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 .
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.
Information Disclosure Statements
The Information Disclosure Statement filed on 17 July 2026 has been received and considered by the Examiner.
Amendments
Applicant’s amendments to claim 1 and 6 new claims 11 and 12 have been entered and considered for this action. The prior claim objections are withdrawn.
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.
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.
Claims 1, 3-4, 6-7, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Sawakuri et al. (JP H0733408 A). Evidence with respect to claim 3 is provided by Liu (Desalination 2011, 281, 372-378) and Statistics How To (<URL: https://www.statisticshowto.com/quadratic-mean>, Retrieved 4 May 2026), with respect to claim 4 by Mi et al. (J. Membrane Sci. 2006, 282, 71-81), with respect to claim 6 by Reid et al. (“Safe Storage and Handling of Bleaching Chemicals” in Bleaching of Pulp (5th Edition). Hart, Peter W. Rudie, Alan W., eds. Technical Association of the Pulp & Paper Industry (TAPPI) 2012. Retrieved from https://app.knovel.com/hotlink/pdf/id:kt012RVR2J/bleaching-pulp-5th-edition/hydrogen-p-major-hazards), and with respect to claim 8 by Abejon et al. (Sep. Pur. Tech. 2010, 76, 44–51; hereinafter “Abejon ’10”). The previously provided English machine translation of Sawakuri (JP H0733408 A) is referenced in the analysis below.
Regarding claim 1, Sawakuri discloses a method for producing a purified hydrogen peroxide solution, the method comprising an osmosis membrane treatment process of bringing a crude aqueous hydrogen peroxide solution containing impurities into contact with a reverse osmosis membrane, wherein the pressure at the reverse osmosis membrane is 15 kg/cm2 G and the linear velocity (flow rate) is 28.7 L/m2 h ([0009]), which is equivalent to a pressure of 1.47 MPaG and a flow rate of 0.0287 m3/m2 h, and therefore corresponds to an integrated value of the pressure and the linear velocity of 0.042 (MPaG m3)/(m2 h), which lies outside the instantly claimed range of 0.055 to 0.15 (MPaG m3)/(m2 h).
However, Sawakuri further discloses that the operating pressure is not limited to 1.47 MPaG, but can be in the preferable range of 0.98 MPa to 1.96 MPaG and suggests that higher pressures may increase purification efficiency (The operating pressure is…preferably, 10 to 20 kg/cm2. If the pressure difference is too small, the purification efficiency may be insufficient; [0007]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the pressure by routine experimentation, including up to 1.96 MPaG, as taught by Sawakuri. One of ordinary skill in the art would have been motivated to do so in order to increase the purification efficiency, as taught by Sawakuri.
When these higher pressures are coupled with the 0.0287 m3/m2 h flow rate of example 1 ([0009]), they correspond to an integrated value of the pressure and linear velocity of 0.056 (MPaG m3)/(m2 h), which lies inside the instantly claimed range. Furthermore, even if using the higher pressures suggested by Sawakuri gives rise to correspondingly higher flow rates at the upper end of Sawakuri’s typical 10 to 40 L/m2 h range ([0007]), the integrated value of the pressure and linear velocity would increase to only 0.078 (MPaG m3)/(m2 h), which also falls in the instantly claimed range.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed range of integrated value of the pressure and linear velocity merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 3, Sawakuri teaches the method of claim 1, where the membrane is the polyamide-based RO membrane BW-30 ([0009]), which has a surface root mean square roughness of 0.12 μm (118.6 nm), as evidenced by Liu (Table 2). Because RMS roughness, a root mean square deviation, will always be greater than or equal to average surface roughness, an arithmetic mean deviation, (RMS gives a greater weight to larger items in a set and is always equal to or greater than the “regular” arithmetic mean; Statistics How To), the membrane used by Sawakuri will also have an average surface roughness of less than 1.0 μm.
Regarding claim 4, Sawakuri teaches the method of claim 1, where the membrane is the polyamide-based RO membrane BW-30 (FT-30) ([0009]), which has a nitrogen/oxygen ratio of ~2.4, as evidenced by Mi (Table 2).
Regarding claim 6, Sawakuri teaches the method of claim 1, and further discloses that the process was conducted at room temperature on a hydrogen peroxide solution with a concentration of 25%, which will have a viscosity of approximately 1.05 cP, as evidenced by Reid (Figure 20.6) The minor impurities that are present in the composition of Sawakuri are not expected to significantly affect this viscosity. Therefore, the second integrated value of the process disclosed by Sawakuri will be ~0.059-0.082 (MPaG m3)(cP)/(m2 h), thereby meeting the limitation of being less than 0.19 (MPaG m3)(cP)/(m2 h).
