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 .
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
In claim 1, parenthesis in the limitation “(in the formula (1), each R is independently selected from the group consisting of a hydrogen atom, halogen atoms, a nitro group, a cyano group, an amino group, alkyl groups having 1 to 6 carbon atoms, and alkoxy groups having 1 to 6 carbon atoms and may be identical or different, and the dipicolylamine structure may form a complex with a metal M)” should be removed to avoid any confusion as to whether the limitations within parenthesis are for reference only or are required.
In claim 3, parenthesis in the limitation “(in the formula (3), n is an integer of 1 or more, and X is a functional group which binds to a carboxyl group) should be removed to avoid any confusion as to whether the limitations within parenthesis are for reference only or are required.
Appropriate correction is required.
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 1, 3, 4 and 5 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 claim 1, the limitation “may form a complex with a metal M” in last line renders the claim indefinite because the phrase does not clearly state whether the dipicolylamine structure forms a complex with a metal M.
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, 3, 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Contsantopoulos et al. (WO2011/088505), in view of Yamamoto et al. (WO 2019/230543, refer attached English language machine translation for claim mapping).
Regarding claim 1, Constantopoulos teaches a reverse osmosis composite membrane (refer Page 3 – lines 7-12 disclosing the composite membrane having a porous support, polyamide layer, and antifouling coating, page 18 – line 1 disclosing the membrane to be RO membrane) is obtained by chemically modifying a surface thereof (refer page 3 – lines 11-12 disclosing anti-fouling coating) with a compound that has an amino group (refer page 3 – line 15 disclosing providing a filtration membrane having amine or hydroxy functionality on a surface thereof). Constantopoulous also teaches adding tris(2-pyridylmethyl)amine to the composition while making the membrane (refer page 14 - lines 3-4 and page 16 - lines 27 through page 17 – line 3). Tris(2-pyridylmethyl)amine comprises three pyridine rings.
Constantopoulous does not teach modifying the amino group with two molecules of a-picolyl group and has a dipicolylamine structure represented by the following formula (1), the compound that has the amino group being the compound in a monomeric form,
PNG
media_image1.png
162
322
media_image1.png
Greyscale
in the formula (1), each R is independently selected from the group consisting of a hydrogen atom, halogen atoms, a nitro group, a cyano group, an amino group, alkyl groups having 1 to 6 carbon atoms, and alkoxy groups having 1 to 6 carbon atoms and may be identical or different, and the dipicolylamine structure may form a complex with a metal M).
Yamamoto teaches a polymer having antimicrobial activity (refer [0007]), the polymer an amino group and having a dipicolylamine structure represented by the following formula (1), wherein the amino group is modified with two molecules of α-picolyl group:
PNG
media_image1.png
162
322
media_image1.png
Greyscale
In the above formula (1), R is independently selected from the group consisting of a hydrogen atom, a halogen atom, a nitro group, a cyano group, an alkyl group having 1 to 6 carbon atoms, and an alkoxy group having 1 to 6 carbon atoms. And may be the same or different, and the dipicolylamine structure may form a complex with the metal M. (refer [0008]-[0009]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the membrane of Constantopoulous to modify the amino group with two molecules of a-picolyl group and has a dipicolylamine structure to provide antimicrobial property as taught by Yamamoto. One of ordinary skill in the art would expect that the antimicrobial properties taught by Yamamoto would aid in preventing biofouling by removing bacterial activities.
Regarding claim 3, modified Constantopoulos teaches limitations of claim 1 as set forth above. Yamamoto further teaches (refer [0072]) that the compound is represented by formula
PNG
media_image2.png
142
212
media_image2.png
Greyscale
Wherein, in formula (3), n is an integer arbitrarily selected, X is a linear alkyl group having 1 to 5 carbon atoms, and Y is a dipicolylamine structure represented by formula (1).
Regarding claim 4, modified Constantopoulos teaches limitations of claim 1 as set forth above. Yamamoto further teaches that the DPA structure represented by the formula (1) preferably forms a complex with the metal M (refer [0023]).
Regarding claim 5, modified Constantopoulos teaches limitations of claim 1 as set forth above. Yamamoto further teaches that the polymer according to an embodiment of the present invention can obtain a desired effect without forming a complex with the metal M (refer [0054]). Therefore, selecting whether to form a complex with the metal M or not would have been an obvious matter of choice to one of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2023/0028028 to Bogels et al. teaches a porous membrane comprising a ligand group that can bind to target biomelcules or metal atoms, wherein the ligand group comprises pyridyl groups (refer abstract, [0038], [0047]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRANAV PATEL whose telephone number is (571)272-5142. The examiner can normally be reached M-F 6AM-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, 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.
/PRANAV N PATEL/Primary Examiner, Art Unit 1777