DETAILED ACTION
This action is in response to an application filed with the US on 07/28/2023 and having an Effective Filing Date of 02/01/2021, in which claims 1-7 are pending and 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 28 JULY 2023 and 16 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 1-7 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 1 recites the limitation “the bubble point”. There is insufficient antecedent basis for this limitation in the claim. The suggested correction is “a bubble point”.
Claim 1 recites the limitation “the maximum force”. There is insufficient antecedent basis for this limitation in the claim. The suggested correction is “a maximum force”.
Claim 1 recites the limitation “the percentage of pore opening portions”. There is insufficient antecedent basis for this limitation in the claim. The suggested correction is “a percentage of pore opening portions”.
Claim 1 recites the limitation “the fiber thickness”. There is insufficient antecedent basis for this limitation in the claim. The suggested correction is “a fiber thickness”. Further it is not clear what the fiber is, i.e. is the membrane itself a fiber, or does it comprise fibers, and/or is it a woven or non-woven type fibrous membrane, and/or are the fibers formed from stretching. Correction is required.
Claim 2 recites the limitation “a needle penetrates”. This conflicts with the same term in claim 1. The suggested correction is “the needle penetrates”.
Claim 2 recites the limitation “a test piece”. This conflicts with the same term in claim 1. The suggested correction is “the test piece”.
Claim 2 recites the limitation “a needle penetration strength test”. This conflicts with the same term in claim 1. The suggested correction is “the needle penetration strength test”.
Claim 3 recites the limitation “polytetrafluoroethylene and/or modified polytetrafluoroethylene”, in line 4-5. This conflicts with the same term in claim 1 and the preamble, and should be corrected to “the polytetrafluoroethylene and/or modified polytetrafluoroethylene”.
Claim 3 recites the limitation “the ratio of the following crystal melting heat quantities (∆H) and (∆H0)”. There is insufficient antecedent basis for this limitation in the claim. The suggested correction is “a ratio of
Claim 3 recites the limitation “∆H” in line 11. This conflicts with the same term earlier in the claim. The suggested correction is “the ∆H”.
Claim 3 recites the limitation “∆H0” in line 16. This conflicts with the same term earlier in the claim. The suggested correction is “the ∆H0”.
Claim 3 recites the limitation “the sheet or coating film obtained by cooling at room temperature is increased in temperature” in line 14. There is insufficient antecedent basis for this limitation in the claim, and confusing, since no cooling to room temperature is previously claimed. The suggested correction is “the sheet or coating film is cooled at room temperature and then is increased in temperature”.
Claim 3 recites the limitation “is heat treated and then increased in temperature to 380°C” in lines 18-19. It is not clear if the “heat treated” is the same heat treatment of earlier in step (2), i.e. line 7, is the increase in temperature to 380°C, or is a different undisclosed heat treatment. Correction is required.
Further regarding these limaitons of claim 3, in measuring ∆H the time of cooling at room temperature is not disclosed and for measuring ∆H0, as noted above, the “heat treated” step is undisclosed. Its thus not clear how these values can be calculated in any clear, reliable or repeatable way, and thus the claim is indefinite.
Claim 3 recites the limitation “the first direction”. There is insufficient antecedent basis for this limitation in the claim. The suggested correction is “the
Claim 4 recites the limitation “wherein the heat treating step (2) is a step of securing and heat treating the sheet or coating film obtained in the aforementioned step (1) such that”. However, “ a step of securing and heat treating the sheet or coating film” conflicts with the same limitation in claim 3. The suggested correction is “wherein the heat treating step (2) is
Claim 6 recites the limitation “polytetrafluoroethylene and/or modified polytetrafluoroethylene”, in line 4-5. This conflicts with the same term in claim 1 and the preamble, and should be corrected to “the polytetrafluoroethylene and/or modified polytetrafluoroethylene”.
Claim 7 recites the limitation “polytetrafluoroethylene and/or modified polytetrafluoroethylene”, in line 3-4. This conflicts with the same term in claim 1 and the preamble, and should be corrected to “the polytetrafluoroethylene and/or modified polytetrafluoroethylene”.
Claim 7 recites the limitation “such that the thickness after drying is 1 to 50 µm, and then drying”. The second “drying” conflicts with the first. The suggested correction is “such that the thickness after drying is 1 to 50 µm, and then the drying is performed”.