Regarding claim 7, Sawakuri teaches the method of claim 1 where the temperature of the crude hydrogen peroxide solution in the osmosis membrane treatment process is room temperature, which meets the limitation of being between 10 °C and 30 °C.
Regarding claim 11, Sawakuri teaches the method of claim 1, where the concentration of the hydrogen peroxide contained in the crude aqueous hydrogen peroxide solution is 35 wt% ([0009]).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sawakuri et al. (JP H0733408 A), as applied to claim 1 above, and further in view of Hirose et al. (US 6,171,497 B1). The provided English machine translation of Sawakuri (JP H0733408 A) is referenced in the analysis below.
Regarding claims 2, Sawakuri teaches the method of claim 1, but is silent with respect to the surface roughness average of the reverse osmosis membrane.
However, Hirose teaches polyamide based reverse osmosis membranes that exhibits high salt rejection (>99%), a high a flux of >1.5 m3/m2, or 0.0625 m3/(m2 h), and an average surface roughness of 50 nm (0.050 μm) or more (col. 2, lines 22-30). Hirose also teaches that is it preferable to keep the average surface roughness of these types of membranes at less than 1.0 μm (more preferably 1000 nm or less; col. 2, lines 62-63).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use in the method of Sawakuri a membrane of with an average surface roughness of between 0.050 μm and 1.0 μm, as taught by Hirose, which overlaps with range for average roughness of 0.240 μm or more required by claim 2. One of ordinary skill in the art would have been motivated to do so because Hirose teaches that a roughness in this range is preferable for a reverse osmosis membranes having good salt rejection and flow properties.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed ranges of surface roughness merely represent obvious variants and/or routine optimizations of the values of the cited prior art.
Regarding claim 3, Sawakuri teaches the method of claim 1, but is silent with respect to the surface roughness average of the reverse osmosis membrane.
However, Hirose teaches a polyamide based reverse osmosis membrane that exhibits high salt rejection (>99%), a high a flux of >1.5 m3/m2, or 0.0625 m3/(m2 h), and an average surface roughness (Ra) of 0.11 μm (col. 9, lines 30-45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the membrane of Hirose with an average surface roughness of 0.11 μm in the method of Sawakuri. One of ordinary skill in the art would have been motivated to do so because Hirose teaches that such a membrane has good salt rejection and flow properties, which would be beneficial to the method of Sawakuri.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sawakuri et al. (JP H0733408 A), as applied to claim 1 above, and further in view of Izawa et al. (JP 2007014878 A). The previously provided English machine translations of Sawakuri (JP H0733408 A) and Izawa et (JP 2007014878 A) are referenced in the analysis below.
Regarding claim 5, Sawakuri teaches the method of claim 1, but does not teach measuring the surface roughness of the reverse osmosis membrane to be used in the osmosis membrane treatment.
However, Izawa teaches that measurements of surface roughness provide a method to diagnose contamination state of the reverse osmosis membrane ([0010]-[0012]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure the surface roughness of the reverse osmosis membrane to be used in the osmosis membrane treatment of Sawakuri, as taught by Izawa. One of ordinary skill in the art would have been motivated to do so in order to diagnose the contamination state of the separation membrane, as taught by Izawa.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sawakuri et al. (JP H0733408 A), as applied to claim 1 above, and further in view of Abejon et al. (Chem. Eng. Res. Des. 2012, 90, 442-452). The previously provided English machine translation of Sawakuri (JP H0733408 A) is referenced in the analysis below.
Regarding claim 8, Sawakuri teaches the method of claim 1, but Sawakuri does not explicitly discuss a permeation ratio.
However, like Sawakuri, Abejon investigates a reverse osmosis purification process for hydrogen peroxide, including how modifying various parameters affects the overall process cost and efficiency (abstract). Abejon defines a recovery ratio based upon the ratio of the flow generating a permeating to the sum of the flow generating the permeate and the flow generating the concentrate, or retentate (p. 448, col. 1, Eq. 22). Abejon further teaches that flow of hydrogen peroxide through the membrane is not inhibited (aqueous hydrogen peroxide matrix which does not suffer any rejection [by the membrane]; p. 444, ¶ 1), which means that the concentration of hydrogen peroxide will be the same in the concentrate (retentate) as in the permeate; therefore, the recovery rate will be equivalent to the permeation ratio when the retentate is not recycled. Abejon additionally teaches that recovery rates (permeation ratio) must be balanced with membrane area and desired production rate, where high recovery rates, and therefore high production of purified permeate, correspond to larger membrane area (design decision about the recovery rates should ride out the conflicting effects those variables produce over the process performance. Obviously, high recovery rates imply high product stream flow (graphically expressed as total recovery in Fig. 7c) as less material is able to leave the system by the first stage retentate stream. The counterpoint to the greater ultrapure chemical production is the higher demanded membrane area required to permit the increased permeate flow (Fig. 7a); p. 448, col. 2). Abejon also teaches that in a two-stage purification the most efficient way to improve product quality is by reducing the recovery rate of the second stage. In effect, Abejon teaches that permeation ratio (recovery rate) is a parameter that should be optimized to achieve a desired balance of production rate, membrane size (and associated cost), and product quality.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the permeation ratio in the method of Sawakuri by routine experimentation, including into the claimed ranges of less than 80%. One of ordinary skill in the art would have been motivated to do so in order to achieve the desired balance of production rate, product quality, and costs associated with the need for increased membrane area, as taught by Abejon.
