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 .
Election/Restrictions
Claims 12-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/26/2026.
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)(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, 2, 7, 8, and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Herron et al. (US Pub. No. 2015/014248).
Claim 1: Herron et al. teach a nanofiltration system comprising: a first nanofiltration stage (Fig. 1, 104) that produces a retentate (120) and a permeate (Fig. 1, 118); and a second nanofiltration stage (Fig. 1, 106) that produces a retentate (Fig. 1, 124) and a permeate (Fig. 1, 122), wherein the second nanofiltration stage is downstream of the first nanofiltration stage (Fig. 1, 104 with respect to 106) and accepts at least a portion of the retentate from the first nanofiltration stage, wherein the second nanofiltration stage is more permeable to a solute than the first nanofiltration stage [0048-0049, wherein the coefficient of solute permeability for the first membrane is 1 and the second membrane is 2.5].
Claim 2: Herron et al. teach the nanofiltration system according to claim 1, further comprising a recycle stream that returns at least a portion of the permeate from the second nanofiltration stage to an inlet of the first nanofiltration stage (Fig. 1, 30).
Claim 7: Herron et al. teach a third nanofilter membrane (Fig. 1, 108) downstream of the 2nd membrane.
Claim 8: Herron et al. teach that the third nanofiltration stage is more permeable to the solute than the second stage [0050, wherein the solute permeability coefficient for the third filter is 3.3 which is greater than that of the 2nd membrane].
Claim 11: Herron et al. teach a recycle stream returning at least a portion of the permeate from the third nanofiltration stage to an inlet of the first nanofiltration stage and/or the second nanofiltration stage (Fig. 1, 130).
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 3, 4, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Herron et al. (US Pub. No. 2015/014248).
Claims 3 and 4: Herron et al. do not teach the solutes specified. However, the claims are apparatus type claims. The solutes and feed solution are not part of the apparatus. Rather, they are the material worked upon by the apparatus. The “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claim 5: The solute permeability coefficient (B) is the rate at which a specific solute diffuses through the membrane. It depends on the solute's size, charge, and interaction with the membrane. The rejection ratio is the fraction of solute that is successfully blocked and prevented from passing through the membrane. They are inversely related. A membrane having high rejection and low permeability has a low B value and a high R value. Conversely, a membrane having low rejection and high permeability, has a higher B value and lower R value. Thus, while Herron et al. teach their membrane selectivity in terms of solute permeability coefficient, it is clear that the membrane permeability is a result effective variable that is routinely optimized to control the flow through properties of the membrane and for selective separation. “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 9: Herron et al. do not teach that the third membrane specifically has a solution rejection of at least 5%. However, they teach that the membrane rejects at least some solutes [0050]. At least 5% is such a large range including 5%-100% of solute, that the claim requires essentially any amount at all of solute be rejected. 0 to less than 5% rejection would be rejecting almost nothing. One of ordinary skill in the art would have appreciated that Herron et al.'s membrane rejected at least 5% of solutes as the intention of the membrane is to remove solute.
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Herron et al. (US Pub. No. 2015/014248) in view of Hoek et al. (US Pub. No. 2020/0246757).
Claims 6 and 10: Herron et al. teach the solute permeability to describe the selectivity of their membranes. They do not use molecular weight cutoff. However, molecular weight cutoff is another way in which membrane selectivity/permeability is described. It is well-known in the art that the molecular weight cutoff is a result effective variable optimized during routine experimentation to control the permeability/selectivity of a filter membrane. Given that Herron et al. teach that each downstream membrane is more permeable than the upstream, it would be obvious that the second - and subsequent membranes - would have molecular weight cutoffs being progressively larger. “[W]here 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.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Herron et al. do not teach the membrane material.
Hoek et al. teach that in addition to polyamide, there are a variety of materials commonly used for thin film composite membranes including polyamide [0003, 0034] in addition to other materials including nanocomposite membranes that don't require polyamides [0038-0046]. It was within the skill of one of ordinary skill in the art through routine experimentation to choose a common membrane material including both polyamide and non-polyamide materials to make the thin film composite membranes as The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Conclusion
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ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/Primary Examiner, Art Unit 1773
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