www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/294,601
`
`05/17/2021
`
`Lucas D. McINTOSH
`
`81005US005
`
`2366
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`BRADY, ALEXANDRIA MARIE
`
`ART UNIT
`
`1779
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/13/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`LegalUSDocketing@mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/294,601
`McINTOSH etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`ALEXANDRIA M BRADY
`1779
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 01/02/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-7 and 9-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-7 and 9-20is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 05/17/2021 is/are: a)[¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [[] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240228
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA orAIA Status
`
`1.
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`2.
`
`Applicant's argumentsfiled 01/02/2024 have been fully considered.
`
`Response to Arguments
`
`Claim Objections
`
`3.
`
`On page 6 of Applicant’s response, Applicant amendsthe claims accordingly and the objections
`
`are withdrawn.
`
`Claim Rejections - 35 USC § 112
`
`4.
`
`On page 6 of Applicant’s response, Applicant amendsthe claims accordingly and the rejections
`
`are withdrawn.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`On pages 8-10 of Applicant’s response, regarding amended claim 1, Applicant argues that none
`
`of the referencesdisclose “wherein the melt-fused skin layer has a depth and the depth extends for 500
`
`nanometers or less” because Song mentions radiation as anadditional step and does not mention
`
`generation of theskin layer due to the additional step, andtherefore the thickness of the skin layer is
`
`not comparable with the melt-fused skin layer generated by exposure to UV light. This argumentis not
`
`persuasive because Songdiscloses that the additional process can occur at any stage of manufacture
`
`(par [(0099]) and par [0084] does not limit the thicknesses to any certain process /features. Infact, par
`
`[0084] discloses several features of the skin such as highly permselective and/or highly sorptive toward
`
`permeating species, adhesive, printable, sealable, wettable, or conductive tocurrent and ions. The skin
`
`layer may also provide a diffusion pathway foror barrier against substances to be sorbed, support the
`
`core layer, or protect the multilayer structure. Wang disclosesfirst and second skin surfaces of
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 3
`
`polysulphone membranesand that the surfaces can be treated with UV light. Further, as disclosed by
`
`Rupiasih, when exposing polysulphone surfaces to UV light, the layer becomes molten (figure 11 of
`
`Rupiasih, appearing molten). Song also discloses skin layers (par [0084]) that can be exposed to radiation
`
`treatment (par [0099]), and that having a thickness of less than1 nm would be beneficial for supporting
`
`the core layers and protecting multilayer structures (par [0084]).
`
`6.
`
`On page 11 of Applicant’s response, regarding amended claim 1, Applicant argues that one
`
`skilled in the art would not be motivated to combine Song with modified Wang because the membrane
`
`of Wang is made using casting or extruding polymer solutions in thin films, while Song is manufactured
`
`in a single-step process while preparing a multilayer coextrudate. This argumentis not persuasive
`
`because claim 1 does not recite features for the preparation of the membrane. Also, see the reasons
`
`above regarding the thickness and reasons for combining. Please see the new prior art rejection below.
`
`7.
`
`On pages 12-14 of Applicant’s response, regarding amended claim 12, Applicant argues that
`
`Wang, Rupiasih, and Zhou do not disclose “exposing the first outer surface to a pulsed ultra-violet
`
`flashlamp radiation, thereby generating a melt-fused skin layer, whereby the poresin the first surface
`
`are increasedin size after exposure to the pulsed ultra-violet flashlamp radiation” because Zhou
`
`discloses irradiation of the membraneafter coating. This argumentis not persuasive because Zhouis
`
`relied upon for the flashlamp, and also because the coating of Zhouis an outer porous surface of the
`
`membrane of Zhou which could alsocorrespond to the claimed skin layer.
`
`8.
`
`Applicant argues that one of ordinary skill in the art would not be motivated to combine Wang
`
`and Zhou because the methods of manufacturing are different. This argument is no persuasive because
`
`claim 12 does not recite features for the manufacturing of the membrane.
`
`9.
`
`In summary, Rupiasih discloses pore sizes increasing ina polysulfone membrane after exposure
`
`to UV light and the membrane having a molten appearance. Wangdisclosesfirst and second skin
`
`surfaces of polysulphone membranes and that the surfaces can be treated with UV light. Therefore, the
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 4
`
`combination discloses that when polysulphone (skin layer of Wang) is exposed to UV light, the surface
`
`can appear molten and the pore size increases. The combination including Zhou discloses that using a
`
`flashlamp for the UV source would be beneficial for more control and protection of the membrane.
