DETAILED ACTION
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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on 03/06/2026.
Status of Rejections
The objections to the claims are withdrawn in view of applicant’s amendments.
The rejection of claim(s) 2-6 under 35 USC 112(b) is/are withdrawn in view of applicant’s amendment.
All other previous rejections are maintained and modified only in response to the amendments to the claims.
Claims 1-8 and 14-20 are pending and under consideration for this Office Action.
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, 4-6, 8 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Furuta et al. (JP 2018100434 A, citations based on translation) in view of Oda et al. (U.S. Patent No. 4,666,574); claim 3 evidenced by Minifibers (“Choosing The Proper Short Cut Fiber”, Minifibers Inc., 2024).
Regarding claim 1, Furuta teaches a separator for separating the anode and cathode compartments in electrochemical cells (see e.g. Paragraphs 0001-0003, separator between the two electrodes of electrolytic hydrogen generating device), comprising a support made of polypropylene fibers (see e.g. Paragraph 0007, lines 4-5, nonwoven fabric comprising fivers made of polypropylene).
Furuta does not teach a Fe(II)-containing precipitate deposited on the support, but does teach the separator having low resistance (see e.g. Paragraph 0006, lines 2-3) and being incorporated in a cell with electrodes directly attached to it (see e.g. Paragraph 0029, lines 3-4).
Oda teaches an electrolytic cell comprising a membrane partitioning an anode compartment and a cathode compartment (see e.g. Abstract), the membrane having bonded to it a porous non-electrode layer comprising an oxide or hydroxide of a metal such as Fe, exemplified by the Fe(III) compounds Fe2O3 and Fe(OH)3 (see e.g. Col. 2, lines 26-28, Col. 3, lines 43-36, and Table 4), the anode and/or cathode then being brought into contact with the non-electrode layer instead of the membrane, preventing generated gases from deforming/deteriorating the membrane, while maintaining low cell voltage/electric resistance (see e.g. Col. 1, lines 46-55, Col. 2, lines 2-7 and 43-61).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the separator of Furuta to comprise a porous non-electrode layer of metal oxides/hydroxides such as the Fe(III) compounds Fe2O3 and Fe(OH)3 bonded to its surface as taught by Oda to prevent generated gases from deforming/deteriorating the separator while maintaining low cell voltage/electric resistance.
Regarding claims 4 and 16, modified Furuta teaches the support being a non-woven textile support (see e.g. Furuta Paragraph 0009, line 2, nonwoven fabric).
Regarding claims 5 and 17-18, modified Furuta teaches the support being non-woven and having a thickness of 0.1 to 0.5 mm (see e.g. Furuta Paragraph 0021), falling within or overlapping the claimed ranges of the present invention.
MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Regarding claims 6 and 19, modified Furuta teaches the support being nonwoven and having a surface density of 50 to 200 g/m2 (see e.g. Furuta Paragraph 0020, basis weight being equivalent to surface density), overlapping the claimed ranges of the present invention (see MPEP § 2144.05 I as cited above).
Regarding claim 8, Furuta as modified by Oda teaches the Fe(III)-containing precipitate being in an air-dry state (see e.g. Oda Col. 11, lines 50-54, membrane with iron hydroxide layer dried in air).
Regarding claim 20, modified Furuta does not explicitly teach said surface density being approximately 25-40 g/m2. However, modified Furuta does teach the surface density being 50 to 200 g/m2 (see e.g. Furuta Paragraph 0020, basis weight being equivalent to surface density), the lower limit of which can be said to be close to 40 g/m2 and therefore close to or overlapping the approximate range of the claimed “approximately 25-40 g/m2”. MPEP § 2144.05 I further states “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”.
Claims 2-3 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Furuta in view of Oda, as applied to claim 1 above, and further in view of Kadija (U.S. 4,416,757).
Regarding claims 2 and 14, modified Furuta teaches all the elements of the separator of claim 1 as stated above. Modified Furuta does not explicitly teach the arithmetic mean of the pore sizes in the support being approximately 1-100 micrometers, of claim 2, or approximately 10-50 micrometers, of claim 14. Furuta does however teach the support being a fabric of the polypropylene fibers (see e.g. Furuta Paragraph 0007, lines 4-5).
Kadija teaches a diaphragm for use in electrolysis (see e.g. Abstract) comprising a thermoplastic polymer such as polypropylene in the form of a fabric (see e.g. Col. 1, lines 64-65 and Col. 2, lines 28-30), with a pore size in the range of preferably 5 to 40 microns (see e.g. Col. 2, lines 30-32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the support of modified Furuta to have a mean pore size of 5 to 40 microns as taught by Kadija as a preferable pore size for a fabric of a polymer such as polypropylene used in a diaphragm for electrolysis. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. 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 would yield nothing more than predictable results.
Regarding claims 3 and 15, modified Furuta teaches the fibre thickness in the support being 16.8 to 53.1 micrometers (see e.g. Furuta Paragraph 0007, lines 4-6, polypropylene fibers having a fineness of 2 to 20 dtex, equal to 16.8 to 53.1 µm, as evidenced by Minifibers, see e.g. Minifibers Pages 1-2), overlapping the claimed ranges of the present invention (see MPEP § 2144.05 I as cited above).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Furuta in view of Oda, as applied to claim 1 above, and further in view of Haring et al. (U.S. 2006/0231484).
