DETAILED ACTION
This Office Action is responsive to the amendment filed on 6/12/2026.
The objections and rejections not addressed below are deemed withdrawn.
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 present application is being examined under the pre-AIA first to invent provisions.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
Claim 4-5, 8-10, 12-14, 16, 17, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Steenblock et al, US5703161.
Steenblock discloses film, corresponding to the claimed membrane (for claim 10) made from a polymer mixture comprising a first polyether block amide (PEBA), a second PEBA, and an ethylene/vinyl acetate/maleic anhydride terpolymer (abstract).
Regarding the claimed block copolymer: Steenblock’s first PEBA comprises 40 to 70 wt%, overlapping the claimed range (for claims 6, 10) of a soft polyethylene glycol block. Note that Steenblock does not teach the inclusion of any other comonomers/polymers in said soft block but rather specifically refers to this block as a polyethylene glycol block; the prior art soft block therefore comprises 100 wt% polyethylene glycol (for claims 7, 8, 10), corresponding to the claimed flexible block which is a polyether (for claims 2, 3, 10). The first polyether block amide comprises 30 to 60 wt%, overlapping the claimed range (for claims 6, 10), of a rigid polyamide block which may be polyamide 12 or polyamide 11 (for claims 5, 8)-i.e., the mean carbon content of the repeating unit is either 11 or 12 (for claims 4, 10) (Column 2: lines 21-31).
Regarding claim 13: The prior art film has a thickness less than 150 µm (Column 3: lines 47-49), overlapping the claimed range.
Regarding claim 14: The prior art film further comprises a second polyether block amide comprising rigid polyamide blocks and soft polyethylene glycol blocks and an ethylene/vinyl acetate/maleic anhydride terpolymer (Column 2: lines 32-39), corresponding to the at least one polymer(s).
Regarding claim 20: As disclosed by Steenblock, the prior art first PEBA does not contain any blocks other than the polyamide blocks, corresponding to the claimed rigid polyamide block, and the polyethylene glycol block, corresponding to the claimed flexible block (Column 2: lines 28-31).
Steenblock does not specifically disclose the production of a film wherein the first polyether block amide comprises 60 to 90 wt% of the soft block and 10 to 40 wt% of the rigid block.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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) (MPEP § 2144.05). The prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious at the time the invention was effectively filed to prepare a film wherein the first polyether block amide had the content of the soft blocks and rigid blocks within the required ranges in view of the teachings of Steenblock.
Regarding the properties of selectivity (for claim 10), elongation at break (for claim 9), and permeability to water vapor (for claim 12):“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the prior art discloses a film prepared from a composition that comprises a first polyether block amide which has the same structure as the block copolymer recited in the instant claims. Furthermore, the prior art film is required to comprise said first polyether block amide in an amount in the range of 50 to 85 wt% (Column 2: line 28). Note that applicant’s specification teaches that the claimed membrane should comprise at least 50 wt% of the recited copolymer and not more than 50 wt% of additional polymer(s) (specification page 18: lines 33-36). The film of Steenblock therefore comprises the same polymer components combined in the same amounts as applicant’s disclosed membrane. As the prior art film appears to be identical to the claimed membrane, an ordinary artisan would reasonably expect that its properties would be the same as those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed membrane would not be present in the film rendered obvious by Steenblock (for claims 9, 10, 12).
Regarding the claimed process steps (for claims 16, 17): "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113). As discussed above, PEBAX® MX1074 has the same structure comprising rigid polyamide blocks and soft polyethylene glycol blocks combined in the same amounts as the claimed copolymer. As the prior art copolymer appears to be identical to the claimed copolymer, the burden is shifted to applicant to provide evidence that the recited process steps result in an unobvious difference between the claimed invention and the prior art (for claims 16, 17).
