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 .
Claim Status
The Preliminary Amendment filed on 22 May 2024 has been entered; claims 1, 2, 4, 6, 14, 15, 17, 20, 22-24, 26, 30, 31, 35, 37, 38, 44, 46, and 47 remain pending.
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 46 and 47 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 46, it is unclear to the Examiner how one of skill in the art could select a membrane (step a) according to claim 1 (which does not recite any specific materials or pore size of the substrate) with pores already formed and also carry out the last clause of the claim, wherein the average pore size of the substrate is selected based on operational pressure, such that a lower average pore size is selected at higher operational pressure, especially since claim 46 does not recite operation under pressure; as such, “the operational pressure” lacks antecedent basis in the claim language. Additionally, the Examiner is further confused by claim 46 as it recites “the average pore size of the substrate is selected…such that the substrate has a lower average pore size at higher operational pressure”, which goes against prevailing knowledge, as a larger pore size is usually selected for a substrate in a membrane operated at higher operational pressure. For the purposes of examination, the Examiner will interpret these limitations as being met by a membrane comprising a porous substrate operated at a pressure consistent with claim 47.
Regarding claim 47, it is rejected for being dependent on claim 46.
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.
Claims 1, 2, 4, 14, 15, 20, 23, 35, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 109078507 A (machine translation provided and relied upon), hereinafter “CN (‘507)”.
With respect to claims 1, 2, and 4, CN (‘507) teaches a superhydrophilic oleophobic membrane comprising 100-400 meshes textile web (“porous substrate”) embodied as terylene (polyethylene terephthalate-based (PET) substrate layer (“membrane”) that is polymeric (see Abstract; Page 2, “Invention content” section through Page 3, Paragraph 2) and a crosslinked film layer (“active layer”) comprising a hydrogel (“superhydrophilic agent”) (see Page 2, “Invention content” section Paragraph 3; Page 3, line 1 and full paragraphs 3 and 6), wherein the membrane is used to separate oil and water (see Page 2, paragraphs 2 and 3), and therefore is capable of acting as an oily wastewater treatment membrane.
With respect to claims 14, 15, 23, and 35, CN (‘507) teaches that the hydrogel superhydrophilic agent comprises a polymer or copolymer comprising one or more monomers of acrylic acid, sodium acrylate, potassium acrylate, and acrylamides (“a copolymer that is a polyelectrolyte, a polymer salt, and/or an ionized polymer”; a “polyacrylate salt”) (Page 3, second full paragraph).
With respect to claim 20, CN (‘507) teaches that the crosslinking agent is N,N’-methylene bisacrylamide, poly(ethylene glycol) dimethacrylate, ethyl dimethacrylate or a combination (see Page 3, third full paragraph).
With respect to claim 44, CN (‘507) teaches a method of producing the separation membrane of claim 1 (see above), comprising contacting the PET substrate with a coating composition comprising the superhydrophilic agent to from an active layer that is at least partially crosslinked (see Page 2: “Invention content” section through Page 3, ninth full paragraph).
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.
Claims 6, 17, 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over CN # 109078507 A (machine translation provided and relied upon), hereinafter “CN (‘507)”.
With respect to claim 6, CN (‘507) does not specifically teach that the PET textile web has the recited surface roughness; however, all surfaces have a surface roughness value, the ordinary artisan would recognize that the textile web of CN (‘507) would have a non-zero surface roughness value, and the textile web of CN (‘507) is the same material as that which is recited. Additionally, there does not appear to be any criticality associated with the recited roughness value. 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claim 17, CN (‘507) does not specifically teach the recited molecular weight range for the superhydrophilic agent embodied as the hydrogel polymer as discussed above; however, there does not appear to be any criticality associated with the recited molecular weight value. 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claim 22, CN (‘507) teaches that the crosslinking agent is added at 0.2-0.6 wt % in the coating composition (Page 2, 6th full paragraph), but does not specifically teach that the crosslinking density is at least 2 molar % of the crosslinking functional groups. Although CN (‘507) does not express crosslinking agent concentration in terms of crosslinking density, the Examiner submits that it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426. In the instant case, the Examiner also notes that CN (‘507)’s teaching of 0.2-0.6 wt% crosslinking agent in the coating composition overlaps with the limitations of original claim 19, which did recite the crosslinking agent wt % in terms of the coating composition.
Lastly, it is submitted that here is no evidence indicating such crosslinking densities are critical. 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claim 24, CN (‘507) does not specifically teach that the superhydrophilic agent is embodied as claimed, but does teach copolymers comprising sodium acrylate monomers (Page 3, second full paragraph), which is one methyl group away from 2-propenoic acid, 2-methyl, polymer with sodium, or sodium methacrylate.
