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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/14/2026 has been entered.
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 the that the ratio t/x is from 80-630. 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 52 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 1/14/2026 have been fully considered but they are not persuasive. The above rejection has been modified to address the narrower thickness values claimed.
Applicant argues that the 0.1-0.5 µm range pore diameters are arbitrary. As discussed in the previous office action, In the case where the claimed ranges "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). Further, Examiner has used the argued values to further show even for the claimed pore size values that are wholly in the range taught in Nitadori, the t/x ratio of Nitadori would still have been within the range claimed. Applicant’s focus on the end points of the Nitadori spectrum do not consider the range as a whole or the large overlapping pore size between Nitadori range and the claimed range. Applicant has merely stated workable pore size ranges in Nitadori while keeping the approximate thickness range. Further, no unexpected results are shown over the claimed pore size range, only stated a well-known and expected relationship between pore size and removal efficiency based on the size of particles being filtered (see Nitadori C3/L22-27).
Conclusion
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777