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 .
DETAILED ACTION
Response to Amendment
The Amendment filed 6/26/26 has been entered and fully considered.
Claim(s) 1, 3, 4, 5, 6, 8, 9, 10, 11, 12, 13, 14, 15, 16 are pending, and fully considered.
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.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3, 4, 5, 6, 8, 9, 10, 11, 12, 13, 15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over "Gelled Graphene Oxide-Ionic Liquid Composite Membranes with Enriched Ionic Liquid Surfaces for Improved CO2 Separation" (herein known as FAM).
With regard to claim 1, FAM sufficiently teaches a separation membrane comprising a separation functional layer including:, especially at title
graphene oxide, especially at abstract
a hydrophilic ionic liquid that is a salt in a liquid state at 25°C; and , especially at abstract; pg 7395 col 1, pg 7389 col 1, "all components of the membranes are hydrophilic" especially at pg 7396 col 1; Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments, i.e. hydrophilic
a polymer, especially at abstract
wherein the graphene oxide and the polymer are dispersed in the ionic liquid, and, especially at abstract
wherein the polymer has a polar group, especially at abstract; Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments
In an alternative, assuming that it is taken that FAM does not sufficiently teach that EMIM is hydrophilic
It is noted that FAM sufficiently teaches BMIM ionic liquid, especially at table 3; which the Applicant has specifically listed BMIM as hydrophilic, in their instant table 1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide BMIM of FAM in place of EMIM of Fam, as a sufficiently analogous mixed-matrix membrane to enhance CO2 permeability and selectivity, with reasonably expected result; notably BMIM is merely the extension of the alkyl chain on the cation from an ethyl group to a butyl group.
With regard to claim 3, FAM sufficiently teaches
wherein the ionic liquid contains an imidazolium ion, especially at abstract
With regard to claim 4, FAM sufficiently teaches
wherein the ionic liquid contains tetrafluoroborate, especially at abstract
With regard to claim 5, FAM sufficiently teaches
wherein a content of the ionic liquid in the separation functional layer is wt% within the claimed range, especially at abstract
With regard to claim 6, FAM sufficiently teaches
wherein the polymer is compatible with each of the graphene oxide and the ionic liquid, especially at abstract
With regard to claim 8, FAM sufficiently teaches
an ether group, especially at abstract; Pebax contains ether group
With regard to claim 9, FAM sufficiently teaches
wherein the polymer includes a polyether block amide, especially at abstract
With regard to claim 10, FAM sufficiently teaches
a porous support member supporting the separation functional layer, especially at sections 1,2, pg 7397 col 1
With regard to claim 11, FAM sufficiently teaches
gutter (an intermediate layer) disposed between the separation functional layer and the porous support member, especially at sections 1,2, pg 7397 col 1
With regard to claim 12, FAM sufficiently teaches
being for use in separating carbon dioxide from a gas mixture containing carbon dioxide and nitrogen, especially at abstract
With regard to claim 13, FAM sufficiently teaches A separation membrane manufacturing method comprising:, especially at abstract
applying a thin film (coating) liquid containing graphene oxide, especially at abstract
a hydrophilic ionic liquid that is a salt in a liquid state at 25°C, and , especially at abstract; pg 7395 col 1, pg 7389 col 1, "all components of the membranes are hydrophilic" especially at pg 7396 col 1; Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments, i.e. hydrophilic
a polymer to a "support" (substrate) to obtain a coating film, especially at pg 7397 col 1
drying the coating film as to obtain a separation functional layer in which the graphene oxide and the polymer are dispersed in the ionic liquid, especially at pg 7395 col 2
In an alternative, assuming that it is taken that FAM does not sufficiently teach that EMIM is hydrophilic
It is noted that FAM sufficiently teaches BMIM ionic liquid, especially at table 3; which the Applicant has specifically listed BMIM as hydrophilic, in their instant table 1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide BMIM of FAM in place of EMIM of Fam, as a sufficiently analogous mixed-matrix membrane to enhance CO2 permeability and selectivity, with reasonably expected result; notably BMIM is merely the extension of the alkyl chain on the cation from an ethyl group to a butyl group.
With regard to claim 15, FAM sufficiently teaches a thin film (coating) liquid being capable of being applied to a substrate to manufacture a separation membrane that comprises a separation functional layer, the coating liquid comprising:, especially at abstract; Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim (see MPEP § 2114 & § 2173.05(g))
graphene oxide, especially at abstract
a hydrophilic ionic liquid that is a salt in a liquid state at 25°C, especially at abstract; pg 7395 col 1, pg 7389 col 1, "all components of the membranes are hydrophilic" especially at pg 7396 col 1; Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments, i.e. hydrophilic
and a polymer, especially at abstract
wherein in the separation functional layer, the graphene oxide and the polymer are dispersed in the ionic liquid, and, especially at abstract
wherein the polymer has a polar group, especially at abstract; Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments
In an alternative, assuming that it is taken that FAM does not sufficiently teach that EMIM is hydrophilic
It is noted that FAM sufficiently teaches BMIM ionic liquid, especially at table 3; which the Applicant has specifically listed BMIM as hydrophilic, in their instant table 1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide BMIM of FAM in place of EMIM of Fam, as a sufficiently analogous mixed-matrix membrane to enhance CO2 permeability and selectivity, with reasonably expected result; notably BMIM is merely the extension of the alkyl chain on the cation from an ethyl group to a butyl group.
Claim(s) 14, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over "Gelled Graphene Oxide-Ionic Liquid Composite Membranes with Enriched Ionic Liquid Surfaces for Improved CO2 Separation" (herein known as FAM) as evidenced by WO 2010/042647
[WO 2010/042647 provides extrinsic evidence that optimized IL coating solution having a viscosity of within the claimed range of 0.15 Pa·s or more, especially at pg7 last paragraph, pg 14 "FIG 69 is a chart showing rheological behavior of cellulose nanofiber solution gelled by an ionic liquid", pg 39 ln 26-pg 40 ln 5]
With regard to claim 14, FAM of does not specifically teach wherein the coating liquid has a viscosity of 0.15 Pa·s or more at 25°C.
FAM sufficiently teaches wherein the coating liquid has a viscosity of "18 cP" (0.018 Pa-s); and that inversing viscosity (i.e. gelation) helps to trap the dispersed GO particles, especially at section 3.1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide the coating liquid of FAM with a viscosity within the claimed range of FAM that increasing viscosity (i.e. gelation) helps to trap the dispersed GO particles, especially at section 3.1; otherwise, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05 PART II-A)
With regard to claim 16, FAM of does not specifically teach having a viscosity of 0.15 Pa-s or more at 25°c.
FAM sufficiently teaches wherein the coating liquid has a viscosity of "18 cP" (0.018 Pa-s); and that inversing viscosity (i.e. gelation) helps to trap the dispersed GO particles, especially at section 3.1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide the coating liquid of FAM with a viscosity within the claimed range of FAM that increasing viscosity (i.e. gelation) helps to trap the dispersed GO particles, especially at section 3.1; otherwise, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05 PART II-A)
Response to Arguments
Applicant's arguments filed 6/26/26 have been fully considered but they are not persuasive.
Applicant argues at page(s) 5, particularly “The Office rejected claims 1-6, 8-13, and 15 under 35 U.S.C. § 102(a)(l) as being anticipated by "Gelled Graphene Oxide-Ionic Liquid Composite Membranes with Enriched Ionic Liquid Surfaces for Improved CO2 Separation" (hereinafter "FAM"). Applicants respectfully traverse this rejection."
page(s) 5, particularly “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) (emphasis added). FAM fails to disclose each and every element recited in claim 1 for at least the following reasons.
page(s) 5, particularly “Claim 1 recites "a separation membrane comprising a separation functional layer including: graphene oxide; a hydrophilic ionic liquid that is a salt in a liquid state at 25°C; and a polymer."
page(s) 5, particularly “The Office asserted that FAM discloses graphene oxide, an ionic liquid that is a salt in a liquid state at 25°C, and a polymer. (citing FAM, Abstract, p. 7395 col. 1, 7389, col. 2). The Office also asserted that FAM discloses that the ionic liquid is hydrophilic, stating that "Pebax (polyether block amide) contains polar groups of polarpolyamide (PA) segments, i.e. hydrophilic." (see Office Action, p. 4, rejection of claim 2). The Office further asserted that Pebax contains polar groups of polar polyamide (PA) segments. (see Office Action, p. 3).
page(s) 5, particularly “FAM, however, fails to disclose or suggest, expressly or inherently, "a separation membrane comprising a separation functional layer including: graphene oxide; a hydrophilic ionic liquid that is a salt in a liquid state at 25°C; and a polymer," as claimed.
page(s) 5, particularly “The Office's assertion that FAM discloses a hydrophilic ionic liquid is in error because the Office's statement regarding hydrophilicity relates to the polymer matrix, namely Pebax, rather than
page(s) 6, particularly “the ionic liquid itself.
page(s) 6, particularly “Claim 1 recites that the ionic liquid is itself hydrophilic. The statement in FAM that "Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments, i.e., hydrophilic" does not establish that the ionic liquid contained in the selective layer is hydrophilic.
page(s) 6, particularly “FAM describes blends containing ionic liquid (IL) l-ethyl-3-methylimidazolium tetrafluoroborate [emim][BF4] as the ionic liquid contained in the selective layer (see FAM, Abstract). FAM further states that "[emim][BF4] was selected as the IL because it can be easily obtained and less costly than a number of alternative ILs" (see FAM, Section 1). In this regard, FAM discusses [emim][BF4] as the ionic liquid contained in the "selective layer," i.e., the separation functional layer (see FAM, Section 2.1, Materials).
page(s) 6, particularly “The present specification expressly defines the term "ionic liquid having hydrophilicity." Specifically, an ionic liquid is hydrophilic when the ionic liquid dissolves in water in Test 1, while the ionic liquid does not dissolve in isopropyl alcohol (IPA) and phase separation is confirmed in Test
page(s) 6, particularly “2. In contrast, in the case where an ionic liquid dissolves in water in Test 1 and the ionic liquid dissolves in isopropyl alcohol in Test 2, the ionic liquid is judged amphiphilic. (see original specification, para. [0028]-[0029]).
page(s) 6, particularly “According to Table 1 of the present application, [EMIM][BF4] is classified as "Amphiphilic," meaning it dissolves in both water and IPA. Under the explicit definition provided in the specification, [EMIM][BF4] used in FAM does not satisfy the requirement for "a hydrophilic ionic liquid" as recited in claim 1. In contrast, Table 1 shows that [BMIM][BF4] (1-butyl-3-methylimidazolium tetrafluoroborate) is classified as "Hydrophilic." This demonstrates that the specification distinguishes between different ionic liquids based on their hydrophilicity characteristics.
page(s) 6, particularly “One of ordinary skill would readily recognize that the [emim][BF4] described in FAM does not correspond to "a hydrophilic ionic liquid" as claimed.
page(s) 6, particularly “FAM, therefore, does not disclose "a hydrophilic ionic liquid that is a salt in a liquid state at 25°C," as claimed.
In response, respectfully, the Examiner does not find the argument persuasive. With regard to claim 1, FAM sufficiently teaches a separation membrane comprising a separation functional layer including:, especially at title
graphene oxide, especially at abstract
a hydrophilic ionic liquid that is a salt in a liquid state at 25°C; and , especially at abstract; pg 7395 col 1, pg 7389 col 1, "all components of the membranes are hydrophilic" especially at pg 7396 col 1; Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments, i.e. hydrophilic
a polymer, especially at abstract
wherein the graphene oxide and the polymer are dispersed in the ionic liquid, and, especially at abstract
wherein the polymer has a polar group, especially at abstract; Pebax (polyether block amide) contains polar groups of polar polyamide (PA) segments
In an alternative, assuming that it is taken that FAM does not sufficiently teach that EMIM is hydrophilic
It is noted that FAM sufficiently teaches BMIM ionic liquid, especially at table 3; which the Applicant has specifically listed BMIM as hydrophilic, in their instant table 1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide BMIM of FAM in place of EMIM of Fam, as a sufficiently analogous mixed-matrix membrane to enhance CO2 permeability and selectivity, with reasonably expected result; notably BMIM is merely the extension of the alkyl chain on the cation from an ethyl group to a butyl group.
Applicant argues at page(s) 6, particularly “Additionally, Applicants note that in FAM, for a separation membrane using amphiphilic"
page(s) 7, particularly “As described above, the effect of adding graphene oxide shows an opposite tendency between FAM and the present application. Therefore, FAM would not have led a person of ordinary skill in the art to predict that the selectivity would be improved by adding graphene oxide to a separation functional layer including a hydrophilic ionic liquid and a polymer. The advantageous effect disclosed in the present application is not achievable and would not have been expected from FAM.
page(s) 7, particularly “In contrast, in the present application, the selectivity a (CO2/N2) of the separation functional layer containing an ionic liquid having hydrophilicity and a polymer is 67.4 in Comparative Example 1, whereas the selectivity a of the layer further containing graphene oxide improves significantly to
page(s) 7, particularly “Furthermore, as a process for producing a separation membrane using amphiphilic [emim][BF4], FAM describes a complicated membrane preparation method in which hollow fibers are dip-coated four times with a PTMSP gutter layer solution, and a PTMSP solution is further deposited on the selective layer to protect it and "seal off any defects." (see FAM, Section 2.2, Membrane Preparation).
page(s) 7, particularly “[emim][BF4], the CO2/N2 selectivity of the separation functional layer containing Pebax/[emim][BF4] is 42, whereas the CO21N2 selectivity of the layer containing Pebax/[emim][BF4]/GO decreases to 34. Thus, the selectivity decreases due to the addition of graphene oxide (see FAM, p. 7398, Table 3).
page(s) 7, particularly “99.5 in Example 1. Thus, the separation performance improves due to the addition of graphene oxide (see original specification, p. 30, Table 2).
In response, respectfully, the Examiner does not find the argument persuasive. Evidence of unexpected results is irrelevant to a 35 U.S.C. § 102 anticipation rejection and cannot overcome it, as detailed in MPEP § 2131.04
FAM contradicts the Applicant by stating "The incorporation of GO clearly affects the CO2 permeance with a significant increase from 573 GPU at 0 wt % loading to 773 GPU at 0.5 wt % loading," at pg 7395
Evidence of unexpected results is irrelevant to a 35 U.S.C. § 102 anticipation rejection and cannot overcome it, as detailed in MPEP § 2131.04
Applicant argues at page(s) 7, particularly “In contrast, the present application shows that, by using an ionic liquid having hydrophilicity, the separation functional layer can be easily produced (see original specification, para. [0028], spanning pp. 8-9). Therefore, the feature that the separation functional layer can be easily produced without such a complicated multi-coating process could not have been expected from FAM."
In response, respectfully, the Examiner does not find the argument persuasive. Argument does not replace evidence where evidence is necessary (MPEP 2145 PART I) Applicant has not sufficiently shown evidence that the supposed ease of manufacturing was sufficiently an unexpected grounds for overcoming obviousness. Prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art. (MPEP 2145 PART II) Anticipation is not sufficiently refuted by merely asserting ease. Evidence of unexpected results is irrelevant to a 35 U.S.C. § 102 anticipation rejection and cannot overcome it, as detailed in MPEP § 2131.04
Applicant argues at page(s) 7, particularly “As such, FAM does not disclose or suggest "a separation membrane comprising a separation functional layer including: graphene oxide; a hydrophilic ionic liquid that is a salt in a liquid state at 25°C; and a polymer," as recited in claim 1."
page(s) 7, particularly “For at least the foregoing reasons, FAM does not disclose each and every element as set forth in claim 1.
page(s) 7, particularly “Claim 13 recites features similar to those recited in claim 1, and therefore distinguishes over
page(s) 8, particularly “FAM for reasons analogous to those discussed with respect to claim 1.
page(s) 8, particularly “Claim 15 recites features similar to those recited in claim 1, and therefore distinguishes over FAM for reasons analogous to those discussed with respect to claim 1.
page(s) 8, particularly “Claims 3-6, 8-12 and 14 depend from claim 1 or 13, recite additional features, and distinguish over FAM for at least the same reasons as those discussed with respect to claims 1 and 13, and/or for the
page(s) 8, particularly “Claim 2 is canceled, rendering the rejection of claim 2 moot.
page(s) 8, particularly “Accordingly, reconsideration and withdrawal of the rejection of claims 1, 3-6, 8-13 and 15 under 35 U.S.C. § 102(a)(l) as being anticipated by FAM are respectfully requested.
page(s) 8, particularly “Rejection Under 35 U.S.C. § 103
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to previous argument(s), which the Applicant is invited to see previous rebuttal(s), respectively.
Applicant argues at page(s) 8, particularly “The Office rejected claims 14 and 16 under 35 U.S.C. § 103 as being unpatentable over FAM. Applicants respectfully traverse this rejection."
page(s) 8, particularly “Obviousness is a question of law based on underlying factual inquiries. The factual inquiries are set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). The factual inquiries include:
page(s) 8, particularly “(a) determining the scope and content of the prior art;
page(s) 8, particularly “(b) ascertaining the differences between the claimed invention and the prior art; and
page(s) 8, particularly “(c) resolving the level of ordinary skill in the pertinent art.
page(s) 8, particularly “Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence, sometimes referred to as "secondary considerations," may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. Here, a prima facie case of obviousness cannot be established for at least the following reasons.
page(s) 8, particularly “Claims 14 and 16 depend from claim 13 or 15 and recite additional features. The deficiencies of FAM with respect to claims 13 and 15 were discussed above. Claims 14 and 16, therefore, distinguish over the FAM for at least the same reasons as claims 13 and 15, and/or for the additionally recited features.
page(s) 9, particularly “Accordingly, reconsideration and withdrawal of the rejection of claims 14 and 16 under 35
page(s) 9, particularly “U.S.C. § 103 as being unpatentable over FAM are respectfully requested.
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to previous argument(s), which the Applicant is invited to see previous rebuttal(s), respectively.
Applicant argues at page(s) 10, particularly “All objections and rejections having been addressed, it is respectfully submitted that the present application should be in condition for allowance and a Notice to that effect is earnestly solicited."
In response, respectfully, the Examiner does not find the argument persuasive. Applicant’s argument(s) refer to previous argument(s), which the Applicant is invited to see previous rebuttal(s), respectively.
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 ANTHONY R SHUMATE whose telephone number is (571)270-5546. The examiner can normally be reached on M,T,Th,F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached on (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY SHUMATE/
Primary Examiner, Art Unit 1773
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