DETAILED ACTION
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 statements (IDS) submitted on 4/8/2025 have been considered by the examiner.
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 1-20 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 1 recites the limitation "the membrane" in line 3. There is insufficient antecedent basis for this limitation in the claim. Is it referring to “a membrane system” or “a membrane”. For examination purposes, it will read as “a membrane”.
Due to their dependency from claim 1, claims 2-20 are also rejected under 112 paragraph b.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schacht et al. (PG Pub U.S 2009/0200234) and further in view of Salonen et al. (EP 2609990).
Regarding claim 1, Schacht teaches a method for removing biofilm, microorganisms and mineral deposits in a membrane system (abstract) comprising: contacting the membrane with a peroxyformic acid composition (para 0040 and 0056) formic acid (para 0056), hydrogen peroxide (para 0050), C2-C₂₂ carboxylic acid (para 0054 and 0056), and C2-C₂₂ peroxycarboxylic acid (para 0047-0049); wherein the peroxyformic acid composition is membrane compatible (claims 12-13 and para 0068, 0070, and 0074) and does not damage the membrane (para 0065 and 0095) as measured by a decrease in flux of the membrane (para 0006 and 0065); removing and killing biofilm and microbial growth from a surface of the membrane (para 0039, 0125 and 0135); and sanitizing the membrane (para 0131 and 0135).
Although Schact teaches the composition comprising formic acid and hydrogen peroxide, it fails to specifically teach it comprising peroxyformic acid. However, Salonen also teaches treatment of membrane using a composition wherein it is known to use peroxyformic acid which was formed by mixing formic acid and hydrogen peroxide (claim 5 and para 0033) in order to prevent/remove microbial growth. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schacht such that the composition comprises peroxyformic acid which is made by mixing formic acid and hydrogen peroxide as taught by Salonen in order to prevent/remove microbial growth.
Regarding claim 2, the present combination of Schacht and Salonen teaches wherein the peroxyformic acid composition further comprises a catalyst (para 0032 of Schacht), wherein the catalyst is a mineral acid (para 0054 of Schacht) and/or an enzyme catalyst (para 0057 of Schacht).
Regarding claim 3, the present combination of Schacht and Salonen teaches wherein the mineral acid is sulfuric acid (para 0054 of Schacht).
Regarding claim 4, the present combination of Schacht and Salonen teaches wherein the peroxyformic acid composition further comprises an enzyme (para 0057 of Schacht).
Regarding claim 5, the present combination of Schacht and Salonen teaches wherein the enzyme is a catalase (para 0057 of Schacht).
16. Regarding claim 6, the present combination of Schacht and Salonen teaches wherein the peroxyformic acid composition further comprises an additional oxygen source (para 0040 of Schacht).
17. Regarding claim 7, the present combination of Schacht and Salonen teaches wherein the additional oxygen source comprises a percarbonate (para 0047 of Schacht).
18. Regarding claim 8, the present combination of Schacht and Salonen teaches wherein the peroxyformic acid composition further comprises at least one surfactant (para 0072-0074 of Schacht).
19. Regarding claim 9, the present combination of Schacht and Salonen teaches wherein the at least one surfactant is a nonionic and/or an anionic surfactant (para 0075 and 0080 of Schacht).
20. Regarding claim 10, the present combination of Schacht and Salonen teaches wherein the concentration of hydrogen peroxide is about 5% (w/w) or less (para 0041-0042, 0045-0046 and 0050 of Schacht).
21. Regarding claim 11, the present combination of Schacht and Salonen teaches wherein the concentration of hydrogen peroxide is between about 4.5% (w/w) to about 0.001% (w/w). (para 0041-0042, 0045-0046 and 0050 of Schacht).
22. Regarding claim 12, the present combination of Schacht and Salonen teaches wherein the concentration of hydrogen peroxide is between about 0% (w/w) to about 0.001% (w/w). (para 0050, 0072 and 0094 of Schacht and taught by embodiments having no hydrogen peroxide).
23. Regarding claim 13, the present combination of Schacht and Salonen teaches wherein the concentration of hydrogen peroxide is maintained for about 1 hour (para 0126-0129 of Schacht).
24. Regarding claim 14, the present combination of Schacht and Salonen teaches wherein the peroxyformic acid composition is generated in situ (claim 5 and para 0033 of Salonen).
25. Regarding claim 15, the present combination of Schacht and Salonen teaches wherein the peroxyformic acid composition is generated in situ by contacting the formic acid and the hydrogen peroxide to generate the peroxyformic acid (claim 5 and para 0033 of Salonen).
26. Regarding claim 16, the present combination of Schacht and Salonen teaches wherein the formic acid and the hydrogen peroxide are contacted in the presence of the C2-C₂₂ carboxylic acid (claim 5 and para 0033 of Salonen and based on combination in claim 1 above).
27. Regarding claim 17, the present combination of Schacht and Salonen teaches wherein the C2-C₂₂ carboxylic acid is acetic acid (para 0054 and 0056 of Schacht).
28. Regarding claim 18, the present combination of Schacht and Salonen teaches wherein the C₂-C₂₂ peroxycarboxylic acid is peroxyacetic acid (para 0050 of Schacht).
29. Regarding claim 19, the present combination of Schacht and Salonen teaches wherein the membrane is a reverse osmosis membrane (para 0123 and 0125 of Schacht).
30. Regarding claim 20, the present combination of Schacht and Salonen teaches wherein the membrane comprises cellulose (para 0124 of Schacht).
Conclusion
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/P.P/Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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