DETAILED ACTION
This action is in response to the amendments and remarks filed 09/02/2026, in which claim 1 has been amended, claims 1-3, 7, 9-10, 13-19 and 21-23 are pending, claims 3, 9-10 and 18 are withdrawn as directed to a non-elected species and thus claims 1-2, 7, 13-17, 19 and 21-23 are ready for examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 03 SEPTEMBER 2026 is/are in compliance with the provisions of 37 CFR 1.97 and has/have been considered. An initialed copy of Form 1449 is enclosed herewith.
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 15-17 are 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 15-17 recite the limitations “the porous polymeric membrane is capable of …” (claim 15) reducing Fe in an aqueous amine by at least 50%, (claim 16) “reducing Fe in an amine by at least 90%” and (claim 17) “reducing metals chosen from Na, K, Mg, Mn, Cr, Al, Ni, Zn, Ba and Pb present in an aqueous amine by at least 50%”. However, it is not clear what the full scope of the structures included by this functional language are. See MPEP 2173.05(g) – “Examiner should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous:…(3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim”. The instant specification discloses only the three specific ligands of Examples 2, 5, and 6 as being capable of achieving the results from Claims 15-17, and it’s thus not clear if any other structures encompassed by Claim 1’s extremely broad recitations would be capable of achieving the results from Claims 15-17 and thus encompassed by these claims limitations. For purposes of examination and compact prosecution it will therefore be interpreted that any membrane comprising a cyclic guanidine or cyclic amidine will be considered inherently capable of achieving these results.
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, 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 1-2, 15-17, 19, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0086165 Al (hereinafter “Belisle”).
Regarding Claim 1-2 Belisle discloses chromatography resins having mixed mode ligands, wherein the chromatography resins comprise a chromatography matrix linked to (i.e. covalently bonded to) a ligand (Abstract, [0002]), wherein the chromatography matrix is a polymer, and may be in the form of a porous membrane [0105]-[0106]; wherein the ligand may comprise cyclic guanidines ([0031], [0127], Table 1, [0010]-[0012], [0021]-[0023], [0183], Claim 26); and thus discloses a porous polymer membrane having appended thereto a ligand comprising a cyclic guanidine moiety, wherein the ligand is covalently appended to the membrane.
While all the features as cited above are not specifically disclosed in one embodiment, as they are all disclosed as embodiments which are obvious variations the aspects of the various embodiments are seen as usable together and it would therefore have been prima facie obvious to one having ordinary skill in the art to combine the features and properties of the various embodiments.
Regarding Claim 15-17 Belisle discloses the porous polymeric membrane of claim 1, and with regard to the membrane being (claim 15) “capable of reducing the amount of Fe in an aqueous amine by at least 50%”, (claim 16) “capable of reducing the amount of Fe in an amine by at least 90%”, (claim 17) “capable of reducing the amount of metals chosen from Na, K, Mg, Mn, Cr, Al, Ni, Zn, Ba, and Pb present in an aqueous amine by at least 50%”, since the composition disclosed in the same as that claimed, it is asserted, absent evidence to the contrary, that one would reasonably expect that the membrane disclosed by Belisle inherently has the same properties as recited. Specifically, it is asserted that the membrane is capable of reducing the amount of Fe in an aqueous amine by at least 50, reducing the amount of Fe in an amine by at least 90%, and reducing the amount of metals chosen from Na, K, Mg, Mn, Cr, Al, Ni, Zn, Ba, and Pb present in an aqueous amine by at least 50%. See MPEP 2112.01.
Regarding Claim 19 Belisle discloses a filter comprising the porous polymeric membrane of claim 1, (i.e. because a membrane is inherently a filter).
Regarding Claim 21 Belisle discloses the porous polymeric membrane of claim 1, wherein the ligand is appended to the porous polymeric membrane via a benzyl group; (Table 1, [0107], Claim 26).
Regarding Claim 23 Belisle discloses the porous polymeric membrane of claim 1, wherein the ligand is grafted from the porous polymeric membrane; (Table 1, [0107], Claim 26).
Claims 1-2 and 13-17, 19 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0023805 Al (hereinafter “Farnia”) in view of US 2016/0158691 A1 (hereinafter “Kortunov”).
Regarding Claims 1-2 Farnia discloses an ultrafiltration/nanofiltration membrane with gas-tunable pore size, wherein the membrane comprises an active layer formed of cellulose nanocrystals, wherein chains of a CO2-responsive polymer (i.e. a ligand) is grafted on the surface of the cellulose nanocrystals (i.e. wherein the ligand is covalently appended to the membrane), and wherein the cellulose nanocrystals are covalently bonded to a first porous support layer (Abstract, [0007]-[0013]), where the first porous support layer may be a polymer [0015] and thus the ultrafiltration/nanofiltration membrane is a porous polymeric membrane; and the CO2-responsive polymer bears functional groups selected from amidines and guanidines [0025], [0156], and thus discloses a porous polymeric membrane having appended thereto a ligand comprising a guanidine moiety. And alternatively wherein the active layer is formed of a polymer material with the chains of CO2 responsive polymer grafted onto the surface and the gates of the membrane [0017], [0148], Claim 8; (i.e. without cellulose nanocrystals as intermediate).
