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 .
Claim Objections
Claim 7 is objected to the use of “tetrahedra,” which is assumed to be a typo for ‘tetrahedron.’
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2 and 4-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim recites the element, “a surface roughness (Ra} of said supported surface in said separation membrane complex is 5 µm to l 00 µm.,” appears to be new matter because such a generic range for the entire membrane complex is not disclosed. Applicant’s disclosure has specific roughnesses for various parts of the membrane complex, most of which are completely outside of this range.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1,2 and 4-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The newly added element of the claim regarding the surface roughness of 5-100 microns is unclear because it is for the ‘membrane complex,’ and not limited to any specific surface of the membrane. If this element is meant for the surface on which the O-ring seal rests, it is unclear.
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, 2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s own prior art Kinoshita et al (US 2020/0398228)) in view of “FFKM O-rings”, DE 19807768A1, Connelly (US 4,222,874) and Broyles et al (US 2005/0178705).
Fig. 4 of Kinoshita – identical to applicant’s fig. 1. This meets the structural details of claim 1 and 5. Claim 2 is a membrane property, would be the same in Kinoshita.
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At the outset, the membrane and the module in the claims are from applicant’s own admitted prior art (Background art). Kinoshita is applicant’s own patent. The zeolite membrane module and the zeolite membrane structure claimed in claims 1 and 5-8 are taught by Kinoshita. Zeolite membrane of claim 6: abstract. The “8 or less membered ring” of claim 7 is found in [0037.] Porosity of claim 8 is found in [0033.] Also the structure of the membrane module disclosed is identical to that in Kinoshita.
Surface roughness of the support 11 is 5 microns or less, which overlaps the claimed range (Kinoshita, [0028]). Nonetheless, the criticality of this element is unclear. Applicant discloses no surface modifications to alter the roughness of the seal-contact surfaces either, other than what is already in the prior art’s teaching. Particularly, the prior art WO 2011/105511 to Uchikawa, cited as the reference that teaches the method of making (Spec. at [0002]), teaches using metal or glass to seal surface 12 in Uchikawa’s fig. 1, same as the sealing part 13 in [0053] of applicant’s specification. The same teaching is seen in Kinoshita, @[0073].
The difference in the claims from Kinoshita’s teachings are the material of the O-ring (sealing member 23), the friction coefficient details recited in claim 1, and the application of a lubricant on the O-ring seals.
Regarding the lubricants, according to the applicant’s disclosure as well as the arguments submitted on 3/12/26, the lubricants used under the trade names are only examples, and the claims are not limited by such examples.
To show that the choice of O-ring material is obvious:
Applicant’s disclosure for the O-ring material is just a line in the specification, “The material of the sealing member 23 is, for example, perfluorinated fluororubber (FFKM), nitrile rubber (NBR), fluororubber (FKM), styrene-butadiene rubber (SBR), or the like.” Therefore, arguments aside, any commercially available, suitable O-ring would work, and having the FFKM O-ring is not critical.
A simple Google search like “O-rings for harsh environments” would show many sources for such O-rings, one of which is Perflouroelastomer (FFKM.) These O-rings are readily available commercially, as shown in this screen capture from <https://www.globaloring.com/perfluoroelastomer-ffkm-o-rings/# > They are well-known for resistance to chemicals and high temperature. Therefore, it would have been obvious to one of ordinary skill in the art to have these O-rings where such high temperature and/or chemical resistant O-rings are needed.
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To Show that applying a lubricant on the O-ring is obvious:
Application of a lubricant or grease to O-rings or other seal members in this art is well-known. See for example the DE reference, [0040], which teaches lubricating the O-rings for ease of insertion of the membrane into its holder. The figure copied in here shows the O-ring 14 in position. The membrane is ceramic on ceramic support.
