Claims 1-5, 7, 8, 11, 16, 19-21, 23, 24, 31, 33, 37, 39, 40, and 42 are currently pending with claims 6, 9, 10, 12-15, 17, 18, 22, 25-30, 32, 34-36, 38, 41 and 43 being cancelled. Claims 5, 7, 16, 19-21, 23, 24, 31, 33, 37, 39, and 40 have been withdrawn from consideration as being directed to a non-elected invention. Claims 1-4, 8, 11, and 42 are rejected.
The 112 rejection has been withdrawn in view of the amendment and response filed on 04/07/2026.
The rejection over Song has been maintained.
Claim Rejections - 35 USC § 102
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
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-4, 8, 11 and 42 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2018/0065105 to Song et al. (hereinafter “Song”).
Song discloses a multilayer sorbent polymeric membrane comprises a core layer and skin layer wherein the core layer comprises a polymer and sorbent materials with a weight ratio of 10:90, 15:85 or 20:80 (tables 2-4); and a plurality of interconnecting pores with an average pore size of 1 nm to 5 µm, and a porosity of 75% to 90% (paragraph 78) wherein the sorbent materials are carbon nanotubes or oxidized graphene (table 2). The pores can have an average pore size of less than 500 nm (paragraphs 122 and 124).
The multilayer sorbent polymeric membrane is useful in the production of a filter, an electrolyte battery, or a packaging material (abstract).
The membrane polymer comprises polyvinylidene fluoride with a melt viscosity of 50 kPa at 100 s-1 and 232oC (paragraph 112). The examiner takes the position that a solution viscosity of 100 to 10,000 cp measured at 5 wt% in NMP or at 2 wt% in water, at room temperature would inherently be present as the melt viscosity is within the range disclosed in the Applicant’s specification.
The interconnecting pores having the porosity of 75 to 90% indicates that the at least one layer of the polymeric membrane is a reticulated film (paragraph 78).
The sorbent materials are nanosized with a D50 of about 0.1 to 1000 nm (paragraph 51). The sorbent materials comprise carbon nanotubes, and oxidized graphene with a surface area of 100 m2/g and 1010 m2/g respectively (tables 2 and 3; table 3, examples 7-10). This is within the claimed range. The carbon nanotubes or oxidized graphene reads on the claimed carbon-based nanoparticles.
Song does not explicitly disclose that the core layer of the polymeric membrane exhibits a recovery of thickness or porosity, after being compressed and heated, of at least 30%.
However, it appears that the core layer of the polymeric membrane meets all structural limitations and chemistry required by the claims. The multilayer sorbent polymer membrane comprises a core layer and skin layer wherein the core layer comprises a polymer and sorbent materials with a weight ratio of 10:90, 15:85 or 20:80 (tables 2-4); and a plurality of interconnecting pores with an average pore size of 1 nm to 5 µm, and a porosity of 75% to 90% (paragraph 78) wherein the sorbent materials are carbon nanotubes or oxidized graphene (table 2). The multilayer sorbent polymeric membrane is useful in the production of a filter, an electrolyte battery, or a packaging material (abstract).
The polymer comprises polyvinylidene fluoride with a melt viscosity of 50 kPa at 100 s-1 and 232oC (paragraph 112). The examiner takes the position that a solution viscosity of 100 to 10,000 cp measured at 5 wt% in NMP or at 2 wt% in water, at room temperature would inherently be present as the melt viscosity is within the range disclosed in the Applicant’s specification.
The interconnecting pores having the porosity of 75% to 90% indicates that the at least one layer of the polymeric membrane is a reticulated film.
The sorbent materials are nanosized with a D50 of about 0.1 to 1000 nm (paragraph 51). The sorbent materials comprise carbon nanotubes, and oxidized graphene with a surface area of 100 m2/g and 1010 m2/g respectively (tables 2 and 3; table 3, examples 7-10). This is within the claimed range. The carbon nanotubes or oxidized graphene reads on the claimed carbon-based nanoparticles.
Therefore, the examiner takes the position that the recovery of thickness or porosity, after being compressed and heated, of at least 30% would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claims 2 and 4, the at least one layer of the polymeric membrane comprises polyvinylidene fluoride with a melt viscosity of 50 kPa at 100 s-1 and 232oC (paragraph 112).
As to claim 3, the at least one layer of the polymeric membrane comprises a plurality of interconnecting pores with an average pore size of 1 nm to 5 µm, and a porosity of 75% to 90% (paragraph 78). The pores can have an average pore size of less than 500 nm (paragraphs 112 and 124).
As to claim 8, the sorbent materials are nanosized with a D50 of about 0.1 to 1000 nm (paragraph 51). The sorbent materials comprise carbon nanofiber, and oxidized graphene with a surface area of 100 m2/g and 1010 m2/g respectively (table 2). This is within the claimed range.
As to claim 11, the at least one layer of the polymeric membrane includes a polymer and sorbent materials with a weight ratio of 10:90, 15:85 or 20:80 (table 4).