Farnia does not disclose the guanidine moiety is a cyclic guanidine moiety.
However, Kortunov discloses a sorption composition for CO2 separation, which comprises a solid support, a linking moiety and a gas capture moiety (i.e. a CO2 responsive moiety), wherein the gas capture moiety is selected from amidines and guanidines ([0002], [0014], [0018]) including cyclic guanidines [0034], [0035], [0038], and the support may be polymeric [0029].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia by using for the guanidine functional group the cyclic guanidine(s) as disclosed by Kortunov because this involves the simple substitution of known CO2 responsive guanidine moieties to obtain the predictable result of forming a successful membrane.
Regarding Claims 13-14 Farnia in view of Kortunov discloses the porous polymeric membrane of claim 1, wherein polymeric membrane comprises the first porous support layer which may be polyether sulfone or PTFE Farnia [0017], [0200], and in the alternative embodiment the active layer itself comprises polyether sulfone or PTFE Farnia [0148].
Regarding Claims 15-17 Farnia in view of Kortunov discloses the porous polymeric membrane of claim 1, and with regard to the membrane being (claim 15) “capable of reducing the amount of Fe in an aqueous amine by at least 50%”, (claim 16) “capable of reducing the amount of Fe in an amine by at least 90%”, (claim 17) “capable of reducing the amount of metals chosen from Na, K, Mg, Mn, Cr, Al, Ni, Zn, Ba, and Pb present in an aqueous amine by at least 50%”, since the composition disclosed in the same as that claimed, it is asserted, absent evidence to the contrary, that one would reasonably expect that the membrane disclosed by Farnia in view of Kortunov inherently has the same properties as recited. Specifically, it is asserted that the membrane is capable of reducing the amount of Fe in an aqueous amine by at least 50, reducing the amount of Fe in an amine by at least 90%, and reducing the amount of metals chosen from Na, K, Mg, Mn, Cr, Al, Ni, Zn, Ba, and Pb present in an aqueous amine by at least 50%. See MPEP 2112.01.
Regarding Claim 19 Farnia in view of Kortunov discloses a filter comprising the porous polymeric membrane of claim 1 (i.e. because a membrane is inherently a filter).
Regarding Claim 22 Farnia in view of Kortunov discloses the porous polymeric membrane of claim 1, wherein the ligand is appended to the porous polymeric membrane via a crosslinked coating (“when the cellulose nanocrystals are covalently bonded (e.g. crosslinked) to each other and, optionally to the first porous support layer” Farnia [0155], [0198]).
Regarding Claim 23 Farnia in view of Kortunov discloses the porous polymeric membrane of claim 1, wherein the ligand is grafted from the porous polymeric membrane, Farnia [0147], [0148], [0151], [0180].
Claims 7 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Farnia in view of Kortunov further in view of US 2016/0166979 (hereinafter “Park”), US 2016/0166979 Al US 2013/0280626 Al (hereinafter “Yoshimura”) and US 5,767,229 (hereinafter “Arretz”).
Regarding Claims 7 and 21 Farnia in view of Kortunov discloses the porous polymeric membrane of claim 1, but does not disclose the specific ligand of claim 7, or (to claim 21) wherein the ligand is appended to the porous polymeric membrane via a benzyl group.
However Park discloses a blend membrane capable of being used for separation of carbon dioxide comprising a polymer including hydroxyl groups in a main chain; and a superbase. (i.e. porous polymeric membrane having appended thereto a ligand (i.e. the super base), said superbase/ligand comprising a cyclic guanidine moiety TBD; [0011]-[0012], [0031]-[0032]; where thus the cyclic guanidine moiety is a CO2 responsive moiety.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia in view of Kortunov by using for the guanidine functional group the cyclic guanidine as disclosed by Park because this involves the simple substitution of known CO2 responsive guanidine moieties to obtain the predictable result of forming a successful membrane.
Farnia in view of Kortunov and Park does not disclose the specific linking group claimed.
However Kortunov discloses a linking moiety is optionally used to attach the guanidine to the polymer support [0014], and wherein the linking moiety may be arylalkyl chains [0038]. Further
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia in view of Kortunov and Park by using an arylalkyl chain linking moiety to attach the guanidine functional group as disclosed by Kortunov because this is known means for attaching a guanidine moiety to a polymeric support.
Further Yoshimura discloses an anion conducting electrolyte membrane (i.e. a porous polymeric membrane) having appended thereto a ligand comprising a base 3 attached by a graft polymer/linking group 2 (Fig. 1), wherein the linker (2) may be broadly a vinyl monomer with a halogenated alkyl group, and is preferably chloromethylstyrene (i.e. having a vinyl group that is ethenyl and a halogenated alkyl group that is chloromethyl) ([0023]-[0028], [0070]), and thus discloses the linker (2) may be broader then the single pictured group to include other alkyl chain based vinyl groups and halogenated groups.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia in view of Kortunov and Park by using the arylalkyl chain linking moiety to attach the guanidine functional group as disclosed by Yoshimura because this involves the simple substitution of known arylalkyl chain linking moieties for attaching a functional group to a polymer support to obtain the predictable result of forming a successful membrane.