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While DE is silent on what kind of O-ring and grease to be used, it would have been obvious to one of ordinary skill in the art to select them from readily available sources (commercial) and based on the conditions or the environment in which they are being used. Applicant uses such commercially available O-rings and greases: see disclosure at [0089] and [0056]. Connelly teaches using MoS2 powder or silicone grease with the O-ring 97 for similar purpose of sealing a ceramic membrane core 6 in a housing shell 7, with lubricant to facilitate installation – see col. 38, lines 9-24 and fig, 33 (copied herein). Broyles teaches lubricating nitrile O-rings with Dow-Corning high vacuum grease (all commercially available) [0082] for use in valves in water treatment, which requires NSF (National Sanitation Foundation) approval.
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Combining prior art elements according to known methods to yield predictable results is prima facie obvious. See MPEP 2143, rationales A-G. In this case, having commercially available greases that are chemically inert and suitable for the operating conditions to lubricate the membrane for easy assembly would have been prima facie obvious.
The recited factors of friction coefficient in claim 1 are outcomes from inherent properties of the O-ring and the lubricant, and are not patentable unless otherwise shown.
The claimed value of static friction x compressive force / membrane weight ≥ 1.0 also would be same or similar in value. Applicant uses three types of greases for the tests, Molykote HP-500 is PFPE-PTFE based and Sumilon 2250 spray is MoS2 powder-PTFE based (from the internet), whereas Molykote high vacuum grease is silicone based. Dow-Corning high vacuum grease is also silicone based. Therefore, the grease used in at least one example is the same as that in the Connelly reference, and the membrane and the housing apparently are the same as in the references (from the disclosure.) Applicant has not disputed these facts. Therefore, the value also should be the same or similar.
The results of the tests in claims 2 and 4 are also outcomes from the membrane complex and the materials of the O-ring and lubricant, which are inherent, and not patentable. See MPEP 2112: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as 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." Id. [AltContent: rect].
The disclosure also provides no discernable unexpected results. In fact, the results appears to show having no lubricant giving better results in tables 3 and 6. Therefore, the examiner fails to see any patentable subject matter in the disclosure either.
Claim(s) 1, 2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Connelly in view of Applicant’s own prior art and “FFKM O-rings.”
As can be seen in fig. 33 and the cited paragraph of Connelly, it teaches a ceramic membrane core (having a membrane coated thereon) in a housing and sealed by O-ring, and applied with MoS2 or silicone grease. Connelly fails to teach the material of the O-ring, details of the zeolite, the surface roughness of 5-100 microns, and the “value” as claimed. However, the “value” would depend on the size, weight, etc., of the membrane and the O-ring. Since the grease used is the same or similar, if one were to apply such a grease on applicant’s prior membranes (i.e., without the grease), one could expect to get the same results, which would attest to the efficacy of the grease.
Regarding the material of the O-ring, s rejection 1 above, details of which is incorporated herein. Regarding the zeolite and its details, see applicant’s own prior arts, like Kinoshita.
Since applicant uses prior art membranes in the invention and no sealing-surface modifications are disclosed, the surface roughness would have been an inherent feature of the prior art, and is unpatentable (see MPEP 2112.) Also, the surface roughness as claimed does not indicate what is the relevant surface it is meant for. Applicant’s invention is directed to lubrication for the seal and the disclosure shows applicant is using prior art membranes. Surface roughness affects the friction coefficient – rougher the surface, the larger the friction coefficient. The reason one uses lubricant is to reduce friction. Therefore, the surface roughness does not appear to positively impact the patentability of the claims.
Response to Arguments
Applicant's arguments filed 3/12/26 have been fully considered but they are not persuasive. They are addressed in the rejection.
The argument:
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Response: the same is true with the office. And, since applicant uses the same prior art membranes as established in the rejection, theses details would be inherently the same. Therefore, the onus is on the applicant to show otherwise. MPEP 2112: Where 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding the interview summary, the examiner had stated that inclusion of “surface roughness” in the claims would require further consideration. As stated in the rejection, the disclosure does not show that applicant has made surface modifications to change the surface roughness, nor does Table 6 show the results as directly dependent on the surface roughness. Please note that the application of the lubricant decreases the friction coefficient (the reason why lubricant is used in the first place) based on the type of lubricant used.
Conclusion
THIS ACTION IS MADE FINAL. 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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
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