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 .
Response to Amendment
The Amendment filed January 30, 2026, has been entered. Examiner acknowledges the cancellation of claims 2 and 8. Claims 1, 3 and 5-7 remain pending in the application. The amendments have been considered and are supported by the originally filed disclosure. However, for reasons set forth below, the amendments do not place the pending claims in condition for allowance.
Response to Arguments
Applicant’s arguments filed January 30, 2026, have been fully considered and are partially persuasive. In particular, Applicant’s arguments identify deficiencies in the manner in which Baker and Mulder were previously relied upon to establish the newly claimed optimum-flux relationship in the highly purified water environment of a terminal ultrafiltration membrane. Accordingly, the prior rejection is not maintained on the same factual basis. Nevertheless, the pending claims remain unpatentable for the reasons set forth in the new rejections below.
Applicant argues that Tamura’s recovery-rate teachings relate to reverse osmosis rather than terminal ultrafiltration. This argument has been considered but is not persuasive against the present rejection. Fukui expressly teaches that recovery ratio is a result-effective operating parameter in terminal membrane treatment of secondary ultrapure water, while Tamura teaches the claimed numerical recovery range and the effect of recovery on silica concentration. The present rejection therefore does not require replacing the terminal UF membrane with Tamura’s RO membrane.
Applicant further argues that the prior art does not teach the amended feed-water resistivity, iron, and silica ranges or the claimed optimum-flux relationship. The newly applied art addresses these limitations: Iiyama teaches the high-resistivity ultrapure-water environment; Motomura teaches ng/L-level iron concentrations in a secondary ultrapure-water system having downstream UF; Tamura teaches a silica concentration within the claimed range; Chen teaches determining an optimum membrane flux from flux/TMP behavior; Yuan teaches characterization of UF membranes using flux and transmembrane pressure; and Pall provides pre-filling UPW UF performance and recommended design-flux-data.
With respect to claim 5, Applicant’s argument concerning the previously cited 50 ng/L silica standard is persuasive as to that prior evidence. However, the newly applied National Technology Roadmap for Semiconductors teaches a semiconductor-industry need for silica below 0.01 ppb, i.e., below 10 ng/L, which is more stringent than the presently claimed limit of 20 ng/L.
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 6-7 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.
Claim 6 is directed to an ultrapure water production apparatus, but further recites affirmative operational steps including that “filtration in the filtration membrane module is controlled” to specified conditions, that “a K value is obtained” and that “the optimum permeate water flux is determined” according to Formula (3). It is therefore unclear whether claim 6 defines an apparatus having structure configured to perform these operations, or instead requires performance of the recited method steps during use of the apparatus. Accordingly, the metes and bounds of the apparatus claim are unclear because it cannot be determined with reasonable certainty whether infringement occurs upon making or possessing an apparatus having the necessary capability, or only upon operating the apparatus to obtain K, determine the optimum permeate water flux, and control filtration according to the recited conditions. Claim 7 is likewise indefinite due to its dependency from claim 6.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1, 3, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Iiyama (WO-2020209036-A1) in view of Fukui (US-20160220958-A1), Tamura (JP-H116660-A: An English machine translation is provided with this office action and is used for claim mapping in the prior art rejection below), Chen "Research on Contamination Control of Microfiltration Membranes for Reuse of Textile Dyeing Wastewater", and further in view of Yuan (CN-116585892-A: An English machine translation is provided with this office action and is used for claim mapping in the prior art rejection below), Pall Corporation, "Microza Ultrafiltration Modules OLT Series" Data Sheet 78g (March 2020) and Motomura (JP-2004167308-A) referred to hereafter as “modified Iiyama”.
Regarding claim 1, Iiyama discloses a method for producing ultrapure water comprising treating raw water with a primary pure water apparatus and a secondary pure water apparatus in this order (Iiyama claim 12, pars. [0013-0014] and Fig. 1) and performing filtration through a filtration membrane at an end of the secondary pure water apparatus, wherein the filtration membrane is an ultrafiltration membrane (Iiyama pars. [0002], [0024], [0068] and Fig. 5), wherein water supplied to the secondary pure water apparatus and subjected to the terminal polishing treatment has a resistivity equal to or greater than 17 MΩ∙cm (Iiyama par. [0023], see also pars. [0059], [0068]).