`
`Response to Amendment
`
`Claim Rejections - 35 USC § 103
`
`10.
`
`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 forthin 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.
`
`11.
`
`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.
`
`12.
`
`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumesthat 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 effectivefiling dates of each claim that
`
`was not commonly ownedas of the effectivefiling 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.
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page5S
`
`13.
`
`Claims 1, 2, 4,5, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang
`
`(US 2013/0256229 A1), in view of Rupiasih (Study of Effects of Low Doses UV Radiation on
`
`Microporous Polysulfone Membranesin Sterilization Process), and in further view of Song (US
`
`2018/0065105 A1). The combination of Wang in view of Rupiasih and Songwill be referred to as
`
`“modified Wang.”
`
`14.
`
`Regarding claim1, Wang discloses a membrane (synthetic polymer membranes, par [0001])
`
`comprising: a first outer surface having a plurality of pores in a skin layer (second microporous surface
`
`with second microporousskin surface, par [0005], figure 2); the plurality of pores having a closed
`
`perimeter in the skin layer (see closed perimeter of pores in figure 2); a second outer surface(first
`
`microporous skin surface, par [0005], figure 2); a porous supporting layer connecting the first outer
`
`surface to the second outer surface (bulk between first and second surfaces, par [0005], figure 2); and
`
`wherein thefirst outer surface comprises a melt-fused skin layer from exposure to ultra-violet light
`
`(surface of the membrane can be modified with ultraviolet light, par [0052]).
`
`15.
`
`However,it is not clearthat a surface layer exposed to UV light at a certaintemperature would
`
`melt and/or fuse and Wang does not disclose wherein the melt-fused skin layer has a depth and the
`
`depth extends for 500 nanometersor less.
`
`16.
`
`However, Rupiasih discloses UV irradiation of polysulfone membranes(abstract). Rupiasih also
`
`discloses SEM images of the membraneafter being exposed to UV light after certain times(figure 11)
`
`and that the poresize increases (Section 3.3). Therefore, one of ordinary skill in the art would recognize
`
`that a surface layer exposed to UV light ata certain temperature would melt and/or fuse based on the
`
`increase in pore size and the membranesurfacesin figure 11 appearing molten. It would have been
`
`obvious to one of ordinary skill in the art before the effectivefiling date of the claimed invention to have
`
`incorporated the melting like that of Rupiasih into the membrane of Wang since Wang alsodiscloses
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 6
`
`polysulfone membranes(par [0015]) and Rupiasih discloses UV light exposure on the surface of a
`
`polysulfone membranes appears to cause melting or a molten appearance.
`
`17.
`
`However, Wang in view of Rupiasihdoes not disclose wherein the melt-fused skin layer has a
`
`depth and the depth extends for 500 nanometersorless.
`
`18.
`
`However, Song discloses a multilayer polymeric membrane (par [0002]). Song alsodiscloses a
`
`depth and the depth extends for less than or equal to 1 nm,(par [0084], layers 14 or 15, figure 1c),
`
`which falls within the claimed range of 500 nanometersorless). It would have been obvious to one of
`
`ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the
`
`skin depth like that of Song into the membrane of Wangin view of Rupiasih because Wang, Rupiasih,
`
`and Song disclose polysulfone membranes(par [0041]) and, according to Song, the skin is to provide a
`
`desired function to the membrane, support the core layer, or protect the multilayer structure (par
`
`[0084]), which would be beneficial to modified Wang in protecting the layers of Wang since Wang does
`
`not give a thickness for the skin layer.
`
`19.
`
`Regarding claim 2, modified Wang discloses the membraneof claim 1, wherein the second
`
`outer surface has a plurality of pores having a closed perimeter, and wherein the second outer surface
`
`comprises a skin layer (first microporous surface with first skin surface labeled as first skin side in figure
`
`2, par [0028], see figure 2 for closed perimeter of pores onfirst side).
`
`20.
