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 Rejections - 35 USC § 102
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.
Claim(s) 1-5, 13, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito (JP3018421B2) as evidenced by PubChem (Glycerol monomethacrylate). *Ito is based on the attached, machine-translated, English version.
The examiner would like to note for clarity of the record, that PubChem is simply being used as an evidentiary reference for what is being taught by Ito. The structure of glycerol monomethacrylate, taken from PubChem, will be attached below, however, Ito is the reference which teaches the compound and anticipates the instant claims of above.
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Glycerol mono(meth)acrylate – PubChem
Regarding claim 1, Ito teaches a water treatment chemical comprising a polymer {Middle page 2 re. copolymer water treatment agent} that comprises: a structural unit (I) represented by a formula (1); {Page 4 re. general formula (III) and glycerol monomethacrylate} and a structural unit (II) derived from a carboxy group-containing monomer, {Bottom page 3 re. formula (II) carboxyl group} the formula (1) being represented by the following formula:
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{Top page 4 re. glycerol monomethacrylate} wherein R1 is a hydrogen atom or a methyl group; R2 is a direct bond, -CH2-, -CH2CH2-, or -CO-; R3s are the same as or different from each other and are each a C1-C20 alkylene group; X is -CH2CH(OH)CH2(OH) or -CH(-CH2OH)2; and n is a number of moles of oxyalkylene groups added and is 0 to 100. {Top page 4 re. glycerol monomethacrylate}
Regarding claim 2, Ito teaches wherein the water treatment chemical is an antifouling ability-imparting agent. {Middle page 2 re. scale preventing}
Regarding claim 3, Ito teaches wherein R2 is -CO-. {Top page 4 re. glycerol monomethacrylate}
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Regarding claim 4, Ito teaches wherein R3's are each a C2-C3 alkylene group. {Top page 4 re. glycerol monomethacrylate}
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Regarding claim 5, Ito teaches wherein n is 0 to 5. {Top page 4 re. glycerol monomethacrylate}
Regarding claim 13, Ito teaches wherein the carboxy group-containing monomer is selected from the group consisting of acrylic acid, methacrylic acid, a-hydroxyacrylic acid, a-hydroxymethylacrylic acid, crotonic acid, maleic acid, fumaric acid, itaconic acid, 2-methyleneglutaric acid, and salts thereof. {Bottom page 3 re. acrylic acid}
Regarding claim 18, Ito teaches wherein the polymer has weight average molecular weight of 3,000 to 1,000,000. {Bottom page 7, re. example wherein the compounds molecular weight ranges from 500 to 1,000,000}
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(s) 6-12 and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP3018421B2) as evidence by PubChem (Glycerol monomethacrylate), as applied to the claims above. *Ito is based on the attached, machine-translated, English version.
Regarding claims 6-9, Ito teaches wherein a proportion of the structural unit (I) represented by the formula (1) is 5 to 99 mol% based on 100 mol% of all structural units in the polymer; (Claim 6) wherein a proportion of the structural unit (I) represented by the formula (1) is 10 to 90 mol% based on 100 mol% of all structural units in the polymer; (Claim 7) wherein a proportion of the structural unit (I) represented by the formula (1) is 15 to 85 mol% based on 100 mol% of all structural units in the polymer; (Claim 8) wherein a proportion of the structural unit (I) represented by the formula (1) is 20 to 50 mol% based on 100 mol% of all structural units in the polymer. (Claim 9) {Middle page 5 re. 0.1 to 10 moles of formula (III) per mole of sulfonated product in composition ratio}
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention the range of Ito teaches the claimed range because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). MPEP § 2144.05(I)
Regarding claims 10-12, Ito teaches wherein the number of carbon atoms in the carboxy group-containing monomer is 3 to 10; (Claim 10) wherein a number of carbon atoms in the carboxy group-containing monomer is 3 to 6; (Claim 11) wherein the number of carbon atoms in the carboxy group-containing monomer is 3 to 4. (Claim 12) {Bottom page 3 re. 1-8 carbon atoms in formula (II)}
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention the range of Ito teaches the claimed range because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). MPEP § 2144.05(I)
Regarding claims 14-17, Ito teaches wherein a proportion of the structural unit derived from a carboxy group-containing monomer is 1 to 95 mol% based on 100 mol% of all structural units in the polymer; (Claim 14) wherein a proportion of the structural unit derived from a carboxy group-containing monomer is 30 to 90 mol% based on 100 mol% of all structural units in the polymer; (Claim 15) wherein a proportion of the structural unit derived from a carboxy group-containing monomer is 50 to 85 mol% based on 100 mol% of all structural units in the polymer; (Claim 16) wherein a proportion of the structural unit derived from a carboxy group-containing monomer is 60 to 80 mol% based on 100 mol% of all structural units in the polymer. (Claim 17) {Top page 4 re. 0.1 to 1 moles of carboxyl group per mole of sulfonated product in the composition ratio}
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention the range of Ito teaches the claimed range because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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). MPEP § 2144.05(I)
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP3018421B2) as evidence by PubChem (Glycerol monomethacrylate), in view of Schmidt-Leithoff (US20150328588A1). *Ito is based on the attached, machine-translated, English version.
Regarding claims 19-20, Ito fails to teach a water treatment membrane comprising the water treatment chemical according to claim 1; (Claim 19) and wherein the water treatment chemical forms a layer on a surface of the membrane that can be used for the water treatment. (Claim 20)
Schmidt-Leithoff teaches a water treatment membrane comprising the water treatment chemical according to claim 1; (Claim 19) {[0049] re. membrane with an organic polymer} and wherein the water treatment chemical forms a layer on a surface of the membrane that can be used for the water treatment. (Claim 20) {[0144] re. coating grafted on surface}
It would be obvious to one of ordinary skill prior to the effective filing date of the claimed invention to modify Ito with Schmidt-Leithoff’s teachings a water treatment membrane comprising the water treatment chemical according to claim 1; (Claim 19) and wherein the water treatment chemical forms a layer on a surface of the membrane that can be used for the water treatment (Claim 20) as the membrane taught by Schmidt-Leithoff is particularly useful in water treatment. {Schmidt-Leithoff, [0006]}. Doing so would allow for increased flow of flux, {Schmidt-Leithoff, [0005]} creating a greater volume of treatment, while continuing to prevent fouling/scaling within the system components.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Rodrigues (US20200239344) directed towards the composition components and groups of claims 1-4, specifically the carboxy and glycerol monomethacrylate components.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CONNOR J ROTONDI/Examiner, Art Unit 1773
/BENJAMIN L LEBRON/Supervisory Patent Examiner, Art Unit 1773
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