Regarding claims 9 and 10, modified Sawakuri teaches the method of claim 8, and Sawakuri further teaches and operating at room temperature, which is interpreted as about 20 °C, and which meets the limitations on temperature required by claims 9 and 10. As analyzed for claim 8, Abejon teaches that permeation ratio (recovery rate) is a parameter that should be optimized to achieve a desired balance of production rate, membrane size (and associated cost), and product quality.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the permeation ratio in the method of Sawakuri by routine experimentation, including into the claimed ranges of less than 40% required by claim 9, or alternatively, greater than 60%, as required by claim 10. One of ordinary skill in the art would have been motivated to do so in order to achieve the desired balance of production rate, product quality, and costs associated with the need for increased membrane area, as taught by Abejon.
It is noted that the courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed ranges of permeation rate merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sawakuri et al. (JP H0733408 A), as applied to claim 1 above, and further in view of Zydowicz et al. (US 2017/0113932 A1). The previously provided English machine translation of Sawakuri (JP H0733408 A) is referenced in the analysis below.
Regarding claim 12, Sawakuri teaches the method of claim 11, but only teaches using hydrogen peroxide concentrations of up to 40 wt% ([0004]), which lies just outside the instantly claimed range of 45 wt% to 60 wt%.
However, Zydowicz teaches a similar method for purifying hydrogen peroxide, and teaches applying the method to crude hydrogen peroxide aqueous solution with concentrations of greater than 50 wt% (abstract) and to a solution with a concentration of 60 wt% in particular ([00630). Zydowicz further teaches that their method fills a need to generate hydrogen peroxide of the type used for mass-market applications using a simple process.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Sawakuri to crude hydrogen peroxide solutions with a hydrogen peroxide concentration of greater than 50 wt%, and 60 wt% in particular, as taught by Zydowicz. One of ordinary skill in the art would have been motivated to do so because such solutions would have mass-market applications.
It is again noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists. Therefore, the claimed range of concentration merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Claims 1 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zydowicz et al. (US 2017/0113932 A1).
Regarding claim 1, Zydowicz discloses a method for producing a purified hydrogen peroxide solution, the method comprising an osmosis membrane treatment process of bringing a crude aqueous hydrogen peroxide solution containing impurities into contact with a reverse osmosis membrane (abstract), wherein the pressure at the reverse osmosis membrane is between 1 and 8 MPaG (10 and 80 bar; [0059]) and the linear flow rate is between 0.01 and 0.2 m3/m2 h (10 and 200 L/m2 h; [0059]), with preferable ranges of between 2.5 and 4 MPaG and 0.05 to 0.2 m3/m2 h (25-40 bar and 50-150 L/m2 h; [0059]). These preferable ranges correspond to an integrated value of the pressure and linear velocity being in the range of 0.125-0.8 (MPaG m3)/(m2 h), which overlaps with the instantly claimed range of 0.055-0.15 (MPaG m3)/(m2 h).
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claims 11 and 12, Zydowicz teaches the method of claim 1, and further teaches applying the method to a crude hydrogen peroxide aqueous solution wherein the concentration of hydrogen peroxide is 60 wt% ([0063]), which falls within the range of claims 11 and 12.
Response to Arguments
Applicant’s arguments, see pages 6-8 of the reply filed 12 August 2026, with respect to the rejections of claims 1, 3, 4, and 6-8 under 35 USC § 102 have been fully considered and are persuasive: Sawakuri does not teach a single embodiment with an integrated value of the pressure and linear velocity that falls within the range of amended claim 1. Therefore, the prior rejection has been withdrawn.
However, upon further consideration, a new ground of rejection is made under 35 USC § 103 over the same reference, because Sawakuri teaches a range of pressures and flow rates that correspond to integrated vales of the pressure and linear flow rate that overlap with the instantly claimed range, as analyzed above.
The courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant’s arguments with respect to the dependent claims, pages 8-11 of the reply, depend upon the allowability of independent claim 1. These arguments are likewise not persuasive because Sawakuri renders obvious the method claim 1, as analyzed above.
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 Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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, Sally Merkling can be reached at (571) 272-6297. 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.
/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
Prosecution Insights