DETAILED ACTION
Status of Claims:
Claims 1, 21-33, and 35-40 are pending.
Claims 2-20 and 34 are canceled.
Claims 1 and 21-33 are amended.
Claims 35-40 are new.
This Action is Made Final.
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 .
Response to Arguments
Applicant's arguments filed 6/18/2026 have been fully considered but they are not persuasive. The applicant argues that USPN 10,781,119 does not teach the claimed “gas transfer membranes spaced radially around the one or more longitudinally extending yarns. Although the applicant is correct that the term “warp” was misinterpreted as “wrap” in the rejection the limitation is still clearly disclosed in the claims of the patent. Claim 11 of the patent states “gas transfer membrane yarn being parallel with the core but not braided with the multifilament reinforcing yarns”. As the gas transfer membranes are parallel with the core, but not part of the braid they are inherently spaced radially around the longitudinally extending cord because they cannot be within the core. Further the limitation “spaced radially around” does not require an even spacing or continuous spacing around the yarns. This argument is persuasive with respect to claim 29. The claims of the patent do not teach a substantially continuous layer surrounding the yarns.
The applicant argues that the claims of the patent do not teach “the biofilm is supported on an exterior of the gas transfer membrane cord and a portion of the biofilm fills gaps around the gas transfer membranes”. This argument is not persuasive because the biofilm is “around the plurality of yarns”. As the biofilm is around the yarns it fills some gaps. The term “gaps” is not limited to any specific location.
The 112 rejections are withdrawn in view of the arguments.
The applicant argues that the claimed limitation of “the biofilm is supported in an exterior…and a portion of the biofilm fills gaps around the gas transfer membranes” would not have been obvious in view of Pasquali because Pasquali deliberately maintains an open flow path for fluid around the hollow fibers. This argument is not persuasive because a biofilm does not destroy an open flow path for mass transfer. Fluid (air) flows through the biofilm from the gas transfer membranes. The applicant is correct that Pasquali does not disclose occupying the space with a biofilm, however Pasquali teaches that the cord can be used for alternative mass transfer exchangers (see col. 5 lines 64-67). Therefore it would have been obvious to use the cord of Pasquali for biological water treatment and grow a biofilm on the hollow fibers. It is well known in the art to use hollow fiber membranes to grow biofilms (see Cote, Abstract) Claim 1 is no longer rejected in view of Pasquali alone, the rejection is now made in view of Cote, previously cited to teach the biofilm.
The applicant argues that it would not have been obvious to modify Pasquali with Cote because “Pasquali’s stated objective is to provide an inexpensive and higher effective mass-transfer and/or heat exchanger” and filing the gaps around the hollow fibers would impede the flow paths that Pasquali identifies as necessary. This argument is not persuasive because biofilm reactors requires a high rate of mass transfer (oxygen transfer to the biofilm surface) (see Cote para. 0004). Therefore one skilled in the art would fine it obvious to operate the device of Pasquali as a biofilm media because it increase the surface area of the membrane available, thereby increasing the biofilm surface area (see Cote para. 0004, Pasquali col. 1 lines 33-35).
The applicant argues that the growth of biofilm on the surface would change the operating principles of the Pasquali because the biofilm would be occupying space that Pasquali intentionally preserves for fluid flow. This argument is not persuasive because the growth of biofilm does not prevent fluid flow around or mass transfer through the membranes, the biofilm benefits from the increase in available surface area and fluid (oxygen) flow through the membranes.
The applicant argues that Cote does not provide a reason to incorporate PMP fibers into Pasqualis mass-transfer cord. This argument is not persuasive because PMP is known to have a high gas permeability (see Cote para. 0008). One skilled in the art would have found it obvious to use the PMP hollow fibers of Cote in the mass transfer arrangement of Pasquali because the arrangement if Pasquali improves the effective surface are of the hollow fibers (see Pasquali col. 1 lines 33-35) and it is desirable in Cote to have a high surface area (see Cote para. 0004).
The applicant again argues that it would not have been obvious to modify Pasquali and Cote because of the changes in Pasquali intended flow-path function. This argument is not persuasive because the growth of a biofilm does not eliminate the intended flow-path function but instead benefits from the increased area for mass transfer.
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, 25-28, and 35 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 in combination a gas transfer membrane cord and a biofilm (see claim 8)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 warp parallel to the yarn) (see claim 11), and one or more yarns wrapped in a spiral around the gas transfer membranes (see claims 2 and 11) wherein the biofilm is supported on an exterior of the gas transfer membrane cord, and a portion of the biofilm fills gaps around the gas transfer membranes. Biofilm grows on the membranes (See claim 8) and the cord is substantially identical to that claimed, therefore the biofilm will grow in substantially the same locations and fill the gaps. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
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 having lumen (hollow fibers have lumens, making (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. The claims do not disclose a ratio of membrane surface area to biofilm surface area of 2 to 5, however 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).