Although CN (‘507) fails to incorporate additional methyl group, -CH3, in the end group, the similarity between the chemical structures and expected properties is sufficiently close that one of ordinary skill in the art would have been motivated to make the claimed sodium methacrylate with additional methyl group in the end group. In re Payne (A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.”) 606 F.2d 303, 203 USPQ 245 (CCPA 1979); In re Dillon (discussed below and in MPEP § 2144 for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds), 919 F.2 d 688, 16 USPQ2d 1897 (Fed. Circ. 1991). See MPEP § 2144.08. Case law holds that homologues (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH3 groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Claims 26, 30, 37, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over CN # 109078507 A (machine translation provided and relied upon) in view of JP 2008515668 A (machine translation provided and relied upon), hereinafter “CN (‘507)” and “JP (‘668)”.
With respect to claims 26, 30, 37, and 38, CN (‘507) does not specifically teach a hydrophilic agent in first or intermediate layer between the porous substrate and second active layer comprising the superhydrophilic agent.
JP (‘668) teaches an intermediate hydrophilic layer comprising crosslinked PVA (“polyvinyl alcohol polymer” as a “hydrophilic agent” and an “adhesion promoter”) which is adhered to a PET substrate (Page 9, fourth full paragraph; Page 20, 6th full paragraph).
It would have been obvious to one of ordinary skill it the art to add the hydrophilic intermediate/first layer comprising crosslinking polyvinyl alcohol in between the PET substrate of CN (‘507) and the second/film layer comprising the superhydrophilic agent of CN (‘507) because JP (‘668) teaches that the hydrophilic PVA layer provides a lightweight, interconnected porous structure with sufficient tensile strength and large specific surface area in order to scaffold to (with another layer, for example, like the second film layer with superhydrophilic agent of CN (‘507) (see Page 20, 6th full paragraph). JP (‘668) also teaches on Page 9, 4th full paragraph that the PVA intermediate layer increases adhesion between a PET substrate (same substrate as CN (‘507)) a scaffold (outer) layer.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over CN # 109078507 A (machine translation provided and relied upon) in view of JP 2008515668 A (machine translation provided and relied upon) as applied to claim 26, and further in view of Huang et al. (Journal of Materials Chemistry A, 2019, 3, 19517-19524), hereinafter “CN (‘507)”, “JP (‘668)”, and “Huang”.
With respect to claim 31, CN (‘507) in view of JP (‘668) does not specifically teach a hydrophilic agent embodied as a graphene-based material.
Huang teaches a hydrophilic layer comprising graphene oxide (Abstract).
It would have been obvious to one of ordinary skill it the art to add the hydrophilic graphene oxide of Huang as a hydrophilic agent to the intermediate layer of the membrane of CN (‘507) in view of JP (‘668) because Huang teaches that the graphene oxide material allows for high separation efficiency of greater than 99% of oil from water with a high flux, with the membrane exhibiting antifouling performance for oil droplets (see Huang: Abstract), wherein oil water separation is also taught by CN (‘507) (see above).
Claims 46 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over CN 109078507 A (machine translation provided and relied upon) in view of WO 2011159699 A2, hereinafter “CN (‘507)” and “WO (‘699)”.
With respect to claims 46 and 47, CN (‘507) teaches a method of separating oil (“desired component”) from water feed flow, comprising selecting the membrane according to claim 1 (see rejection of claim 1 above), contacting the membrane with oily wastewater (“feed flow composition”), and effecting separation of oil (“desired component”) from the oily wastewater (“feed flow composition”) through the membrane. CN (‘507) teaches that the pore size of the substrate is 100-400 mesh, equivalent to a range of 37-149 micron (see Abstract; Page 2, “Invention content” section through Page 3, Paragraph 2).
In one example embodiment, the supported hydrogel film was used under pressures of less than 0.02 MPa (0.2 bar) and achieved a separation efficiency of 99.43% (see Example 1 on Page 4 of CN (‘507). It would have been obvious to one of ordinary skill in the art that water flux through the membrane of CN (‘507) is a function of pore size and operating pressure, which can vary based on system in which a membrane is used. Optimization of pore size to achieve a desired flux is conventionally known in the art. The recited flux is further rendered obvious as the substrate is embodied as consistent with dependent claims 2 and 4, and is similar to the membrane disclosed in WO 2011/159699 A2, in which a flux of 300L/m-hr is achieved during oil/water separation (see Paragraph [0143]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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, Bob Ramdhanie can be reached at (571) 270-3240. 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.
/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 12 June 2026
Prosecution Insights