Detailed Action
This is a Final Office action based on application 17/414,494 filed on June 16, 2021. The application is a 371 of PCT/KR2019/013,378 with priority to KR10-2018-0163531 filed December 17, 2018.
Claims 1, 4, 7, 10, 17, 26, and 28-29 are pending and have been fully considered.
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 .
Status of the Rejection
The §103 grounds of rejection are maintained and merely updated to reflect changes in the claim text.
A new §112(b) ground of rejection is presented in this action.
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, 4, 7, 10, 17, 26, and 28-29 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.
Specifically, Claim 1 is indefinite in its scope because a limitation of the claim is defined by comparison to a benchmark object, and the benchmark object is not defined with enough clarity to allow the reader to ascertain the exact scope of the claim.
The limitation in question is:
wherein, when the at least one of the composite microporous membranes is stacked on and compressed onto the carbon electrode layer, the ion exchange resin of the ion exchange resin layers permeates into pores of the carbon electrode layer to form an ion exchange resin permeation layer in the carbon electrode layer, such that the ion exchange resin permeation layer closes a smaller number of pores of the carbon electrode layer than when the ion exchange resin layers are directly coated on the carbon electrode layer
The limitation requires that the number of pores that are closed by the claimed method is smaller than it would have been if an alternative coating method had been carried out in which ion exchange resin layers were directly coated onto the carbon electrode layer. However, the hypothetical alternative coating method is not defined with enough clarity to allow one skilled in the art to determine how many pores would be closed by that method. Claim 1 is therefore being rejected under 112(b) because one skilled in the art would not be apprised of the exact scope of the claim. Claims 4, 7, 10, 17, 26, and 28-29 inherit this ground of rejection because they depend from claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4, 10, 26, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Andelman et al (US 7,833,400 B2), in view of Hitchems (US 6,103,078 A) and Banerjee (US 5,447,636 A), in further view of Kato et al (US 6,054,230 A).
Regarding claim 1, Andelman teaches a manufacturing method of a composite capacitive deionization electrode (col 1 ln 25-29; claim 1), the manufacturing method comprising the steps of:
(a) providing composite microporous ion exchange resin membranes (col 2 ln 52-53, “a charge barrier placed adjacent to an electrode”; col 4 ln 48-63, “the charge barrier may have ... [i]on selective membranes ... supposed by a web”; col 5 ln 44-46, “charge barriers may include ... microporosity”; col 7 ln 61, “charge barrier 3 may be a permselective membrane”);
b) preparing a unit comprising the composite microporous membranes and a spacer by forming the composite microporous membranes, prepared in the step a), on both surfaces of the spacer, such that the unit includes the composite microporous membranes formed on the both surfaces of the spacer (figure 6 and col 10 ln 59-67, two membranes 3 are formed on either side of spacer 4), and electrode sheet 2 are formed together); and
forming an assembly comprised of (b) a unit including a spacer and composite microporous membranes formed on both surfaces of the spacer and (c) an electrode sheet stated and combined on one surface of the unit (figure 6 and col 10 ln 59-67, two membranes 3 are formed on either side of spacer 4, and electrode sheet 2 is formed on the other side of one of the composite microporous membranes 2),
wherein the electrode sheet comprises a current collector and a carbon electrode layer formed on at least one surface of the current collector (per figure 1 and col 7 ln 55 - col 8 ln 22, the electrode sheet comprises current collector 1 and electrode layer(s) 2; per col 8 ln 60-66, electrode layer 2 is made of carbon),
and wherein at least one of the composite microporous membranes are stacked on and compressed onto the carbon electrode layer (col 11 ln 1-4, “Permselective membrane 3 are sealed to electrode 2”; col 23 ln 46-47, “The above layers may be laminated together”),
wherein, the ion exchange resin of the ion exchange resin layers permeates into pores of the carbon electrode layer to form an ion exchange resin permeation layer in the carbon electrode layer (col 6 ln 32-44, col 7 ln 1-5).
Andelman does not specify that the order in which the above assembly is formed is by first forming the membranes onto the surfaces of the spacer to form the unit, and then stacking and combining an electrode sheet on the surface of the unit.