Claims 2-7 are further rejected for depending form an indefinite claim.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/207357 A1 (hereinafter “Toshinari”) in view of US 2010/0077529 A1 (hereinafter “Stone”).
Regarding Claim 1 Toshinari discloses a porous membrane comprising polytetrafluoroethylene, wherein
the bubble point due to isopropyl alcohol in accordance with JIS K3832 is 660 kPa or more [0030], [0060],
a numerical value obtained by dividing the maximum force until a needle penetrates by the thickness of a test piece, i.e. the specific piercing strength (i.e. N/micron), as claimed is not disclosed, however it may be calculated from the absolute piercing strengths and thicknesses disclosed which are: a piercing strength of the PTFE film can be 12.5 or high, where the upper limit is not particularly limited, but may be for example 40N or lower, [0027], based on a needle penetration strength test in accordance with JIS Z1707, [0057], and where the thickness of the PTFE film may be 10 micron or higher and 1000 micron or lower [0026]; and thus the specific piercing strength may be as low as 12.5N for 1000 micron thickness and as high as 40N for 10 micron thickness, i.e. 12.5 mN/micron to 4000 mN/micron; and
the percentage of pore opening portions (i.e. porosity) is 1% to 65% [0024], [0054].
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).
Toshinari does not disclose the fiber thickness is 250 nm or more.
However Stone discloses similar PTFE membranes which have been extruded, stretched and sintered; (i.e. similar to that of Toshinari [0039]-0044], [0064]), wherein it is disclosed that that stretching is known to produce fibrils (i.e. fibers), and wherein the fibers may be 0.05-0.5 micrometers in diameter (i.e. thickness); [0037]-[0038] and [0043].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the porous membrane of Toshinari by forming fibrils/fibers which are 0.05-0.5 micrometers in diameter as disclosed by Stone because such fibrils/fibers are known to be formed in a similar extruded, stretched and sintered PTFE membrane to provide a functional membrane.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Toshinari in view of Stone further in view of US 20090029136 A1 (hereinafter “Hayashi”) and
Regarding Claim 2 Toshinari in view of Stone discloses the porous membrane comprising polytetrafluoroethylene according to claim 1, wherein Toshinari further discloses
the bubble point is 660 kPa or more; [0030], [0060], and
the specific piercing strength (i.e. the numerical value obtained by dividing the maximum force until a needle penetrates by the thickness of a test piece, based on a needle penetration strength test) may be as low as 12.5N for 1000 micron thickness and as high as 40N for 10 micron thickness, i.e. 12.5 mN/micron to 4000 mN/micron, supra;
Toshinari in view of Stone does not disclose wherein the polytetrafluoroethylene has a heat of fusion of less than 32 J/g at 296 to 343°C obtained by using a differential scanning calorimeter, when the polytetrafluoroethylene and/or modified polytetrafluoroethylene is heated to 365°C at a rate of 10°C/min, cooled to 330°C at a rate of -10°C/min, cooled from 330°C to 305°C at a rate of -1°C/min, cooled from 305°C to 245°C at a rate of -10°C/min, and then heated to 365°C at a rate of 10°C/min.
However Hayashi discloses a PTFE molded article, which may be a similar porous PTFE filter membrane [0001], where it is disclosed that the PTFE molded article of the invention has “a heat of fusion within a range from 296 to 343 °C. equal to or larger than 32 J/g and less than 47.8 J/g” [0015], however it is further disclosed that PTFE commonly used for molding is less than 30 J/g, and that the lower heat of fusion is used in extrusion and molding in order to obtain uniform quality in dimension or mechanical strength [0026], and that the higher heat of fusion of the invention results in a PTFE molded article having “a higher deformability and significantly superior impact absorbing property and deformation following property, in comparison with the prior PTFE molded article, thereby being very effective in applications such as a PTFE pressure-sensitive adhesive tape of a high adhesiveness and a solid gasket material of a high sealing property”; [0027]. The full details to the process of measuring the heat of fusion is:
A heating is executed from the room temperature to 245° C. at a rate of 50° C./min, and then to 365° C. at a rate of 10° C./min (first step). Subsequently a cooling is executed to 350° C. at a rate of -10° C./min, followed by a holding at 350° C. for 5 minutes, and a cooling is executed from 350° C. to 330° C. at a rate of -10° C./min, and from 330° C. to 305° C. at a rate of -1 ° C./min (second step). Then, after a cooling is executed from 305° C to 245° C. at a rate of -50° C./min, a heating is executed from 245° C. to 365° C. at a rate of 10° C./min (third step), and an endothermic amount in a range from 296 to 343° C. in this third step is taken as the heat of fusion.
