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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 6/12/2026.
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.
Claim1, 3-4, 6-7, and 9-13 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the ratio t/x is from 100-630 while the diameter (x) ranges from 0.1-0.5µm and the thickness (t) ranges from 58-150 µm. Calculating the possible ratio t/x from the claimed diameter and thickness results in a range of ratios from 116 (58µm/0.5µm) to 1,500 (150µm/0.1µm). While the upper limit of the claimed ratio lies within the possible t/x ratio, the lower limit below 116 is an impossibility given the claimed thickness and diameter values. As such, it is unclear how the lower claimed ratio values can be reconciled with the claimed thickness and diameter values.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-4, 7, 9-13 is/are rejected under 35 U.S.C. 103 as obvious over Nitadori et al. (US 5,084,173 in IDS) in view of Nishida et al. (US 2003/0168784) and Nazir et al. (US 2013/0323383).
Regarding claim 1, Nitadori teaches a hydrophilic composite porous membrane comprising: a polyolefin microporous membrane; and an olefin (ethylene)/vinyl alcohol-based resin with which at least one main surface and inner surfaces of pores of the polyolefin microporous membrane are coated, wherein a ratio t/x of a membrane thickness t ( µm) (examples of 45µm and 30µm in Examples 1 and 3) to an average pore diameter x ( µm) (0.02-1.0µm with examples of 0.7µm and 0.6µm in Examples 1 and 3), as measured with a porosimeter, is taught to up to 64 (45/0.7=64 for Example 1 and 30/0.6=50 for Example 3) (C13/L11-C15/L2, C21/L36-51, and C24/L55-C25/L7). Nitadori teaches that the pore size encompasses the range claimed (C11/L33-42). It is further noted that Example 1 teaches a water permeability of 7.9 l/(hr*m2*mmhg) (approximately 100 mL/(min*cm2*MPa) after unit conversion), which is approximately in the range claimed and can be as high as 30 l/(hr*m2*mmhg) (approximately 384 mL/(min*cm2*MPa) after unit conversion), which overlaps the claimed range (C11/L9-19).
As Nitadori teaches the t/x ratio is below the 80 claimed, it fails to explicitly teach that the ratio t/x is from 100-630. However, Nitadori also teaches that the average pore diameter could range from 0.02-1.0 µm (C11/L34-42 and claim 10). The thickness taught in Nitadori range from 30-50 µm. Thus, the t/x ratio would range from 30 (30/1) to 2500 (50/.02), which encompasses the range claimed. Therefore, one skilled in the art would have found it obvious to choose a pore size in the range taught in Nitadori in known thickness ranges for the taught membranes as "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is noted that the pore measurements were obtained by a mercury porosimeter and not a perm porometer as claimed. However, one skilled in the art would expect the two different measurement means to result in the same or similar measurements for pore size so the pore size cited in Nitadori would be the same pore size measured from the perm porometer, or one skilled in the art would have found it obvious to choose a pore size within the taught range (0.02-1µm) while maintaining the thickness stated in Examples 1 and 3 as it is merely optimizing the pore size according to the results desired and the fluid treated. It is noted that the one could argue that the different ranges of pore size while maintaining the thickness is not taught with sufficient specificity to warrant an anticipation rejection but choosing values within a taught range would be prima facie obviousness.
Nitadori teaches that the membrane is made from a high density polyethylene (HDPE) and not a mixture of an ultra-high molecular weight polyethylene (UHMWPE) having a weight average molecular weight of 9 x 105 or more, and a high-density polyethylene (HDPE) having a weight average molecular weight of 2 x 105 to 8 x 105 and a density of 920 kg/m3 to 960 kg/m3, wherein the UHMWPE and the HDPE are present in the mixture at a mass ratio of 15:85 to 30:70. Nishida teaches that in making a membrane, the membrane can be made from a polyolefin alone, or more preferably made from two or more polyolefins ([0009]-[0011]). Nishida teaches that the combination of polyolefins is a mixture of an ultra-high molecular weight polyethylene (UHMWPE) having a weight average molecular weight of 2 x 106 or more, and a high-density polyethylene (HDPE) having a weight average molecular weight of 3.5 x 105, wherein the UHMWPE and the HDPE are present in the mixture at a mass ratio of 20:80 ([0102]). As such, one skilled in the art would have found it obvious to provide a membrane formed from a mixture of UHMWPE and HDPE as claimed and taught in Nishida as such membranes are known and used polyolefin membranes used as membrane filters in the art at the time of invention and one skilled in the art would have a reasonable expectation of success in doing so.
In regards to the density of the HDPE, Nitadori teaches that the density of the HDPE is 0.968 g/cm3 (968 kg/m3) (Example 1), which is close to the range claimed but does not overlap the claimed range. However, HDPE density in the art is known to be within the range of 0.941 g/cm3 (941 kg/m3) or greater ([0073]). As such, one skilled in the art would have found it obvious to use other HDPE within the range claimed rather than only the specific HDPE in Nitadori as it is merely replacing one commercially available HDPE with another with a reasonable expectation of success.
It is noted that the thickness is taught to be within the range of 30-50 and does not provide a teaching of the thickness being 58 µm or above as. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.). In this case, one skilled in the art would expect similar properties for the slightly higher thickness values taught (50 µm vs 52µm) and the water permeability values being close as there is no teaching of unexpected results for the slightly higher values in the specification. Therefore, it would have been obvious for to modify the thickness to be within the range claimed with a reasonable expectation of success.