Hitchems is directed to forming a unit comprising a spacer sandwiched by ion exchange resin membranes (figure 2; col 11 ln 24-43). Hitchems’ method of preparing the unit comprises
b) preparing a unit comprising ion exchange membranes and a spacer by forming the ion exchange membranes on both surfaces of the spacer, such that the unit includes the ion exchange membranes formed on the both surfaces of the spacer (figure 2, first ion exchange resin membrane 18 is formed onto a bottom surface of spacer 32, and second ion exchange resin membrane 20 is formed onto a top surface of the spacer 32; as shown in figure 1 and 2D, the resulting unit 20 comprises a spacer material with membranes on either side; see col 11 ln 24-43), and
c) stacking and combining the unit, prepared in step b), with an electrode (col 17 ln 15-33, Hitchems prepares an electrochemical device by first assembling units of step b), and then combining the units with electrodes.
Hitchems teaches that the unit formed in step b) is useful in the assembly of an electrochemical water desalination device (col 17 ln 18-50); and that, because of the way the surface of the spacer is sealed to the ionically conductive membrane surfaces, the unit provides improved fluid distribution and lower voltage drop to the device (col 3 ln 17-24; col 5 ln 26-61; col 6 ln 42-62).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, when combining the composite microporous membranes, spacer, and electrode sheet together to form the device defined by Andelman (Andelman figure 6), to do so by a method of first forming the microporous membrane to the spacer to form a unit and subsequently combining that unit with the electrode sheet, as taught in Hitchems, in order to provide conformal contact between the ion exchange element and the fluid distribution element, so that fluid distribution to the membrane surface and voltage drop across the spacer can be improved as taught in Hitchems (Hitchems col 3 ln 17-24; col 5 ln 26-61; col 6 ln 42-62).
Andelman and Hitchems do not teach that the composite microporous membrane is prepared by forming ion exchange resin layers on surfaces of microporous membranes wherein each composite microporous membrane includes a first ion exchange resin layer and a second ion exchange resin layer formed on both surfaces of the microporous membranes respectively, and wherein the first ion exchange resin layer and the second ion exchange resin layer are identical to each other or different from each other.
Banerjee is directed to a composite microporous ion exchange membrane, and a method of making the membrane (col 1 ln 5-13; col 7 ln 5-57). Banerjee’s membrane is made by providing a microporous membrane support, and forming first and second ion exchange resin layers on both surfaces of the microporous membrane (col 7 ln 8-10; col 7 ln 67 - col 8 ln 7). The first ion exchange resin layer and the second ion exchange resin layer are necessarily either identical to each other or different from each other. Banerjee’s membrane is reported to have advantageous properties of high strength and low resistance (col 10 ln 25-34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Andelman by choosing, as the composite microporous ion exchange membrane provided in step a), the composite membrane made according to the process taught by Banerjee (col 7 ln 5 - col 8 ln 7), because Andelman is using the composite membrane as a charge-selective barrier in an electrochemical cell, and Banerjee teaches that their membrane is useful in an electrochemical cell by virtue of its low ionic current resistance and its high strength (col 10 ln 25-34).
However, while Banerjee teaches it is desirable for the ion exchange resin layer of the composite microporous membrane to permeate into the microporous backing layer (col 5 ln 53-62), Andelman, Hitchems and Banerjee do not teach that the first and second ion exchange resin layers on the two sides of the microporous backing layer permeate into the pores of microporous backing layer to such an extent that the two ion exchange layers connect to one another through the pores.
