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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-15 in the reply filed on 05/15/2026 is acknowledged.
Claim Interpretation
To promote clarity and efficiency in the examination process (compact prosecution), the following terms as outlined below are interpreted, but not limited to, the following:
Surface pore size – diameter of the surface pore. Note this interpretation was taken in light of [0029] of the applicant’s specification wherein they disclose, “the surface pore size is a value obtained by averaging the circular equivalent diameters of pores”
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 9 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.
Regarding claim 9, the claim discloses an ethanol swelling rate, however the claim does not disclose other parameters which directly correlate to affect the swelling rate. For example, temperature, time, and ethanol concentrations all correlate to the swelling of the support membrane. Only claiming a percentage renders the claim indefinite, as there would need to be a percent change over time to be considered a rate. Given the indefiniteness of the claim language, the examiner has interpreted this claim as if it was written, “The forward osmosis membrane according to claim 1, wherein the porous support membrane swells when in ethanol.”
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.
The examiner would like to note for clarity regarding the formatting for grouping of claims and their limitations in some of the following 103 rejections, the limitation will come before the bolded (Claim X) format, with the prior art referenced text (if applicable) will come after the (Claim X).
Claim(s) 1-3, 6-8, 10-12, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hotta (WO2020241860A1) in view of Shimura (CN106457165A). *Note Hotta and Shimura is based on the attached, English, machine-translated version.
Regarding claims 1-3, Hotta discloses a forward osmosis membrane {[0013], Page 10} comprising a porous support membrane {[0013], Page 10} and a separation function layer arranged on the porous support membrane, {[0013], Page 10} wherein the porous support membrane is in contact with the separation function layer only. (Claim 1) {[0020] re. the separation layer applied to both sides of the support layer, which leaves no other sides the support layer to contact another feature}
Hotta fails to disclose a ratio (O533 eV /N) of a relative elemental concentration obtained by curve fitting centered at 533 eV in O1s spectrum to a relative elemental concentration obtained from N1s spectrum when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 0.29 to 0.53; a ratio (IR1720/IR1650) of an intensity of a peak top at 1720 cm-1 to an intensity of a peak top at 1650 cm-1 in an IR measurement of the separation function layer surface is 0.25 or less. (Claim 1) Hotta fails to disclose wherein the ratio (O533 eV /N) is 0.30 to 0.53. (Claim 2) Hotta fails to disclose wherein the ratio (O533 eV /N) is 0.35 to 0.51. (Claim 3)
Shimura suggests a ratio (O533 eV /N) of a relative elemental concentration obtained by curve fitting centered at 533 eV in O1s spectrum to a relative elemental concentration obtained from N1s spectrum when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 0.29 to 0.53. (Claim 1) {[0054-0055] re. spectroscopy and ~1:1 ratio of oxygen and nitrogen} Shimura suggests wherein the ratio (O533 eV /N) is 0.30 to 0.53. (Claim 2) {[0055] re. ratios of oxygen and nitrogen to one-another} Shimura suggests wherein the ratio (O533 eV /N) is 0.35 to 0.51. (Claim 3) {[0055] re. ratios of oxygen and nitrogen to one-another}
Higher crosslinking in the composite membrane is favorable due to the increase physical durability, solvent resistance, and reducing the amount of salt back diffusion. {Hotta, [0060]} As the relationship between the ratio of oxygen to nitrogen to crosslinking to membrane efficiency is understood in the art, as disclosed by Shimura, [0045 re. the % weight of the cross-linked polyamide], that discovering the optimum or workable ranges by routine experimentation does not hold patentable weight.
Such ratio is deemed to constitute results- effective variables for which it would have been obvious for one of ordinary skill in the prior art to have optimized by routine experimentation, so as to optimize the ratio of oxygen to nitrogen. MPEP, Section 2144.05 includes court rulings that have determined that such types of parameter values or ranges do not support the patentability of such subject matter, particularly where the prior art contains similar ranges, amounts or proportions, or suggests such similarity, absent a finding of unexpected criticality or achieving of unexpected results.
Regarding the method of obtaining the ratio of the concentrations through x-ray photoelectron spectroscopy, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim."
