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 .
Claim Status
The Preliminary Amendment filed on 05 December 2023 has been entered; claims 1-16 and 34-36 remain pending.
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 1-16 and 34-36 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.
With respect to claim 1, the limitations are rendered indefinite, as “region A” and “region B” appear to be defined incorrectly, as region B overlaps with region A (since both regions “extend” from the interface between the separation functional layer). The Examiner believes these are distinct regions according to Fig. 5 of the Specification and the depth recitation for each region as recited in claim 1. Applicant may wish to define region B as extending from the interface between the dense layer and the porous support up to a depth of 5.0 to 10.0 µm.
Regarding claims 2-16 and 34-36, the claims are rejected for being dependent on a rejected base claim.
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.
Claims 1-9, 12-16, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018039003 A (both the original document and machine translation provided and relied upon), hereinafter “JP (‘003)”.
With respect to claims 1-4, 6, and 7, JP (‘003) teaches a composite semipermeable membrane composed of a porous support (“support membrane”) and a separation functional layer (see Abstract; Claim 1), wherein the porous support (“support membrane”) is consists entirely of a dense layer in contact with the separation functional layer and a macro-void layer located between the dense layer and a base material, wherein the dense layer is lacking macro-voids (see Fig. 1), the macro-void layer 41 is a layer having macro-voids 42 (see Fig. 1) having a long diameter of 0.5 micron or more (overlapping “1 µm or greater”). JP (‘003) teaches that the thickness of the dense layer is 0.5 µm or more and 5 µm or less (see Page 5, first full paragraph), a discrete range within “1.0 to 9.5 µm” as recited in claim 1 and “8.0 µm or lower” as recited in claim 8.
Regarding the limitations pertaining to the macro-voids/µm in region A (depth of up 0 to 5.0 µm up to the interface with the separation functional layer), JP (‘003) teaches that the dense layer (which accounts for the porous support that is adjacent to the separation functional layer and ranges in thickness up to 5 microns) does not have macro-voids, as the dense layer comprises holes with long diameters which range from 0.05 to 0.5 microns (see Page 4, embedded figures through Page 5, first full paragraph). As such, the dense layer is consistent with the limitations “the macro-voids are present at 0 to 0.20/µm in region A”, “the macro-voids are present at 0 to 0.16/µm in region A”, and “the macro-voids are present at 0 to 0.12/µm in region A”, because there are 0 macro-voids per micron.
Regarding the limitations pertaining to macro-voids/micron in region B (depth of 5-10 micron), JP (‘003) teaches that the macro-void layer comprises 0.3-1.8 macro-voids/micron (see Page 4, embedded figures through Page 5, 2nd full paragraph), which overlaps “0.04 to 0.40/µm” as recited in claim 1 and touches “0.06 to 0.30/µm” as recited in claim 3, wherein the number of macro-voids in region B is greater than the number of macro-voids in region A (which has none as discussed above).
JP (‘003) and the claims differ in that JP does not teach the exact same proportions for the macro-void long diameter size or the number of macro-voids per micrometer as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the macro-void long diameter size and range of the number of macro-voids per micrometer taught by JP (‘003) overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in JP (‘003), particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 5, JP (‘003) teaches that the macro-void layer comprises 0.3-1.8 macro-voids/µm (see Page 4, embedded figures through Page 5, 2nd full paragraph), which is substantially close to that of the instant claim, which recites that the macro-voids are present at “0.08 o 0.20/µm”. A prima facie case of obviousness exists where the claimed ranges and prior art do not overlap but are close enough that one in ordinary skill in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 f.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
With respect to claim 9, JP (‘003) and the claims differ in that JP (‘003) does not teach the exact same proportions for the thickness of the dense layer (disclosed to be 0.5 to 5 micron) as recited in the instant claim, which recites “1.5 to 6.0 µm”; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in dense layer thickness taught by JP (‘003) overlaps the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in JP (‘003), particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claims 12 and 13, JP (‘003) teaches that the rate of change of the average thickness of the porous support is calculated from SEM images (see Page 10, third paragraph), the results shown in Table 3, column 7, where at least 12 entries have variation in thickness percentages that are less than 30% (see Table 3 of original document).
With respect to claims 6, 14, and 15, JP (‘003) teaches that the porous support comprises polysulfone (see Page 4, paragraphs 4-6).
With respect to claim 16, JP (‘003) teaches that the composite semipermeable membrane is housed within a pressure vessel (“housing”) (see Page 9, 6th full paragraph).
Claims 10, 11, 34, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018039003 A (both the original document and machine translation provided and relied upon) as applied to claims 1 and 6 above, and further in view of Yu et al. (Separation Purification Technology, 2006, 51, 1-9), hereinafter “JP (‘003)” and “Yu”.
With respect to claims 10, 11, 34, and 35, JP (‘003) does not specifically teach that the support membrane is a hollow fiber membrane as claimed.
Yu teaches hollow fiber membranes comprising a dense layer with a thickness of about 6 microns and multiple microns below, wherein a skin layer (separation functional layer) is present on the dense layer (see Section 3.3, first sentence, and see Fig. 3), and wherein the dense layer is directly adjacent to the skin layer which is on the inner surfaces of the hollow fibers (see Fig. 3).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to format the porous membrane with support of JP (‘003) as a hollow fiber membrane as taught by Yu because both references teach membranes that can be formed from polyacrylonitrile (see Yu: Abstract and see JP (‘003): Page and which have a similar asymmetric membrane structure comprising a separation functional layer and a porous support composed of dense and macro-void layers (see Yu: Section 3.3 and Fig. 3), and because Yu teaches that the hollow fiber membranes can be formulated to possess the advantages of increased tensile strength and higher retention (See Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bob 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.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 03 April 2026
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