Kato discloses composite microporous ion exchange membranes suitable for use in an electrochemical device stack and a method of preparing the membranes and stacking them with other device components to form an integral unit (col 2 ln 59 - col 3 ln 8), for the purpose of e.g. making a fuel cell membrane-electrode assembly (col 14 ln 31-42). Kato’s composite microporous membranes are prepared by forming ion exchange resin layers on surfaces of a microporous membrane (col 4 ln 8-16, col 6 ln 64 - col 7 ln 28), before being stacked and formed to the surface of adjacent stack components (col 8 ln 23-31; col 11 ln 3-11). Kato further teaches that suitable composite microporous membranes are configured such that an ion exchange resin of the ion exchange resin layers formed on both surfaces of the microporous membranes permeates into pores in the microporous membranes so as to connect the ion exchange resin layers formed on both surfaces of the microporous membranes to each other through the pores (col 6 ln 64 - col 7 ln 28, “pores of the porous expanded polytetrafluoroethylene membrane-support film are impregnated with a solid polymer ion exchange resin ... until the pores are essentially completely filled with the solid polymer ion exchange resin and a nonporous composite film is produced”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a composite microporous membranes configured such that the ion exchange resin layers on either side of the microporous membrane connect to one another through the pores of the microporous layer, based on Kato's disclosure that a composite microporous membrane with such a structural configuration is suitable for an electrochemical cell stack. The selection of a known component, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Claim 1 further recites that, when the at least one of the composite microporous membranes is stacked on and compressed onto the carbon electrode layer according to the claimed method, the ion exchange resin permeation layer closes a smaller number of pores of the carbon electrode layer than it would have closed if the ion exchange resin layers were instead directly coated on the carbon electrode layer. This claimed property is not explicitly disclosed in the applied references. However, that instant disclosure teaches that this property inherently emerges when the claimed method steps are performed (see instant specification at pg 18 paragraph [89], corresponding to paragraph [0087] of the pre-grant publication US 2022/0073381 A1). Therefore, the claimed property does not patentably distinguish over the prior art because, by suggesting the claimed sequence of method steps, the applied references suggest a method that inherently results in a device with this property. Where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). Applicant’s recognition of an otherwise unrecognized advantage, when that advantage would flow naturally from following the suggestion of the prior art, cannot be the basis for patentability when the differences would otherwise be obvious (Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)).
Regarding claim 4, Andelman in view of Hitchems, Banerjee, and Kato renders obvious the manufacturing method according to claim 1, and Andelman further teaches the composite microporous membranes include a first composite microporous membrane and a second composite microporous membrane (figure 6, there is a first composite microporous membrane 3 and a second composite microporous membrane 3 on alternate sides of the spacer 4), and wherein, in the step a), the first composite microporous membrane and the second composite microporous membrane comprise the same kind of or different kinds of the ion exchange resin layers (in Andelman figure 5, the left ion exchange resin layer 3 is cation-exchange and the right ion exchange resin layer 3 is anion exchange; note it is necessarily the case that the ion exchange layers are either the same kind or different kinds).
Regarding claim 10, Andelman in view of Hitchems, Banerjee, and Kato renders obvious the manufacturing method according to claim 1. Banerjee also teaches, after the composite microporous membrane is prepared in step a), it is then dried (col 6 ln 5-10, "solution, suspension or paste of the polymer for forming the ion exchange resin layer ... is coated on one or both sides of the substrate layer, and the solvent is evaporated").
Regarding claim 17, Andelman in view of Hitchems, Banerjee, and Kato renders obvious the manufacturing method according to claim 1, but are silent with respect to the thickness, porosity, and pore size of the microporous membranes.
Kato further teaches that microporous membranes suitable for use in such a method are membranes having a thickness of 2 to 30 microns (col 4 ln 56-58, “in the range 1 to 100 micrometers, preferably in the range 2 to 30”), which falls within the claimed range of 1 to 500 microns; having a porosity of 80 to 95 percent (col 4 ln 58-60), which falls within the claimed range of 10 to 95; and having a pore size of 0.2 to 2 microns (col 4 ln 60-62), which falls within the claimed range of 0.01 to 50 microns; and wherein the membranes are prepared in a membrane form (col 4 ln 42-55).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, when selecting microporous membranes to use in the method of modified Andelman, to select membranes having suitable thickness, porosity, pore size, and form disclosed in Kato, because Kato discloses a microporous membrane with these features and teaches it is suitable for incorporating in composite microporous membranes in electrochemical cells. The selection of a known component, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Regarding claim 26, Andelman in view of Hitchems, Banerjee, and Kato renders obvious the method according to claim 1, and Hitchems further teaches that, in step b), the unit is prepared by stacking and compressing the membranes on and onto one surface of the spacer (col 9 ln 31-35, "the cation conducting material and the anion conducting material are preferably hot pressed around a plurality of channel forming elements at sufficient temperature and pressure to bond the material"; col 8 ln 2-21; col 11 ln 7-21).