Regarding claims 21, 22: Applicant’s specification teaches that the claimed membrane advantageously comprises at least 50 wt% of the copolymer recited in the instant claims and not more than 50 wt% additional polymer(s) (specification page 18: lines 33-36). As noted above, the composition of Steenblock is required to comprise the first PEBA in an amount of 50 to 85 wt%, one of ordinary skill in the art will therefore recognize that maximum amount for the combination of the second PEBA and the poly(ethylene-vinyl acetate-maleic anhydride) in the film of Steenblock is 50 wt%. The amounts of the additional components are therefore within the range taught by applicant’s own specification. Furthermore, applicant’s specification teaches that the additional polymers which may be present in the claimed film include additional PEBA and ethylene/vinyl acetate/maleic anhydride copolymers (see specification page 18: lines 13-14, 20-22, 32). The evidence in the record therefore does not demonstrate that either the second PEBA or the ethylene/vinyl acetate/maleic anhydride copolymers of Steenblock would be excluded by the phrase “consisting essentially of”. The prior art film therefore corresponds to the claimed invention consisting essentially of the recited components.
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive with respect to the rejection over Steenblock.
Applicant argues that the prior art does not render the claimed invention obvious because Steenbock is focused on a polymer blend, whereas the claimed invention is membrane that is only required to comprise a single polymer.
In response, it is noted that independent claim 10 recites a membrane comprising (emphasis added) the recited copolymer. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03(I)). As written, the claimed invention does not contain any language that would prohibit the inclusion of any other polymer(s) and/or component(s) in addition to the copolymer specifically defined in claim 10. On the contrary, the use of the open-ended transitional term “comprising” allows the claimed invention to read on membranes made from compositions including additional, unrecited element(s). The mere fact that the composition used to make Steenblock’s film contains additional polymer components therefore does not distinguish the prior art from the claimed invention.
With regards to newly added claims 21 and 22, the examiner notes that these claims state the claimed membrane consists essentially of (emphasis added) the recited copolymer.
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention; see In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). "A ‘consisting essentially of’ claim occupies a middle ground between closed claims that are written in a ‘consisting of’ format and fully open claims that are drafted in a ‘comprising’ format"; see PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317 F.2d 951, 137 USPQ 893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660, 7 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 (MPEP § 2111.03(III)).
The composition of Steenblock contains 50 to 85 wt% of a first PEBA, corresponding to the claimed copolymer as discussed earlier in this Action; 10 to 40 wt% of a second PEBA, and 5 to 40 wt% of a poly(ethylene-vinyl acetate-maleic anhydride) polymer. Applicant’s specification teaches that the claimed membrane may comprise at least one additional polymer such as copolymers containing rigid blocks and flexible blocks such as copolymers containing polyamide blocks and polyether blocks, ethylene-vinyl acetate-maleic anhydride terpolymers, and mixtures thereof (specification page 18: lines 13-14, 20-22, 32). The phrases “at least one” and “and mixtures thereof” as recited in applicant’s specification allows for more than one of the listed additional polymers to be present. Note that the second PEBA and the poly(ethylene-vinyl acetate-maleic anhydride) of the composition of Steenblock correspond to the copolymers containing rigid blocks and flexible blocks such as copolymers containing polyamide blocks and polyether blocks and the ethylene-vinyl acetate-maleic anhydride terpolymers, respectively, which the instant specification teaches may be present in the claimed membrane.
Furthermore, applicant’s specification teaches that the claimed membrane advantageously comprises at least 50 wt% of the copolymer recited in the instant claims and not more than 50 wt% additional polymer(s) (specification page 18: lines 33-36). As noted above, the composition of Steenblock is required to comprise the first PEBA in an amount of 50 to 85 wt%, one of ordinary skill in the art will therefore recognize that maximum amount for the combination of the second PEBA and the poly(ethylene-vinyl acetate-maleic anhydride) in the film of Steenblock is 50 wt%. The amounts of the additional components are therefore within the range taught by applicant’s own specification.
In summary, Steenblock’s second PEBA and poly(ethylene-vinyl acetate-maleic anhydride) are the same polymers that applicant’s specification teaches may be included in the claimed membrane, and are present in the film of Steenblock in the same amount as taught by applicant’s specification. The evidence in the record therefore does not demonstrate that the additional polymer components of Steenblock would be prohibited by the transitional phrase “consisting essentially of”. On the contrary, applicant’s disclosure that the claimed invention may comprise the same polymers in the same amounts is evidence that the composition of Steenblock would fall within the scope of the claimed invention which consists essentially of the recited copolymer. The burden is therefore shifted to applicant to provide evidence demonstrating that the presence of the additional polymer components of Steenblock would materially affect the basic and novel characteristic(s) of the claimed invention. As such evidence has not been presented, it is not persuasive to merely argue that the prior art film is made from a multi-component blend.
