DETAILED ACTION
This action is in response to an application filed with the US on 10/16/2024 and having an Effective Filing Date of 10/16/2023, in which claims 1-20 are pending and ready for examination.
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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 16 OCTOBER 2024, 24 OCTOBER 2025 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.
Claim 5 is 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.
Claim 5 recites the limitation “the shore D Hardness test method”. There is insufficient antecedent basis for this limitation in the claim. Further, it is not clear if this is any Shore D test method or some specific Shore D test method. Correction is required.
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, 6-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0133654 A1 (hereinafter “Kodama”) in view of US 2022/0315818 A1 (hereinafter “Jin”).
Regarding Claim 1 Kodama discloses a spiral wound membrane filter comprising an outer shell, the outer shell comprising: a. a reinforcement member/material, and b. an adhesive composition (epoxy), wherein the adhesive composition has a viscosity of no greater than 10,000 cP; Abstract, [0040], [0086]
While it is not disclosed that the viscosity is specifically “when measured at 23 °C according to ASTM D1084 Test Method B”, however, it would have been obvious to provide a viscosity as disclosed (5000-45,000 cP) according any known viscosity measuring method and at room temperature (i.e. ~23°C), including according to ASTM D1084 Test Method B.
Kodama does not disclose the adhesive is an acrylate adhesive composition comprising a multifunctional (meth)acrylate.
However Jin discloses an (meth)acrylate adhesive composition comprising a multifunctional (meth)acrylate that is used for assembling spiral membrane modules, which is able to cure quickly and provide a tack-free surface short UV exposure, while maintaining integrity and adhesion when subjected to bending forces and high pH solutions; Abstract, [0003-]-[0005], [0050]-[0051], [0054]-[0055], [0084], [0112].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the spiral wound membrane filter of Kodama by using the (meth)acrylate adhesive composition of Jin because this involves the simple substitution of adhesives known for assembling spiral wound membrane to obtain the predictable result of forming a successful spiral wound membrane filter and because the adhesive is able to cure quickly and provide a tack-free surface short UV exposure, while maintaining integrity and adhesion when subjected to bending forces and high pH solutions.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 2 Kodama in view of Jin discloses the spiral wound membrane filter of claim 1 wherein the acrylate adhesive composition comprises (see Jin Table in [0084]):
a. 0-80% by weight of urethane (meth)acrylate oligomer (i.e. which may be a difunctional (i.e. multifunctional) urethane (meth) acrylate oligomer, Jin [0054]),
b. 0-30% by weight of a (meth) acrylate monomer, and
c. 0.01-10% by weight of a photo initiator.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 6 Kodama in view of Jin discloses the spiral wound membrane filter of claim 1 wherein the multifunctional (meth) acrylate is selected from the group consisting of (meth) acrylate oligomer, (meth)acrylate monomer and combinations thereof; Jin [0050]-[0051], [0054]-[0055], [0084].
Regarding Claim 7 Kodama in view of Jin discloses the spiral wound membrane filter of claim 2 wherein the multifunctional (meth) acrylate oligomer may be urethane acrylate; Jin [0054]-[0055], [0084].
Regarding Claim 8 Kodama in view of Jin discloses the spiral wound membrane filter of claim 2 wherein the multifunctional (meth) acrylate oligomer may comprise an aliphatic urethane acrylate; Jin [0054]-[0055].
Regarding Claim 9 Kodama in view of Jin discloses the spiral wound membrane filter of claim 2 wherein the (meth)acrylate monomer comprises an aliphatic acrylate; Jin [0050]-[0053].
Regarding Claim 10 Kodama in view of Jin discloses the spiral wound membrane filter of claim 2 wherein the (meth)acrylate monomer comprises isobornyl acrylate monomer; Jin [0052], [0087].
Regarding Claim 11 Kodama in view of Jin discloses the spiral wound membrane filter of claim 2 wherein the (meth) acrylate monomer comprises one or more (i.e. at least two) (meth) acrylate monomers; Jin [0050].
Regarding Claim 12 Kodama in view of Jin discloses the spiral wound membrane filter of claim 11 wherein the at least two (meth)acrylate monomers may comprise a monofunctional monomer and a multifunctional monomer; Jin [0050].
Regarding Claim 13 Kodama in view of Jin discloses the spiral wound membrane filter of claim 1 wherein the reinforcement member/material “includes a glass fiber impregnated with epoxy resin” Kodama [0040]; as the glass fiber is referred to as a single fiber, it is seen to be obvious to use a continuous fiberglass strand.
Regarding Claim 14 Kodama in view of Jin discloses the spiral wound membrane filter of claim 1 wherein Jin discloses the adhesive composition may be a one part [0023]-[0024] and is not disclosed to include solvents, and thus the acrylate adhesive composition is a one part having 100% solids; see Jin Table in [0084], Samples A and B [0106].
Regarding Claim 15 Kodama discloses a method of making the outer shell of a spiral wound membrane filter comprising the following steps:
a. obtaining an adhesive composition having a viscosity of no greater than 10,000 cP;
b. passing at least one continuous strand of reinforcement material through the acrylate adhesive composition (this is not disclosed directly but is obviously and/or inherently necessary in order to impregnate the fiber),
c. wrapping the continuous strand around the outside circumference, along the entire length of the spiral wound membrane filter, where after the reinforcement member is wound around the wound body it is then cured; Abstract, [0040], [0086]
Kodama does not disclose the adhesive composition comprises an acrylate adhesive composition comprising a multifunctional (meth)acrylate and an initiator, or d. exposing the continuous strand of reinforcement material coated with the acrylate adhesive composition to an energy source at a time selected from during wrapping, after wrapping and a combination thereof.
