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/JP2021/035113, filed 09/24/2021) 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 (JP2020-165096, filed 09/30/2020) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group 1, Claims 1-4, in the reply filed on 30 September 2025 is acknowledged.
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 September 2025.
Drawings
The drawings are objected to because FIGs. 3 and 4 are incomprehensible (poor/low resolution). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claim 1 recites the limitation “the polyamide porous membrane has a streak-like recessed portion” and further characterizes the streak-like recessed portion as having “an orientation angle of 0 to 5.0° or 175.0 to 180.0°” and “an orientation intensity of 1.5 to 2.0”. The disclosed invention states that the polyamide porous membrane is produced by a method including a step of uniaxially stretching the membrane after formation (p0086-0090) such that the membrane is stretched at a stretching ratio of “1.2 to 5 times… and more preferably 1.5 to 2.0 times” (p0090). The resultant polyamide porous membrane then possesses certain streak-like recessed portions as documented in Table 1 Examples 1-5 within the ranges claimed in Claim 1. As noted in paragraph 0031, “[i]n the poly amide porous membrane of the present invention, the longitudinal direction of the streak-like recessed portion present on the surface of the dense layer substantially coincides with the stretch direction in uniaxial stretching during production”. Thus, it is considered that the claimed streak-like recessed portion and associated properties, e.g., orientation angle and orientation intensity, are dictated by the method by which the polyamide membrane is prepared.
To this end, the claimed polyamide resin is disclosed to be prepared by a method entailing four steps described in paragraphs 0060 through 0090 of the Specification. Briefly, as summarized in paragraph 0058, the method includes a first step of preparing a dope solution by dissolving a polyamide resin in an organic solvent at a temperature of 100°C or more, a second step of extruding the dope solution in a predetermined shape into a coagulation bath at 100°C or less to solidify the poly amide resin into a membrane, a third step of extracting and removing the coagulation liquid undergoing phase separation in the polyamide porous membrane, and a fourth step of uniaxially stretching the polyamide porous membrane after the third step simultaneously with or after drying. It is further noted that the disclosure indicates the use of “polyamide 6 chips”/”Ny6” from UNITIKA LTD (p0109; Table 1) in preparing the polyamide dope solution.
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over TAKAHIRO et al. (JP 2014036946 A; machine translation provided and referenced herein) in view of SHIGERU et al. (JP 2539799 B2; machine translation provided and referenced herein).
Regarding Claim 1, TAKAHIRO discloses a polyamide ultrafiltration membrane (abstract) prepared from polyamide 6 (pg. 4, last full paragraph) useful for a number of applications including gas treatment (pg. 1, bottom paragraph). The polyamide membrane comprises a dense layer formed on at least one surface (pg. 5, second-to-last full paragraph) and is in a hollow fiber shape (pg. 6, third full paragraph). Comparatively, except for a final fourth step of uniaxial stretching, the polyamide ultrafiltration membrane of TAKAHIRO is formed by an identical process as that disclosed in the claimed invention including a first step of forming a stock solution by dissolving a polyamide resin at 100°C or higher in an organic solvent having a boiling point of 150°C or higher, a second step of solidifying the polyamide resin into a film shape by extruding the stock solution into a coagulation bath of 100°C or lower, and a third step of removing solvent from the formed ultrafiltration membrane (see pg. 9 through top of pg. 12). The only discrepancy between TAKAHIRO and the disclosed invention is the practice of a fourth step of uniaxial stretching (as described above in Claim Interpretation).
Furthermore, TAKAHIRO is deficient in explicitly disclosing the polyamide porous membrane has a streak-like recessed portion extending in one direction of a surface of the dense layer and further that the streak-like recessed portion has an orientation angle of 0 to 5.0° or 175.0 to 180.0° and an orientation intensity of 1.5 to 2.0. However, such a deficiency is noted to be due to the fourth step of uniaxial stretching.
Such a step is taught by SHIGERU. SHIGERU discloses a method of modifying a gas selective permeable membrane to advantageously enhance flux while maintaining selective permeability (pg. 2, last full paragraph). SHIGERU teaches that such a method is useful for modifying membranes formed by the steps of coagulation, solvent removal by immersion, and drying whereby the formed membranes are stretched during or after drying (pg. 3, top paragraphs). SHIGERU discloses stretching the membrane uniaxially from 5% to 100% (i.e., 1.05 to 2.0 times; pg. 3, last full paragraph before examples). Advantageously, such a step reduces minute defects, forms a thinner and denser dense layer, and thereby enhances permeability without significantly impairing selectivity (pg. 3, first full paragraph). As would be recognized by one of ordinary skill in the art, such a uniaxial stretching modification of an existing membrane disclosed by SHIGERU is similar if not identical to the fourth step disclosed by the claimed invention (described in the above Claim Interpretation section), especially the stretching degree of 5% to 100% (i.e., 1.05 to 2.0), which significantly overlaps with the disclosed stretching ratio range of “preferably 1.2 to 2.4 times, and more preferably 1.5 to 2.0 times” (p0090). Because the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP §2112.01 I). Thus, the claimed streak-like recessed portion extending in one direction of a surface of the dense layer and further having an orientation angle of 0 to 5.0° or 175.0 to 180.0° and an orientation intensity of 1.5 to 2.0 are inherently expected based on the teachings of TAKAHIRO in combination with SHIGERU. Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to stretch the polyamide ultrafiltration membrane of TAKAHIRO as suggested by SHIGERU to yield a streak-like recessed portion and associated properties as claimed.
Regarding the limitations directed to “an orientation analysis”, such limitations are considered measurement methods by which the claimed streak-like recessed portion is characterized—specifically the orientation angle and the orientation intensity. While the claimed polyamide porous membrane has been considered to be defined by the process by which it is made, patentable consideration does not extend to methods or processes by which the properties of the claimed membrane are measured. The manner by which the orientation angle and the orientation intensity are measured are considered to be product-by-process language: e.g., because they describe how said properties are measured. These limitations are not 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 by which the product is characterized (In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985); MPEP §2113).
Regarding Claim 2, modified TAKAHIRO makes obvious the membrane of Claim 1. TAKAHIRO further discloses the polyamide membrane has a molecular weight cutoff of 1,000 to 40,000 (pg. 6, last full paragraph), which reads upon the claimed range of a molecular weight cut-off of 200 to 50,000.
Regarding Claim 3, modified TAKAHIRO makes obvious the membrane of Claim 1. TAKAHIRO further discloses the use of polyamide 6 chip from UNITIKA (Example 1 on pg. 13-14). Such a polyamide is the same as the polyamide described in Examples 1-4 of the inventive disclosure. Thus, the claimed limitation “wherein a polyamide resin constituting the polyamide porous membrane is an aliphatic polyamide resin having methylene and amide groups at a molar ratio of -CH2-:-NHCO-=4:1 to 10: 1” is inherently disclosed by or obvious over the prior art. Products of identical chemical composition cannot have mutually exclusive properties, i.e., a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP §2112.01 II).
Regarding Claim 4, modified TAKAHIRO makes obvious the membrane of Claim 1. TAKAHIRO further discloses the polyamide membrane is a hollow fiber membrane (i.e., a hollow fiber membrane; pg. 6, third full paragraph).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. HARA et al. (US 2015/0209735 A1), disclosed by Applicant, essentially identical to TAKAHIRO et al. (JP 2014036946 A) cited above.
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