Regarding claim 28, Andelman in view of Hitchems, Banerjee, and Kato renders obvious the method according to claim 1, and Banerjee further teaches the microporous membranes are preferably polyolefin-based (col 1 ln 9-12; col 4 ln 14-17).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Andelman, Hitchems, Banerjee, and Kato as applied to claim 1 above, in further view of Choi et al (KR 2015-0045305 A).
Regarding claim 7, Andelman in view of Hitchems, Banerjee, and Kato renders obvious the manufacturing method according to claim 1. However, Andelman, Hitchems, and Banerjee do not teach wherein, in the step a), the composite microporous membranes are prepared by dipping the microporous membranes unwound from microporous membrane winding rolls into ion exchange resin dissolving tanks containing an ion exchange resin solution therein so as to be impregnated with the ion exchange resin solution.
Choi teaches a method of forming a composite microporous membrane (para [0001], [0017]) by dipping a microporous membrane (per para [0032]-[0033], Choi’s “porous substrate” is a nonwoven fabric with a pore size range of from 0.01 to 50 microns, therefore it is considered a microporous membrane) unwound from microporous membrane winding rolls (para [0056], “supply roll 310 for supplying a porous substrate”; figures 2-3, winding rolls #310) into ion exchange resin dissolving tanks containing an ion exchange resin solution therein (per para [0060] and figures 2-3, tank #160 contains an ion exchange resin solution) so as to be impregnated with the ion exchange resin solution (para [0060], “the ion transfer resin solution 160 is filled in the pores 120 of the porous substrate”). Choi teaches that the composite membrane formed by their process has good ion conductivity and mechanical strength, and a uniformly smooth thickness, giving it good performance in electrochemical flow cell application (para [0011]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, when carrying out the step of coating the microporous membrane with ion exchange resin to form a composite microporous membrane as disclosed in Banerjee, to do so by dip-coating the microporous membrane into ion exchange resin dissolving tanks that contain the ion exchange resin solution, as taught in Choi, because Choi shows that such a method is a suitable way of forming a composite microporous membrane with good properties for use in an electrochemical flow cell. The claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results [MPEP 2143(A)]. Furthermore, the selection of a known component, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art [MPEP § 2144.07].
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Andelman, Hitchems, Banerjee, and Kato as applied to claim 28 above, in further view of Mallant et al (US 6,514,561 B1).
Regarding claim 29, Andelman in view of Hitchems, Banerjee, and Kato renders obvious the method according to claim 28. Banerjee discloses that the polyolefin membrane may be selected from a group of materials that includes high-density polyethylene, low-density polyethylene, propylene, and mixtures thereof (col 4 ln 64 - col 5 ln 3), with high density polyethylene being Banerjee's most preferred material (col 3 ln 30-36; col 4 ln 15-16). However, Banerjee does not specifically teach making the membrane from a combination of two or more of the materials listed in claim 29.
Mallant is directed to forming a composite microporous membrane (col 1 ln 6-16) by casting ion exchange resin layers onto surfaces of microporous membranes (col 2 ln 52-67). Mallant further teaches the microporous membranes are polyolefin-based (col 1 ln 8, “a polyalkene”), more specifically based on a blend of high-density and low-density polyethylene (col 4 ln 46-53). Mallant teaches that the selection of this blended polyethylene material for the reinforcing scaffold is advantageous, because the presence of the low density polyethylene facilitates formation of the desired micropores (col 4 ln 42-46), and the presence of the high density polyethylene imparts high strength to the composite membrane (col 4 ln 46-53).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Andelman, Hitchems, and Banerjee, as the based material of the microporous membrane, the polyolefin taught in Mallant, because Mallant teaches that the microporous membrane made from the polyolefin has a suitable pore size and good strength (col 4 ln 42-53).
Response to Arguments
Applicant's arguments (see “Remarks” filed 8 April 2026) have been fully considered but they are not persuasive.