`
`Regarding claim 4, modified Wang discloses the membraneof claim 1, wherein the membrane’s
`
`first outer surface is made from a poly (arylene ether) such as polyethylene terephthalate, polyethylene
`
`naphthalate, polyethersulfone, or polysulfone (see Wang, polyethersulfone, polysulfone, par [0015], par
`
`[0046], claim 8).
`
`21.
`
`Regarding claim5, modified Wang discloses the membrane ofclaim 4, wherein the first outer
`
`surface has a yellow tint (see Rupiasih, yellowing color of polysulfone membranes, Section 3.1, and left
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 7
`
`side of page 15). One of ordinary skill in the art would recognize that Wangalso discloses polysulfone
`
`membranes, which would alsoturn yellow from exposure to UV light, according to Rupiasih.
`
`22.
`
`Regarding claim 9, modified Wang discloses the membrane ofclaim 1, wherein the membrane
`
`has a throughput capacity and the throughput capacity is between about 750 g per 30 seconds (see
`
`Wang, throughput of 1500mL/min for water converts to 1500 g/min, which would be about 750 g per 30
`
`seconds, par [0031]), which falls within the claimed range of about 100 to 1000 grams.
`
`23.
`
`Regarding claim 11, modified Wang discloses the membrane of claim 1, wherein the second
`
`surface comprisesa plurality of pores ina skin layer (see Wang,first microporous surface with skin
`
`labeled as first skin side in figure2, par [0028]); the plurality of pores having a closed perimeter in the
`
`skin layer (see Wang, skin pore perimeters closed in figure 2); and wherein the second outer surface
`
`comprises a melt-fused skin layer from exposureto ultra-violet light (see Wang, surface of the
`
`membrane canbe modified with ultraviolet light, par [0052]), wherein the second outer surface
`
`comprises a melt-fused skin layer from exposure to ultra-violet light a surface layer exposed to UV light
`
`ata certaintemperature would melt and/or fuse (see Rupiasih, SEM imagesof polysulfone membrane
`
`after being exposed to UV light after certaintimes, figure 11, melting/molten surfaces).
`
`24.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2013/0256229
`
`A1), in view of Rupiasih (Study of Effects of Low Doses UV Radiation on Microporous Polysulfone
`
`Membranesin Sterilization Process), in view of Song (US 2018/0065105 A1), and in further view of
`
`Zhang (WO2018/169737 A1). The combination of Wang in view of Rupiasih and Song willbe referred
`
`to as “modified Wang.”
`
`25.
`
`Regarding claim 3, modified Wang discloses the membraneof claim 1, but does not disclose
`
`wherein the membrane has a log reduction value greater than or equal to 7.
`
`26.
`
`However, Zhang discloses a multilayer membrane(abstract). Zhang alsodiscloses wherein the
`
`membrane has a log reduction value of at least 6 (par [0091], [00133], [00167]), which falls within the
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 8
`
`claimed range of greater than or equal to 7. It would have been obvious to one of ordinaryskill in the art
`
`before the effective filing date of the claimed invention to have incorporated the log reduction value like
`
`that of Zhang into the membrane of modified Wang because, according to Zhang,this is the removal
`
`value for microorganisms, bacteria, and viruses (par [0091]), which would be beneficial Wang since
`
`Wangdiscloses membranesfor the pharmaceutical industry, medical applications, food and beverage
`
`(par [0021]). Additionally, since Zhang discloses the log reduction value for multilayer polysulfone
`
`membranes(par [0088]), and Wang already discloses polysulfone membranes with multiple layers, it
`
`would be obvious for the membrane of Wangto havethis log reduction feature.
`
`27.
`
`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2013/0256229
`
`A1), in view of Rupiasih (Study of Effects of Low Doses UV Radiation on Microporous Polysulfone
`
`Membranesin Sterilization Process), in view of Song (US 2018/0065105 A1), and in further view of
`
`Yousif (Photodegradation And Photostabilization Of Polymers, Especially Polystyrene: Review). The
`
`combination of Wang in view of Rupiasih and Song willbe referred to as “modified Wang.”
`
`28.
`
`Regarding claim 6, modified Wang discloses the membrane ofclaim 4, but does not disclose
`
`wherein the first outer surface has a matte sheen.
`
`29.
