DETAILED ACTION
This action is in response to an application filed with the US on 06/13/2023 and having an Effective Filing Date of 12/15/2020 and the Response to Election/Restriction filed 11/03/2025, in which claims 16-22 and 24-27 are pending, claims 16-21 are withdrawn as directed to a non-elected invention and claims 22 and 24-27 are ready for examination.
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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 13 JUNE 2023 is/are in compliance with the provisions of 37 CFR 1.97 and has/have been considered. An initialed copy of Form 1449 is enclosed herewith.
Election/Restrictions
Applicant’s election without traverse of Claims 22 and 24-27 in the reply filed on 11/03/2025 is acknowledged.
Claims 16-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/03/2025.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 22 and 24-27 are rejected under 35 U.S.C. 112(b) 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.
Claim 22 recites the limitation “modified ZIF-8”, however it is not clear what is meant by “modified”, as it does not appear to be a term of the art and the specification is not clear how it is “modified” in relation if regular ZIF-8. The term is thus indefinite.
Claim 22 recites the limitation “both surfaces”, there is insufficient antecedent basis for this limitation in the claim.
Claim 22 is ambiguous as to which is the last required step of the series of steps. It is suggested that “and” is added before (iv)), in part f.
Claim 22 recites the limitation “and/or” between steps (v) and (vi), making it unclear if both steps are optional or one must be included, or if all steps (i)-(vi) are in the alternative.
Claims 24 and 25 recite the limitation “effluent stream”, however this conflicts wit the already stated “first effluent stream” and “second effluent stream”, it is thus not clear if this is meant to refer to one of these effluents stream or another.
Claims 24 and 25 recite the limitation “the washing module” (i.e. singular) which is inconsistent with step (f) of claim 22 which recites “one or more washing modules”(i.e. plural). Correction is required.
Claim Objections
Applicant is advised that should claim 24 be found allowable, claim 25 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 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.
Claims 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,271,319 B1 (hereinafter “Baker”) in view of EP 3251742 A1 (hereinafter “Stark”), US 2021/0016232 A1 (hereinafter “Liu”), Jeong Hee Lee, et al., Zeolitic imidazolate framework ZIF-8 films by ZnO to ZIF-8 conversion and their usage as seed layers for propylene-selective ZIF-8 membranes, Journal of Industrial and Engineering Chemistry, Volume 72, 2019, Pages 374-379 (hereinafter “Lee”) and US 2016/0263533 A1 (hereinafter “Odeh”).
Regarding Claim 22 Baker discloses a continuous process for making polypropylene, comprising the steps of:
(a) feeding an propylene stream (101 or 113, 703) to a reactor (combination of 103 and 105, or 704, 706 and 713);
(b) contacting the propylene stream with a propylene forming catalyst in the reactor to thereby obtain polypropylene 106, 707 and a first effluent stream 707, 715;
(c) removing the polypropylene and the first effluent stream from the reactor at separate outlets (106 and 107, or 707 and 715);
(d) directly subjecting the first effluent stream to a membrane separation unit 110, 718 to thereby obtain an propylene-enriched recycle stream 112, 720 and a second effluent stream depleted in propylene 111, 719 (If the polymerization takes place in the gas phase, the reaction effluent is a mixture of polymer powder and propylene and other gases. This mixture is separated by passing through a tube inside the reactor itself to one or more cyclone separators. The powder phase is removed for finishing. The unreacted propylene, propane and any other light contaminants are withdrawn as a gas phase from the reactor, and form stream 107; C6/L66-C7/L9. Thus, in this embodiment, the effluent with propylene and propane is directly sent to the membrane separation step);
(e) feeding the reactor with the recycle stream 113; 720 via 721 and 703 (Fig. 1, 6, C5/L29-C6/L28, C7/L10-45, C12/L62-C14/L22 and
wherein the membrane separation unit of (d) comprises one or more membrane modules, wherein each membrane module comprises one or more membranes (C7/L44-C8/L32); and
wherein the propylene stream, which may be a combination of polymer grade propylene and the recycle stream having 95% propylene, i.e. may be considered an intermediate grade propylene stream of chemical grade propylene (CGP) as defined by the claim (C20/L59-67).
