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 1-15 are pending:
Claims 1-15 are rejected.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-106792 on 06/28/2021 and JP2021-106865 on 06/28/2021.
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.
Claim 13 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 13 recites “concave/convex”, it is unclear what is intended by “/” does this mean “or”, “and”, “a combination of concave/convex” or something else?
Claim Rejections - 35 USC § 102
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 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 1-12 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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).
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), a forward osmosis treatment is carried out at a transmembrane pressure P= 100 (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 (R100/F100) of a water permeability (F100, unit: kg/(m2xhr)) and a salt back diffusion amount (R100, unit: g/(m2xhr) satisfies the following formula: 0 g/kg ≤ R100/F100 ≤ 0.12 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= 100 (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 2, Inoue teaches the forward osmosis membrane according to claim 1, wherein the ratio (R100/F100) 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).
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 11, Inoue teaches the forward osmosis membrane according to claim 1, wherein the porous support swells by 1.0 to 5.0% after being immersed in ethanol at 25 0C for 48 hours (the membrane support is capable of performing the intended function, see ¶149 and ¶195).
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 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.
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
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