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
Applicant’s election of Group I, claims 1-10 and 13 in the reply filed on 4/07/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 13 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The “wherein” clause in amended claim 13 does not make grammatical sense and introduces indefiniteness; the phrase “wherein a loose RO membrane, comprising bringing an oxidizing agent solution… into contact with an RO membrane is used.” The “comprising” phrase is positioned to modify or explain the RO membrane but is structured as containing process limitations. For the purposes of examination, this is interpreted as a product-by-process limitation, i.e. the RO membrane is made by a process comprising the recited limitations. See MPEP 2113 for discussion of the interpretation of the scope of product-by-process limitations.
Claim Rejections - 35 USC § 102/103
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 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.
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, 6, 10, and 13 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fusaoka et al (JP H9-248429).
Fusaoka was disclosed by applicant on an IDS and cited on international opinions. A translation of the description of Fusaoka is provided with this action.
With respect to claim 1, Fusaoka teaches membrane separation methods [Abs] for separating a liquid having an osmotic pressure e.g. for desalination operations [0001] and which may employ a loose RO membrane for separation [pg. 7, last two paragraphs; pg. 8, fourth paragraph]. Fusaoka further teaches that in order to increase recovery rate, it is preferable to employ an ultrahigh pressure of 7.0 MPa or more (and, in staged arrangements, later stages of e.g. 9.0 MPa or more) [pg. 7, seventh paragraph], and that this represents an operating pressure which exceeds the osmotic pressure of the liquid being treated by about 2.0 MPa [pg. 3, sixth paragraph]. Fusaoka therefore discloses at least in some embodiments feeds (in particular, for staged arrangements, feeds in second or later stages) having an osmotic pressure of about 5.0 MPa or higher (i.e. about 2.0 MPa less than the applied pressure of about 7.0 MPa or higher), and thus satisfies the limitation (ii) as claimed; alternatively, if this is not considered sufficiently clear disclosure of the osmotic pressure of the feeds in such cases, at minimum the guidance of Fusaoka renders obvious operations with such feeds, because Fusaoka teaches operating at 7.0 MPa or higher, and exceeding osmotic pressure by about 2.0 MPa or higher (thus at least implying an overlapping range with the claim limitation) and, further, suggests even higher pressures for second or later stages in which the feed is a higher concentration and thus has higher osmotic pressure.
In either case, the claimed invention is anticipated or at minimum obvious over the process of Fusaoka, given the broadest reasonable interpretation.
With respect to claim 6, Fusaoka teaches arrangements with e.g. two “first steps” i.e. RO process steps of separating a permeate from the stream using e.g. a loose RO membrane, with an example [pg. 10, Example 2] employing a two-stage system.
With respect to claim 10, as above Fusaoka teaches or at least suggests steps with operating pressure differences of about 7 MPA or about 9 MPA, such that the claimed values are anticipated or at minimum obvious.
With respect to claim 13, see MPEP 2113; a product by process limitation is limited by the structure of the product, and not by any particular process steps recited except to the extent that they imply differences in the structure. As above, Fusaoka teaches the use of loose RO membranes and, absent clarification of any particular structural changes caused by treatments beyond forming the “loose” membrane, this is sufficient to satisfy the structural requirements of the claim.
Claim 2 is rejected under 35 U.S.C. 102((a)(1)) as anticipated by Fusaoka et al with evidence from Shu et al (Modified Kedem-Katchalsky equations for osmosis…, Desalination, 2016) or, in the alternative, under 35 U.S.C. 103 as obvious over Fusaoka et al with evidence from or in view of Shu et al.
Fusaoka teaches as above but is silent to relating operating pressure to a reflection coefficient according to the claimed formula.
However, the claimed relationship is known in the art as a component of calculating the volume flux of water or the like according to the Kedem-Katchalsky equations; see equation (1) of Shu [Introduction].
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For volume flux to be positive i.e. for permeate flux to be possible, the ΔP value must be higher than the σΔπ value. As such, for a process such as that taught by Fusaoka to function, the claimed relationship must inherently be satisfied. Alternatively, at minimum, selection of a sufficiently high ΔP value would have been obvious, to ensure that a useful flux is achieved.
Claims 3, 5, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fusaoka et al in view of Otani et al (JP H10-128075 A).