Iiyama does not expressly disclose that the permeate water flux during the filtration is within a range from equal to or more than 0.5 times to equal to or less than 2.0 times an optimum permeate water flux; that a K value is obtained as intermembrane differential pressure (kgf/cm2)/permeate water flux (m/h) and the optimum permeate water flux is determined according to Formula (3), optimum permeate water flux = -0.69log10(K) + 0.64; that the water recovery rate during the terminal filtration is equal to or more than 50% and less than 80%; or that water subjected to the filtration has an iron concentration of 3 to 100 ng/L and a silica concentration of 100 to 1000 ng/L.
Fukui teaches that recovery rate is a result-effective operating variable specifically in terminal membrane filtration of a secondary ultrapure-water system. Fukui discloses a primary pure water system followed by a secondary subsystem having a mixed-bed deionization device and terminal UF membrane devices for removal of microparticles (Fukui pars. [0002], [0004], [--36-0039], [0044], [0047-0056]). Fukui further teaches that the terminal membrane devices preferably employ cross-flow filtration and operate at a selected recovery ratio (par. [0057]) and expressly recognizes that “an excessively high recovery ratio increases the risk of microparticles being deposited on the membrane”, such that “it is preferable to pay attention to the range of recovery ratio” (Fukui par. [0069]). Thus, Fukui established in the same terminal-UPW environment as presently claimed that recovery rate was known to affect microparticle deposition and membrane performance and therefore was a parameter to be selected rather than merely maximized.
Tamura teaches the claimed numerical recovery range and a silica concentration falling within the claimed range. Tamura teaches operating a pure-water membrane system at a recovery rate of 80% or less, particularly 75% to 50% (Tamura par. [0010]), because silica concentration in permeate tends to increase with recovery and “in particular increases rapidly when the recovery rate exceeds 80%” (Tamura par. [0026]). Tamura further exemplifies permeated water having a silica concentration of 0.2 µg/L, i.e., 200 ng/L, which falls within the presently claimed 100-1000 ng/L range (Tamura par. [0029]), and teaches that such treated water may subsequently be subjected to ion-exchange treatment or membrane filtration using UF to produce ultrapure water (Tamura par. [0034]). In view of Fukui’s express recognition that recovery rate likewise affects particulate deposition in terminal UPW membrane filtration, a person of ordinary skill in the art would have had reason to apply Tamura’s known 50%- <80% recovery regime when treating silica-containing ultrapure water in Iiyama’s terminal UF in order to limit concentration and deposition of impurities while maintaining useful water recovery.
Motomura teaches iron concentrations within the claimed 3-100 ng/L range in the same secondary-UPW/terminal-UF environment. Motomura discloses a secondary pure-water apparatus including a pump, UV device, ion-exchange device, and downstream UF membrane separator, with the UF removing fine particles and particles discharged from the ion-exchange resin (Motomura pars. [0005], [0031]). Motomura further explains that metals generated within the secondary pure-water system combine with small amounts of oxygen to form colloidal particles that “cannot be removed by the ion-exchange device” and are instead captured by the downstream UF membrane (pars. [0011-0013]). Motomura experimentally reports iron of at least 5 ng/L in the ultrapure water during startup and 21 ng/L Fe at the outlet of pump 22, both falling within the claimed 3-100 ng/L range (Motomura pars. [0057-0058]). Motomura therefore teaches that water passing through a secondary UPW polishing train toward its terminal UF was known to contain ng/L level iron in the presently claimed concentration range.
Chen teaches determining an optimum membrane flux from the relationship between membrane flux and transmembrane pressure difference and operating at or around that optimum. Chen expressly states that “Optimizing membrane operating parameters involves
finding the equilibrium point between membrane flux and transmembrane pressure difference”, experimentally evaluates the change in transmembrane pressure at different initial fluxes, and observes that increased flux causes increasingly rapid increases in transmembrane pressure. Chen determines that, considering water-production capacity and operating economics, an initial flux of 31 L/(m2∙h) is appropriate and concludes that practical operation should be maintained around that optimum flux. Chen’s tested fluxes of 25-50 L/(m2∙h) correspond to approximately 0.81-1.61 times the identified 31 L/(m2∙h) optimum, entirely within the presently claimed range of 0.5-2.0 times optimum flux. Thus, it was known before Applicant’s filing to determine an optimum membrane flux experimentally from flux/TMP behavior and operate within a range surrounding that optimum.
