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 Rejections - 35 USC § 112
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 1-11 and 23 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 element of claim 1, “fluorinated polymer backbone iodine atoms, bromine atoms, or a combination thereof at locations between fluorocarbon backbones” is unclear and indefinite. This element appears grammatically insufficient. The corresponding disclosure is in [0022,] which says: “[t]he iodine or bromine atoms are present within the polymer at locations between polymer (fluorocarbon) backbones, i.e., the iodine or bromine atoms connect one polymeric backbone to another polymeric backbone.” This also is unclear since Br and I do not form two bonds to attach to different carbons atoms to form a link as suggested by this disclosure.
Claim 1 was also objected to in the advisory action as in improper format for failing to underline the above cited limitation as newly added element.
Claim 10: recitation of fluoropolymer and PVdF together makes an improper Markush group because PVdF is a fluoropolymer.
Claim 23 is indefinite – claim 1 is not a process claim and already recites the membrane composite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 7, 10, 11 and 23 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Limitations of claims 3, 7 and 12 are now included in claim1. Claim 10 is much broader in scope than claim 1. Claim 11 does not add further structure to claim 1 because “membrane” is a specie in the genus of “filters.” Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-11 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Gjoka et al (US 2012/0118816) in view of EP 3936557 and Yandrasits et al (US 2020/0368690.)
Gjoka (common inventor and same applicant as in the instant application) discloses the invention as claimed, except for the thermal radical initiator (like Luperox or bis-olefin) used for crosslinking. Claims require the membrane to be free of such initiators, which can be potentially present if this path of cross-linking is used. The instant claim 2 recites presence of UV initiators in the membrane.
However, using UV in place of thermal cross-linking is known in the art. UV cross-linking also has advantages over thermal because the cross-linking can be carried out at lower temperatures and has other advantages – see EP, [0033]. Therefore, it would have been obvious to one of ordinary skill in the art to use UV in place of heat for crosslinking the ionomers.
Regarding the support or the substrate membrane, while Gjoka teaches fluorocarbon polymers in [0096], they do not include PVdF or the other recited polymers. Yandrasits in a similar ionomer membrane teaches supports like PE, polysulfone and polyphenylenesulfone for improved mechanical strength and in multiple layers. See Yandrasits, [0126-0134]. The fluoropolymer-ionomer membrane is formed on the support membrane using UV curing. Therefore, Yandrasits offers a wider choice of supports compared to Gjoka. Therefore it would have been obvious to one of ordinary skill to use the teachings of EP and Yandrasits in the teaching of Gjoka to have the advantages taught by EP and Yandrasits.
Particle size limitation – see [0039]. Flow limitation – see [021]. 17.35 cm2 membrane = 47 mm disc membrane.
Dependent claims: since the disclosure in Gjoka is substantially same as in instant application, the resultant membrane also would inherently have the same or similar properties as claimed, unless otherwise shown.
"[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).
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 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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