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify the amount of crosslinking of the membrane Hotta with Shimura’s suggestions of a ratio (O533 eV /N) of a relative elemental concentration obtained by curve fitting centered at 533 eV in O1s spectrum to a relative elemental concentration obtained from N1s spectrum when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 0.29 to 0.53; (Claim 1) and the ratio (O533 eV /N) is 0.30 to 0.53; (Claim 2) and the ratio (O533 eV /N) is 0.35 to 0.51. (Claim 3) as these inventions both describe polyamide-based composite semipermeable membranes. Doing so would improve the performance of the membrane, as the ratios of Shimura accounts for the addition of functional groups onto the surface of the membrane. {Shimura, [0056]}
Hotta modified by Shimura is silent to an IR measurement of the separation function layer surface is 0.25 or less, (Claim 1) however, similarly to the oxygen to nitrogen analysis, as described above, discovering the optimum or workable ranges by routine experimentation does not hold patentable weight. Such ratio is deemed to constitute results- effective variables for which it would have been obvious for one of ordinary skill in the prior art to have optimized by routine experimentation, so as to optimize the ratio of oxygen to nitrogen. MPEP, Section 2144.05 includes court rulings that have determined that such types of parameter values or ranges do not support the patentability of such subject matter, particularly where the prior art contains similar ranges, amounts or proportions, or suggests such similarity, absent a finding of unexpected criticality or achieving of unexpected results.
Given this parameter is similarly understood in Shimura [0055] regarding the effects of the membrane crosslinking from ratios of carbon to oxygen to nitrogen and combinations thereof (the claimed IR peaks are depicting carbon to oxygen ratios), the same conclusion regarding routine optimization can be made.
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Hotta modified by Shimura to include a ratio (IR1720/IR1650) of an intensity of a peak top at 1720 cm-1 to an intensity of a peak top at 1650 cm-1 in an IR measurement of the separation function layer surface is 0.25 or less as the relationship of ratios between carbon to nitrogen to oxygen and their effects on the properties of the membrane is known in the art and through routine optimization, as described earlier, one of reasonable skill in the art would be able vary the parameters to get predictable results.
Regarding claim 6, Hotta discloses wherein the porous support membrane is a hollow-fiber membrane. {[0029] re. hollow fibers}
Regarding claim 7, Hotta discloses wherein the separation function layer is arranged on an inner surface of the hollow-fiber membrane. {[0013], Page 12 re. inner surface}
Regarding claim 8, Hotta discloses wherein the porous support membrane comprises polysulfone or polyethersulfone as a main component. {[0013], Page 11}
Regarding claims 10-12, Hotta discloses wherein a surface pore size of the surface of the porous support membrane in contact with the separation function layer is 1 nm to 15 nm. (Claim 10) {[0029]} Hotta discloses wherein a surface pore size of the surface of the porous support membrane in contact with the separation function layer is 2.5 nm or more. (Claim 11) {[0029]} Hotta discloses wherein a surface pore size of the surface of the porous support membrane in contact with the separation function layer is 11 nm or less. (Claim 12) {[0029]}
The range of the prior art encompasses the claimed ranges. Claims 10-12 do not show criticality in the range of pore size, as they have claimed less than 2.5 and greater than 11, (Claims 11-12) covering all possible numerical values. Thus, one of ordinary skill in the art prior to the effective filing date of the claimed invention would expect that selecting a value within a known range would yield predictable results. See MPEP 2144.05 (I)
Regarding claim 14, Hotta discloses wherein the separation function layer has an irregular structure. {[0043] re. irregularity}
Claim(s) 4-5, 13, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hotta(WO2020241860A1) modified by Shimura (CN106457165A), in view of Wang (CN109200836A). *Note Hotta, Shimura, and Wang are based on the attached, English, machine-translated version.