Yuan further teaches characterizing UF membranes in pure water using the same two variables recited in the claimed K value, permeate flux and transmembrane pressure difference, and using that characterization for engineering design and optimization. Yuan defines clean-water membrane flux as J = Q / S and defines clean-water specific membrane flux according to the relationship between J and the UF transmembrane pressure difference ∆P (Yuan par. [0042-0044], see original disclosure for flux equation). Thus, although Yuan expresses the parameter as specific flux proportional to J/∆P, rather than Applicant’s reciprocal ∆P/J, the claimed K is directly obtainable merely by taking the reciprocal of the known pressure/flux relationship. Yuan further teaches monitoring clean-water flux and clean-water specific flux for different UF products to provide reasonable engineering-design parameters and to analyze membrane performance and optimize operating parameters (Yuan pars. [0045-0046]; see also pars. [0107-0108]). Showing that a person of ordinary skill in the art was taught to characterize different UF membranes in pure water according to their pressure/flux relationship and use that characterization to select engineering operating conditions.
Pall further teaches, for commercial UF modules specifically designed for ultra-high-purity water, the clean-water flux, transmembrane pressure , membrane area, and manufacturer-recommended design flux necessary to implement the above teachings. Pall’s March 2020 Microza OLT data sheet teaches that the OLT-6036 has a membrane area of 34 m2, an initial clean-water permeate flow of 16 m3/h at 0.1 MPa average transmembrane pressure, and a manufacturer-design flux of approximately 12.5 m3/h, stating expressly that “Design flux is 80% of this value” (Pall Data Sheet 78g, pp. 1-2). Using those expressly disclosed values, the clean-water flux is 16/34 = 0.4706 m/h; 0.1MPa corresponds to approximately 1.01797 kgf/cm2; and therefore, the claimed K = ∆P/J is approximately 2.17. Applying Formula (3) gives an optimum permeate water flux of approximately 0.408 m/h, such that the claimed 0.5-2.0 times interval is approximately 0.204-0.817 m/h. Pall’s expressly recommended design flux, 12.5/34 = 0.368 m/h, falls squarely within that range at approximately 0.90 times the Formula (3) optimum. Pall likewise provides corresponding pressure, area, clean-water-flow, and design-flux data for the OLT-3026, and those data similarly produce an operating flux within the presently claimed 0.5-2.0-times range.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Iiyama’s terminal UF operation in view of Fukui, Tamura, Motomura, Chen, Yuan and Pall by selecting recovery within the known 50%-<80% range for silica- and particle-containing UPW; treating the known ng/L-level iron and silica concentrations encountered in secondary UPW systems; characterizing the selected UF membrane according to its known transmembrane-pressure/permeate-flux relationship; and experimentally correlating that membrane characteristic with the known optimum/recommended operating flux, because Fukui teaches that recovery affects particle deposition at terminal UPW membranes, Tamura teaches that recovery below 80% improves silica control, Motomura teaches that ng/L-level iron reaches the downstream terminal-UF environment, Chen teaches determining and operating about an optimum flux based on TMP/flux behavior, Yuan teaches using the pressure/flux ratio of pure-water UF membranes as an engineering-design parameter, and Pall provides the actual pressure, clean-water flux, membrane area, and recommended design-flux values for commercial UPW UF modules. Determining the particular empirical constants of the optimum-flux correlation through routine testing and curve fitting of these known result effective variables would have amounted to optimization of known membrane operating parameters, and Pall’s pre-filing recommended operating point for the OLT-6036 independently falls within the claimed 0.5-2.0 times range when evaluated according to Formular (3), yielding the predictable result of stable UPW production while limiting impurity deposition and maintaining useful water production.
