DETAILED ACTION
This action is in response to the amendments and remarks filed 11/26/2025, in which claims 24-43 are pending, claims 24, 26, 29, 31-37 and 39-40 have been amended, claims 41-43 are withdrawn as directed to a non-elected invention and claims 24-40 are ready for examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 15 OCTOBER 2025 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.
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 24-40 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 24 recites the limitation “a substrate and a membrane” in line 4. This conflicts with the “a substrate” and “ a membrane” of line 1. It is suggested to correct the limitation of line 4 to recite “the substrate and the membrane”.
Claim 24 recites the limitation “a substrate” in line 5. This conflicts with the “a substrate” of line 1. It is suggested to correct the limitation of line 5 to recite “the substrate”.
Claim 24 recites the limitation “the constituents of the composition of the membrane of the formed membrane arrangement consist of the constituents of the composition of the metal membrane and the constituents of the composition of the deposited metal layer”, it is not clear if this limitation is meant to require that the membrane of the formed membrane arrangement consists of the metal membrane and the metal layer, or it may have further layers so long as the constituents of the other layers are the same the metal membrane or the metal layer; either may be used for interpretation.
Claims 25-40 are rejected for depending on an indefinite claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 24-25, 27-28 and 38-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2008212812A (hereinafter “Motoi”).
Regarding Claim 24 Motoi discloses a method of securing a membrane to a porous metal substrate in a process of forming a membrane arrangement that comprises the substrate and the membrane, the method comprising:
depositing, via sputtering or laser ablation, an intermediate layer comprising at least one main metal element constituting the metal porous base material and Pd (i.e. a metal layer) onto a surface of the porous metal substrate; and
performing a bonding process that bonds a hydrogen separation membrane (i.e. a metal membrane) onto the intermediate layer (i.e. the deposited metal layer) (a heat treatment is performed at 500 to 700°C to adhere the layers after deposition of the metal membrane, see [3. Middle layer] and [1.4. Preparation of hydrogen permselective membrane and intermediate layer] sections);
wherein:
the membrane of the formed membrane arrangement is for a gas separation process that separates a first gas from one or more other gasses (i.e. hydrogen from reformed gas, see pg. 1 para. starting “Fuel cells…”);
the membrane of the formed membrane arrangement comprises both the deposited metal layer and the metal membrane (i.e. the intermediate layer and the hydrogen separation membrane together may be considered “the membrane” as claimed);
the constituents of the composition of the membrane of the formed membrane arrangement consist of the constituents of the composition of the metal membrane and the constituents of the composition of the deposited metal layer (i.e. “the membrane” as claimed is seen to consist of the intermediate layer and the hydrogen separation membrane);
the intermediate layer (i.e. deposited metal layer) has a thickness between 0.3-1.0 micrometer (see [3. Middle layer] section); and
the metal membrane has a thickness that is 20 micrometers or less, or more preferably 10 micrometers or less (see [2. Hydrogen selective permeable membrane] section).
Regarding Claim 25 Motoi discloses the method according to claim 24, wherein the deposited metal layer comprises palladium, [1.4. Preparation of hydrogen permselective membrane and intermediate layer].
Regarding Claim 27 Motoi discloses the method according to claim 24, wherein the deposited metal layer comprises palladium, [1.4. Preparation of hydrogen permselective membrane and intermediate layer].
Regarding Claim 28 Motoi discloses the method according to claim 24, wherein depositing the metal layer comprises performing a sputtering process; [1.4. Preparation of hydrogen permselective membrane and intermediate layer].
Regarding Claims 38-39 Motoi discloses the method according to claim 24, wherein the metal membrane may be a palladium alloy which comprises other metals including Silver, copper, gold, and rhodium; [2. Hydrogen selective permeable membrane].
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 24-27, 29-36, 38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over by US 2017/0312701 A1 (hereinafter “Benum”).
