DETAILED ACTION
This action is in response to the RCE with amendments and remarks filed 12/17/2025, in which claim 1 has been amended, claim 13 has been newly added and claims 1-3, 6-7 and 10-13 are pending and ready for examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/17/2025 has been entered.
Claim Rejections - 35 USC § 102
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 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 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 1-3, 6-7 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by and/or under 35 U.S.C. 103 as being unpatentable over US 6,048,607 (hereinafter “Hashimoto”).
Regarding Claim 1 Hashimoto discloses a polyolefin microporous membrane, comprising, inherently a first porous layer containing a polyolefin (i.e. the top half of the membrane), and a second porous layer containing a polyolefin (i.e. the bottom half of the membrane), because the top and bottom halves of the polyethylene porous film may be considered the first and second porous layers in the same way as Applicants disclose, and alternatively because it would have been obvious to use two layers of the polyethylene film to create a two layer membrane form additional filtration or reinforcement, and because this involves the mere duplication of the layer as disclosed, where mere duplication has been held to be obvious, see MPEP 2144.04;
wherein the structure of the membrane (i.e. including each of the first porous layer and the second porous layer) comprises a polyolefin which has a shish-kebab structure including an extended-chain crystal, which is a rod-shaped crystal extending in an axial direction, and a plurality of folded-chain/plate shaped crystals apposed in a separated state and intersecting the extended-chain crystal, see C2/L43-C3/51, C10/L59-C11/L35, and Figs. 3-4.
Thus the first porous layer contains a polyolefin and has a structure including a first rod- shaped crystal extending in one direction and a plurality of first plate-shaped crystals arranged in a separated state and intersecting the first rod-shaped crystal; and the second porous layer contains a polyolefin and has a structure including a second rod-shaped crystal extending in another direction intersecting the one direction and a plurality of second plate-shaped crystals arranged in a separated state and intersecting the second rod-shaped crystal, because it is shown that each layer (which are interpreted to have the same structure) will have multiple rod shaped crystals extending in various/all directions and intersecting each other (Figs. 3-4); thus at least some of the rod shaped crystals in the first layer will be expected to extend in a width direction perpendicular to a machine direction, and at least some of the rod shaped crystals in the second layer will be expected to extend in the machine direction, thus intersecting, wherein it is noted that the claims do not require any degree of alignment of the rod shaped crystals in each layer; and
wherein a tensile strength in the machine direction is at least 0.03 GPa, preferably at least 0.04 GPa; and perpendicular to the machine direction of at least 0.02 GPa, preferably at least 0.04 GPa (C6/L51-55), a tensile strength of at least 7, 20 MPa in at least one direction (C12/L41-45); and where Tables 6 and 16 show specific examples having a ratio of tensile strength in the machine direction (MD) relative to tensile strength in the width direction (TD) in the range claimed; including at least Examples 12 (0.61), 19 (0.57), 23 (0.64) and 38 (0.54);
wherein a Gurley value of the polyolefin microporous membrane is not more than 200 seconds/100 cc, preferably not more than 100 seconds/100 cc (C12/L48-52); Tables 6 and 16 show specific examples having Gurley values in the range claimed; including at least Examples 12 (134 sec/100cc), 19 (15 sec/100cc), 23 (38 sec/100cc) and 38 (20 sec/100cc);
wherein a porosity of the polyolefin microporous membrane is at least 30% (C12/L66-67) Tables 6 and 16 show specific examples having Gurley values in the range claimed; including at least Examples 12 (80.3%), 19 (84.4%), 23 (75.6%) and 38 (74.9%);
Notably, Examples 12, 19, 23, and 38 all have tensile strength MD:TD ratios and porosities, and Gurley values in the ranges as claimed.
Regarding Claim 3 Hashimoto discloses the polyolefin microporous membrane according to claim 1, which may be considered to comprise a layered structure including at least the first porous layer and the second porous layer, the second porous layer being disposed at both faces of the first porous layer as claimed, because the porous polyethylene film may be considered to have three layers in the thickness direction, i.e. top, middle and bottom, similar to how it may have two layers as detailed supra, because there is no structural distinction between each of the layers as claimed which is not present in the membrane of Hashimoto.
Regarding Claims 7 and 12 Hashimoto discloses the polyolefin microporous membrane according to claim 1, having a thickness of from 10-200 µm (C12/L16-18), and includes specific examples in the range claimed including at least Examples 12 (171.4 µm), 19 (94.1 µm), 23 (37.0 µm) and 38 (33.7 µm).