Regarding claim 3, modified Iiyama discloses or renders obvious the method for producing ultrapure water according to claim 1, wherein treated water of a non-regenerative mixed bed ion exchange resin device is used as water to be subjected to the filtration (Motomura pars. [0005], [0031] discloses a secondary pure water production apparatus in which water is treated by ion exchange device 25 and thereafter supplied to ultrafiltration membrane separator 26 and further teaches in par. [0039] that ion exchange device 25 is preferably a mixed-bed ion exchange device filled with cation and anion exchange resins and may be either regenerative or non-regenerative).
Regarding claim 6, modified Iiyama discloses or renders obvious an ultrapure water production apparatus, comprising: a primary pure water apparatus for producing primary pure water by treating raw water (Iiyama claim 12 pars. [0013-0014]); a secondary pure water apparatus for treating the primary pure water (Iiyama claim 12 pars. [0013-0014], [0024]); and a filtration membrane module having a filtration membrane at an end of the secondary pure water apparatus (Iiyama par. [0024] Fig. 5); wherein the filtration membrane is an ultrafiltration membrane, and filtration in the filtration membrane module is controlled to a condition satisfying both (1) and (2) below: (1) a permeate water flux of the filtration membrane module is within a range from equal to or more than 0.5 times to equal to or less than 2.0 times of an optimum permeate water flux (Chen teaches determining an optimum membrane flux from the relationship between membrane flux and transmembrane pressure difference and identifies 31 L/m2∙h) as the appropriate optimum operating flux, and experimentally operates from 25-50 L/(m2∙h), corresponding to approximately 0.81-1.61 times that optimum; Pall further teaches for a UF membrane specifically designed for ultra-high-purity water a manufacturer-recommended design flow of 12.5 m3/h through 34 m2 of membrane area, corresponding to a design flux of about 0.368 m/h) determined according to intermembrane differential pressure/permeate water flux in the filtration membrane module; wherein a K value is obtained by intermembrane differential pressure (Kgf/cm2)/permeate water flux(m/h) (Yuan teaches characterizing a UF membrane using permeate-water flux J and UF transmembrane pressure difference ∆P; the presently recited K = ∆P / J is the reciprocal expression of those same measured membrane parameters, and further teaches recording flow and pressure data for analysis and optimization of operating parameters), and the optimum permeate water flux is determined in accordance with Formula (3) according to the K Value: (3) optimum permeate water flux= -0.69log10(K) + 0.64 (Yuan establishes that the pressure/flux relationship is a known membrane-performance parameter to be used for engineering design and optimization, Chen establishes that optimum membrane flux was conventionally determined experimentally, and Pall supplies pre-filing clean-water TMP, permeate-flow, membrane area, and recommended design flow values for commercial UPW UF membranes; therefore determining an empirical correlation between the known pressure/flux characteristic and the known recommended optimum/design operating flux by routine data fitting would have been obvious to one of ordinary skill in the art; moreover using Pall’s disclosed OLT-6036 values of 0.1 MPa average TMP, 16 m3/h clean permeate flow, and 34 m2 membrane area gives K ≈2.17, Formula (3) gives an optimum flux of approximately 0.408 m/h, and Pall’s disclosed design flux of approximately 0.368 m/h is about 0.90 times that calculated optimum and therefore falls within the claimed 0.5-2.0 times range); and (2) a water recovery rate in the filtration membrane module is equal to or more than 50% and less than 80% (Fukui pars. [0057], [0069] teaches in the same terminal-UPW membrane environment that recovery ratio is an operating parameter requiring selection because excessively high recovery increase microparticle deposition on the membrane; while Tamura pars. [0010], [0026] teaches operating at a recovery rate of 80% or less, particularly 75% to 50% and teaches that silica concentration in the permeate rises rapidly when recovery exceeds 80%), wherein water to be subjected to the filtration has a resistivity equal to or more than 17 MΩ∙cm (Iiyama par. [0023]), an iron concentration of 3 ng/L to 100 ng/L (Motomura pars. [0011-0013], [0057-0058] teaches that metals arising in a secondary pure-water apparatus may form colloidal particles that are not removed by the ion-exchange device and are instead captured by the downstream UF membrane, and experimentally reports Fe concentration of at least 5 ng/L and 21 ng/L within the secondary UPW system), and a silica concentration of 100 to 1000 ng/L (Tamura par. [0029] teaches permeated water containing 0.2 µg/L silica, i.e., 200 ng/L, and further teaches subsequent ion-exchange treatment or UF membrane filtration to obtain ultrapure water (Tamura par. [0034]).
