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 .
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.
Claims 6, 8-17 and 19 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 regards as the invention.
In claim 6, “desired properties” is an indefinite relative or arbitrary phrase and of vague and unclear scope as to what criteria of respective graphene layer properties constitutes a desired degree or extent of such property.
In claim 8, “nonsolvent induced phase separation form…” is grammatically unclear as to whether a component of the polymer doped solution or a step of phase separation is being recited.
In claim 9, and claims 10-17 dependent therefrom, “excess glycerol” is an indefinite relative or arbitrary phrase and of vague and unclear scope as to what amount of glycerol, constitutes an excessive amount of glycerol.
In claim 16, it is unclear whether “forming a UF membrane” refers back to the same membrane introduced in claim 9 which is disclosed in the “immersing an ultrafiltration (UF) membrane.
Claim 19 contains the trademark/trade name “PES Veradel”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a type of poly(ethersulfone) or PES and, accordingly, the identification/description is indefinite.
Claim Objections
Claims 7 and 14 are objected to because of the following informalities: In each of claims 7 and 14 “carbon dioxide” is inappropriately capitalized as “Carbon dioxide”. Appropriate correction is required.
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.
(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.
Claim 18 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by patent publication CN 104548973, and the accompanying Escapenet English translation (‘973).
Referenced paragraph numbers of the Descriptions of the applied Escapenet English translation are identified with “[ ]” symbols.
For claim 18, Publication ’973 discloses: A filter comprising:
a poly(ethersulfone) (PES) UF membrane (translation at [0002-0005 and 0034] regarding graphene and polyethersulfone forming a composite UF membrane) ;
a graphene layer formed on the PES membrane ([0041] re the membrane having a dense layer and a surface layer of the composite, each including graphene);
a microporous structure associated with the graphene layer [0005 and 0009 re the membrane being an ultrafiltration membrane, hence “microporous” and the structure formed in a casting solution having polyvinylpyrrolidone pore-forming agent]; and
a bottom surface (figures 1 and 2 illustrating the membrane having a top and a bottom surface defining the edges of layers of the membrane, and ([0041] re the membrane having a dense layer and a surface layer of the composite, each including a bottom surface).
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.
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 1-5, 9-12, 15, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over patent publication CN 104548973, and the accompanying Escapenet English translation (‘973) in view of Tour et al PGPUBS Document US 2019/0330064 (Tour).
Referenced paragraph numbers of the Descriptions of the applied PGPUBS Document and the Escapenet English translation are identified with “[ ]” symbols.
For independents claim 1 and 9, Publication ‘973 discloses: A filter fabrication method comprising:
forming a ultrafiltration (UF) membrane (translation at [0002-0005 and 0034] regarding graphene and polyethersulfone forming a composite UF membrane]); and
immersing the UF membrane in a glycerol solution [0033-0034 re placing the membrane-forming material in a casting solution containing glycerol, placed into a bath]; and
for claim 9, also removing excess glycerol from the UF membrane [0034 re removing the residual solvent, i.e. including glycerol from the film or UF membrane].
Claims 1 and 9, and claims dependent on claims 1 and 9, differ from ‘973 by requiring the method as comprising lasing a surface of the membrane. Tour teaches such membrane surface lasing to form a porous, graphene layer on the surface of a polymeric material comprising polyethersulfone [0012, 0017 and 0091-0095 for forming laser-induced graphene on the surface of a material comprising polyethersulfone] and such laser-induced graphene-containing material being utilized in water-oil separation processes [0052 and 0090].
Tour at [0010] concerns an expanded range of properties of laser-induced graphene on the surfaces of the material including tuning of the hydrophobicity and hydrophilicity of the material to optimize the material’s performance when utilized in oil water separation
It would have been obvious to one of ordinary skill in the filter fabrication arts to have modified the method of ‘973, by including such lasing step, as taught by Tour, so as to advantageously tune the hydrophobicity and hydrophilicity of the material to optimize the material’s performance when utilized in oil water separation {Tour at [0010] concerning an expanded range of properties of laser-induced graphene on the surfaces of the material including tuning of the hydrophobicity and hydrophilicity of the material to optimize the material’s performance when utilized in oil water separation }.
