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 § 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) 1-2,4-6,8-9 and 11 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.
Gjoka in “EXAMPLES” starting at [0114] teaches the product as now claimed: chain transfer agent I-(CF2)4-I present between the backbone and the hydrophilic group. The same teaching is in example 1.
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 filed 8/12/26 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, EP was used to show UV crosslinking and Yandrasits for microporous backing materials, with a sufficient showing of motivation for obviousness.
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.
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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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