Applicant amends claim 1 to include the limitations of claim 9 and presents arguments against the ground of rejection that had been made against claim 9. Specifically, at Remarks pg 5-6, Applicant argues that the claimed structure of:
... wherein the composite microporous membranes are configured such that an ion exchange resin of the first and second ion exchange resin layers formed on the both surfaces of the microporous membranes permeates into pores in the microporous membranes so as to connect the first and second ion exchange resin layers formed on the both surfaces of the microporous membranes to each other through the pores;
... is fundamentally different than the structure disclosed in Kato, because Kato teaches that the first and second ion exchange resin layers completely fill the pores of the microporous membrane such that Kato’s composite membrane has no open pores left. By contrast, Applicant argues that the claim language should be understood to require that, as the ion exchange resins permeate through the pores of the microporous membrane so that the resin on one side of the membrane contacts the resin on the other side through the pores, those resins do not fill or occlude those pores. Applicant points to their own disclosure’s teaching that “the microporous membrane” has open porosity, and argues that this implies that “the composite microporous membrane”, formed by in-filling the microporous membrane with resin, also has micropores.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the pores of the composite microporous membrane are not filled or covered by the ion exchange layers) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner is mandated to adopt the broadest interpretation of the claim language that he can reasonably make in view of the specification (MPEP 2111). The specification defines “microporous membrane” to mean a thin film in which pores are formed (para [0048]), and goes on to say that a “composite microporous membrane” is a composite comprising a microporous membrane coated with ion exchange resin layers (para [0047]-[0048]). The definition does not preclude the ion exchange resin layers from covering the pores of the microporous backing layer, and we see no teaching or apparent implication anywhere else in the original disclosure to suggest that the composite microporous membrane must, or even does, have the same open porosity as the microporous membrane from which it is made. The specification describes the porosity or pore structure of the “microporous membrane” at [0024], [0105] and [0107], and is entirely silent as to any porosity present in “composite microporous membrane”.
Since there is no basis in the disclosure for construing the claim to mean that a “composite microporous membrane” has the same porosity as the “microporous membrane” it is made from, we maintain that Kato reads on this aspect of the claim as it is written.
Claim 1 is further amended to recite:
wherein, when the at least one of the composite microporous membranes is stacked on and compressed onto the carbon electrode layer, the ion exchange resin of the ion exchange resin layers permeates into pores of the carbon electrode layer to form an ion exchange resin permeation layer in the carbon electrode layer, such that the ion exchange resin permeation layer closes a smaller number of pores of the carbon electrode layer than when the ion exchange resin layers are directly coated on the carbon electrode layer.
At Remarks pg 7-10, Applicant argues that the prior art is entirely silent with respect to this feature, and in this way, the claimed method is distinguished from the prior art. Applicant also argues that by virtue of this feature, the claimed method results in a CDI device having performance advantages that are not recognized in the prior art.
Examiner respectfully disagrees. According to the specification (see quote from instant para [0070], at Remarks pg 8-9), the recited property emerges because the device layers are assembled in the recited sequence. It follows that, since the art suggests assembling device layers by the same method, the device assembled by the prior art method will have the property in question. The court has held that, where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). Applicant’s recognition of an otherwise unrecognized advantage, when that advantage would flow naturally from following the suggestion of the prior art, cannot be the basis for patentability when the differences would otherwise be obvious (Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)).
This newly recited feature fails to place the claim in patentable condition for another reason as well. The claim is indefinite in scope because a feature of the claim is defined by comparison to an object, and the relationship between the limitation and the object is not defined in enough detail to allow one skilled in the art to readily ascertain the boundary of the claim scope (MPEP 2173.05(b)(II)). By its recitation of “when the at least one of the composite microporous membranes is stacked on and compressed onto the carbon electrode layer, ... the ion exchange resin permeation layer closes a smaller number of pores of the carbon electrode layer than when the ion exchange resin layers are directly coated on the carbon electrode layer”, claim 1 defines a property of the product of the claimed method (i.e. the number of pores of the electrode that are closed) by comparison to the product of a different method (i.e. the number of pores of the electrode that would have been closed if the ion exchange resin layers were directly coated on the carbon electrode layer). However, the latter method is not positively recited in the claim, and neither the claim nor the specification disclose this comparative method in enough detail to allow a person to determine how many pores are closed when that method is performed. Therefore it is not clear how many pores a method can close before that method diverges from the claimed method, and, it is not clear how one would determine where the exact boundary of the claim lies.
The prior art rejections of record are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ANDREW KOLTONOW/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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