow through the membrane, with an expectation of success. And Pasquali is open to the use of the membrane for methods that require the flow of oxygen (oxygenation of blood) (see Pasquali col. 5 lines 64-67).
Regarding Claim 24:
Pasquali, as modified, teaches the cord of claim 23, wherein the oxygen-permeable polymer is poly methyl pentene (PMP) (see para. 0011).
Regarding Claim 25:
Pasquali teaches the cord of claim 22.
Pasquali does not explicitly teach the hollow fiber has an outside diameter less than 100 µm.
Cote teaches a hollow fiber having an outside diameter of 100 µm or less (see para. 0008).
Pasquali and Cote are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use a hollow fiber with a diameter of 100µm or less as disclosed by Cote as the hollow fiber in Pasquali in order to make the device appropriate for biofilm formation and water treatment (see Cote para. 0008, 0003), further Pasquali teaches that different hallow fibers are used to make the device suitable for different applications (see Pasquali col. 5 lines 64-67).
Regarding Claim 26:
Pasquali, as modified, teaches the cord of claim 22.
Pasquali does not teach the hollow fiber has a wall thickness of 15 µm to 20 µm.
Cote teaches a hollow fiber with a wall thickness of 20µm or less (see para. 0016). Given that the prior art range of less than 20µm or less fully encompasses the claimed range of 15 µm to 20 µm a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use a hollow fiber with a wall thickness within the claimed range (see MPEP 2144.03).
Pasquali and Cote are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use a hollow fiber with a wall thickness of 20µm or less as disclosed by Cote as the hollow fiber in Pasquali in order to make the device appropriate for biofilm formation and water treatment (see Cote para. 0008, 0003), further Pasquali teaches that different hallow fibers are used to make the device suitable for different applications (see Pasquali col. 5 lines 64-67).
Regarding Claim 28:
Pasquali teaches the cord of claim 1.
Pasquali does not teach a biofilm.
Cote teaches a hollow fiber membrane comprising a biofilm (see para. 0016).
Pasquali and Cote are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use the cord of Pasquali in a biofilm application, as disclosed by Cote because it allows high mass transfer without complicated manufacturing (see Pasquali col. 1 lines 20-46). The surface area of the biofilm is dependent on the operation of the gas transfer membrane and the growth of the biofilm and is therefore a method limitation. As the cord of Pasquali could be operated in any reactor it could have the same surface area ratios.
Regarding Claim 30:
Pasquali, as modified, teaches the cord of claim 24.
Pasquali does not explicitly teach the hollow fiber has an outside diameter less than 100 µm.
Cote teaches a hollow fiber having an outside diameter of 100 µm or less (see para. 0008).
Pasquali and Cote are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use a hollow fiber with a diameter of 100µm or less as disclosed by Cote as the hollow fiber in Pasquali in order to make the device appropriate for biofilm formation and water treatment (see Cote para. 0008, 0003), further Pasquali teaches that different hallow fibers are used to make the device suitable for different applications (see Pasquali col. 5 lines 64-67).
Regarding Claim 31:
Pasquali, as modified, teaches the cord of claim 30.
Pasquali does not teach the hollow fiber has a wall thickness of 15 µm to 20 µm.
Cote teaches a hollow fiber with a wall thickness of 20µm or less (see para. 0016). Given that the prior art range of less than 20µm or less fully encompasses the claimed range of 15 µm to 20 µm a prima facie case of obviousness exists and one skilled in the art would have found it obvious to use a hollow fiber with a wall thickness within the claimed range (see MPEP 2144.03).
Pasquali and Cote are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use a hollow fiber with a wall thickness of 20µm or less as disclosed by Cote as the hollow fiber in Pasquali in order to make the device appropriate for biofilm formation and water treatment (see Cote para. 0008, 0003), further Pasquali teaches that different hallow fibers are used to make the device suitable for different applications (see Pasquali col. 5 lines 64-67).
Regarding Claim 33:
Pasquali, as modified, teaches the cord of claim 30.
Pasquali does not teach a biofilm.
Cote teaches a hollow fiber membrane comprising a biofilm (see para. 0016).
Pasquali and Cote are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use the cord of Pasquali in a biofilm application, as disclosed by Cote because it allows high mass transfer without complicated manufacturing (see Pasquali col. 1 lines 20-46). The surface area of the biofilm is dependent on the operation of the gas transfer membrane and the growth of the biofilm and is therefore a method limitation. As the cord of Pasquali could be operated in any reactor it could have the same surface area ratios.
Regarding Claim 34:
Pasquali, as modified teaches the cord of claim 30, wherein the plurality of longitudinally extending gas transfer membranes form a substantially continuous layer surrounding the one or more longitudinally extending yarns (see Pasquali fig. 1).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pasquali et al (USPN 5,725,949) as applied to claim 1 above, and further in view of Pasquali et al (USPN 5,450,516, hereafter referred to as ‘516).
Regarding Claim 27:
Pasquali teaches the cord of claim 1.
Pasquali does not teach an outside diameter of approximately 1 mm or less. Pasquali further teaches that the fibers and hollow fibers are selected for their desired application such as dialysis and oxygenation of blood (see col. 6 lines 15-20, col. 5 lines 64-67).
‘516 teaches that the hollow fiber diameter for dialysis is 150-280 µm (see col. 2 Lines 6-9).
Pasquali and ‘516 are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use hollow fibers with a diameter in the range disclosed by ‘516 as the hollow fibers of Pasquali because they are known to be of a size suitable for the desired application. Pasquali further teaches 6 hollow fibers around the core (see Pasquali col. 5 lines 8-10) which would result in a total diameter of approximately 0.6mm.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pasquali et al (USPN 5,725,949) and Cote et al (WO 2004/071973) as applied to claim 30 above, and further in view of Pasquali et al (USPN 5,450,516, hereafter referred to as ‘516).
Regarding Claim 32:
Pasquali, as modified, teaches the cord of claim 30.
Pasquali does not teach an outside diameter of approximately 1 mm or less. Pasquali further teaches that the fibers and hollow fibers are selected for their desired application such as dialysis and oxygenation of blood (see col. 6 lines 15-20, col. 5 lines 64-67).
‘516 teaches that the hollow fiber diameter for dialysis is 150-280 µm (see col. 2 Lines 6-9).
Pasquali and ‘516 are analogous inventions in the art of hollow fibers. It would have been obvious to one skilled in the art to use hollow fibers with a diameter in the range disclosed by ‘516 as the hollow fibers of Pasquali because they are known to be of a size suitable for the desired application. Pasquali further teaches 6 hollow fibers around the core (see Pasquali col. 5 lines 8-10) which would result in a total diameter of approximately 0.6mm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 3/12/2026
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779