With respect to claim 3, Fusaoka teaches as above including the use of a “loose” RO membrane, but does not specify the solute blocking ratio under operating conditions for any particular solutes.
However, Otani teaches RO membrane devices for separations and teaches that, in order to mitigate scale formation without lowering recovery rate, the membranes are employed in a two-stage arrangement, where the first stage has a low blocking rate for dissolved silica (e.g. about 30% or lower) [Abs]. The first stage rejects polyvalent ions at a higher rate, and the second stage is used to remove silica and the like separately [pg. 3, third paragraph] with reduced risk of scale formation. The first membrane blocking ratios are preferably at least 80% for polyvalent ions, and preferably a range of 10-80% for monovalent ions [pg. 3, fourth and fifth paragraphs]. A loose RO membrane is suggested as the first RO membrane [pg. 4, first paragraph].
It would have been obvious to one of ordinary skill in the art to modify the process taught by Fusaoka to provide membranes with the blocking properties suggested by Otani, whose blocking ratios for various species have ranges overlapping the claimed range (most particularly for monovalent ions), because as in Otani this allows for a good recovery rate while mitigating scale formation by controlling the rejection of various species into various stages.
With respect to claims 5 and 8, as above both Fusaoka and Otani teach second stage steps, and as above in view of Otani it can be desirable to employ a second stage with a significantly higher (e.g. 90% or higher) blocking rate for particular solutes e.g. monovalent solutes, to obtain good water recovery while also preventing scale deposition. The claimed ratio would at least have been obvious over such guidance.
With respect to claim 9, Otani teaches recycling a portion of the second retentate via pipe (8) back to the feed i.e. to constitute a portion of the “first to-be-treated liquid” [Fig. 1, pg. 4, second to last paragraph].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fusaoka et al in view of Otani et al, with evidence from or in view of Shu et al.
Fusaoka and Otani teach as above, and in particular Otani teaches the utility of operating membrane systems in which a first stage has intentionally lower blocking rate for particular solutes, for management of e.g. scale deposition, all while maintaining high water recovery/permeability.
Regarding the specific parameters required by the claim i.e. pure water permeability coefficient, reflection coefficient, and solute permeability, such parameters are known in the art to be related via calculations such as the Kedem-Katchalsky equations as represented by e.g. equations (1) and (2) of Shu [Introduction]. See MPEP 2144.05 II.A; "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). At least in view of Otani, optimization of e.g. water permeability, solute permability, and solute reflection behavior would have been obvious to one of ordinary skill in the art, to ensure that solute behavior is controlled in the manner suggested by Otani for mitigation of scale deposition, and particularly when accounting for known equations such as those discussed by Shu, the result-effective nature of each particular parameter would similarly have been known to one of ordinary skill in the art, such that optimization of the claimed parameters in view of this guidance would have been obvious to one of ordinary skill in the art.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fusaoka et al in view of Takabatake et al (US PGPub 2012/0305459 A1).
This is provided as an alternative to the rejection of claim 13 above. If the contact with an oxidizing agent is considered sufficient to inherently result in a structural difference which distinguishes over the loose membranes taught by Fusaoka, then see e.g. Takabatake; operating RO membrane systems in which the membrane may be contacted by an oxidizing agent are well known in the art. Takabatake teaches water treatment systems [Abs] in which oxidizing agents may be employed in pretreatment steps upstream of RO membranes [0071]. As such, employing process steps in which oxidizing agents are added and are able to contact the RO membrane to at least some degree would have been obvious e.g. as a pretreatment agent.
Allowable Subject Matter
Claims 4 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 is represented by Fusaoka and Otani, discussed in the rejections above, which teach or suggest multi-stage systems employing loose RO membranes for separations, and which teach or suggest selection of various parameters such as blocking ratio for solutes for control of factors such as scaling behavior. However, there is no teaching or suggestion of employing such a membrane system to separate a feed containing 25% solution of potassium hydrogen carbonate (aka potassium bicarbonate) at the conditions required by claim 4. The prior art alone or in combination does not teach or fairly suggest the particular process requirements of claim 4 and would not have led one of ordinary skill in the art to arrive at these steps and conditions. Claim 4 is therefore free from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1777
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