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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 January 2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/KR2020/011401, filed 08/26/2020) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority (KR10-2020-0095919, filed 07/31/2020) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 2 recites “ASTM D257” and “ASTM D149”. It is understood that these references cite standard test methods for properties, i.e., DC resistance/conductance of insulating materials and dielectric breakdown voltage, respectively. However, because the elected invention is directed toward a nanomembrane apparatus/product, these references to standard test methods are interpreted as being directed toward process limitations by which the properties of the claimed apparatus/product are conducted and thus, are not subject to patentability.
It has been held that product-by-process limitations are not given patentable weight because patentability is based on the product—as opposed to the manner in which the product is made or measured. In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (“[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 view of this holding, as it applies to the recited limitations, the manners by which “volume resistance” and “dielectric strength” are measured are considered to be product-by-process language: e.g., because they describe how said “volume resistance” and “dielectric strength” parameters are measured. Additionally, these limitations are not being given patentable weight because the patentability of the instant claim is determined based on the product itself—as opposed to, say, the explicit instruments or equipment or methods by which the product is characterized. Thorpe supra.
Even further, Claims 1, 8, and 12 recite measurements of various properties (i.e., air permeability, dust collection efficiency, thermal shrinkage, and weight reduction). Such properties are inherent in the recited nanomembrane comprising a plurality of pores having an average diameter of 0.5 to 20 μm, with a maximum pore diameter of 30 μm, a minimum pore diameter of 0.1 μm, and a porosity of 50 to 90%, wherein a thermal shrinkage of the nanomembrane at 300°C is 1% or less, wherein a material constituting the nanomembrane is polyimide (PI), wherein an air permeability of the nanomembrane is 1 to 200 cm3/cm2/sec, wherein a weight reduction of the nanomembrane at 300°C is 1 % or less. So long as the prior art discloses or makes obvious the claimed nanomembrane, such recited limitations are considered inherent. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II).
Response to Amendments
Applicant’s amendments filed 22 January 2026 have been entered.
Claims 3, 5, 9, and 10 have been canceled; Claims 13-19 are withdrawn. Claims 1 and 12 have been amended. Overall, Claims 1, 2, 4, 6-8, and 11-19 are pending.
Applicant’s amendments with respect to the rejections of Claim(s) 1-8 and 10-12 under 35 U.S.C. 103 as being unpatentable over LEE et al. (KR 20200033669 A) have been fully considered. It is noted that the recited limitations of Claims 3, 5, and 10 have been included in independent Claims 1 and 12.
Response to Arguments
Applicant’s arguments filed 22 January 2026 with respect to the rejections of Claim(s) 1-8 and 10-12 under 35 U.S.C. 103 as being unpatentable over LEE et al. (KR 20200033669 A) have been fully considered.
Applicant states that as claimed, the invention “provides a nanomembrane that ensures both heat resistance
and durability by specifically describing not only the precise range of the pore structure but also the numerical values of thermal stability at high temperature, the air permeability and the weight reduction” (pg. 8, par. 2). Applicant addresses the prior art LEE, stating that the prior art fails to define the maximum and minimum diameters or limit the overall porosity to 50-90% (pg. 8, par. 3) and further, the prior art does not limit the thermal shrinkage ratio and weight loss ratio at 300°C or teach air permeability being 1-200 cm3/cm2/sec (pg. 8, par. 4). Therefore, Applicant argues that Claim 1 is patentable over LEE (pg. 9, middle). Applicant further argues for the same reasons, independent Claim 12 is patentable, as are dependent Claims 4, 6-8, and 11 by virtue of their dependencies (pg. 9, end).
The Examiner respectfully disagrees.
Applicant has restated the claimed invention and merely disagreed with the prior Office action’s interpretation/rejection of the claimed invention over LEE. The prior Office action acknowledged that LEE is deficient in explicitly disclosing the recited limitations; however, as explained in the rejections, these recited limitations are obvious over the prior art. Applicant has not provided any arguments addressing such obviousness rejections nor has Applicant provided any secondary considerations or evidentiary support as to why the claimed invention is not obvious over the prior art. As such, independent Claims 1 and 12 and dependent Claims 4, 6-8, and 11 are not patentable over the recited art.
Claim Rejections - 35 USC § 103
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.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4, 6-8, 11, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over LEE et al. (KR 20200033669 A; machine translation previously provided and referenced herein).
Regarding Claim 1, LEE discloses a filter medium for an electrostatic filter comprising a nanofiber nonwoven fabric sheet (pg. 2, top; pg. 3, bottom) ostensibly for use as an air filter to collect dust (pg. 3, top). The nanofiber layer material is polyimide (i.e., wherein a material constituting the nanomembrane is polyimide (PI); pg. 4, bottom). The nanofiber sheet comprises a nanofiber layer that has an average pore diameter of 0.3 to 7 µm (pg. 4, middle); LEE further teaches that outside the disclosed range, the dust collection efficiency decreases (above 10 µm pore size) and air resistance rapidly increases (below 0.01 µm) (pg. 4, middle); thus, the prior art discloses a range that overlaps with the claimed range of an average diameter of 0.5 to 20 µm and establishes a case of prima facie obviousness (MPEP 2144.05).
LEE further discloses the nanofiber layer has a porosity of 1 to 30% (pg. 7, middle). This is differentiated from the claimed invention requiring a “porosity of 50 to 90%”. However, LEE further discloses the nanofiber sheet is a laminate that is formed by directly electrospinning a solution containing a polymer dope onto an electrostatic nonwoven fabric (pg. 5, middle); even further, LEE teaches that the process of electrospinning allows for a more easily controlled porosity (pg. 5, bottom). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation absent unexpected results or evidence indicating such optimum or workable ranges are critical (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP§2144.05). In the instant case, because LEE teaches the porosity is controllable, one of ordinary skill in the art would find it obvious to adjust the porosity accordingly to the claimed range of 50 to 90% to produce the desired membrane with the desired properties.