Regarding Claim 10 Hashimoto discloses the polyolefin microporous membrane according to claim 1, which is disclosed for use in filtering materials (Abstract), and thus may be considered structurally, i.e. inherently, a base material for a liquid filter, and is disclosed for use in filtering materials. See MPEP 2112.02 with regard to inherent properties.
Regarding Claim 11 Hashimoto discloses the polyolefin microporous membrane according to claim 1, which is disclosed for use in filtering materials (Abstract), and which is structurally, i.e. inherently, a liquid filter. See MPEP 2112.02 with regard to inherent properties.
Regarding Claim 13 Hashimoto discloses the polyolefin microporous membrane according to claim 1, having a Gurley value of the polyolefin microporous membrane is not more than 200 seconds/100 cc, preferably not more than 100 seconds/100 cc (C12/L48-52); Tables 6 and 16 show specific examples having Gurley values in the range claimed; including at least Examples 19 (15 sec/100cc), 23 (38 sec/100cc) and 38 (20 sec/100cc).
Claim 2 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by and/or 35 U.S.C. 103 as being unpatentable over Hashimoto in view of US 2014/0094076 A1 (hereinafter “Mrozinski”).
Regarding Claim 2 Hashimoto discloses the polyolefin microporous membrane according to claim 1, wherein Hashimoto discloses the polyolefin microporous film/membrane may be used in “separators for aqueous electrolyte batteries, separator films for batteries” (Abstract), and have a bubble point may be 0.1-7.0 kg/cm2, wherein the bubble point correlates with the pore diameter (C12/L9-11), but does not specifically disclose wherein an average flow pore diameter is from 20 nm to 300 nm.
However Mrozinski discloses a similar polyethylene battery membrane [0005]-[0015], Figs., wherein the pore size may be 0.05-.5 micron (50-500 nm) [0126].
Therefore, at the time of filing, it would have been prima facie obvious for one of skill in the art to modify the membrane of Hashimoto by using a pore size of 50-500 nm as disclosed by Mrozinski because this involves the simple substitution of one known pore size for a polyethylene battery membrane for another to obtain the predictable results of forming a successful polyethylene battery membrane.
Regarding Claim 6 Hashimoto discloses the polyolefin microporous membrane according to claim 1, but does not disclose wherein a flow rate when passing ethanol through the membrane in a thickness direction is from 10 ml/min/cm2 to 300 ml/min/cm2 as converted under a pressure of 1 MPa.
However, the polyolefin microporous membrane disclosed by Hashimoto has the same polymer (i.e. polyolefin/polyethylene), with the same shish-kabab-structure, tensile strength MD;TD ratio, Gurley value and porosity as claimed (discussed supra in the rejection of claim 1), and thicknesses within the range claimed (discussed supra in the rejection of claim 7). While the pore size is not directly disclosed, Hashimoto does disclose the polyolefin microporous film/membrane may be used in “separators for aqueous electrolyte batteries, separator films for batteries” (Abstract), and have a bubble point may be 0.1-7.0 kg/cm2, wherein the bubble point correlates with the pore diameter (C12/L9-11), but does not specifically disclose wherein an average flow pore diameter is from 20 nm to 300 nm.
However Mrozinski discloses a similar polyethylene battery membrane [0005]-[0015], Figs., wherein the pore size may be 0.05-.5 micron (50-500 nm) [0126].
Therefore, at the time of filing, it would have been prima facie obvious for one of skill in the art to modify the membrane of Hashimoto by using a pore size of 50-500 nm as disclosed by Mrozinski because this involves the simple substitution of one known pore size for a polyethylene battery membrane for another to obtain the predictable results of forming a successful polyethylene battery membrane. And thus the combined invention also has a pore size in the range claimed.
Thus as the polyolefin microporous membrane disclosed by Hashimoto in view of Mrozinski has the same polymer, with the same shish-kabab-structure, tensile strength MD;TD ratio, Gurley value, porosity and pore size as claimed, it is asserted, absent evidence to the contrary, that one would reasonably expect that the membrane disclosed by Hashimoto in view of Mrozinski inherently has the same properties as the membrane recited in claim 6. Specifically, it is asserted that a flow rate when passing ethanol through the membrane in a thickness direction is from 10 ml/min/cm2 to 300 ml/min/cm2 as converted under a pressure of 1 MPa. See MPEP 2112.01.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered and they are persuasive with regard to the previous combination of references as they would apply to the amended claims, but they are now moot because they are directed in their entirety to grounds of rejection which are no longer cited in the current action and the new limitations of the amended claims which had not been previously addressed. See the updated rejection above citing a new combination of references to address the amended claims.
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