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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/14/2025 has been entered.
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.
Claims 44-47 are rejected under 35 U.S.C. 103 as obvious over USPAP 2014/0183133 to Anderson in view of USPAP 2008/0170982 to Zhang.
Claim 44, Anderson discloses a porous polymer membrane, wherein: the polymer membrane comprises at least one layer, the polymer membrane comprises embedded aligned carbon nanotubes in at least one layer of the membrane, the aligned carbon nanotubes, each having an unobstructed lumen, extend through the polymer membrane layer in which they are contained, such that the lumen of each of the aligned carbon nanotubes define a single pore extending through the polymer membrane layer (see entire document including Figure 1, [0006], [0007], [0022], [0031], [0035], [0036], [0044], [0084], and [0085]).
Anderson discloses that the carbon nanotubes “may have” a length in a range in millimeters between about 0.1 and about 30 ([0044] and [0085]) but Anderson does not limit the length of the carbon nanotubes to said range. Anderson discloses that the carbon nanotubes are used to filter gas [0005] wherein each carbon nanotube is hollow for enabling a gas including two or more molecules to pass through the (extremely small) hollow center [0036]. Zhang discloses that it is known in the gas filter art that the problem with small pore size is that they result in low filtration rates, especially when the filter is thick, and that the filtration rate can be increased by decreasing the filter thickness (see entire document including [0497]). The filter pore of Anderson is the carbon nanotubes hollow center and the filter thickness is the carbon nanotube length. Therefore, it would have been obvious to one having ordinary skill in the art to construct the carbon nanotube filter of Anderson with carbon nanotubes of less than 0.1 mm (100 µm), such as the claimed about 5 to about 15 µm, to provide a filter with increased filtration rate.
Claim 45, Anderson discloses that the porous polymer membrane may be cured (Example 3). Absent a showing to the contrary, it is the examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to the applicant to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if the applicant intends to rely on Examples in the specification or in a submitted declaration to show non-obviousness, the applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Claims 46 and 47, Anderson discloses that the carbon nanotubes “may have” a diameter in a range from about one nanometer and about one micrometer [0044] which is substantially similar to the carbon nanotube diameter range disclosed in the current specification which is about 0.5 nm to about 150 nm (page 16, lines 17-20). The current specification fails to teach or suggest any unexpected results from the specifically claimed diameter size of about 0.5 nm. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.”). Therefore, it would have been obvious to one having ordinary skill in the art to produce the carbon nanotubes of Anderson with a diameter size slightly smaller than the disclosed “about one” nanometer to include the claimed “about 0.5” nanometer motivated by a desire to enhance commercial opportunities with a smaller product.
Response to Arguments
Applicant's arguments filed 7/14/2025 have been fully considered but they are not persuasive.
The applicant asserts that Anderson teaches carbon nanotubes that each define more than a single pore extending through a polymer membrane. The examiner respectfully disagrees. Anderson discloses two polymer membranes (102 and 108) each comprising embedded aligned hollow carbon nanotubes (106) wherein each nanotube has an unobstructed lumen, each nanotube extending through each of the two polymer membranes such that the lumen of each of the aligned carbon nanotubes defines a single pore (i.e. the carbon nanotube hollow core) extending through each of the two polymer membrane layers (see Figures 1 and 2).
The applicant incorrectly asserts that the carbon nanotube sidewall pores (210) extend through the two polymer membranes (102 and 108). On the contrary, there are no sidewall pores within the polymer membranes. Rather, the sidewall pores are located within the gap extending between the two polymer membranes. As the sidewall pores do not extend through either polymer membrane, Anderson teaches that each of the carbon nanotubes defines a single pore (i.e. the carbon nanotube hollow core) extending through each of the two polymer membrane layers.
It is further noted that the sidewall pores (210) do not even “extend though” the gap between the polymer membranes (102 and 108). Rather, the sidewall pores are perpendicular to the length of the carbon nanotubes and therefore do not extend through the gap (or in any direction). The sidewall pores do not extend through the first polymer membrane (102), the second polymer membrane (108), or the gap between the two polymer membranes. Each carbon nanotube defines a single pore that extends and that pore is the carbon nanotube hollow core.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789