Baker does not disclose a membrane having the structure and method of manufacturing as claimed.
However, Stark discloses a membrane, which may be used to separate propylene and propane [0059], [0063], and a method for manufacturing said membrane, the method comprising the steps of:
(1) providing a dispersion consisting of a dispersed phase and a continuous phase, said dispersed phase comprising ZnO nanoparticles; and said continuous phase comprising a polymer, a first solvent and a second solvent [0041]-[0046], [0055], [0081];
(ii) coating a substrate with said dispersion [0041]-[0043], [0055], [0081];
(iii) subjecting the obtained coated substrate to a phase inversion step by removing said first solvent to thereby obtain a precursor material [0044], [0055], [0081];
(iv) contacting the obtained precursor material with a solution comprising a solvent selected from the group consisting of water, C1-C8 mono- alcohols optionally in combination with water, dimethylacetamide in combination with water or methanol, and 2-methyl imidazole; [0029]-[0050], [0055], [0081]-[0084].
Which is seen to produce a membrane comprising a backing layer, a functional layer comprising a polymer matrix and molecular sieves, the material of the polymer matrix is a polyethersulfone (PES) [0067], said functional layer comprising channels within said polymer matrix perpendicular to a surface of said membrane thereby connecting both surfaces of said membrane and wherein said molecular sieves are located within said channels, the molecular sieves within said functional layer are a modified zeolitic imidazole frameworks-8 (ZIF-8); [0049].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Baker by using the membrane as disclosed by Stark because this involves the simple substitution of known propylene/propane separation membranes to obtain the predictable result of effectively separating propylene and propane, where Baker does not particularly limit the membrane used and discloses polymeric membranes are preferred C7/L44-C8/L27.
Baker in view of Stark does not disclose (1) the backing layer being in form of a mesh and having a thickness of 30 - 200 micrometers and selected from the group consisting of polypropylenes, polyethylenes, poylamides, polyethyleneterephtalates, polyethersulfones, and combinations thereof, or (2) in step (iv) the solution comprising a Zn-salt soluble in said solvent, or (3) the ZIF-8 of the functional layer has an effective pore size of 0.41 nm.
However, with regard to the backing layer, Liu discloses a filtration membrane that includes a porous substrate layer (i.e. backing layer) and an active layer arranged over at least a part of the substrate layer, wherein the active layer comprises a metal-organic framework (Abstract) which may be ZIF-8 [0073], and the porous substrate is a non-woven fabric (i.e. mesh) formed of polyethylene terephthalate (PET) or polyolefins such as polyethylene and polypropylene [0034], which is 30-150 micron thick [0038].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Baker in view of Stark by substituting for the backing layer the porous substrate used by Liu which may be a non-woven fabric (i.e. mesh) formed of polyethylene terephthalate (PET) or polyolefins such as polyethylene and polypropylene being 30-150 micron thick, because this involves the simple substitution of known substrate/backing layers used to form ZIF-8 layers to form a composite membrane to obtain the predictable result of forming a functional ZIF-8 membrane.
With regard to (2) Zn-salt, Lee discloses a method of forming ZIF-8 films from conversion of ZnO films to form a membrane, wherein the secondary growth solution used to form ZIF 8 from the ZnO films comprises zinc nitrate hexahydrate (Zn salt) and 2-methylimidazole in solvent (water); Abstract, Secondary growth of ZIF-8 membranes.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Baker in view of Stark and Liu by additionally including zinc nitrate hexahydrate in the ZIF-8 synthesis/growth solution of step (iv) because Lee teaches its inclusion in a similar ZIF-8 synthesis/growth solution used to grow ZIF-8 from ZnO precursor layer to obtain the predictable result of further ZIF-8 growth.
