DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-9 are cancelled. New 10-20 claims are added. Claims 10-20 are pending in the instant application.
Priority
This application is a U.S. National Stage Application of International Patent Application No. PCT/FR2022/000114, filed on November 16, 2022, which claims priority to French Patent Application No. FR2112122, filed on November 17, 2021.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 05/09/2024, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Status of the Claims
Claims 10-20 are under examination on the merits.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10-14 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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.
Claims 10-14 provide for the use of a reverse osmosis filtration membrane comprising at least one active layer of a polyethersulfone- type polymer for the purification of a hydrogen peroxide solution. Since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
In addition, claim 12 is drawn to the use of a reverse osmosis filtration membrane for the purification of a hydrogen peroxide solution wherein the membrane has a salt rejection rate of greater than 90%. However, claim 12 does not define which salt it refers to. It is well-known that a reverse osmosis filtration membrane can produce different salt rejection rates for different salts such as NaCl, boron salt, or quaternary ammonium salts. For example, a polyamide-polysulfonamide thin-film composite (TFC) membranes for seawater reverse osmosis have 99.90% salt rejection rate for NaCl, while only have 92.39% salt rejection rate for boron according to Li et al., J of Membrane Science, (2025), v.715, p.123507(1-11) (Abstract and Fig. 6). Without specifying the salt of a salt rejection rate, claim 12 is subject to subjective interpretation. Therefore, claim 12 is indefinite.
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 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.
Claims 10-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2011068533A (“the `533 Application”), evidenced by Habib et al., Desalination, (2021), v.502, p.114939(1-22), published 16 January 2021.
Applicant’s claim 10 is drawn to the use, for the purification of a hydrogen peroxide solution, of a reverse osmosis filtration membrane, said membrane comprising at least one active layer of a polyethersulfone-type polymer.
Applicant’s claim 16 is drawn to a process for purifying a hydrogen peroxide solution comprising at least one step of reverse osmosis membrane filtration with a reverse osmosis filtration membrane, said membrane comprising at least one polyethersulfone-type polymer active layer, comprising at least the steps of: a) providing a crude hydrogen peroxide solution to be purified, b) treating said crude solution in a reverse osmosis membrane purification unit, said membrane comprising at least one active layer of polyethersulfone-type polymer, and c) recovering a permeate of purified hydrogen peroxide solution.
The `533 Application (claim 1) discloses a method for producing purified hydrogen peroxide, characterized by contacting raw hydrogen peroxide containing hydrophobic substances as impurities with a reverse osmosis membrane made of a polyamide-based or polyvinyl alcohol-based composite membrane, wherein the reverse osmosis membrane contains an electrically neutral organic compound and/or has a protective layer on its surface containing an electrically neutral organic compound. The `533 Application [0029] discloses the reverse osmosis composite membranes include a skin layer, such as a polyamide-based or polyvinyl alcohol-based membrane, is formed on the surface of a support membrane by interfacial polymerization. The `533 Application [0030] discloses, as an example, a polyamide-based skin layer can be formed by interfacial polymerization of a polyfunctional aromatic amine and a polyfunctional acid halide on the surface of a porous support to allow interfacial polymerization on the porous support film to form a polyamide-based coating to form the reverse osmosis membrane. The `533 Application [0032] further discloses as the porous support film, a porous polysulfone support film such as polysulfone, polyethersulfone, or polyarylethersulfone is preferred from the viewpoint of chemical, mechanical, and thermal stability. The thickness of such a porous polysulfone support film is appropriately selected according to the thickness of the reverse osmosis membrane that is usually used, but it is usually about 25 to 125 μm thick, preferably about 40 to 75 µm thick, but is not necessarily limited to these values. The `533 Application [0039] discloses examples of permeable membrane forms include flat membranes, pleated membranes, spiral membranes, tubular membranes, rod membranes, fine tube membranes, spaghetti membranes, or hollow fiber membranes, or combinations thereof. The `533 Application [0045-0046] discloses the proportion of concentrated hydrogen peroxide solution separated by the reverse osmosis membrane is preferably 1 to 60% of the total amount of hydrogen peroxide solution supplied to the reverse osmosis membrane, and in particular, a concentration of 40-60% is good for removing hydrophobic substances. The hydrogen peroxide solution that has passed through the reverse osmosis membrane and been delivered to the next step, ion exchange resin treatment, is not particularly limited in terms of ion exchange treatment, but usually purified hydrogen peroxide solution is obtained by passing it through an ion exchange cylinder. Therefore, the `533 Application anticipates claims 10-11, 13-18, and 20.