Regarding Claim 35:
The claims of the patent disclose the combination of claim 27 having an outside diameter of 1.4 mm to 1.5 mm measured across an exterior surface of the biofilm. The claims do not explicitly teach this limitation, however as the growth of the biofilm is a function of the cord and the cord disclosed by the claims of the patent is substantially identical to that claimed the outside diameter would be inherently with in the claimed range. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Claims 23, 24, 30-33, 36, 37, and 40 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) and are configured to receive an oxygen-containing gas in the lumen and transfer oxygen through the oxygen permeable walls to the biofilm supported on an exterior of the gas transfer membrane cord (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).
Regarding Claim 36:
The claims of the patent disclose the gas transfer membrane cord for a membrane-aerated biofilm reactor, the gas transfer membrane cord comprising: one or more longitudinally extending yarns; a plurality of longitudinally extending hollow fiber gas transfer membranes spaced radially around the one or more longitudinally extending yarns, each of the hollow fiber gas transfer membranes having an outside diameter less than 100 pm, a wall thickness of 15 pm to 20 pm; and one or more yarns wrapped in a spiral around the hollow fiber gas transfer membranes (see claim mapping for claims 1, 25, and 26 above).
The patent does not disclose and an oxygen-permeable wall made of poly methyl pentene.
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 37:
The claims of the patent, as modified, disclose the gas transfer membrane cord of claim 36 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 40:
The claims of the patent, as modified, disclose the gas transfer membrane cord of claim 36, wherein each of the hollow fiber gas transfer membranes has a lumen for receiving oxygen-containing gas, and the oxygen-permeable wall of each of the hollow fiber gas transfer membranes is configured to transfer oxygen to a biofilm supported on an exterior of the gas transfer membrane cord (see Cote para. 0011).
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)1, 21-26, 28- 31, 33 36 and 40 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 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).
Pasquali does not teach the gas transfer membrane cord in combination with a biofilm wherein the biofilm is supported on an exterior of the gas transfer membrane cord, and a portion of the biofilm fills gaps around the gas transfer membranes.
Cote teaches the gas transfer membrane cord in combination with a biofilm wherein the biofilm is supported on an exterior of the gas transfer membrane cord (biofilm is grown on the hollow fiber) (see para. 0011), and a portion of the biofilm fills gaps around the gas transfer membranes (biofilm growth on surface, therefore the biofilm fills gaps) (see para. 0009, 0013).
Pasquali and Cote are analogous inventions in the art of mass transfer hollow fiber membranes. It would have been obvious to one skilled in the art before the effective filing date of the invention to add the biofilm of Cote to the exterior surface of the gras transfer membrane cord of Pasquali and operate the membrane of Pasquali in a MABR such that biofilm fills gaps around the gras transfer membrane because the cord of Pasquali provides increased surface area for mass transfer (therefore increased surface area for biofilm growth) (see Pasquali col. 1 lines 33-35, col. 2 lines 14-16), it is desirable in biofilm reactors to increase the available surface area (see Cote para. 0004-0007), and Pasquali teaches that the cord can be used for different processes depending on the hollow fibers used (see Pasquali col 5 lines 64-67). Further through routine experimentation one skilled in the art would have found it obvious to use a known hollow fiber mass transfer cord with improved available surface area in a method that requires surface area on the hollow fibers. The use of a known technique (using gas transfer membrane cords as taught by Pasquali) to improve similar devices (MABRs) (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 21:
Pasquali, as modified, teaches the combination 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 Pasquali col. 2 lines 26-27, fig. 1).
Regarding Claim 22:
Pasquali, as modified, teaches the combination of claim 1, wherein each of the gas transfer membranes comprises a hollow fiber having a lumen (see Pasquali col. 1 line 15).
Regarding Claim 23:
Pasquali, as modified, teaches the combination according to claim 22, the hollow fibers configured to receive an oxygen-containing gas in the lumens and transfer oxygen through the oxygen- permeable walls to the biofilm supported on an exterior of the gas transfer membrane cord (oxygenation of blood would transfer oxygen through the lumens, as modified by Cote the hollow fibers are configured to support the biofilms) (see Pasquali col. 5 lines 64-67).
Pasquali does not explicitly teach the hollow fiber comprises an oxygen- permeable wall.
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 combination of claim 23, wherein the oxygen-permeable walls are made of poly methyl pentene (PMP) (see Cote para. 0011).
Regarding Claim 25:
Pasquali teaches the combination 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 combination of claim 25.