LEE is differentiated from the claimed invention in that the claim requires a maximum pore diameter of 30 µm and a minimum pore diameter of 0.1 µm. However, as would be obvious to one of ordinary skill in the art, the fewer deviations in the pore sizes of individual pores from average would be advantageous; LEE teaches that pore diameters outside the disclosed range decreases the dust collection efficiency (i.e., above 10 µm pore size) and increases air resistance (i.e., below 0.01 µm) (pg. 4, middle). Thus, the claimed limitations requiring a specific maximum pore diameter and a minimum pore diameter would have been obvious to one of ordinary skill in the art.
Regarding the limitations “wherein a thermal shrinkage of the nanomembrane at 300°C is 1% or less”, “wherein an air permeability of the nanomembrane is 1 to 200 cm3/cm2/sec”, and “wherein a weight reduction of the nanomembrane at 300°C is 1% or less”, such properties are inherent and necessarily present in the recited nanomembrane. So long as the prior art discloses or makes obvious the claimed nanomembrane, such recited limitations are considered inherent. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). Because the prior art has disclosed or made obvious all structural limitations of the claimed product except for these specific claimed product properties, which the Examiner cannot determine whether the prior art inherently possesses, a case of prima facie obviousness has been established. The burden of proof shifts to the Applicant to show that the prior art reference does not teach or suggest the claimed inherent properties (In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980)).
Regarding Claim 2, LEE makes obvious the nanomembrane of Claim 1. Regarding the instant limitations “wherein a material constituting the nanomembrane has a volume resistance of 1.6 to 2.0×1016 Ω·cm (ASTM D257) and a dielectric strength of 200 to 600 kV/mm (ASTM D149)”, as noted in §Claim Interpretation, such limitations are directed toward process limitations in that these limitations describe methods/processes by which such properties of volume resistance and dielectric strength are measured (i.e., ASTM D257 and ASTM D149). This renders the limitations product-by-process limitations and therefore are not given patentable weight because patentability is based on the product—as opposed to the manner in which the product is made or measured. In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Even further, such properties as volume resistance and dielectric strength are necessarily present given the prior art anticipates or makes obvious the claimed membrane/apparatus of Claim 1, i.e., if the prior art discloses or makes obvious all claimed structural and functional limitations, any claimed property attributed to such structural or functional limitations are inherently expected. The discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel (In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368, Fed. Cir. 2004; MPEP §2112 I).
Regarding Claim 4, LEE makes obvious the nanomembrane of Claim 1. LEE further discloses a thickness range of 0.1 to 40 µm (pg. 7, bottom); however, LEE further provides examples of a polyacrylonitrile nanofiber layer having a thickness of 30 µm (pg. 9, top), which reads on the claimed range of a thickness of 1 to 30 µm.
Regarding Claim 6, LEE makes obvious the nanomembrane of Claim 1. LEE further discloses a surface density of 1 to 10 g/m2, which reads on the claimed range of a unit weight of the nanomembrane is 0.1 to 10 g/m2 (pg. 4, bottom).
Regarding Claim 7, LEE makes obvious the nanomembrane of Claim 1. LEE is deficient in disclosing a density of the nanomembrane is 0.1 to 1.0 g/cm3. However, LEE discloses the nanofiber sheet is a laminate that is formed by directly electrospinning a solution containing a polymer dope onto an electrostatic nonwoven fabric (pg. 5, middle); as is well-known to one of ordinary skill in the art, solution spinning conditions, e.g., temperature, dope discharge rate, and applied voltage are all controllable to achieve the desired nanomembrane density, e.g., higher density membranes can be achieved by increasing the discharge rate, applied voltage, and spinning duration. As such, nanomembrane density is considered a product-by-process limitation in that density is wholly determined based on the process by which the nanomembrane is produced; therefore, the limitation is not afforded patentable weight because patentability is based on the product—as opposed to the manner in which the product is made or measured. In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding Claim 8, LEE makes obvious the nanomembrane of Claim 1. Regarding the recited limitation “wherein a dust collection efficiency of the nanomembrane is 95% or more when measured with particles having a size of 5 µm, at an air flow rate of 32 L/min, and with a measurement area of 100 cm2”, the limitation recites an expected result (i.e., “dust collection efficiency”) based on a manner or method by which the claimed nanomembrane is used (i.e., “measured with particles… at an air flow rate… with a measurement area”). The manner or method in which an apparatus is to be utilized is not subject to the issue of patentability of the apparatus itself (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); MPEP §2115).
Even further, the recited limitation of “a dust collection efficiency of the nanomembrane is 95% or more” is directed toward an inherent property necessarily present in the claimed nanomembrane. So long as the prior art discloses or makes obvious the claimed nanomembrane, such recited limitations are considered inherent. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II). Because the prior art has disclosed or made obvious all structural limitations of the claimed product except for these specific claimed product properties, which the Examiner cannot determine whether the prior art inherently possesses, a case of prima facie obviousness has been established. The burden of proof shifts to the Applicant to show that the prior art reference does not teach or suggest the claimed inherent properties (In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980)).
Regarding Claim 11¸ LEE makes obvious the nanomembrane of Claim 1. LEE further discloses the nanofiber layer is formed by electrospinning a polymer dope solution via applied voltage to produce fibers (pg. 5, middle). Such a process yields nanofibers in the form of a non-woven fabric.
Regarding Claim 12, as explained earlier in the rejections of Claims 1, 4, and 8, LEE makes obvious the claimed dustproof nanomembrane.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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/Ryan B Huang/Primary Examiner, Art Unit 1777
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