For claim 2, ‘973 further or specifically discloses wherein the membrane comprises poly(ethersulfone) (translation at [0002-0005 and 0034] regarding graphene and polyethersulfone forming a composite UF membrane]).
For claims 3, 4, 10 and 11, Tour further teaches wherein the lasing further comprises lasing a top or bottom surface of the membrane [0010 re laser-induced graphene (LIG) tuning of hydrophobicity and hydrophilicity of the LIG surfaces, as well as optimizing wetting properties of the material due to the created surface morphology].
Such lasing of top or bottom surface of the membrane would have advantageously further optimized the hydrophobicity and hydrophilicity of the LIG surfaces, as well as optimized wetting properties of the material due to the created surface morphology as taught by Tour at [0010].
For claims 5 and 12, ‘973 and Tour cumulatively teach lasing a surface as forming a graphene layer on the membrane surface (‘973 at [0041] re the membrane having a dense layer and a surface layer of the composite, each including graphene, and Tour at [0010 re laser-induced graphene (LIG) tuning of hydrophobicity and hydrophilicity of the LIG surfaces, as well as optimizing wetting properties of the material due to the created surface morphology]).
Thus, such lasing a surface as forming a graphene layer on the membrane surface, would have optimized or further optimized, when the membrane is utilized in oil from water separations.
For claim 8, ‘973 further suggests wherein the membrane forming further comprises a step of a nonsolvent induced phase separation form (“from”) a polymer doped solution [0027-0029 re adding of hexanol and tritylpropane cobalt nitrate hexahydrate polymer so as to form a uniformly dispersed suspension, so as to centrifugally separate out a phase of hexanol, thus such material functioning as a .
For claim 15, ‘973 further discloses or suggests drying the UF membrane after excess glycerol is removed [0029 re drying of graphite oxide precursor to forming of graphene being dried from the remainder of the mixture in a vacuum drying oven] and [0033 re freezing and drying to obtain a functionalized graphene oxide/polyether sulfone blend ultrafiltration membrane.
Claim 20 also differs from ‘973 by requiring wherein the graphene layer is formed by lasing the PES membrane.
Tour teaches such membrane surface lasing. Tour further teaches wherein the lasing further comprises lasing a top or bottom surface of the membrane [0010 re laser-induced graphene (LIG) tuning of hydrophobicity and hydrophilicity of the LIG surfaces, as well as optimizing wetting properties of the material due to the created surface morphology].
Such lasing of top or bottom surface of the membrane would have advantageously further optimized the hydrophobicity and hydrophilicity of the LIG surfaces, as well as optimized wetting properties of the material due to the created surface morphology as taught by Tour at [0010].
Claims 6, 7, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over patent publication CN 104548973, and the accompanying Escapenet English translation (‘973) in view of Tour et al PGPUBS Document US 2019/0330064 (Tour), as applied to claims 1-5, 9-12, 15, 16 and 20 above, and further in view of Shafaei et al PGPUBS Document US 2020/0087466 (Shafaei).
Referenced paragraph numbers of the Descriptions of the applied PGPUBS Documents and the Escapenet English translation are identified with “[ ]” symbols.
Claims 6 and 13 further differ from ‘973 in view of Tour, by requiring adjusting parameters of a laser according to desired properties of the graphene layer.
Shafaei further teaches such adjusting parameters of a laser according to desired properties of the nanocomposite layers comprising graphene in a process for producing a polymer/graphene nanocomposite (Shafei at [0029, 0055 and 0087 re forming of the nanocomposite], [0025, 0054 and 0065 re use of a carbon dioxide infrared laser], motivation of such lasing being to improve production of 3-dimensional pores [0079], and improve hydrophobicity [0024], adjusting of laser parameters according to desired properties of nanocomposite [0059], for wide variety of articles [0060].
It would have been further obvious to the skilled artisan to have further modified the method of ‘973 in view of Tour, by such adjusting laser properties, since Shafaei teaches such adjusting as advantageously, improving production of 3-dimensional pores of the material, and improving hydrophobicity of the material.
Claims 7 and 14 further differ from ‘973 in view of Tour, by requiring the lasing as further comprising applying a laser comprising a Carbon dioxide infrared laser.