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, as modified teaches the combination of claim 1.
The combination does not explicitly teach a ratio of membrane surface area to biofilm surface area of 2 to 5, however the biofilm surface area is a function of the membrane surface area and the structure of the cord. As Pasquali modified by Cote teaches a substantially identical cord the ratio of membrane surface area to biofilm surface are is inherently the same. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 29:
Pasquali, as modified, teaches the combination 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).
Regarding Claim 30:
Pasquali, as modified, teaches the combination 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 combination 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.
The combination does not explicitly teach a ratio of membrane surface area to biofilm surface area of 2 to 5, however the biofilm surface area is a function of the membrane surface area and the structure of the cord. As Pasquali modified by Cote teaches a substantially identical cord the ratio of membrane surface area to biofilm surface are is inherently the same. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 36:
Cote teaches the gas transfer membrane cord for a membrane-aerated biofilm reactor, the gas transfer membrane cord comprising: hollow fiber gas transfer membranes, each of the hollow fiber gas transfer membranes having an outside diameter less than 100 µm (100 microns or less) (see para. 0008), a wall thickness of 20 µm or less (see para. 0016), and an oxygen-permeable wall made of poly methyl pentene (see para. 0008). 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).
Cote does not teach the gas transfer membrane cord comprising one or more longitudinally extending yarns; a plurality of longitudinally extending hollow fiber gas transfer membranes spaced radially around the one or more longitudinally extending yarns, and one or more yarns wrapped in a spiral around the hollow fiber gas transfer membranes.
Pasquali teaches a gas transfer membrane cord comprising one or more longitudinally extending yarns (carrier thread); a plurality of longitudinally extending hollow fiber gas transfer membranes (hollow fibers) spaced radially around the one or more longitudinally extending yarns (arranged around), and one or more yarns wrapped in a spiral (winding thread) around the hollow fiber gas transfer membranes (see col. 2 lines 3-10, fig, 1).
Cote and Pasquali are analogous inventions in the art of hollow fiber membrane cords. It would have been obvious to one skilled in the art to construct the hollow fiber membrane cord of Cote in the manner taught by Pasquali because the cord of Pasquali provides increased surface area for mass transfer (therefore increased surface area for biofilm growth) (see Pasquali col. 1 lines 33-35, col. 2 lines 14-16), it is desirable in biofilm reactors to increase the available surface area (see Cote para. 0004-0007), and Pasquali teaches that the cord can be used for different processes depending on the hollow fibers used (see Pasquali col 5 lines 64-67). Further through routine experimentation one skilled in the art would have found it obvious to use a known hollow fiber mass transfer cord with improved available surface area in a method that requires surface area on the hollow fibers. The use of a known technique (using gas transfer membrane cords as taught by Pasquali) to improve similar devices (MABRs) (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 40:
Cote, as modified, teaches the gas transfer membrane cord of claim 36, wherein each of the hollow fiber gas transfer membranes has a lumen (it is a hollow fiber) for receiving oxygen-containing gas, and the oxygen-permeable wall of each of the hollow fiber gas transfer membranes is configured to transfer oxygen to a biofilm supported on an exterior of the gas transfer membrane cord (see Cote para. 0058).
Claim(s) 27, 32, 35, and 37-39 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 claims 1, 30, and 36 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 a bare 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.
Regarding Claim 32:
Pasquali, as modified, teaches the combination 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 0.6 mm.
Regarding Claim 35:
Pasquali, as modified, teaches the combination of claim 27 having an outside diameter of 1.4 mm to 1.5 mm measured across an exterior surface of the biofilm. The combination does not explicitly teach the outside diameter, however the amount of biofilm growth is a function of the structure of the cord. As the cord of Pasquali, as modified, is substantially identical to that claimed the outside diameter (dependent on the thickness of the biofilm) is presumed to be inherently the same. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions
are presumed to be inherent. The Courts have held that it is well settled that where there
is a reason to believe that a functional characteristic would be inherent in the prior art, the
burden of proof then shifts to the applicant to provide objective evidence to the contrary.
See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed.
Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 37:
Cote, as modified, teaches the cord of claim 36.
Cote does not teach a bare 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 of 150-280 µm (see col. 2 Lines 6-9).
Cote, 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 Cote 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.
Regarding Claim 38:
Cote, as modified, teach the gas transfer membrane cord of claim 37, wherein the plurality of longitudinally extending hollow fiber gas transfer membranes form a substantially continuous layer surrounding the one or more longitudinally extending yarns (see Pasquali fig. 1).
Regarding Claim 39:
Cote, as modified, teaches the 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 Pasquali col. 2 lines 26-27, fig. 1).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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 7/6/2026
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