And is thus seen to be sufficiently similar to the method of obtaining the heat of fusion claimed by Applicants that the resulting calculated heat of fusions will be substantially the same.
Toshinari is not related to a pressure-sensitive adhesive tape of a high adhesiveness and a solid gasket material of a high sealing property, nor discloses any desire for “higher deformability and significantly superior impact absorbing property and deformation following property”.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the porous membrane of Toshinari in view of Stone by forming it to have a heat of fusion of less than 30 J/g at 296-343°C, and up to and including the range of 32 J/g and less than 47.8 J/g, as obtained by the process of as disclosed by Hayashi depending of the desired benefits chosen between “uniform quality in dimension or mechanical strength” or “a higher deformability and significantly superior impact absorbing property and deformation following property” because such a heat of fusion is known to effect said properties of the formed PTFE membrane.
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).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claims 3-7 are considered to contain allowable subject matter.
Regarding Claim 3 Toshinari in view of Stone discloses the porous membrane comprising polytetrafluoroethylene according to claim 1 and further discloses a method of manufacturing said membrane; specifically Toshinari discloses the method comprising:
Mixing PTFE powder with liquid lubricant/solvent to form paste, extruding the paste, rolling the paste to form a tape, drying the tape at 300°C to remove the solvent to obtain a dried tape (considered to be the step (1) claimed sheet of PTFE), and then (claimed step (3)) stretching the dried tape in one direction and then sequentially stretching in a second direction orthogonal to the first direction to form a film, then (claimed step (2)) securing and heat treating the PTFE film [0039]-0044], [0064].
Thus Toshinari in view of Stone does not disclose (a) the obtained sheet of PTFE in step (1) has not been heat treated at 250°C or higher, or (b) the heat treatment step (2) is done before stretching step (3), or (c) in step (2) the heat treating step is such that the ratio (∆Н/∆Н0) of the following crystal melting heat quantities (∆Н) and (∆Н0) is 1.0 to 2.0; ∆Н0 is a crystal heat of fusion between 295 and 360°C when the sheet or coating film comprising polytetrafluoroethylene and/or modified polytetrafluoroethylene resin, which has not been heat treated at 250°C or higher, is heated for 20 minutes at 360°C, and then the sheet or coating film obtained by cooling at room temperature is increased in temperature to 380°C at a rate of 10°C/min; and ∆Н is a crystal heat of fusion between 295 and 360°C when the sheet or coating film comprising polytetrafluoroethylene and/or modified polytetrafluoroethylene which has not been heat treated at 250°C or higher, is heat treated and then increased in temperature to 380°C at a rate of 10°C/min).
The Examiner cannot find art which discloses or makes obvious a membrane as claimed in claim 1, and/or as disclosed Toshinari in view of Stone, which is made a process as claimed in claim 3. Specifically the prior art does not disclose or make obvious heat treating a PTFE and/or modified PTFE sheet or coating film, which has not previously been heat treated at 250°C or higher, to arrive at the claimed ratio (∆Н/∆Н0) of 1.0 to 2.0. Applicant’s Examples in the instant disclosure further show that such a ratio (∆Н/∆Н0) of 1.0 to 2.0 is not generally inherent to just any PTFE membrane and is a result of the specific production process used, including notably the specific heat treatment times and temperatures used by Applicants’; see Table 1, Examples 1-5 vs Comparative Examples 1-5, and that such a ratio appears to provide unexpected results, as the Examples 1-5 which have said ratio provide at least much higher IPA bubble points, Tensile strength, needle penetration strength and air permeability in comparison to the Comparative Examples which lack said ratio. Thus claim 3 and its dependent claims 4-7 are seen to contain allowable subject matter.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 3-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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