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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/30/2025 has been entered.
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 Claims 5, 7, 16, 19-21, 23, 24, 31, 33, 37, 39, and 40 have been withdrawn from consideration as being directed to a non-elected invention.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 under consideration.
All of the rejections have been maintained.
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, 8, 11 and 42 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.
As to claim 1, it is confusing what is meant by “at 2 wt% for water soluble polymers”. Which material is present in 2 wt%. Does Applicant want to convey 2 wt% in water? Further, it is unclear if there is a connection between the resin and the water-soluble polymer. Are they the same or different from each other? Appropriate correction is required.
As to claim 3, it is unclear what has an average pore size of less than 500 nm. Does Applicant want to convey the open pores having an average pore size of less than 500 nm? Substitution of “an average pore size” for “the average pore size” is appropriate to avoid the issue of lack of antecedent basis in the claim.
As to claim 11, it is not clear whether the polymer is the same or different than the resin. Substitution of “a weight percent” for “the weight percent” is appropriate to avoid the issue of lack of antecedent basis in the claim.
Response to Arguments
The 112 rejection has been maintained because applicant did not distinctly and specifically point out the supposed errors in the rejection.
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 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; and a plurality of interconnecting pores with an average pore size of 5 to 320 Angstroms, and a porosity of 55 to 75% wherein the sorbent materials are carbon nanotubes or oxidized graphene (abstract, figure 4, and tables 2-4, examples 7-10). The multilayer sorbent polymer 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 55 to 75% indicates that the at least one layer of the polymeric membrane is a reticulated film. That is further supported by figure 2. The interconnection pores have an average pore size is in the range of 5 to 320 Angstroms which is below 500 nm required by the claim (figure 4).
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 core layer comprises a polymer and sorbent materials with a weight ratio of 10:90, 15:85 or 20:80; and a plurality of interconnecting pores with an average pore size of 5 to 320 Angstroms, and a porosity of 55 to 75% wherein the sorbent materials are carbon nanotubes or oxidized graphene (abstract, figure 4, and tables 2-4, examples 7-10). The polymer 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 55 to 75% indicates that the at least one layer of the polymeric membrane is a reticulated film. That is further supported by figure 2. The interconnection pores have an average pore size is in the range of 5 to 320 Angstroms which is below 500 nm required by the claim (figure 4).
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 includes a polymer and sorbent materials with a weight ratio of 10:90, 15:85 or 20:80, and a plurality of interconnecting pores with an average pore size of 5 to 320 Angstroms, and a porosity of 55 to 75% (abstract, figure 4, and table 4). The average pore size is below 500 nm as required by the claim (figure 4).
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 polymer 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 properties 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. The film of Song is produced through extrusion while the film of the present invention is produced by solution casting. Since the films of Zeng, Song and the claimed invention are not structurally 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, Song discloses that the 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 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; and a plurality of interconnecting pores with an average pore size of 5 to 320 Angstroms, and a porosity of 55 to 75% wherein the sorbent materials are carbon nanotubes or oxidized graphene (abstract, figure 4, and tables 2-4, examples 7-10). The polymer 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 55 to 75% indicates that the at least one layer of the polymeric membrane is a reticulated film. That is further supported by figure 2. The interconnection pores have an average pore size is in the range of 5 to 320 Angstroms which is below 500 nm required by the claim (figure 4).
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.
Accordingly, the rejection over Song is 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
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