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
Claims 1 and 3-15 are pending:
Claims 1, 3-10 and 12-15 are rejected.
Claim 11 is objected to.
Response to Amendments
Amendments filed 08/10/2026 have been entered. Amendments to the claims overcome §112b and §102 rejections but do not overcome §103 rejections as previously set forth in non-final Office Action mailed 08/10/2026.
Amendments have necessitated new grounds of rejection using prior art of record under §103 because Applicant cancelled claim 2 and affirmatively changed the scope of independent claim 1 to incorporate narrower R100/F100 limitation previously recited in dependent claim 2. Independent claim 1 as amended necessitated reconsideration of the prior §102 rejection to a §103 of the prior art of record. Accordingly, this action is made FINAL. (see MPEP §706.07(a)).
Response to Arguments
Arguments filed 08/10/2026 have been entered. Arguments were fully considered.
On pgs. 5-7 of Applicant’s arguments, Applicant argues that:
Rejections under 35 U.S.C. § 102
Claims 1-12 and 14-15 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Inoue. See Office Action at Section No. 9. Without acquiescing to the merits of the rejection, Applicant has amended claim 1 to incorporate certain features of dependent claim 2. Applicant traverses the rejection as it applies to the subject matter of original claim 2.
The Examiner has stated that since Example 2 of Inoue discloses a forward osmosis membrane wherein the ratio (RSF/F2) of a water permeability (F2) and a salt back diffusion amount (RSF) is 0.057, the invention of claim 1 is anticipated by Inoue. See Office Action at Section No. 9. However, the R1oo/F1oo value disclosed in the present application and the RSF/F2 value in Inoue are different parameters.
The forward osmosis membrane of the claimed invention has physical durability even when in contact with an organic solvent and can exhibit high water permeability property and blocking properties (see paragraph [0009] of the specification). In the claimed invention, the physical durability of the forward osmosis membrane is evaluated by applying a predetermined transmembrane pressure and carrying out forward osmosis (see paragraph [0038] of the specification).
In other words, when forward osmosis membrane performance is evaluated by applying a transmembrane pressure positive to the support membrane side (the draw solution side) of the forward osmosis membrane, pressure is exerted in the direction of peeling of the separation functional layer from the support membrane. Thus, if the physical durability of the forward osmosis membrane is low, it may not be able to withstand this pressure, and a part of the separation functional layer may peel from the support membrane, or a part of the separation functional layer may crack. As a result, the separation functional layer would be irreversibly altered, and the draw solution would be more likely to permeate to the feed solution side, resulting in significantly increased salt back diffusion amount R and salt permeability R/F (see paragraph [0038] of the specification).
The invention of amended claim 1 is based on the discovery that a forward osmosis membrane which is composed of a porous support and a separation functional layer exhibits high durability against organic solvents when the R/F (Rioo/Fioo) value is low after applying a high transmembrane pressure difference of 100 kPa with the porous support side set to the positive side (see paragraphs [0044] to [0046] of the specification). In contrast, Inoue does not involve applying a high transmembrane pressure difference with the porous support side as the positive side prior to measuring RSF/F2. Therefore, the Rioo/Fioo value disclosed in the present application and the RSF/F2 value in Inoue are different parameters, and their numerical values cannot be directly compared.
The mere fact that the RSF/F2 value of the forward osmosis membrane in Example 2 of Inoue happens to fall within the ranges specified in amended claims 1 does not mean that the forward osmosis membrane satisfies the invention-defining features of this claim. This is also evident from the Examples described in the present application.
In Comparative Example 1 described in the present application, the R/F (Ro/Fo) value obtained when performing forward osmosis treatment at a transmembrane pressure difference of 20 kPa (without applying a high transmembrane pressure difference with the porous support side as the positive side was "0.023" (the reciprocal of Fo/Ro = 41.7 shown in Table 2). This numerical value technically falls within the range specified for Rioo/F1oo in amended claim 1.
