DETAILED ACTION
This detailed action is in response to the amendments and arguments filed on 10/27/2023, and any subsequent filings.
Notations “C_”, “L_” and “Pr_” are used to mean “column_”, “line_” and “paragraph_”.
Claims 17-18 are canceled. Claims 19-21 are new. Claims 1-16 and 19-21 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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 14 reads “the component A and the component B are present in a stoichiometric ratio of 0.95:1 to 1.40:1 based on the number of moles of isocyanate groups in part B and the number of moles of isocyanate-reactive groups in part A.”. This is being interpreted as referring to a ratio of component A to component B. Pg. 22 of the specification filed 10/27/2023 displays an index of 1.05-1.3, where the index is (number of isocyanate groups/number of groups reacting with isocyanate). The inverse of the index on pg. 22 should comprise the ratio range recited in Claim 14. The inverse of 1.05 is 0.95 and the inverse of 1.3 is 0.77. Thus, pg. 22 of the specification does not provide support for the entire ratio range claimed in Claim 14.
Claim 20 reads “the membrane comprises at least 2 layers”. Pg. 23 of the specification filed 10/27/2023 provides support for a membrane comprising “two or three layers”. Pg. 25 of the specification also provides support for a three-layered membrane. However, pages 23 and 25 do not provide support for the entire range of the number of layers recited in Claim 20.
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.
Claim 14 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 14 recites the limitation "the component A" and “the component B” in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-14, 16 and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Publication US20160298009A1 (‘Dey’).
The Applicant’s claims are directed towards a composition and an apparatus.
Regarding Claims 1-4, Dey teaches a two-part curable polyurethane adhesive composition (abstract and [0016-0017]), including:
part A comprising an isocyanate reactive component ([0008], second part); a sustainable reactive rheology modifier ([0064]), glycerol ([0040]) and optionally additives; and
part B comprising a polyisocyanate ([0008], first part) and optionally additives;
wherein the polyurethane adhesive composition comprises at least 60 wt. % sustainable materials by weight of the composition ([0069], the adhesive composition can contain about 10 to about 90 weight percent of the second part, where the second part may be castor oil ([0039])).
Additional Disclosures Included:
Claim 2: part B comprises an isocyanate functional polyurethane prepolymer ([0026]) that is the reaction product of MDI or modified MDI and an isocyanate reactive component ([0027-0030]).
Claim 3: the part A isocyanate reactive component is 95 - 100 % sustainable ([0039]).
Claim 4: the part A isocyanate reactive component comprises a sustainable plant oil ([0039]) having 2 to 4 hydroxyl groups ([0031]).
Regarding Claims 6-14, 16 and 19-20, Dey teaches a separation apparatus (Fig. 1, [0013], reverse osmosis module 10) comprising:
a membrane (Fig. 1, [0073], semipermeable membrane 14) capable of separating a first constituent from a feed fluid mixture comprising the first constituent and a second constituent ([0004]); and
a mixed, two component polyurethane adhesive (Fig. 1, [0073], adhesive composition 12) disposed in one or more discrete areas on the membrane (Fig. 1, [0074]), wherein the two-component polyurethane adhesive comprises:
part A comprising an isocyanate reactive component ([0008], second part); a sustainable reactive rheology modifier ([0064]), glycerol ([0040]) and optionally additives; and
part B comprising a polyisocyanate ([0008], first part) and optionally additives;
wherein the polyurethane adhesive composition comprises at least 60 wt. % sustainable materials by weight of the composition ([0069], the adhesive composition can contain about 10 to about 90 weight percent of the second part, where the second part may be castor oil ([0039])) and the mixed, two component polyurethane adhesive has a percent penetration into the membrane layer prior to curing ([0037]).
Additional Disclosures Included:
Claims 7-9: the percent penetration of the membrane layer by the polyurethane adhesive is at least 5%, at least 50% and at least 80% ([0115-0118]).
Claim 10: the separation apparatus further comprises a feed carrier material ([0118], non-woven scrim layer).
Claim 11: the separation apparatus further comprises a porous permeate carrier layer which is bonded with the two-component polyurethane adhesive ([0118], permeate spacer).
Claim 12: the part A has a viscosity of less than 100,000 cPs at 25°C ([0066], and Tables 2 and 4).
Claim 13: the viscosity of part A at 25°C is less than 30,000 cPs ([0066], and Tables 2 and 4), measured on a Brookfield viscometer at 20 RPM and spindle 6.
Claim 14: the component A and the component Bare present in a stoichiometric ratio of 0.95:1 to 1.40:1 ([0068]) based on the number of moles of isocyanate groups in part B and the number of moles of isocyanate-reactive groups in part A.
Claim 16: the polyisocyanate comprises methylene diphenyl diisocyanate ([0027-0029]).
Claim 19: the separation apparatus is spiral wound membrane filter ([0002]).
Claim 20: membrane comprises at least two layers ([0118]).
Claim Rejections - 35 USC § 103
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.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20160298009A1 (‘Dey’) in view of U.S. Patent US2844554A (‘Nichols’).
The Applicant’s claims are directed towards a composition and an apparatus.
Regarding Claim 5, Dey teaches the two-part curable polyurethane adhesive composition of Claim 1, except that the reactive rheology modifier comprises natural beeswax.
Nichols also relates to a two-part curable polyurethane composition (C1/L15-19), wherein the reactive rheology modifier comprises natural beeswax (C1/L54-72).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the reactive rheology modifier of Dey to comprise natural beeswax, as demonstrated by Nichols, so that the composition has the necessary plasticity, tack, lack of nerve, a wide temperature range of processing characteristics and compatibility with compounding ingredients for successful factory handling (Nichols, C1/L45-50).
Regarding Claim 15, Dey teaches the separation apparatus of Claim 6, including that part A comprises 50 wt.% to 95 wt.% castor oil as the isocyanate reactive component (Dey, [0039], combination comprising at least one of the foregoing polyols, including castor oil), except that part A comprises 0.5 wt.% to 20 wt.% beeswax as the sustainable reactive rheology modifier.
Nichols teaches that part A comprises 0.5 wt.% to 20 wt.% beeswax as the sustainable reactive rheology modifier (C2/L1-14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for part A of Dey to comprise 0.5 wt.% to 20 wt.% beeswax as the sustainable reactive rheology modifier, as demonstrated by Nichols, because the addition of a small amount of beeswax results in a composition which has greatly improved processing characteristics (Nichols, C3/L31-34).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20160298009A1 (‘Dey’) in view of U.S. Publication US20200384420A1 (‘Smigelski’).
The Applicant’s claim is directed towards an apparatus.
Regarding Claim 21, Dey teaches the separation apparatus of Claim 6, including that the membrane comprises a polyamide layer ([0118], thin semi-permeable layer (AG LF series reverse osmosis membrane), except that the membrane comprises a polysulfone layer.
Smigelski also relates to a separation apparatus (abstract) comprising a polyurethane adhesive composition ([0029]), including that membrane comprises a polysulfone layer ([0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the membrane of Dey to comprise a polysulfone layer, as demonstrated by Smigelski, to serve as a backing material (Smigelski, [0032]) or support (Smigelski, [0020]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOI-LIEN THI NGUYEN whose telephone number is (703)756-4613. The examiner can normally be reached Monday to Friday, 8 am to 6 pm.
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, Bobby Ramdhanie can be reached at (571) 270-3240. 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.
/BOI-LIEN THI NGUYEN/Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
Prosecution Insights