Regarding claim 7, modified Furuta teaches all the elements of the separator of claim 1 as stated above. Furuta as modified by Oda further teaches the Fe(III)-containing precipitate comprising Fe(OH)3 and Fe2O3 (see e.g. Oda Table 4). Modified Furuta does not explicitly teach the Fe(III)-containing precipitate also comprising FeO(OH), but does however teach the desire for the separator to have low resistance (see e.g. Furuta Paragraph 0006, lines 2-3).
Haring teaches membranes for use in electrolysis cells (see e.g. Abstract and claim 30) comprising a polymer matrix upon which an inorganic components comprising an oxide, hydroxide and/or oxyhydroxide of a metal such as iron, i.e. FeO(OH), is precipitated (see e.g. Paragraphs 0014, 0029 and 0036-0037 and Claim 23), these inorganic components reducing ionic resistance as compared to a purely organic membrane (see e.g. Paragraphs 0180-0181).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Fe(III) containing precipitate of modified Furuta to further comprise iron oxyhydroxide, i.e. FeO(OH), as taught by Haring to as an additional inorganic component that can further reduce the ionic resistance of the separator. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. 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 would yield nothing more than predictable results.
Response to Arguments
Applicant's arguments filed 03/06/2026 have been fully considered but they are not persuasive.
On pages 6-7, Applicant argues that the restriction requirement should be withdrawn because the factual basis of the unity determination was changed. This is not considered persuasive. Though different references were cited, the basis of the restriction—that the shared technical feature was not special—remained the same. The new references were cited to support this conclusion.
On pages 10-11, Applicant argues that the separator of the instant invention is designed for electrochemical production of ferrates which has a fundamentally different environment from the electrochemical systems of the cited references, and materials stable under one would not necessarily be stable in the other. This is not considered persuasive. The claim does not specifically recite any limitations related to electrochemical production of ferrates, and instead generically claims “a separator for separating the anode and cathode compartments in electrochemical cells”. Furthermore, this would relate to the intended use of the separator. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…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.”. Furuta as modified by Oda teaches all the structural limitations required by the claim.
On page 12-13, Applicant argues that the cited references do not recognize the problem solved by the invention. This is not considered persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As stated above, Furuta as modified by Oda teaches all the structural limitations required by the claim.
On pages 12-13, Applicant argues that Furuta does not provide motivation for the modifications because it addresses a different electrochemical environment than the ferrate electrolysis of the instant disclosure. This is not considered persuasive. As stated above, the claim does not specifically recite any limitations related to electrochemical production of ferrates. The motivation for combination of the references does not need to be the same as the instant disclosure. The motivation relied on in the rejection was the teaching of Oda of providing a membrane of an electrolytic cell with a layer including oxides or hydroxides of a metal such as Fe preventing generated gases from deforming/deteriorating the membrane, while maintaining low cell voltage/electric resistance (see e.g. Oda Col. 1, lines 46-55, Col. 2, lines 2-7 and 43-61), therefore providing the basis for the combination of Oda with Furuta for the stated advantages, said combination teaching all the structural limitations of the claim. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
On pages 13-15, Applicant argues that the rejections constitute hindsight reconstructed by selecting isolated features of unrelated electrochemical systems which do not teach or suggest the ferrate electrolysis of the instant disclosure. This is not considered persuasive. As stated above, the claim does not specifically recite any limitations related to electrochemical production of ferrates, and such limitations relate to intended use (see MPEP § 2114 as cited above). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Furuta, Oda, Kadija and Haring all relate to separators/membranes/diaphragms used in electrolysis cells (see e.g. Furuta Paragraphs 0001-0002; see e.g. Oda Abstract; see e.g. Kadija Abstract; see e.g. Haring Abstract and Claim 30). The motivations for combination of these references come from the references themselves—e.g. for preventing generated gases from deforming/deteriorating the membrane, while maintaining low cell voltage/electric resistance (see e.g. Oda Col. 1, lines 46-55, Col. 2, lines 2-7 and 43-61) and reducing ionic resistance as compared to a purely organic membrane (see e.g. Haring Paragraphs 0180-0181)—and/or are supported by a KSR rationale (see MPEP § 2143(I)(A) as cited in the rejections above), and therefore are not based knowledge gleaned only from the applicant’s disclosure.
On page 16, Applicant argues that Kadija and Haring are not analogous art because they are not in the same field of endeavor as the present invention, i.e. separators suitable for use in electrochemical cells for the production of alkali metal ferrates, and do not address the problem of separator stability separator stability in ferrate electrolysis systems faced by the inventors. This is not considered persuasive. Both Kadija and Haring are directed to the field of separators/diaphragms/membranes for use in electrolysis cells (see e.g. Kadija Abstract; see e.g. Haring Abstract and Claim 30), which can reasonably be considered to be the same broad field of the instant invention, as established in the preamble of the claims and generally described on page 1 of the instant specification.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Monzyk et al. (U.S. 2009/0205973) discloses an electrochemical cell for production of ferrates comprising an anode and cathode separated by a screen with pore sizes of 0.01 to 100 microns made of a material such as polypropylene that will not be rapidly attacked by caustics or oxidizers.
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.
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/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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