Further Arretz discloses a similar bicyclic guanidine attached to a polymer support (C3/L11-67, C9/L1-31), where it is disclosed that the length of the spacer used to attach the bicyclic guanidine to the polymer support effects the availability and activity of the guanidine groups in their bound state; C1/L58-67.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia in view of Kortunov and Park and Yoshimura by adjusting the lengths of the alkyl chains of the vinyl group and halogenated group of the linker monomer (2) because Yoshimura discloses the vinyl group and halogenated group may be other groups and because the length of the linker group (i.e. overall) is a variable which achieves a recognized result, and it would therefore have been obvious for one of skill in the art to optimize this variable through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Farnia in view of Kortunov further in view of Park and Yoshimura.
Regarding Claim 21 Farnia in view of Kortunov discloses the porous polymeric membrane of claim 1, but does not disclose wherein the ligand is appended to the porous polymeric membrane via a benzyl group.
However Park discloses a blend membrane capable of being used for separation of carbon dioxide comprising a polymer including hydroxyl groups in a main chain; and a superbase. (i.e. porous polymeric membrane having appended thereto a ligand (i.e. the super base), said superbase/ligand comprising a cyclic guanidine moiety TBD; [0011]-[0012], [0031]-[0032]; where thus the cyclic guanidine moiety is a CO2 responsive moiety.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia in view of Kortunov by using for the guanidine functional group the cyclic guanidine as disclosed by Park because this involves the simple substitution of known CO2 responsive guanidine moieties to obtain the predictable result of forming a successful membrane.
Farnia in view of Kortunov and Park does not disclose the specific linking group claimed.
However Kortunov discloses a linking moiety is optionally used to attach the guanidine to the polymer support [0014], and wherein the linking moiety may be arylalkyl chains [0038]. Further
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia in view of Kortunov and Park by using an arylalkyl chain linking moiety to attach the guanidine functional group as disclosed by Kortunov because this is known means for attaching a guanidine moiety to a polymeric support.
Further Yoshimura discloses an anion conducting electrolyte membrane (i.e. a porous polymeric membrane) having appended thereto a ligand comprising a base 3 attached by a graft polymer/linking group 2 (Fig. 1), wherein the linker (2) may be broadly a vinyl monomer with a halogenated alkyl group, and is preferably chloromethylstyrene (i.e. having a vinyl group that is ethenyl and a halogenated alkyl group that is chloromethyl) ([0023]-[0028], [0070]), and thus discloses the linker (2) may be broader then the single pictured group to include other alkyl chain based vinyl groups and halogenated groups.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the membrane of Farnia in view of Kortunov and Park by using the arylalkyl chain linking moiety to attach the guanidine functional group as disclosed by Yoshimura because this involves the simple substitution of known arylalkyl chain linking moieties for attaching a functional group to a polymer support to obtain the predictable result of forming a successful membrane.
Response to Amendment
The previous 35 U.S.C. 102(a)(1) rejections of claims 1-2, 15-17 and 19 are withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicants’ arguments filed 09/02/2023 have been fully considered and they are persuasive in part.
Applicants’ arguments directed to the previous 35 U.S.C. 102(a)(1) rejections of claims 1-2, 15-17 and 19 citing Park are convincing; the Examiner agrees that the cyclic guanidine in Park is not covalently appended to the membrane, thus the previous 35 U.S.C. 102(a)(1) rejections of claims 1-2, 15-17 and 19 are withdrawn. The Examiner further agrees that Belisle does not anticipate the claims, but the rejection has been updated to a 103 rejection, as the invention is obvious over the disclosure of Belisle.
In response to Applicants’ argument that claims 15-17 are not indefinite; the Examiner disagrees. While the claims are clear in their meaning with regard to quantitative performance of metals reduction. However, the claims and instant disclosure are not clear what structures this would encompass, i.e. if all bicyclic guanidines are able to achieve this. “Cyclic gunaidines” encompass a large number of chemical structures, many outside those specifically noted in the instant disclosure, such that one of ordinary skill in the art would not know from the claim terms what structure is encompassed by the claim.
In response to Applicants’ argument that Farnia, and Farnia in combinations with the other cited references, do not disclose a metal removal filter that chelates dissolved metal ions from amines, and thus the invention claimed is not obvious; the Examiner disagrees. Applicants argue that Farnia, and Farnia in combinations with the other cited references do not disclose or make obvious a metal removal filter that chelates dissolved metal ions from amines and use of a guanidine or amidine ligand as a metal-chelating moiety for removing metallic species from amine containing liquids. However, while the Examiner agrees that this specific use of the filter is not disclosed by the prior art cited, the intended use of an apparatus is not given patentable weight, see MPEP 2111.02(II), it is further noted that the manner of operating a device does not differentiate an apparatus claim from the prior art, see MPEP 2114(II). Thus this limitation does not differentiate the claims from the cited prior art, which could physically be used for this purpose.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
