DETAILED ACTION
This action is in response to the amendments and remarks filed 12/29/2025, in which claims 1-3, 7, 9-10, 13-19 and 21-23 are pending, claims 3, 9-10 and 18 are withdrawn as directed to a non-elected species and thus claims 1-2, 7, 13-17, 19 and 21-23 are ready for examination.
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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 15-17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0166979 Al (hereinafter “Park”).
Regarding Claim 1-2 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; [0011]-[0012], [0031]-[0032].
Regarding Claims 15-17 Park 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 Park 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 Park discloses a filter comprising the porous polymeric membrane of claim 1, (i.e. because a membrane is inherently a filter).
Claims 1-2, 15-17, 19, 21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 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.
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).
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 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 are grafted on the surface of the cellulose nanocrystals, 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 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 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 f or 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. 112(b) rejection of claims 15-17 is withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered and they are persuasive in part.
Applicant’s arguments directed to the rejections based on Yoshimura are convincing; the Examiner agrees that the guanidine compounds are used as a strong base in the reaction to form a weak base quaternary ammonium group and it thus not appended to the final membrane.
In response to Applicants’ argument that Park does not disclose a cyclic guanidine moiety appended to the membrane; the Examiner disagrees. Applicants argue that because the cyclic guanidine moiety of Park is mixed/blended in the membrane, and not covalently bonded to the ligand/membrane, it is not appended as claimed. However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the guanidine is appended to the ligand using covalent bonding through crosslinked coatings or grafting) are not recited in the claims rejected citing Park. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). “Appended” merely means attached, and does not require covalent bonding.
Further, new rejections citing Farnia in view of Kortunov have been introduced, and therefore this action is made Non-Final.
Conclusion
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
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