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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 27 October 2025 is acknowledged. The traversal is on the grounds that Ito does not teach the limitations of claim 16, determined to be the common technical features. This is not found persuasive. As discussed in the 35 USC 102 rejections below, the Examiner disagrees.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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 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.
Claims 16-18, 21-23 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0171494 A1 to Ito et al. (Ito).
As to claims 16, 17 and 18, Ito teaches a separator for alkaline electrolysis comprising a porous support (92), the separator comprising a porous polymer membrane (91) layer extending throughout the porous support so that the porous support is not exposed, and thus a first porous layer and a second porous layer provided respectively on one side and the other side of the porous support, the separator having a total thickness of, for example, 80 microns, and as the porous support is smaller than the separator, a porous support of less than 80 microns (Paragraphs 0049 and 0071; Figure 1).
As to claims 21, 22 and 23, Ito teaches the apparatus of claim 16. Ito further teaches that the first and second porous layers include a polymer resin, such as polysulfone, and hydrophilic inorganic particles such as zirconium oxide (Paragraphs 0068-0070).
As to claim 25, Ito teaches the apparatus of claim 16. The first and second layers of Ito are the same (Paragraphs 0049, 0068-0070).
Claims 16, 17 and 21-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/066911 to Akutagawa et al. (Akutagawa).
As to claims 16 and 17, Akutagawa teaches a membrane (1), separator, for alkaline electrolysis comprising a porous support (3) completely impregnated with a porous polymer layer (2), the porous polymer layer thus forming a first layer and second layer on each side of the porous support, the porous support having a thickness of 87 microns and the separator having a thickness of 230 microns (Paragraphs 0102-0104; Figure 1).
As to claims 21, 22, 23 and 24, Akutagawa teaches the apparatus of claim 16. Akutagawa further teaches that the porous polymer layers are formed of a polymer resin, polysulfone, and hydrophilic inorganic particles, magnesium hydroxide, with a D50 of 0.28 microns (280nm) (Paragraphs 0102-0104).
As to claim 25, Akutagawa teaches the apparatus of claim 16. As discussed above, the first and second layers are the same.
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.
Claims 16, 17, 18, 20, 21, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/011844 A1 to Mues (Mues).
As to claims 16, 17 and 18, Mues teaches a separator (1) for alkaline electrolysis comprising a porous support (10), a first porous layer (20) and a second porous layer (30) on respectively one side and the other side of the porous support (10). Mues teaches that the porous support has a thickness of from 100 to 1000 microns and that the separator has a thickness of from 100 to 1000 microns, thus rendering obvious, for example, a porous support with a thickness of 100 microns and a separator with a thickness of 225 microns (Paragraphs 021-038; Figure 1).
As to claim 20, Mues teaches the apparatus of claim 16. Mues further teaches that the open are of the porous support is between 40 and 70% (Paragraph 035).
As to claim 21, 22 and 23, Mues teaches the apparatus of claim 16. Mues further teaches that the first and second layers include a polymer resin, polysulfone, and hydrophilic inorganic particles, such as zirconium oxide (Paragraphs 039-048).
As to claim 25, Mues teaches the apparatus of claim 16. Mues further teaches that the first and second layers are the same in that they are formed of the same materials (Paragraphs 039-048).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Ito as applied to claim 16 above, and as further discussed below.
As to claim 19, Ito teaches the apparatus of claim 16. Ito fails to specifically teach the ionic resistance of the separator. However, Ito teaches that a lower electrical resistance (associated with increased ion permeability) can improved the electrolysis efficiency, but that the gas barrier property, decreasing with increased ion permeability, is also important for product purity (Paragraph 0007). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the electrical resistance in view of the gas barrier property in order to optimize the efficiency and the purity as desired (MPEP 2144.05).
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794