`
`However,Yousif discloses photodegradation of polymers (abstract). Yousif also discloses a matte
`
`sheen (loss of gloss and mechanical properties of polymers due to UV exposure, middle of right column
`
`on page 2). It would have been obvious tooneof ordinary skill in the art before the effective filing date
`
`of the claimed invention to have incorporated the loss of gloss like that of Yousif into the membrane of
`
`modified Wang because modified Wangalready discloses polysulfone polymers used in membranes and
`
`that the surface of the polymer is exposed to UV light (par [0052]), therefore, according to Yousif, the
`
`polymer with loss gloss and mechanical properties from UV light expsoure.
`
`30.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2013/0256229
`
`A1), in view of Rupiasih (Study of Effects of Low Doses UV Radiation on Microporous Polysulfone
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 9
`
`Membranesin Sterilization Process), in view of Song (US 2018/0065105 A1), in view of Kaeselev
`
`(Influence Of The Surface Structure On The Filtration Performance Of UV-Modified PES Membrane),
`
`and in further view of Rivaton (Photodegradation of Polyethersulfone and Polysulfone). The
`
`combination of Wang in view of Rupiasih and Song willbe referred to as “modified Wang.”
`
`31.
`
`Regarding claim 7, modified Wang discloses the membrane ofclaim 4, but does not disclose
`
`wherein a time-of-flight secondary mass spectrometry (TOF-SIMS) analysis of the first outer surface
`
`shows degradation species comprising sulfur.
`
`32.
`
`However, Kaeselev discloses polyethersulfone membranes modified by UV irradiation (abstract).
`
`Kaeselev also discloses TOF-SIMS (Section 1, Section 2). It would have been obvious to one of ordinary
`
`skill in the art before the effectivefiling date of the claimed invention to have incorporated the TOF-MS
`
`like that of Kaeselevto analyze the membrane of modified Wang because, according to Kaeselev,
`
`surface modification from UV irradiation can be determined by TOF-SIMS (section 3.2), and both
`
`Kaeselevand modified Wangdisclose polysulfone membranes exposed to UV light. However, Wangin
`
`view of Kaeselevdoes not disclose a degradation species comprising sulfur.
`
`33.
`
`However, Rivaton discloses photolysis and UV exposure of polyethersulfone and polysulfone
`
`(abstract). Rivaton also discloses degradation products including degradation species comprising sulfur
`
`(SOz, page 391, #3, scheme 1). It would have been obvious to one ofordinary skill in the art before the
`
`effective filing date of the claimed invention to have degradation specieslike that of Rivatonas a result
`
`of UV exposure on polysulfone membranes of modified Wang in view of Kaeselev because Wang,
`
`Kaeselev, and Rivatonall disclose polyethersulfone/polysulfone and UV irradiation, and Rivaton
`
`discloses that SOis shown on MS after UVirradiation of polyethersulfone/polysulfone.
`
`34.
`
`Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2013/0256229
`
`A1), in view of Rupiasih (Study of Effects of Low Doses UV Radiation on Microporous Polysulfone
`
`Membranesin Sterilization Process), in view of Song (US 2018/0065105 A1), and in further view of
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 10
`
`Tsujiwaki (JP2014042869A. An English Machine Translation is provided with this office action and is
`
`used forclaim mapping in the prior art rejection below.). The combination of Wang in view of
`
`Rupiasih and Song willbe referred to as “modified Wang.”
`
`35.
`
`Regarding claim 10, modified Wang discloses the membrane of claim 1, but does not disclose
`
`wherein the supporting layer comprises a three-dimensional sponge-like network having a separating
`
`layer with a plurality of pores and the pores in the separating layer are smallerthanthe pores in thefirst
`
`outer surface.
`
`36.
`
`However, Tsujiwaki discloses a porous multilayer filter (par [0001]). Tsujiwaki also discloses
`
`wherein the supporting layer comprises a three-dimensional sponge-like network having a separating
`
`layer with a plurality of pores (intermediate layer 3 with layers 2A and 2B,figure 1B, three dimensional
`
`network structure, par [0031]) and the poresin the separating layer are smaller than the pores in the
`
`first outer surface (pores in support layers 4A and 4B are larger than the pores in 2A and 2B, par [0047,
`
`figure 1B).
`
`37.