Applicant argues that Steenblock does not teach CO2 permeability, O2 permeability, or gas selectivity and therefore cannot render obvious the claimed invention.
In response, it has been held that “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims; see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). See also In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present) (MPEP § 2112.01(II)).
As discussed earlier in this Action, Steenblock discloses a film made from a composition which comprises the same components combined in the same amounts as taught in applicant’s specification for the production of the claimed membrane. It is therefore reasonably expected that its properties would not be materially different from those of the prior art film. In response to applicant’s arguments that Steenblock's requirement that the prior art film comprise 5 to 40 wt% of an ethylene/vinyl acetate/maleic anhydride copolymer would affect the permeability properties of the prior art film, it is noted that, as discussed earlier in this Action, applicant’s own specification explicitly states that the claimed film may comprise ethylene/vinyl acetate/maleic anhydride polymers in an amount less than 50 wt% (specification page 18: lines 32 and 35-36). It is therefore not persuasive to merely allege that the prior art film would not have the required permeability properties because it comprises 5 to 40 wt% of an ethylene/vinyl acetate/maleic anhydride copolymer, as applicant’s specification teaches that the claimed invention may comprise such polymers in an amount in the prior art range.
The burden is therefore shifted to applicant to provide evidence demonstrating that the prior art film would not have the required permeability properties. As such evidence has not been presented, applicant’s argument is not persuasive.
Applicant argues that the claimed invention yields unexpected results.
As discussed in the previous Office Actions, incorporated herein by reference, Membrane 6 cited by applicant from the specification is reported to have rigid blocks which are polyamide 6; one of ordinary skill in the art will recognize that the term “polyamide 6” refers to a polyamide wherein the repeating unit contains 6 carbon atoms. Note, however, that the claimed invention requires that the mean carbon content of the repeating unit of the rigid polyamide block is greater than or equal to 7. Membrane 6 therefore does fall within the scope of the claimed invention, and any data obtained from it cannot be used as evidence that the claimed invention yields unexpected results.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (MPEP § 716.02(d)).
Applicant cites a single example-Membrane 7-as evidence that the claimed invention yields unexpected results. As reported in the specification, Membrane 7 is made from a block copolymer wherein the flexible blocks are polyethylene glycol and the rigid polyamide blocks are polyamide 11. In contrast, the claimed invention recites a block copolymer wherein the rigid blocks can be any polyamide wherein the repeating unit has a mean carbon content of 7 or more. Applicant’s citation of a single example wherein polyamide 11 does not demonstrate that the allegedly unexpected results may be obtained from all other species within the scope of the recited copolymer.
Furthermore, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range; see In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP 716.02(d)(II)). The block copolymer as recited in the instant claims may comprise flexible blocks in any amount in the range of 60 to 90 wt% and rigid blocks in any amount in the range of 10 to 40 wt%. In contrast, applicant cites a single block copolymer comprising 60 wt% flexible blocks and 40 wt% rigid blocks. No evidence has been provided to demonstrate that the allegedly unexpected results may be obtained when the amounts of rigid and flexible blocks are any values other than 40 wt% and 60 wt%, respectively. The cited evidence therefore is not commensurate in scope with the claimed invention with regards to either the ranges for the amounts of each component or the broad range of polymers that can be used as the rigid blocks of the recited block copolymer. Applicant’s argument that the claimed invention yields unexpected results therefore is not persuasive. The rejection over Steenblock is therefore maintained.
Applicant argues that new claims 21 and 22 are not obvious over Steenblock, alleging that the presence of the ethylene-vinyl acetate-maleic anhydride polymer of Steenblock would materially affect the novel characteristics of the claimed invention. In response, it is noted that, as discussed earlier in this Action, applicant’s own specification teaches that ethylene-vinyl acetate-maleic anhydride polymers may be included in the claimed membrane in an amount of 50 wt% or less (specification page 18: lines 13-14, 32-36); note that the prior art range of 5 to 40wt% for the ethylene-vinyl acetate-maleic anhydride polymer is entirely encompassed by the range taught in the instant specification. Applicant’s own specification therefore contradicts this argument, as it explicitly states that the claimed invention may comprise an ethylene-vinyl acetate-maleic anhydride polymer in an amount within the range taught by Steenblock.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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