Shafaei teaches such form of laser applied in forming nanocomposite polymer/graphene layers of a polymer/graphene nanocomposite. See again, (Shafei at [0029, 0055 and 0087 re forming of the nanocomposite], [0025, 0054 and 0065 re use of a carbon dioxide infrared laser], and regarding motivation of such lasing being to improve production of 3-dimensional pores [0079], and to improve hydrophobicity [0024]
It would have been further obvious to the skilled artisan to have further modified the method of ‘973 in view of Tour, by utilizing a Carbon dioxide infrared laser, as the type of laser applied, since Shafaei teaches such form of laser as advantageously, improving production of 3-dimensional pores of the composite [0079], and improving hydrophobicity of the nanocomposite.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over patent publication CN 104548973, and the accompanying Escapenet English translation (‘973) in view of Tour et al PGPUBS Document US 2019/0330064 (Tour), as applied to claims 1-5, 9-12, 15, 16 and 20 above, and further in view of DiNicolo et al PGPUBS Document US 2019/0177539 (DiNicolo).
Claim 8 further differs by requiring wherein forming the membrane further comprises a non-solvent induced phase separation form (or “from”) a polymer doped solution.
DiNicolo teaches formation of microfiltration or ultrafiltration separation membranes for many different water and gas separation applications [0003-0005], the membranes optionally being polyethersulfone or PES membranes [0092, 0093], in which the mixture is produced with a dope solution containing a polymer, solvent and additives and also a non-solvent medium for non-solvent induced phase separation (NIPS) , usually with water, surfactants and/or alcohol [0007], [0192] and [0210], [0210 regarding use of a solvent/non-solvent mixture in any of various preparation steps advantageously allowing controlling the morphology of the final porous membrane, including its average porosity.
Thus, it would have been further obvious to one of ordinary skill in the art of producing membranes, to have included such membrane forming step of utilizing non-solvent induced phase separation, as taught by DiNicolo, to allow controlling the morphology of the final porous membrane, including its average porosity.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over patent publication CN 104548973 (‘973), and the accompanying Escapenet English translation (‘973) in view of DiNicolo et al PGPUBS Document US 2019/0177539 (DiNicolo).
Referenced paragraph numbers of the Descriptions of the applied PGPUBS Document and the Escapenet English translation are identified with “[ ]” symbols.
Claim 19 further differs by requiring wherein the membrane is specifically, a PES Veradel 3000P Mw ~65,000 g mol-1.
DiNicolo teaches providing of UF or MF membranes [0003-0006] and teaches such particular PES membrane material [0092, 0093 and 0326 re PES Veradel 3000P Mw membranes, inherently being ~65,000 g mol-1]. DiNicolo has an underlying objective of providing membranes with controlled morphology, and controlled average porosity [0210].
It would have been additionally obvious to the skilled artisan to have utilized such material in the membrane of publication ‘973, as taught by DiNicolo, so as to provide a membrane with controlled morphology, and controlled average porosity [0210].
Allowable Subject Matter
Claim 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 17 would be distinguished and been non-obvious over all of the prior art in view of recitation of wherein forming the UF membrane further comprises: dissolving poly(ethersulfone) (PES) in N-Methyl-2-Pyrrolidone (NMP) to create a solution;
cooling the solution to room temperature; in view of further recitation of:
removing air bubbles from the solution;
spreading the solution on a substrate;
immersing the solution on the substrate in a water coagulation bath; and
removing residual solvent. The prior art does not suggest such combination of method steps for forming a UF membrane, particularly removing air bubbles from the solution; and immersing the solution on the substrate in a water coagulation bath; and
removing residual solvent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Of particular interest , publication WO 2006/016573A1 teaches some of the method step limitations of claim 17, regarding dissolving of components in a coagulation bath.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner Joseph Drodge at his direct government formal facsimile phone number telephone number of 571-272-1140. The examiner can normally be reached on Monday-Friday from approximately 8:00 AM to 1:00PM and 2:30 PM to 5:30 PM.
If attempts to reach the examiner are unsuccessful, the examiner' s supervisor, Benjamin Lebron, of Technology Center Unit 1773, can reached at 571-272-0475.
The telephone number, for official, formal communications, for the examining group where this application is assigned is 571-273-8300.
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JWD
08/21/2026
/JOSEPH W DRODGE/Primary Examiner, Art Unit 1773
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