However, the R/F (R1oo/Fioo) value obtained when forward osmosis treatment was performed at a transmembrane pressure difference of 20 kPa following the application of a transmembrane pressure difference of 100 kPa with the porous support side set as the positive side was "0.172" (the reciprocal of F1oo/Rioo = 5.8 as listed in Table 2). This value is significantly higher than the range specified in amended claim 1. In contrast, for the forward osmosis membranes of Examples 1 to 5 and 7 where the Rioo/Fioo values fall within the range specified in claim 1, it has been verified that these forward osmosis membranes exhibit the intended performance (see Tables 1 and 4 of the specification).
The scope of claims in a patent application relies not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re American Academy of Science Technology Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). See also MPEP § 2111. Indeed, the rules require that claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. See 37 C.F.R. § 1.75(d)(1). In setting forth the rejection, the Examiner has not considered the definition of the Rioo/F1oo value as set forth in the specification and wrongly interpreted the claims as being anticipated by Inoue.
Therefore, the forward osmosis membranes of amended claim 1 and other rejected claims depending on this claim 1 differ from the forward osmosis membrane of Example 2 of Inoue. While the Examiner submits that "(t)he claimed pressures do not change the physical structure of the device and only pertains to a manner of operating the device" (see Office Action at page 4), the claimed pressures are pressures exerted to measure the parameter "R1oo/Fioo" which is a functional parameter associated with a structural property of the "forward osmosis membrane" itself, and does not constitute a method of operating the apparatus. Accordingly, Applicant submits the rejection is moot and requests withdrawal of the rejection.
Rejection under 35 U.S.C. § 103
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Inoue in view of Minehara. See Office Action at Section No. 12. A dependent claim is non-obvious if the independent claim from which it depends is allowable because all limitations of the independent claim are contained in the dependent claim. Hartness International v. Simplimatic Engineering, 819 F.2d 1100, 1108 (Fed. Cir. 1987). Accordingly, as amended independent claim 1 is patentable for the reasons set forth herein, the claims dependent thereon are also patentable. In addition, dependent claim 13 is patentable based on their own merits by adding novel and non-obvious features to the combination of recited elements. Accordingly, withdrawal of the rejection is requested.
This argument is moot because amendments have necessitated new grounds of rejection.
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.
Claims 1, 3-10 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue (WO 2020/059769 A1; US 2021/0178327, which is a national stage application of the PCT/JP2019/036647 (WO 2020/059769 A1) has been used as an English equivalent document for Inoue) in view of Minehara (US 2019/0388844).
Regarding claim 1, Inoue teaches a forward osmosis membrane (forward osmosis membrane module, see Fig. 23 and ABS), comprising a support membrane (hollow-fiber porous polymer substrate membrane, see ¶21) and a separation functional layer (active separation layer, see ¶21) on the support membrane (wherein an active separation layer is present on an inner surface or an outer surface of the substrate membrane, see claim 1), wherein the support membrane comprises a porous support (i.e. porous), and when the forward osmosis membrane is interposed between water arranged on the separation functional layer side and a 3.5 mass% sodium chloride aqueous solution arranged on the porous support side (the composite forward osmosis membrane is evaluated by the water permeability F2 and the back-diffusion of salt RSF when pure water is used as the liquid to be treated and 3.5 mass % of sodium chloride aqueous solution is used as the driving liquid, see ¶94).
Additionally, Example 2 of Inoue further discloses a ratio (R1oo/Fioo) of a water permeability (F1oo, unit: kg/(m2xhr)) and a salt back diffusion amount (Rioo, unit: g/(m2xhr) satisfies the following formula: 0 g/kg ≤ R100/F100 ≤ 0.091 g/kg (see example 2 in Table 1, RSF = 0.69 g/m2 x hr and F2 = 12.2 kg/m2 x hr, RSF/F2 = 0.057 g/kg, RSF is an acronym for reverse salt flux).
Inoue further discloses in Examples 1 and 9 that the membrane carried out at a pressure maintained at 100kPa (100kPa in Example 1 and 0.10 MPa in Example 9 which is equivalent to 100kPa).