Regarding claim 7, modified Iiyama discloses or renders obvious the ultrapure water production apparatus of claim 6, comprising a water feed pump, a non-regenerative mixed bed ion exchange resin device, and the ultrafiltration membrane module in this order (Motomura pars. [0005], [0031] expressly discloses secondary pure water passing through pump 22, followed downstream by ion exchange device 25 and ultrafiltration membrane separator 26; and teaches in par. [0039] that ion exchange device 25 is preferably a mixed-bed ion exchange device and may be non-regenerative).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Iiyama (WO-2020209036-A1) in view of Fukui (US-20160220958-A1), Tamura (JP-H116660-A: An English machine translation is provided with this office action and is used for claim mapping in the prior art rejection below), Chen "Research on Contamination Control of Microfiltration Membranes for Reuse of Textile Dyeing Wastewater", and further in view of Yuan (CN-116585892-A: An English machine translation is provided with this office action and is used for claim mapping in the prior art rejection below), Pall Corporation, "Microza Ultrafiltration Modules OLT Series" Data Sheet 78g (March 2020) and Motomura (JP-2004167308-A) as applied to claim 1 above, and further in view of "The National Technology Roadmap for Semiconductors" (Semiconductor Industry Association, 1994) referred to hereafter as "the Roadmap".
Regarding claim 5, modified Iiyama discloses or renders obvious the method for producing ultrapure water according to claim 1, wherein the ultrapure water produced by the method has an iron concentration equal to or less than 1 ng/L (Motomura pars. [0053-0059]).
Modified Iiyama does not expressly disclose that the ultrapure water produced by the method has a silica concentration equal to or less than 20 ng/L.
The Roadmap teaches the semiconductor industry’s recognized need for extremely low contaminant concentrations in deionized water used in semiconductor manufacturing. In the section entitled “Fluid Purity” the Roadmap explains that increasingly small semiconductor feature sizes require improvements in the purity of liquid chemicals, including deionized water, and states that “by the year 2000, inline total organic carbon (TOC), nonvolatile residue, and silica and metals levels below 0.01 ppb are needed for deionized water (DI water)”. The Roadmap further identifies source purification, point-of-use purifiers, and filters among the potential solutions for attaining the required purity. A silica concentration below 0.01 ppb corresponds to below 10 ng/L, which is more stringent than and therefore falls within the claimed requirement of a silica concentration equal to or less than 20 ng/L. The Roadmap is a 1994 Semiconductor Industry Association publication reflecting industry-wide semiconductor technology needs and potential solutions.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to further modify the ultrapure-water production method of Iiyama, as modified by Fukui, Tamura, Chen, Yuan, Pall and Motomura, to produce ultrapure water having a silica concentration equal to or less than 20 ng/L, because the Roadmap expressly identified silica concentrations below 0.01 ppb (10 ng/L) as a needed purity level for semiconductor DI water and identified purification and filtration as known approaches for obtaining such purity. A person of ordinary skill in the art seeking to employ the ultrapure-water system for its expressly contemplated semiconductor application would therefore have been motivated to operate and configure the known purification system so that the water delivered after terminal polishing satisfies the recognized semiconductor-industry contaminant requirements. Motomura independently demonstrates that the same type of secondary ultrapure-water system terminating in UF was capable of producing water having an iron concentration substantially below the claimed 1 ng/L limit. Thus, selecting and adjusting the known purification conditions to obtain the recited final iron and silica concentrations would have amounted to the predictable application of known ultrapure-water purification techniques to satisfy known semiconductor-water purity requirements, with a reasonable expectation of success.
Conclusion
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/W.A.G./ Examiner, Art Unit 1779
/Bobby Ramdhanie/ Supervisory Patent Examiner, Art Unit 1779
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