Regarding claim 3, Nitadori teaches that the bubble pore diameter is in the range of 0.1-1.0 (C11/L9-19). It is noted that the same basis as discussed above for the measurements obtained via a perm porometer are applicable here as well.
Regarding claim 7, it is submitted that since Nitadori and the present invention use the same/similar testing standards (ASTM-F316), are made from the same components, have the same thickness and pore size, and the same bubble pore size, the property of bubble point pressure would also be the same even if not stated as the identical membrane cannot have two different properties, or it would have been obvious to modify the pore size within the taught range thereby resulting in the claimed bubble point pressure.
Regarding claim 9, it is submitted that the surfaces coated in Nitadori could be interpreted as only one main surface and inner surfaces of the pores of the polyolefin membrane as claimed.
Regarding claims 10-13, Nitadori teaches that the water permeability can be as high as 30 l/(hr*m2*mmhg) (approximately 384 mL/(min*cm2*MPa) after unit conversion) (C11/L9-19) with Example 1 teaching a water permeability of 7.9 l/(hr*m2*mmhg) (approximately 100 mL/(min*cm2*MPa) after unit conversion) and a pore size of 0.70 µm for example 1, and 0.41µm and 0.63 µm based on Table 7. Based on a water permeability of 100 mL/(min*cm2*MPa) and the taught pore diameters, the ratio would be 142 for 0.70µm, 243 for 0.41 µm, and 159 for 0.63µm, which some values overlap the range claimed. It is noted that the same basis as discussed above for the measurements obtained via a perm porometer are applicable here as well.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nitadori et al. (US 5,084,173) in view of Nishida et al. (US 2003/0168784) and Nazir et al. (US 2013/0323383), and further in view of Takita et al. (US 2009/0081543).
Regarding claim 6, it would be inherent for the membrane taught in Nitadori to have a surface roughness but Nitadori is silent on the exact surface roughness value. Takita teaches that a polyolefin membrane having pores of similar size to Nitadori can have a surface roughness of 300 nm (0.3 µm) ([0011]). As such, one skilled in the art would have found it obvious to provide a polyolefin membrane with similar surface roughness as is known in the prior art as such surface roughness values are known and used.
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive. It is noted that the arguments mirror points presented in the Ikuta declaration so Examiner will address both arguments and the declaration at the same time.
Applicant asserts that Nitadori is directed to a plasma separator, which would have different technical objectives and thus not applicable to the present invention. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). In this case, Nitadori abstract recites a membrane that is “especially useful for plasma separation” and C1/L41-55 discuss that membranes are applicable to a wide variety of fields. As such, limiting Nitadori to only plasma separation wrongly limits the produced membranes only to plasma separation as it fails to address all teachings present in Nitadori. Further, in response to applicant's argument that Nitadori is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as already discussed in Nitadori, membranes are used to separate compounds from a fluid based on filtering effect due to the pores in the membrane. This would be applicable regardless of the specific type of fluid being treated and would also be in the field of the inventor’s endeavor and reasonably pertinent to the particular problem with which the inventor was concerned. Lastly, the claims are directed to an apparatus claim. The specific fluid being treated and the effects of treating said fluid are considered intended uses. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). As such, the structure claimed is a membrane made from certain materials and having specific pore/thickness ratios. Modified Nitadori teaches the claimed membrane and the differences in how Nitadori preferably intends to use their membrane and how Applicant intends to use their membrane do not differentiate the claimed membrane from the prior art membrane.
Applicant argues that case law for the closely related ranges and overlapping ranges relates to optimization of a single parameter and thus not applicable the use for different parameters in Nitadori. It is noted that Applicant has provided no support for this position based on the MPEP or case law. Where claims have multiple ranges of different parameters taught, it is common for the prior art to teach multiple parameters that overlaps the claimed range and all of multiple parameters that overlap the claimed range would either be anticipated or obviated. It is noted that Examiner has only used the closely adjacent obviousness position as it is directed to the potential thickness values. Applicant has not provided any factual basis that the slightly higher claimed values would provide any unexpected results. The declaration provides only a statement that increasing thickness while decreasing pore diameter would resulting substantial reduction to water permeability. While large increase in thickness and a large decrease in diameter at the same time would provide a substantial reduction, Applicant’s own specification in Table 2 provides a basis that the relationship is much more nuanced and the t/x ratio alone is not the sole predictor of water permeability (compare example 5 with a lower t/x ratio than examples 1, 3, 6, and 7 but has a significantly lower water permeability which seems to contradict the general statement provided in the declaration).
Applicant asserts that the water permeability rates given in the examples in Nitadori do not overlap the claimed water permeability range claimed and thus does not read on the claim limitations. As discussed above, prior art is relevant for all that they contain and not limited solely to specific examples and preferred embodiments. Nitadori teaches that the water permeability can significantly overlap the claimed range and Table 2 of Applicant’s specification provides a basis that the relationship between thickness and water permeability is not as defined as Applicant presents (Example 5 has the lowest thickness and also the lowest water permeability and example 4 has a thickness in the middle of the range taught but has the highest water permeability). As such, narrowing the water permeability values to only the given examples in Nitadori are incorrect as Nitadori teaches a specific range that significantly overlaps the range claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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, Jennifer Dieterle can be reached at (571) 270-7872. 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.
/PETER KEYWORTH/Primary Examiner, Art Unit 1776
Prosecution Insights