Inoue further discloses that the detachment pressure (subsequent pressure) referred to as P2 is preferably 20 kPa so that when the detachment pressure is excessively small, the back-diffusion of salt tends to be large and the detachment pressure is within a suitable range, the membrane does not detachment even when the forward osmosis membrane is operated for long period of times, and suitable performance can be maintained (see ¶141).
However, Inoue does not explicitly teach obtaining the claimed R100/F100 ratio after first carrying out the recited forward-osmosis treatment at a transmembrane pressure of 100kPa with the porous-support sider as the positive side subsequently carrying out the treatment at 20kPa.
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to the modify the membrane (Example 2) of Inoue by configuring said membrane to operate at a pressure of 100kPa as disclosed in Example 9 then at a subsequent pressure of 20 kPa as further disclosed by Inoue because it provides the benefit of operating the membrane for long period of times, and suitable performance can be maintained (Inoue, see ¶141).
Regarding claim 3, Inoue teaches the forward osmosis membrane according to claim 1, wherein when the forward osmosis membrane is interposed between water arranged on the separation functional layer side and a 3.5 mass% sodium chloride aqueous solution arranged on the porous support side, a forward osmosis treatment is carried out at a transmembrane pressure P = 150 (kPa), with the porous support side as the positive side, and a forward osmosis treatment is then carried out at a transmembrane pressure P = 20 kPa, with the porous support side as the positive side, a ratio (R150/F150) of a water permeability (F150, unit: kg/(m2xhr)) and a salt back diffusion amount (R150, unit: g/(m2xhr) satisfies the following formula:0 g/kg ≤ R150/F150 ≤ 0.15 g/kg (see example 2 in Table 1, RSF = 0.69 g/m2 x hr and F2 = 12.2 kg/m2 x hr, RSF/F2 = 0.057 g/kg, RSF is an acronym for reverse salt flux).
With respect to the limitation “when… a forward osmosis treatment is carried out at a transmembrane pressure P = 150 (kPa) and a forward osmosis treatment is then carried out at a transmembrane pressure P = 20 kPa”, the device of Inoue is capable of being operated at the claimed ranges. The claimed pressures do not change the physical structure of the device and only pertains to a manner of operating the device. The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
Regarding claim 4, Inoue teaches the forward osmosis membrane according to claim 3, wherein the ratio (R150/F150) satisfies the following formula:0 g/kg ≤ R150/F150 ≤ 0.10 g/kg (see example 2 in Table 1, RSF = 0.69 g/m2 x hr and F2 = 12.2 kg/m2 x hr, RSF/F2 = 0.057 g/kg, RSF is an acronym for reverse salt flux).
Regarding claim 5, Inoue teaches the forward osmosis membrane according to claim 1, wherein when the forward osmosis membrane is interposed between water arranged on the separation functional layer side and a 3.5 mass% sodium chloride aqueous solution arranged on the porous support side, a forward osmosis treatment is carried out at a transmembrane pressure P = 200 (kPa), with the porous support side as the positive side, and a forward osmosis treatment is then carried out at a transmembrane pressure P = 20 kPa, with the porous support side as the positive side, a ratio (R200/F200) of a water permeability (F200, unit: kg/(m2xhr)) and a salt back diffusion amount (R200, unit: g/(m2xhr) satisfies the following formula:0 g/kg ≤ R200/F200 ≤ 0.30 g/kg (see example 2 in Table 1, RSF = 0.69 g/m2 x hr and F2 = 12.2 kg/m2 x hr, RSF/F2 = 0.057 g/kg, RSF is an acronym for reverse salt flux).
With respect to the limitation “when… a forward osmosis treatment is carried out at a transmembrane pressure P = 200 (kPa) and a forward osmosis treatment is then carried out at a transmembrane pressure P = 20 kPa”, the device of Inoue is capable of being operated at the claimed ranges. The claimed pressures do not change the physical structure of the device and only pertains to a manner of operating the device. The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
Regarding claim 6, Inoue teaches the forward osmosis membrane according to claim 5, wherein the ratio (R200/F200) satisfies the following formula:0 g/kg ≤ R200/F200 ≤ 0.10 g/kg (see example 2 in Table 1, RSF = 0.69 g/m2 x hr and F2 = 12.2 kg/m2 x hr, RSF/F2 = 0.057 g/kg, RSF is an acronym for reverse salt flux).