`
`It would have been obvious to one of ordinary skill in the art before the effective filing date of
`
`the claimed invention to have incorporated the limitations like that of Tsujiwaki into the membrane of
`
`modified Wang because,according to Tsujiwaki, the pores being largerin the outer layer allows water to
`
`permeate ata high flow rate (par [0047)).
`
`38.
`
`Claims 12-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rupiasih
`
`(Study of Effects of Low Doses UV Radiation on Microporous Polysulfone Membranesin Sterilization
`
`Process), in view of Wang (US 2013/0256229 A1), and in further view of Zhou (US 2017/0341032 A1).
`
`The combination of Rupiasih in view of Wang and Zhou willbe referred to as “modified Rupiasih.”
`
`39.
`
`Regarding claim 12, Rupiasih discloses a method of increasing the pore size in an outer surface
`
`of a membrane (UV irradiation of surface of membrane,Section 2.2, figure 11, pore size increase,
`
`Sections 3.3-3.4), the method comprising: providing a membrane having a first outer surface having a
`
`

`

`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 11
`
`plurality of pores (membranein figure 11 showing outer surface); exposing the first outer surface to
`
`ultra-violet radiation, thereby generating a melt-fused layer, whereby the pores in the first surface are
`
`increased in size after exposure to the ultra-violet lamp radiation (polysulphone membrane surface
`
`exposed to UV radiation by lamp, Section 2.2, figure 11, pore size increase, Sections 3.3-3.4, one of
`
`ordinary skill in the art would recognize that a surface layer exposed to UV light at a certaintemperature
`
`would melt and/or fuse based on the increase in pore size and the membrane surfaces in figure 11
`
`appearing molten).
`
`AO.
`
`However, Rupiasih does not disclose a skin layer and the plurality of pores having a closed
`
`perimeter in theskin layer; and the membrane having a second outer surface and a porous supporting
`
`layer connecting the first outer surface to the second outer surface; and pulsed ultra-violet flashlamp
`
`radiation.
`
`41.
`
`However, Wangdiscloses polymer membranes(par [0001]). Wang also discloses a skin layer and
`
`the plurality of pores having a closed perimeter in the skin layer (first microporous surface with first
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`microporous skin surface, par [0005], [0028], figure 2, see closed perimeter of poresin figure 2); and the
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`membrane having a second outer surface (second microporoussurface,figure 2, par [0005], [0028]) and
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`a porous supporting layer connecting the first outer surface to the second outer surface (bulk between
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`first and second surfaces, par [0005], figure 2). It would have been obvious to oneof ordinaryskill in the
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`art before the effective filing date of the claimed invention to have incorporated thelimitationslike
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`Wanginto the method of Rupiasih because, according to Wang, the membranes provide sufficient
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`strength and sufficient retention of undesirable material while providing good throughput(par [0001]).
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`This is applicable to Rupiasih since both Rupiasih and Wang disclose membranes for a wide variety of
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`applications (Wang, [0021], Rupiasih, Introduction) and Rupiasih’s membrane doesnot have the
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`protection of a skin layer.
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`1.
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`However, Rupiasihin view of Wang does not disclose pulsed ultra-violet flashlamp radiation.
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`

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`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 12
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`42.
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`However, Zhou discloses membranes exposed to UV radiation (abstract). Zhou also discloses
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`pulsed ultra-violet flashlamp radiation (UV sources are not restricted, lamps, pulsed, par [0056], XeCl
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`excimer lamp, par [0057]). It would have been obvious to one ofordinaryskill in the art before the
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`effective filing date of the claimed invention to have incorporated pulsed ultra-violet flashlamp radiation
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`like that of Zhou into the method of Rupiasih in view of Wang because, according to Zhou, lamps with a
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`narrow bandwidth can be used for more control or broadband can be used to protect the membrane
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`(par [0056-0057]). This is applicable to Rupiasih and Wangsince all three references disclose UV light
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`(Wang, [0052]) and polysulphone membranes.
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`43.
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`Regarding claim 13, modified Rupiasih discloses the method of claim 12, wherein the
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`membranesfirst outer surface is made from a poly (arylene ether) such as polyethylene terephthalate,
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`polyethylene naphthalate, polyethersulfone, or polysulfone (see Rupiasih, polysulfone, abstract, figure
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`11).
