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 arguments dated 2/02/2026 regarding the restriction/unity of invention requirement set forth on 12/08/2025 are persuasive in view of the amendments filed 2/02/2026. Additionally, for the reasons discussed in applicant’s arguments, the limitations of claim 1 and dependent claims are free from the prior art; as such, all previously withdrawn claims are hereby rejoined in view of the amendments of 2/02/2026, because all groups now incorporate the limitations of claim 1.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 12/08/2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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 1-29 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation “40-90%”, and the claim also recites “60-90%” and “70-90%” which are the narrower statement of the ranges/limitations. Claim 1 also recites the broad recitation “does not exceed 10%” and also the narrower limitations “8%” and “5%.”
Claims 2 and 3 both recite the same ranges with respect to different planar directions i.e. a broad range 40-90%) for porosity followed by two narrower ranges, and a broad range (10%) for difference followed by two narrower ranges.
Claim 9 recites a broad range of “40-90%” and a narrower range of “60-90%.”
Claim 13 recites a broad range for thickness of “50-500” microns, and a narrower range of “75-300” microns.
Claim 14 recites a broad range of “1-50” microns and a narrower range of “5-18” micron for droplet sizes, and additionally recites a broad range of “1-60 seconds” and a narrower range of “2-40” seconds for pretreatment time.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, the narrower ranges are interpreted as optional limitations. Examiner notes that while other claims may list multiple sets of ranges for limitations e.g. 5 with various ranges for water flux, these ranges are clearly indicated in the alternative.
Claims 4-8, 11-12, and 15-29 depend directly or indirectly from claim 1 and incorporate the same indefiniteness.
Double Patenting
Claims 1-7 and 9-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,440,808 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a polymer membrane having a three-dimensionally interpenetrating pore network which is understood to be bicontinuous, and which has volume porosity in a range consistent with the instant claimed invention i.e. 65-95%, and which has an overlapping range for e.g. pore sizes (0.1- 5 micron i.e. including 100 nm at the low end) [inst. claims 1 and 7 vs. ref. claims 1-3]. The three-dimensional network morphology extends through substantially the entire thickness of the membrane and it does not have any other sections with different morphologies [inst. claim 1 vs. ref. claim 5]. Further, regarding the method of making, the reference membrane uses the same process steps for production that are employed by the instant claimed invention, including dissolving polymer components into solution, casting the film, exposing the film to a bath of atomized droplets of a poor solvent, and then submerging in a solidification (coagulation) bath of another poor solvent [inst. claims 11 and 15 vs. ref. claim 14]. The atomization conditions also satisfy the claim requirements e.g. for droplet size and time [inst. claim 14 vs. ref. claims 16-17]. The solvents employed are also consistent with the instant claim requirements [inst. claim 16 vs. ref. 14] and the thickness of the film is consistent [inst. claim 13 vs. ref. claim 26]. Further, the reference membrane employs a bottom layer such as a fabric which is consistent with the instant claim requirements [inst. Claim 4 vs. ref. claim 20]. The reference claims may employ polysulfone or polyacrylonitrile, consistent with the instant claim requirements [inst. claims 5-6 vs. ref. claim 1].
Because the reference patent teaches a membrane which may be made from the same materials as the instant claimed invention and which may be made using the same process steps, and to the same general dimensions e.g. thickness and pore size ranges which overlap, and which is also taught as having a highly interconnected pore network structure, and which contains consistent morphology throughout, the reference patent membrane and process of making are sufficient to render the instant claimed membrane and process of making obvious, because given the same materials and process conditions, the resulting membrane would be understood to have the same properties even if those properties are not explicitly identified by the reference claims. As such, the membrane of claims 1-7, 9, 10, and 17 as well as the process of claims 11-16 are rendered obvious by the reference patent claims
Allowable Subject Matter
No claims may be allowed until the 112(b) rejections and double patenting rejections above have been overcome. However, the inventions of claim 1 and dependent claims are understood to be free from the prior art. The closest prior art is represented by Eykens (WO 2018/122308 A1) which was cited on the restriction requirement of 12/08/2025, which teaches membranes such as ultrafiltration membranes with interconnected porous regions which are isotropic and thus have a narrow pore size distribution. Eykens teaches the isotropic nature requires uniform porosity within the layers having a uniformity value of at least 0.4, preferably about 0.5, where such value represents the ratio of the size of the smallest pores to the size of the largest pores in a given layer [0052]. However, Eykens does teach that even within a given isotropic layer, the surface porosity may be lower than the bulk porosity [0051]. Further, even considering the uniformity value, the tolerated difference in uniformity (e.g. up to 100% of the smallest pores or 50% of the largest pores) represent significantly high differences compared to the values required by the instant claimed invention i.e. any two given cross-sections within the sublayer must be within 10% of each other in terms of porosity. As such, and in view of applicant’s considered arguments dated 2/02/2026, the teachings of Eykens are not sufficient to lead one of ordinary skill in the art to arrive at the claimed membrane of claim 1 or any dependent claims. Further, the prior art alone or in combination does not teach or fairly suggest any of the particular details which would cure the deficiency of Eykens, such that the invention of claim 1 and dependent claims would not have been obvious to one of ordinary skill in the art, and the claims are free from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
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, Jennifer Dieterle can be reached at (571)270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1777
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