With regard to (3) ZIF-8 pore size, Odeh discloses ZIF-8 may have a pore size (i.e. an effective pore size) of 0.1-5 nm [0060].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Baker in view of Stark, Liu and Lee by using ZIF-8 having a pore size of from 0.1-5 nm as disclosed by Odeh because this is a known pore size for ZIF-8 which provides desirable properties.
This results in the molecular sieves within said functional layer being a modified zeolitic imidazole frameworks-8 having an effective pore size of from 0.1-5 nm, as claimed.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 26 Baker in view of Stark, Liu, Lee and Odeh discloses the process according to claim 22, where in step ( d), the membrane permeate stream (i.e. recycle stream) may be “below 95%” propylene (i.e. olefin) (C13/L65-C14/L22).
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Claims 24-25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Baker in view of Stark, Liu, Lee and Odeh further in view of US 2015/0005459 Al (hereinafter “Janssens”).
Regarding Claims 24-25 Baker in view of Stark, Liu, Lee and Odeh discloses the process of claim 22, but does not disclose where one or more washing modules are arranged prior to the membrane module, and wherein said washing module is in fluid communication with the reactor and with all of said one or more membrane modules; said washing module allows contacting of effluent stream with a liquid to thereby obtain a purified effluent stream; and said liquid is adapted to react with a catalyst, wherein the catalyst is selected from a homogeneous system comprising a combination of hydrocarbon and C8-22 carboxylic acid, or a biphasic system comprising a combination of hydrocarbon and glycol.
However, Janssens discloses a similar process of producing propylene, wherein a scrubber is included to scrub the effluent leaving a polymerization reactor before it goes to a membrane for separating and recycling polypropylene, in order to remove contaminants from the stream to prevent fouling of the membranes, wherein said scrubber allows contacting of effluent stream with a liquid to thereby obtain a purified effluent stream; and said liquid is adapted to react with a chemical agent (i.e. a catalyst as claimed), said chemical agent may may be glycol, in a liquid which may be hydrocarbons such as mineral oil, Fig. 1, [0032], [0043]-[0045], [0075], [0082].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Baker in view of Stark, Liu, Lee and Odeh by including a scrubber to clean the first effluent stream before it is sent to the membrane separation, which contact the first effluent stream with glycol in mineral oil as disclosed by Janssens in order to remove contaminants from the stream to prevent fouling of the membranes.
Thus the scrubber is considered a washing module, arranged prior to the membrane module, and wherein said washing module is in fluid communication with the reactor and with the membrane module; said washing module allows contacting of effluent stream with a liquid to thereby obtain a purified effluent stream; and said liquid is adapted to react with a catalyst, wherein the catalyst is a biphasic system comprising a combination of hydrocarbon and glycol, as claimed.
Regarding Claim 27 Baker in view of Stark, Liu, Lee, Odeh and Janssens discloses the process according to claim 26, where in step ( d), the membrane permeate stream (i.e. recycle stream) may be “below 95%” propylene (i.e. olefin) (C4/L12-20, C13/L65-C14/L22). It is not disclosed that the second effluent stream comprises at most 5 wt% of olefin; and/or the recycle stream comprises at least 95 wt.% of olefin.
However, it is a stated goal to control or diminish loss of propylene during purging, to not waste it and to achieve correct propylene concentrations in the reactor which effects the final product, and that there is a tradeoff between reducing propylene loss and achieving high propylene concentrations in the recycle/feed (C3/L44-64). Therefore the amount of propylene (i.e. olefin) in the recycle stream and the second effluent stream are variables which achieve a recognized result, and it would therefore have been obvious for one of skill in the art to optimize these variables through routine experimentation, by using values including those within the scope of the present claims, so as to produce desired end results. See MPEP § 2144.05 (B).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773