In terms of claim 12 according to the use of claim 10, wherein the membrane has a salt rejection rate of greater than 90%, said rejection rate being measured on an aqueous solution containing 2000 mg per liter of sodium chloride, at 25°C, under a pressure of 1.55 MPa, at pH 7, for 20 minutes, with a conversion rate of 15%, where the conversion rate is equal to the permeate flow rate/feed flow rate ratio, the `533 Application [0045-0046] discloses the proportion of concentrated hydrogen peroxide solution separated by the reverse osmosis membrane is preferably 1 to 60% of the total amount of hydrogen peroxide solution supplied to the reverse osmosis membrane, and in particular, a concentration of 40-60% is good for removing hydrophobic substances. The hydrogen peroxide solution that has passed through the reverse osmosis membrane and been delivered to the next step, ion exchange resin treatment, is not particularly limited in terms of ion exchange treatment, but usually purified hydrogen peroxide solution is obtained by passing it through an ion exchange cylinder, wherein the hydrogen peroxide solution is an electronic grade hydrogen peroxide solution. It is well-known the hydrogen peroxide solution for electronic and semiconductor uses must have a salt rejection rate of greater than 90%, supported by Habib et al. Habib et al. (Figs. 9-10) teaches fully aromatic polyamide reverse osmosis membranes have a NaCl salt rejection rate of greater than 90%.
In terms of claim 19 according to the process of claim 15, wherein the hydrogen peroxide solution is an electronic grade hydrogen peroxide solution, the `533 Application [0002] discloses hydrogen peroxide is widely used in many fields, including its use in the electronics industry, such as a cleaning agent for silicon wafers and semiconductor processes, has increased. Consequently, there is a growing demand for high-purity hydrogen peroxide with various impurities minimized. It is clear the `533 Application teaches the purified hydrogen peroxide solution is used as an electronic grade hydrogen peroxide solution. The `533 Application [0046] discloses the hydrogen peroxide solution that has passed through the reverse osmosis membrane and been delivered to the next step, ion exchange resin treatment, and usually purified hydrogen peroxide solution is obtained by passing it through an ion exchange cylinder. Therefore, the `533 Application teaches a process for purifying a hydrogen peroxide solution wherein the hydrogen peroxide solution is an electronic grade hydrogen peroxide solution.
Therefore, the `533 Application evidenced by Habib et al. anticipates claims 10-20.
Alternatively, claim 12 is rejected under 35 USC § 103 as follows:
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 12 is rejected under 35 U.S.C. 103 as being unpatentable over the `533 Application in view of Habib et al.
In terms of claim 12 according to the use of claim 10, wherein the membrane has a salt rejection rate of greater than 90%, said rejection rate being measured on an aqueous solution containing 2000 mg per liter of sodium chloride, at 25°C, under a pressure of 1.55 MPa, at pH 7, for 20 minutes, with a conversion rate of 15%, where the conversion rate is equal to the permeate flow rate/feed flow rate ratio, the `533 Application [0045-0046] discloses the proportion of concentrated hydrogen peroxide solution separated by the reverse osmosis membrane is preferably 1 to 60% of the total amount of hydrogen peroxide solution supplied to the reverse osmosis membrane, and in particular, a concentration of 40-60% is good for removing hydrophobic substances. The hydrogen peroxide solution that has passed through the reverse osmosis membrane and been delivered to the next step, ion exchange resin treatment, is not particularly limited in terms of ion exchange treatment, but usually purified hydrogen peroxide solution is obtained by passing it through an ion exchange cylinder, wherein the hydrogen peroxide solution is an electronic grade hydrogen peroxide solution. It is well-known the hydrogen peroxide solution for electronic and semiconductor uses must have a salt rejection rate of greater than 90%. In addition, Habib et al. (Figs. 9-10) teaches fully aromatic polyamide reverse osmosis membranes have a NaCl salt rejection rate of greater than 90%. The method of measuring salt rejection rate of greater than 90% is not a further limitation of the claimed use.
It would have been obvious for one ordinary skilled in the art to the claimed use of a reverse osmosis filtration membrane for the purification of a hydrogen peroxide solution having a salt rejection rate of greater than 90% based on the disclosure of the `533 Application in view of Habib et al.
Conclusions
Claims 10-20 are rejected.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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