Regarding claims 4-5, Hotta modified by Shimura fails to teach wherein a ratio (O/N) of number of oxygen atoms to number of nitrogen atoms when a surface to number of nitrogen atoms when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 1.30 to 1.70. (Claim 4) Hotta modified by Shimura fails to teach wherein a ratio (O/N ratio) of number of oxygen atoms to number of nitrogen atoms when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 1.40 to 1.65. (Claim 5)
Wang teaches teach wherein a ratio (O/N) of number of oxygen atoms to number of nitrogen atoms when a surface to number of nitrogen atoms when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 1.30 to 1.70. (Claim 4) {[0057] re. table 1 parameters from examples 6-11 and [0058] Page 56 re. O/N ratio from 1.432 to 1.703} Wang teaches wherein a ratio (O/N ratio) of number of oxygen atoms to number of nitrogen atoms when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 1.40 to 1.65. (Claim 5) {[0057] re. table 1 parameters from examples 6-11 and [0058] Page 56 re. O/N ratio from 1.432 to 1.703}
The claimed range significantly overlaps with the prior are range, thus one of ordinary skill in the art prior to the effective filing date of the claimed invention would expect that selecting a value around a known range would yield predictable results. See MPEP 2144.05 (I)
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Hotta modified by Shimura with Wang’s teachings wherein a ratio (O/N) of number of oxygen atoms to number of nitrogen atoms when a surface to number of nitrogen atoms when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 1.30 to 1.70; (Claim 4) and wherein a ratio (O/N ratio) of number of oxygen atoms to number of nitrogen atoms when a surface of the separation function layer is measured by X-ray photoelectron spectroscopy is 1.40 to 1.65. (Claim 5) as each invention pertains to a composite polyamide membrane for separation. Doing so would increase the water flux and a decrease the reverse salt flux, improving the membrane function. {Wang, [0018]}
Regarding claims 13 and 15, Hotta modified by Shimura fails to teach wherein a membrane thickness of the porous support membrane is 50 µm to 400 µm. (Claim 13) Hotta modified by Shimura fails to teach wherein the separation function layer has an arithmetic mean height of 60 nm or more. (Claim 15)
Wang teaches wherein a membrane thickness of the porous support membrane is 50 µm to 400 µm. (Claim 13) {[0007] re. thickness of polyamide active layer} Wang teaches wherein the separation function layer has an arithmetic mean height of 60 nm or more. (Claim 15) {[0007] re. surface roughness}
The claimed range overlaps with the prior are range, thus one of ordinary skill in the art prior to the effective filing date of the claimed invention would expect that selecting a value around a known range would yield predictable results. See MPEP 2144.05 (I)
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Hotta modified by Shimura with Wang’s teachings wherein a membrane thickness of the porous support membrane is 50 µm to 400 µm; (Claim 13) and wherein the separation function layer has an arithmetic mean height of 60 nm or more, (Claim 15) as each invention pertains to a composite polyamide membrane for separation. Doing so would solves the technical problems of low monomer reaction efficiency, anisotropy of the prepared polyamide structure limiting its application, and cumbersome post-processing of existing film-making processes in the current traditional polyamide composite film preparation process. {Wang, [0006]}
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hotta (WO2020241860A1) modified by Shimura (CN106457165A), in view of Ji (Commercial polysulfone membranes pretreated with ethanol and NaOH: Effects on permeability, selectivity and antifouling properties). *Note Hotta and Shimura are based on the attached, English, machine-translated version.
Regarding claim 9, Hotta modified by Shimura fails to teach wherein an ethanol swelling rate of the porous support membrane is 1% to 5%.
Ji suggests wherein an ethanol swelling rate of the porous support membrane is 1% to 5%. {Page 2 left column re. polymeric structure easily swelling with miscible solvents such as ethanol and Figure 1 re. polysulfone} See claim interpretation regarding “ethanol swell rate”. Ji teaches that the membrane placed in an ethanol solution will swell, and depending on certain factors, the swelling can vary
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Hotta modified by Shimura with Ji’s suggestions wherein an ethanol swelling rate of the porous support membrane is 1% to 5% as Ji is studying the effects of ethanol on polysulfone membranes, which encompasses the invention of Hotta modified by Shimura. Doing so would improve the filtration performs in terms of both flux increase and membrane water flux recovery. {Ji, Page 2 left column}
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR J ROTONDI whose telephone number is (571)272-2058. The examiner can normally be reached M-F 8:00am-4:30pm.
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/CONNOR J ROTONDI/ Examiner, Art Unit 1773 /JOSEPH W DRODGE/Primary Examiner, Art Unit 1773
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