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`44,
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`Regarding claim 14, modified Rupiasih discloses the method of claim 13 , wherein thefirst outer
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`surface comprises polyethersulfone (Wang polyethersulfone, par [0046], Zhou polyethersulfone, par
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`[0015]) and the energy absorbed by thefirst outer surface is between from about 100 mJ/cm?2 or more
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`to more than about 4000 mJ/cm?2 (see Zhou, par [0062]), which falls within the claimed range of about
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`45 to 440 mJ /cm?.
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`A5.
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`Regarding claim 15, modified Rupiasih discloses the method of claim 12, wherein the pores
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`have a pore diameter and the pore diameter is increased in size between about 10 to about 100
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`percent. Rupiasih discloses that the pore size depends on exposure time (bottom right of page 16,
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`section 3.4) and that the pure water flux (PWF) increases by 370% after 2 minutes of UV exposure.
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`Therefore, one of ordinary skill in the art would recognize that the pore size increases based on UV
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`exposure time and the pores shown in figure 11, and one of ordinary skill in the art would be able to
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`

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`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 13
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`determine an area of the membranesin figure 11 where the increase would most likely fall between 10-
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`100%.
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`46.
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`Regarding claim 16, modified Rupiasih discloses the method of claim 12, wherein thefirst outer
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`surface has a surface porosity and the surface porosity is increased between about 20 to about 200
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`percent. One of ordinaryskill in the art would recognize that the increase in the number of pores would
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`increase the porosity and would be able to determine a porosity increase of between 20-200%in an
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`area of the membranesin figure 11 (see Rupiasih, pore size increased and were more in number, Section
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`3.3).
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`47.
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`Regarding claim 17, modified Rupiasih discloses the method of claim 12, wherein a throughput
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`capacity of the membraneis increased by about 370% (see Rupiasih, pure water flux, Section 3.5), which
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`falls within the claimed range of increased by at least 20 percent.
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`A8.
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`Regarding claim 19, modified Rupiasih discloses the method of claim 12, wherein a pulse
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`duration for the pulsed ultra-violet flashlamp radiation is less than a second (see Zhou, par [0062]),
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`which falls within the claimed range of between about 2 to about 100ps.
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`49.
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`Regarding claim 20, modified Rupiasih discloses the method of claim 12, wherein a total energy
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`output of a xenon flashlamp is between from about 100 mJ/cm?2 or more to more than about 4000
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`mJ/cm? (see Zhou, par [0062], lamps, pulsed, Xenon excimer lamps, par [(0056-0057]), which falls within
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`the claimed range of between about 25 to 200 mJ/cm? per pulse.
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`50.
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`Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Rupiasih {Study of Effects
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`of Low Doses UV Radiation on Microporous Polysulfone Membranesin Sterilization Process), in view
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`of Wang (US 2013/0256229A1), in view of Zhou (US 2017/0341032 A1), and in further view of Zhang
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`(WO2018/169737 A1). The combination of Rupiasih in view of Wang and Zhou will be referred to as
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`“modified Rupiasih.”
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`

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`Application/Control Number: 17/294,601
`Art Unit: 1779
`
`Page 14
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`51.
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`Regarding claim 18, modified Rupiasih discloses the method of claim 12, but does not disclose
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`wherein the membrane has a log reduction of at least 7.
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`52.
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`However, Zhang discloses a multilayer membrane (abstract). Zhang also discloses whereinthe
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`membrane has a log reduction value of at least 6 (par [0091], [00133], [00167]), which falls within the
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`claimed range of greater than or equal to 7. It would have been obvious to one of ordinary skill in the art
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`before the effective filing date of the claimed invention to have incorporated the log reduction value like
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`that of Zhang into the membrane of modified Rupiasih because, according to Zhang,this is the removal
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`value for microorganisms, bacteria, and viruses (par [0091]), which would be beneficial modified
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`Rupiasih since Rupiasih discloses membranesfor a wide variety of applications and Wang discloses
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`membranesfor the pharmaceutical industry, medical applications, food and beverage (par [0021)).
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`Additionally, since Zhang discloses the log reduction value for multilayer polysulfone membranes(par
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`[0088]), and Wangalready discloses polysulfone membraneswith multiple layers, it would be obvious
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`for the membrane of Wangto have this log reduction feature.
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`Conclusion
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`53.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTIONIS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
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`54.
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS ofthe mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory peri