Regarding Claim 24 Benum discloses a method of securing a membrane to a porous metal substrate in a process of forming a membrane arrangement that comprises the substrate and the membrane, the method comprising:
Coating (i.e. depositing) a membrane on a substrate/insert which may be metal [031], [0060], [0068], where alternatively an intermediate layer is deposited between the membrane and the substrate and the membrane is deposited on the intermediate layer [0062], [0092]-[0099]; where the membrane may be palladium and alloys of palladium [0065] and is thus a metal membrane and the intermediate layer comprises particles (which may be metal particles [0097]), and binder metal and thus is a metal layer, and
further the method comprises performing annealing [0074], i.e. a bonding process that bonds the metal membrane (i.e. of palladium) onto the deposited metal layer (i.e. intermediate layer);
wherein:
the membrane of the formed membrane arrangement is for a gas separation process that separates a first gas from one or more other gasses (to separate H2 , CH4 , CO and CO2 from cracked gases, Abstract);
the membrane of the formed membrane arrangement comprises both the deposited metal layer and the metal membrane (i.e. the intermediate layer and the hydrogen separation membrane together may be considered “the membrane” as claimed);
the constituents of the composition of the membrane of the formed membrane arrangement consist of the constituents of the composition of the metal membrane and the constituents of the composition of the deposited metal layer (i.e. “the membrane” as claimed is seen to consist of the intermediate layer and the hydrogen separation membrane); and
the metal membrane has a thickness that is 0.1-10 micron [0021].
Benum does not disclose the thickness of the intermediate/metal layer.
However, it is disclosed that the intermediate layer may be applied in the same way as the membrane layer [0099] and therefore it would have been obvious to use the same thickness as the membrane layer for the intermediate layer (i.e. 0.1-10 micron [0021]), and further the thickness is a result effective variable because it is known to effect filtration properties [0061], and it would therefore have been obvious for one of skill in the art to optimize this variable 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).
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 25 Benum discloses the method according to claim 24, wherein the deposited metal layer comprises palladium, [0093].
Regarding Claim 26 Benum discloses the method according to claim 24, but does not specifically disclose the thickness of the intermediate layer, however it is disclosed that the intermediate layer may be applied in the same way as the membrane layer [0099] and therefore it would have been obvious to use the same thickness as the membrane layer for the intermediate layer, where the thickness of the metal membrane is 0.1-10 micron [0021], and further the thickness is a result effective variable because it effect filtration properties [0061], and it would therefore have been obvious for one of skill in the art to optimize this variable 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).
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 27 Benum discloses the method according to claim 24, wherein the metal membrane comprises palladium and/or a palladium alloy [0065].
Regarding Claim 29 Benum discloses the method according to claim 24, wherein the bonding process (annealing) lasts between 0.1-48 hours [0078].
Regarding Claim 30 Benum discloses the method according to claim 24, wherein the bonding process (annealing) comprises applying heat and pressure in an enclosed environment; [0074]-[0080].
Regarding Claim 31 Benum discloses the method according to claim 24, wherein the bonding process comprises applying heat and pressure in an enclosed environment; and wherein the applied pressure in the bonding process is between 0.5-20 atmospheres (absolute) [0074]-[0080]. 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 32 Benum discloses the method according to claim 24, wherein the bonding process comprises applying heat and pressure in an enclosed environment; and wherein the applied pressure in the bonding process is between 0.5-20 atmospheres (absolute) [0074]-[0080], and wherein pressure may be applied to the outer surface [0069], but specifically how the pressure is supplied is not disclosed, however as the annealing disclosed to be done in a specific gas atmosphere [0074]-[0076], using gas pressure to supply the pressure would have been an obvious means to supply the pressure called for.
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 33 Benum discloses the method according to claim 24, wherein the bonding process comprises applying heat and pressure in an enclosed environment; and wherein the applied pressure in the bonding process is between 0.5-20 atmospheres (absolute) [0074]-[0080]., and wherein pressure may be applied to the outer surface [0069], but specifically how the pressure is supplied is not disclosed, however mechanical pressure is an old and well know means to apply pressure between two materials for bonding, and would therefore have been an obvious means to supply the pressure called for.
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 34 Benum discloses the method according to claim 24, wherein the bonding process comprises applying heat and pressure in an enclosed environment; wherein the enclosed environment comprises hydrogen gas; and wherein the enclosed environment comprises between 3-100 vol% hydrogen gas [0074]-[0080]; (where the percentage is expected to be vol % since that is usually how gaseous mixtures are measured).
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 35 Benum discloses the method according to claim 24, wherein the bonding process comprises applying heat and pressure in an enclosed environment; and wherein the enclosed environment comprises substantially only an inert gas ([0074]-[0080], where hydrogen gas is not required when annealing is done under 300°C and thus substantially only an inert gas may be used [0074]-[0076]).
Regarding Claim 36 Benum discloses the method according to claim 24, wherein the bonding process comprises applying heat and pressure in an enclosed environment [0074]-[0080]; deposited metal layer comprises palladium, [0093], and the applied temperature in the bonding process is above 250°C [0074]. 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 38 Benum discloses the method according to claim 24, wherein the metal membrane may be a palladium alloy which comprises other metals including gold , platinum , ruthenium , rhodium [0065].
Regarding Claim 40 Benum discloses the method according to claim 24, wherein a thickness of the metal membrane is 0.1-10 micron [0021]. 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).
Claims 24-29 and 38-40 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0251131 A1 (hereinafter “Way”).
Regarding Claim 24 Way discloses a method of securing a membrane to a porous metal substrate in a process of forming a membrane arrangement that comprises the substrate and the membrane, [0056]-[0057], the method comprising:
depositing a metal layer comprising palladium or palladium alloy onto a surface of a substrate (membrane support); and then depositing at least one further layer of palladium or palladium alloy on the metal layer, the further layer being considered the metal membrane [0091], [0097]-[0098]; then
performing a bonding process (annealing) that bonds a metal membrane onto the deposited metal layer; [0099].
wherein:
the membrane of the formed membrane arrangement is for a gas separation process that separates a first gas from one or more other gasses (the membrane is for separating and purifying molecular hydrogen [0057], [0062]);
the membrane of the formed membrane arrangement comprises both the deposited metal layer and the metal membrane (i.e. the intermediate layer and the hydrogen separation membrane together may be considered “the membrane” as claimed);
the constituents of the composition of the membrane of the formed membrane arrangement consist of the constituents of the composition of the metal membrane and the constituents of the composition of the deposited metal layer (i.e. “the membrane” as claimed is seen to consist of the intermediate layer and the hydrogen separation membrane); and
wherein the metal membrane together with the metal layer form a membrane having a thickness of 1-20 microns [0100], i.e. because the first deposited metal layer for forming the membrane is considered the metal layer and the second deposited metal layer for forming the membrane is considered the metal membrane; thus while the thickness of each deposited layer is not specifically disclosed, since the thickness can result from “one or more” layers of palladium each layer may be in the range claimed, or for two layers each layer may be half of the thickness disclosed. Thus the metal layer and the metal membrane are seen to obviously have a thickness of 1-20 microns or 0.5-10 microns.
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 25 Way discloses the method according to claim 24, wherein the deposited metal layer comprises palladium, or palladium alloy which may comprise silver, and/or copper; [0083], [0098], [0118].
Regarding Claim 26 Way discloses the method according to claim 24, wherein the metal membrane together with the metal layer form a membrane having a thickness of 1-20 microns [0100], i.e. because the first deposited metal layer for forming the membrane is considered the metal layer and the second deposited metal layer for forming the membrane is considered the metal membrane; thus while the thickness of each deposited layer is not specifically disclosed, since the thickness can result from “one or more” layers of palladium each layer may be in the range claimed, or for two layers each layer may be half of the thickness disclosed. Thus the metal layer and the metal membrane are seen to obviously have a thickness of 1-20 microns or 0.5-10 microns.
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 27 Way discloses the method according to claim 24, wherein the metal membrane comprises palladium and/or a palladium alloy; [0083], [0098], [0118].
Regarding Claim 28 Way discloses the method according to claim 24, wherein depositing the metal layer comprises performing a sputtering process [0097].
Regarding Claim 29 Way discloses the method according to claim 24, wherein the bonding process lasts about 5 hours [0119].
Regarding Claim 38 Way discloses the method according to claim 24, wherein the metal membrane comprises palladium alloy which may comprise silver, and/or copper; [0083], [0098], [0118].
Regarding Claim 39 Way discloses the method according to claim 24, wherein the metal membrane comprises palladium alloy which may comprise silver, and/or copper; [0083], [0098], [0118].
Regarding Claim 40 Way discloses the method according to claim 24, wherein the metal membrane together with the metal layer form a membrane having a thickness of 1-20 microns [0100], i.e. because the first deposited metal layer for forming the membrane is considered the metal layer and the second deposited metal layer for forming the membrane is considered the metal membrane; thus while the thickness of each deposited layer is not specifically disclosed, since the thickness can result from “one or more” layers of palladium each layer may be in the range claimed, or for two layers each layer may be half of the thickness disclosed. Thus the metal layer and the metal membrane are seen to obviously have a thickness of 1-20 microns or 0.5-10 microns.
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).
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0312701 A1 (hereinafter “Benum”) in view of US 2008/0116078 A1 (hereinafter “Park”).
Regarding Claim 37 Benum discloses the method according to claim 24, wherein the bonding process comprises applying heat and pressure in an enclosed environment [0074]-[0080]; and the applied temperature in the bonding process is above 350°C-550°C [0074], but does not disclose the deposited metal layer comprises copper, silver or nickel.
However, the deposited metal (i.e. the binder metal) is a hydrogen-selective metal or an alloy thereof , where the hydrogen-selective metal may be palladium [0093], and thus includes alloys of palladium.
Further Park discloses a similar palladium membrane where it is disclosed palladium alloys may include silver, nickel, or copper [0003].
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 Benum by using for the metal layer (metal binder) a palladium alloys comprising silver, nickel, or copper because Park discloses these are metals known to form desirable alloys with palladium in a similar palladium membrane for gas separation.
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).
Claims 26 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over by Motoi.
Regarding Claim 26 Motoi discloses the method according to claim 24, wherein the intermediate layer (i.e. deposited metal layer) has a thickness between 0.3-1.0 micrometer (see [3. Middle layer] section);
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 40 Motoi discloses the method according to claim 24, wherein the metal membrane has a thickness that is 20 micrometers or less, or more preferably 10 micrometers or less (see [2. Hydrogen selective permeable membrane] section).
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).
Response to Amendment
The previous 35 U.S.C. 112(b) rejections of claims 24-40 are withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
In response to Applicants’ argument that “none of the cited references are directed towards forming a single-layer membrane structure as claimed”; the Examiner disagrees. Applicants’ argue that “the cited references are directed towards the manufacture of multi -layer structures having a stack of membranes with at least two different compositions” and not “a single-layer membrane as claimed”, because “the membrane [claimed] has only a single layer because the membrane of the formed membrane arrangement does not comprise layers of membranes with at least two different compositions”. However it is not clear how Applicants’ claims are distinguished from the prior art, since claim 24 recites “the membrane of the formed membrane arrangement comprises both the deposited metal layer and the metal membrane”, and thus is a composite membrane. The further limitation that “the constituents of the composition of the membrane of the formed membrane arrangement consist of the constituents of the composition of the metal membrane and the constituents of the composition of the deposited metal layer”, is unclear as noted in the above 112b rejection, but is still seen to describe a composite membrane such as those disclosed by Benum, Way and Motoi. Thus applicants’ argument that the claims require a single layer membrane are confusing and are not in line with the limitations claimed.
In response to Applicants’ argument that Benum “fails to teach or suggest any equivalent disclosure for depositing a metal layer onto a substrate and then separately bonding a membrane to the substrate with the deposited metal layer”; the Examiner disagrees. The insert may be metallic, and is considered the substrate [0060], and further the gas selective membrane overlies an intermediate layer between membrane and substrate [0062], [0092], wherein the intermediate layer may be metallic (i.e. intermediate layer comprises particles (which may be metal particles [0097]), and binder metal). Thus Benum teaches depositing a metal layer onto a substrate and then separately bonding a membrane to the substrate with the deposited metal layer, as claimed.
In response to Applicants’ argument that Way discloses a composite membrane and thus “does not anticipate Applicant's formed membrane having a single composition”: the Examiner disagrees. Applicants’ argue that “Way et al. 's membrane formed by successively depositing different layers to form a composite membrane”, and while the Examiner agrees generally with that summary, this is also what Applicants claim (i.e. a substrate, metal layer, and metal membrane), as discussed above.
In response to Applicants’ argument that it would “not be obvious to adapt Benum et al. 's technique for applying steam cracking paraffins to Applicant's invention”; it is not clear how this is relevant to the rejections. Applicants’ claim a method of making a membrane, not its use, and thus the rejection does not suggest that Benum’s technique for applying steam cracking paraffins be applied to Applicant’s invention or to use it in other applications. Rather the method of making the membrane of Benum renders Applicants’ method of making a membrane obvious. Further Benum is seen to be analogous art to the claimed invention because they are in the same field of endeavor, making metal membranes.
In response to applicant's argument that Park and Way are non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Park and Way are seen to be analogous art to the claimed invention because they are in the same field of endeavor, making metal membranes.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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