As to claim 42, the polymeric membrane is useful in the production of a filter, an electrolyte battery, or a packaging material (abstract).
Response to Arguments
Applicant points to an article “Structure-property correlation of polyvinyl alcohol films fabricated by different processing methods”, Zeng et al., Polymer Testing 126 (2023) 108143, and alleges that the recovery of thickness or porosity after being compressed and heated of at least 30% of the films created by Song and the claimed invention cannot be expected to be the same because they are produced by different processes. The examiner respectfully disagrees.
Firstly, Zeng teaches three films prepared from solution casting, blown extrusion and extrusion casting are structurally different regarding mechanical strength, oxygen barrier performance and transmittance of visible light. However, there is no indication in Zeng that the film is a reticulated coating material comprising carbon-based nanoparticles with a surface area of between 1 to 10,000 m2/g, nor does the film exhibit an open porous structure. Since the films of Zeng and Song are not structurally and compositionally the same, it is inappropriate to conclude that the recovery properties for the films of Song and the claimed invention differ based solely on Zeng’s findings.
Secondly, because the differences in the mechanical strength, oxygen barrier performance and transmittance of visible light do not necessarily result in a difference in recovery performance, a declaration is required to establish that to rebut the 35 USC 102/103 prima facie case.
Thirdly, it is noted that Song’s film is prepared through a combination of coextrusion and solution casting (paragraphs 115-117). As nowhere does Zeng disclose the combination of coextrusion and solution casting, again it is inappropriate to conclude that the recovery properties for the films of Song and the claimed invention differ based solely on Zeng’s findings.
Lastly, as previously discussed, the core layer of the polymeric membrane of Song is structurally and compositionally the same as the claimed film. The core layer comprises a polymer and sorbent materials with a weight ratio of 10:90, 15:85 or 20:80 (tables 2-4); and a plurality of interconnecting pores with an average pore size of 1 nm to 5 µm, and a porosity of 75% to 90% (paragraph 78) wherein the sorbent materials are carbon nanotubes or oxidized graphene (table 2). The pores can have an average pore size of less than 500 nm (paragraphs 122 and 124).
The multilayer sorbent polymeric membrane is useful in the production of a filter, an electrolyte battery, or a packaging material (abstract).
The polymer comprises polyvinylidene fluoride with a melt viscosity of 50 kPa at 100 s-1 and 232oC (paragraph 112). The examiner takes the position that a solution viscosity of 100 to 10,000 cp measured at 5 wt% in NMP or at 2 wt% in water, at room temperature would inherently be present as the melt viscosity is within the range disclosed in the Applicant’s specification.
The interconnecting pores having the porosity of 75 to 90% indicates that the at least one layer of the polymeric membrane is a reticulated film (paragraph 78).
The sorbent materials are nanosized with a D50 of about 0.1 to 1000 nm (paragraph 51). The sorbent materials comprise carbon nanotubes, and oxidized graphene with a surface area of 100 m2/g and 1010 m2/g respectively (tables 2 and 3; table 3, examples 7-10). This is within the claimed range. The carbon nanotubes or oxidized graphene reads on the claimed carbon-based nanoparticles.
Hence, the examiner takes the position that a recovery of thickness or porosity, after being compressed and heated, of at least 30% would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
While it is true that the average pore size of 5 to 320 Angstroms represents the pore size of the sorbent material, and not the pore size of the polymeric membrane, this does not render the claim unobvious because Song does teach the pore size of the polymeric membrane within the claimed range. The interconnecting pores has an average pore size of 1 nm to 5 µm (paragraph 78). In particular, the average pore size can be less than 500 nm (paragraphs 122 and 124).
Applicant also states that Song does not anticipate or suggest the claimed invention because none of the examples 7-10 contain PVDF and exhibit a porosity of at least 28% as required by the claim.
The examiner respectfully disagrees.
It is reminded that example is merely used for the purpose of illustration and should not be regarded as limiting the scope of the reference or the manner in which it can be practiced.
Additionally, Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). A fair reading of the reference as a whole indicates that average pore size of the polymeric membrane falls in the range 1 nm to 5 µm (paragraph 78). In particular, the average pore size can be in the range from 1 to 500 nm within the claimed range (paragraphs 122 and 124). The membrane polymer comprises polyvinylidene fluoride with a melt viscosity of 50 kPa at 100 s-1 and 232oC (paragraph 112).
Accordingly, the rejection over Song has been maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 8, 11 and 42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9-11, 31 and 32 of copending Application No. 17/617,068 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application disclose each and every limitation of the claims of the current application with the exception that the film exhibits a recovery of thickness or porosity, after being compressed and heated, of at least 30%.
However, this appears that a reticulated coating or film in the reference application and the current application are compositionally the same and obtained from the same casting process; therefore, the examiner takes the position that the recovery of thickness or porosity, after being compressed and heated, of at least 30% would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The provisional nonstatutory double patenting rejection has been maintained because applicant did not distinctly and specifically point out the supposed errors in the rejection. The rejection will not be withdrawn until submission of a terminal disclaimer.
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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights