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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/JP2021/034104, filed 16 September 2021) 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 (JP2020-165951, filed 30 September 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
The claims recite the phrase “moisture-permeable” and has seemingly defined the phrase in terms of an “attractive value” and “repulsive value” in units of kcal/mol. As described in the Specification: “the attraction value and repulsive value relative to water of the specific resin can be calculated using a method of calculating an attraction value and a repulsive value described below with water set as the solvent” (p0025) and further “The lower the attraction value, the higher the hydrophilicity tends to be. From the viewpoint of achieving superior water resistance, the attraction value relative to water of the specific resin is, for example, -600 kcal/mol or greater, and is preferably -500 kcal/mol or greater” (p0026) and even further, “The higher the repulsive value, the higher the hydrophobicity tends to be. From the viewpoint of achieving superior moisture permeability, the repulsive value relative to water of the specific resin is, for example, 300 kcal/mol or less, and is preferably 200 kcal/mol or less” (p0027).
With respect to Claim 1, Applicant has claimed that the moisture-permeable membrane has “an attraction value relative to water of -110 kcal/mol or less and a repulsive value relative to water of 35 kcal/mol or greater”; based on this claimed limitation and the explanation provided in the disclosure, this indicates that the claimed moisture-permeable membrane has both hydrophilic and hydrophobic properties.
However, regarding the specific attraction value and repulsive value ranges cited, Applicant indicates such values are determined by calculations based on calculation method disclosed in FIG. 2 and summarized in p0107-0123 requiring molecular dynamics, among other steps.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 and 9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by CHILDS et al. (US 2006/0121217 A1).
Regarding Claim 1, CHILDS discloses a composite material comprising layered hydrophilic coatings on a support member (i.e., a… membrane disposed on at least one side of the… substrate; abstract). Briefly, the support member comprises a plurality of pores (i.e., a porous substrate; p0008) and the layered coatings include a first polymer layer with hydrophobic and hydrophilic properties and a second polymer layer being more hydrophilic than the first polymer layer (p0008, p0048), implying that the second polymer layer includes both hydrophobic and hydrophilic properties. CHILDS further discloses an exemplary polymer suitable for forming the gel material of the second polymer layer (i.e., a resin; p0049) includes poly(4-styrenesulfonic acid) (p0051), which is well-known to one of ordinary skill in the art to contain both hydrophilic and hydrophobic functional groups, which meets the Claim Interpretation of a “moisture-permeable” membrane (i.e., a moisture-permeable membrane). Thus, CHILDS discloses all structural and functional limitations of the claimed laminate comprising a porous substrate and a moisture-permeable membrane disposed on at least one side of the porous substrate.
The limitation “a resin having an attraction value relative to water of -110 kcal/mol or less and a repulsive value relative to water of 3 5 kcal/mol or greater, the attraction value relative to water being a negative integral value while the repulsive value relative to water being a positive integral value in an energy histogram of a combination of solute and solvent obtained from a process of calculating free energy based on energy representation” is directed toward properties inherent to the claimed moisture-permeable membrane comprising a resin and thus, bears no patentable weight. 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). “[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 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, CHILDS discloses the laminate of Claim 1. CHILDS further discloses an exemplary polymer suitable for forming the gel material of the second polymer layer (p0049) includes poly(4-styrenesulfonic acid) (p0051):
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Such a polymer satisfies the claimed limitations of the resin comprises (i) a hydrophilic portion (the sulfone group), and (ii) one or more hydrophobic portions (the hydrocarbon chain), the hydrophilic portion comprising a group represented by Formula (A) and/or a sulfone group, the one or more hydrophobic portions being selected from the group consisting of: a monovalent hydrocarbon group having two or more carbons in which one or more hydrogen atoms may be substituted by a fluorine atom; a polystyrene backbone; a polyolefin backbone in which one or more hydrogen atoms may be substituted with a fluorine atom; a polyalkadiene backbone; a polyphenylene backbone; a cellulose backbone; and a polyglycerin backbone.
Regarding Claim 3, CHILDS discloses the laminate according to Claim 2. As noted, CHILDS discloses poly(4-styrenesulfonic acid), which reads on the claimed limitation requiring that the sulfone group is included in the resin as one or more groups selected from the group consisting of: a constituent unit derived from a styrenesulfonic acid; a constituent unit derived from vinylsulfonic acid; an aromatic sulfonic acid group; and a sulfonic acid group bonded to a primary carbon.
Regarding Claim 4, CHILDS discloses the laminate according to Claim 2. As noted, CHILDS discloses poly(4-styrenesulfonic acid), which reads on the claimed limitation requiring that the resin comprises one or more resins selected from the group consisting of: a resin having a sulfone group and a polyolefin backbone in which one or more hydrogen atoms may be substituted with a fluorine atom; a resin having a sulfone group and a polyphenylene backbone; a resin having a sulfone group and a polystyrene backbone; a resin having a sulfone group and a polyalkadiene backbone; a resin having a group represented by Formula (A) above and a polyolefin backbone; and a resin having a group represented by Formula (A) above and a monovalent hydrocarbon group having two or more carbons in which one or more hydrogen atoms may be substituted with a fluorine atom.
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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHILDS et al. (US 2006/0121217 A1).
Regarding Claim 9, CHILDS discloses the laminate according to Claim 1. CHILDS further discloses the second polymer layer has a thickness of 0.001 µm to 0.1 µm (e.g., 1 nm to 100 nm; p0056; obvious typographical error in the cited paragraph), which overlaps with the claimed range of a thickness of the moisture-permeable membrane is 50 to 1000 nm and therefore, establishes a case of prima facie obviousness (MPEP 2144.05). CHILDS further discloses that the thickness of the second polymer layer can be regulated by controlling the amount and nature of the incorporated polymer (p0054). Thus, prior to the effective filing date of the claimed invention, the claimed range of a thickness of the moisture-permeable membrane being 50 to 1000 nm would have been obvious to one of ordinary skill in the art.
Response to Amendments/Arguments
Applicant’s amendments and arguments pertaining to the prior art rejection of Claim 1 and the addition of new Claim 9 have been fully considered and are persuasive. The rejections of Claim(s) 1-4 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by KERTZMAN (US 2006/0021615 A1) have been withdrawn. However, upon further search and consideration, new grounds of rejection have been made for Claim(s) 1-4 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by CHILDS et al. (US 2006/0121217 A1) and Claim 9 under 35 U.S.C. 103 as being unpatentable over CHILDS.
Applicant disagrees with the Examiner’s assertion “that the claimed attraction and repulsive values of the resin relative to water are inherent properties of the membrane material disclosed in Kertzman and therefore bear no patentable weight” (pg. 8, middle) and further argues that inherency must be demonstrated as being necessarily present and further “The Examiner has not shown that these values are an inevitable and invariable result of practicing Kertzman” (pg. 8, bottom).
The Examiner respectfully disagrees.
Applicant has only claimed the structural limitations of a “laminate comprising a porous substrate and a moisture-permeable membrane disposed on at least one side of the porous substrate” and “a resin” of the membrane. The Examiner has shown that the prior art-disclosed membrane includes all structural limitations and even has the hydrophobic and hydrophilic properties of “moisture-permeable” membranes as disclosed by Applicant. Thus, because only these limitations have been claimed, and because the prior art teaches these same limitations, all claimed inherent properties of these structural limitations are indeed necessarily present.
Further, it is not the burden of the Examiner to prove to the Applicant that the prior art does not have such claimed inherent properties. Because the prior art has disclosed 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)).
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1777