However Jin discloses an (meth)acrylate adhesive composition comprising a multifunctional (meth)acrylate that is used for assembling spiral membrane modules, which is able to cure quickly and provide a tack-free surface short UV exposure, while maintaining integrity and adhesion when subjected to bending forces and high pH solutions; Abstract, [0003-]-[0005], [0050]-[0051], [0054]-[0055], [0084], [0112]. Jin further discloses that the (meth)acrylate adhesive composition is cured by UV light after applying the adhesive to the membrane; Abstract, [0067].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the spiral wound membrane filter of Kodama by using the (meth)acrylate adhesive composition of Jin because this involves the simple substitution of adhesives known for assembling spiral wound membrane to obtain the predictable result of forming a successful spiral wound membrane filter and because the adhesive is able to cure quickly and provide a tack-free surface short UV exposure, while maintaining integrity and adhesion when subjected to bending forces and high pH solutions.
Wherein since the (meth)acrylate adhesive composition is cured by UV (Jin, supra), and the adhesive is cured after the reinforcement member is wound around the wound body it is then cured (Kodama, supra), in the combined invention it would have been obvious to expose the continuous strand of reinforcement material coated with the acrylate adhesive composition to UV light (an energy source) after wrapping, in order to cure it.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 16 Kodama in view of Jin discloses the method of claim 15 wherein the continuous strand of reinforcement material is fiberglass (Kodama [0040]), and the energy source is ultraviolet light (Jin Abstract, [0067]).
Regarding Claim 17 Kodama in view of Jin discloses the method of claim 15 wherein the acrylate adhesive composition comprises (see Jin Table in [0084]):
a. 0-80% by weight of urethane (meth)acrylate oligomer (i.e. which may be a difunctional (i.e. multifunctional) urethane (meth) acrylate oligomer, [0054]),
b. 0-30% by weight of a (meth) acrylate monomer, and
c. 0.01-10% by weight of a photo initiator.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 19 Kodama in view of Jin discloses the method of claim 15 wherein the energy source is ultraviolet light; Jin Abstract, [0067]).
Regarding Claim 20 Kodama in view of Jin discloses the spiral wound membrane filter of claim 2 wherein the multifunctional (meth)acrylate oligomer may be urethane acrylate (Jin [0054]-[0055]) and the (meth)acrylate monomer may comprise an aliphatic acrylate (Jin [0050]-[0053]).
Claims 3-4 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama in view of Jin in view of US 2016/0096144 A1 (hereinafter “Harris”).
Regarding Claim 3 and 18 Kodama in view of Jin discloses the spiral wound membrane filter of claim 1, and the method of claim 15, but does not disclose wherein the acrylate adhesive composition has a viscosity of no greater than 2,500 cP when measured as 23°C according to ASTM D1084 Test Method B, or (claim 4) wherein the acrylate adhesive composition has a viscosity of no greater than 1,500 cP when measured as 23°C according to ASTM D1084 Test Method B.
However Harris discloses a similar curable composition (i.e. an acrylate adhesive composition) that is used for assembling spiral membrane modules, which may include (meth)acrylate monomers and oligomers, and which has a viscosity of 1000-100,000 at 25°C in order that it is suitable/workable to apply for assembly of the membrane module; Abstract, [0008], [0031], [0036], [0049]-[0052], [0068]-[0069], Table 2.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the acrylate adhesive composition of Kodama in view of Jin to have a viscosity of 1000-100,000 at 25°C as disclosed by Harris because this is a known useful viscosity of similar acrylate adhesive compositions used for assembling membrane modules and would therefore be reasonably expected to result a successful membrane filter.
While it is not disclosed that the viscosity is specifically “when measured at 23 °C according to ASTM D1084 Test Method B”, however, it would have been obvious to provide a viscosity as disclosed (1000-100,000 cP) according any known viscosity measuring method including according to ASTM D1084 Test Method B, and the viscosities are measured at 25 °C, which is only 2° different for that claimed, and it would thus be expected to still overlap the range claimed when measured at room temperature (i.e. ~23°C), including according to ASTM D1084 Test Method B.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kodama in view of Jin in view of US 2016/0096142 A1 (hereinafter “Harris2”).
Regarding Claim 5 Kodama in view of Jin discloses the spiral wound membrane filter of claim 1, but does not disclose wherein the acrylate adhesive composition has a Shore D Hardness of from 60 to 100 as tested according to the Shore D Hardness test method.
However, Harris2 discloses a curable composition (i.e. an acrylate adhesive composition) that is used for assembling membrane modules, where the curable composition has high hardness when cured, including a Shore D hardness no less than 40, or no less than 50 [0031], according to a Shore D test method [0089].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the acrylate adhesive composition of Kodama in view of Jin to have a cured Shore D hardness of no less than 50 as disclosed by Harris2 because this is a known useful hardness of similar acrylate adhesive compositions used for assembling membrane modules and would therefore be reasonably expected to result a successful membrane filter.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
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.
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, Benjamin L Lebron can be reached at 571-272-0475. 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.
/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