Regarding claim 7, Inoue teaches the forward osmosis membrane according to claim 1, wherein a thickness of the porous support is 50
μ
m or more and 1000
μ
m or less (membrane thickness of the substrate membrane support layer is 50
μ
m to 250
μ
m, see claim 9).
Regarding claim 8, Inoue teaches the forward osmosis membrane according to claim 1, wherein the support membrane does not comprise a base material (Inoue does not disclose a base material therefore the limitation is met), and the forward osmosis membrane is constituted substantially from only the porous support and the separation functional layer (see claim 9).
Regarding claim 9, Inoue teaches the forward osmosis membrane according to claim 1, wherein the support membrane is hollow fiber-shaped (see ¶87).
Regarding claim 10, Inoue teaches the forward osmosis membrane according to claim 9, wherein the separation functional layer is present on an inner surface of the hollow fiber-shaped support membrane (i.e. the active layer on an inner surface of the membrane, see ¶87).
Regarding claim 12, Inoue teaches the forward osmosis membrane according to claim 1, wherein the separation functional layer contains a polyamide (see ¶54).
Regarding claim 14, Inoue teaches the forward osmosis membrane according to claim 1, wherein the porous support comprises one or more selected from the group consisting of polysulfones (see ¶29), polyethersulfones (see ¶30), and derivatives thereof.
Regarding claim 15, Inoue teaches a forward osmosis membrane module, which is configured by housing the forward osmosis membrane according to claim 1 in a housing (bundled in housed in a housing, see ¶43).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue (WO 2020/059769 A1; US 2021/0178327, which is a national stage application of the PCT/JP2019/036647 (WO 2020/059769 A1) has been used as an English equivalent document for Inoue) in view of Minehara (US 2019/0388844).
Regarding claim 13, Inoue teaches the forward osmosis membrane according to claim 1.
Inoue does not teach wherein the separation functional layer has a concave/convex structure having an arithmetic mean height (Sa) of 40 nm or more.
In a related field endeavor, Minehara teaches a semipermeable composite membrane (see ABS) wherein the separation functional layer has a convex structure having an arithmetic mean height (Sa) of 40 nm or more (an average height of the convex parts in the electron microscope image is 100 nm or more and 500 nm or less, see ¶17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to the modify the separation layer of Inoue by selecting a height between 100-500 nm as disclosed by Minehara because it enables sufficiently preventing the aggregation of oligomers and provides high height uniformity to the pleated structure of the formed separation functional layer and enhanced uniformity to the interaction between water present in the inside thereof and a polymer constituting the separation functional layer (Minehara, see ¶129).
Conclusion
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art reference is Inoue (WO 2020/059769 A1; US 2021/0178327, which is a national stage application of the PCT/JP2019/036647 (WO 2020/059769 A1) has been used as an English equivalent document for Inoue).
Inoue does not teach that the forward osmosis membrane having “porous support swells by 1.0 to 5.0% after being immersed in ethanol at 25 0C for 48 hours”, in combination with the other limitations of independent claim 1. Upon further consideration and additional searching directed to the claimed swelling characteristic, the Examiner finds that the prior art does not teach or suggest the claimed combination.
Furthermore, the claimed swelling limitation defines measurable material chacterisitcs of the porous support under specified conditions. As described in the instant specification, the degree of swelling may depend upon characteristics including the resin material, pore distribution and number of pores, and controlled swelling contributed to maintaining the physical durability and separation performance of the forward osmosis membrane upon exposure to an organic solvent.
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 EKANDRA S. MILLER-CRUZ whose telephone number is (571)270-7849. The examiner can normally be reached M-Th 7 am - 6 pm EST.
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/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773
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