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 Amendment
Acknowledgment is made to Applicant’s claim amendments received 15 May 2026. Claims 16, 17, 19, 20 and 22-30 are currently pending of which claims 26-30 are withdrawn from consideration. Claims 1-15, 18 and 21 have been cancelled.
Claim Rejections - 35 USC § 102
Acknowledgment is made to Applicant’s claim amendments received 15 May 2026. The rejections to the claim presented under 35 USC 102 in the Office Action of 17 February 2026 have been withdrawn.
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 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over 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 polymer layers formed of a polymer resin and hydrophilic organic particles with a mass % of, for example, 65 to 95 mass % (in the first layer and second layer on each side of the porous support, i.e. where the porous support is not located, and the layer comprises only resin and particle, a resin content of 5 to 45 mass %). Akutagawa further teaches that the porous support has a thickness of, most preferably, 80 to 250 microns, and the separator in total has a thickness of, most preferably, 150 to 300 microns, thus rendering obvious a porous support with a thickness of 150 microns or less in combination with a separator with a thickness of 225 microns or less (Paragraphs 0017, 0024, 0025, 0043, 0102-0104; Figure 1; MPEP 2144.05). Akutagawa further specifically teaching an embodiment with a porous support having a thickness of 87 microns and the separator having a thickness of 230 microns (Paragraphs 0102-0104), considered substantially equivalent to 225 microns.
As to claims 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 19 is rejected under 35 U.S.C. 103 as being unpatentable over Akutagawa as applied to claim 16 above, and further in view of US 2018/0171494 A1 to Ito et al. (Ito).
As to claim 19, Akutagawa teaches the apparatus of claim 16. Akutagawa fails to specifically teach the ionic resistance of the separator. However, Ito also discusses an alkaline electrolysis separator comprising a polymer, particles and support and 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 (Paragraphs 0007, 0049, 0068-0071). 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).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Akutagawa as applied to claim 16 above, and further in view of WO 2019/011844 A1 to Mues (Mues).
As to claim 20, Akutagawa teaches the apparatus of claim 16. Akutagawa teaches a final desired porosity for the alkaline separator, but fails to teach a specifically useful open area for the porous support itself. However, Mues also discusses a separator for alkaline electrolysis comprising a porous support and teaches that an effective open area of the porous support is between 40 and 70% (Paragraphs 021-038). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to utilize a support with an open area between 40 and 70% with the reasonable expectation of effectively providing the support as taught by Mues.
Response to Arguments
Applicant’s argument filed 15 May 2026 against the 35 USC 102 references have been fully considered and found persuasive. However, Applicant's arguments specifically in regards to Akutagawa and the new claim limitations have not been found persuasive at overcoming obviousness, which, as discussed above, the Examiner has newly presented as necessitated by amendment.
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 CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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