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 .
Response to Amendment
This Final Office Action is in response to Applicant’s Remarks/Amendments and Affidavit/Declaration under 1.132, each filed on 4 March, 2026. The amendments have been entered.
Disposition of Claims
Claims 1 and 4-6 are pending.
Claims 2-3 have been cancelled.
Declaration under 37 CFR § 1.132
The declaration under 37 CFR 1.132 filed 4 March, 2026 is insufficient to overcome the rejection of claims 1 and 4-6 based upon the combination of TAKEDA, in view of SAKA, OOTSUKI, and OHTSUBO as applied under 35 U.S.C. 103 as set forth in the last Office action because:
The evidence presented includes numerous differences of the claimed invention (Supplemental Example 1 is prepared with “The application liquid was applied to one side of a commercial polypropylene microporous film (thickness: 16µm, porosity: 47%, average pore diameter: 142nm, air resistance (Oken): 165sec, moisture permeability: 880g/m²·24hr) using a wire bar for an indicated amount and then dried”; Supplemental Example 3 is prepared with “Cellulose acetate having degree of acetylation of 55% and degree of polymerization of 180 (manufactured by Daicel Co.,Ltd., product name: L50), which is a starting material, was added to methylene chloride, followed by addition of 4-dimethylaminopyridine and acetic anhydride, and the mixture was gently reacted with stirring at room temperature, the solvent was removed using an evaporator. After dissolving the residue in methylene chloride and adding an aqueous acetic acid solution, the organic layer and the aqueous layer were separated. The organic layer was collected and the solvent was removed using an evaporator. The residue was dried thoroughly using a dryer to obtain cellulose acetate (degree of acetylation 56%, degree of polymerization 180) as the target product…the cellulose acetate was dissolved in methylene chloride.; Supplemental Example 4, in view of the preparation being the same as that of Supplemental Example 3 with a cellulose acetate having a degree of acetylation of 55% and degree of polymerization of 170)and comparative examples(Supplemental Comparative Example 1, in view of the preparation being the same as that of Supplemental Example 3, “except that the amounts of 4-dimethylaminopyridine and acetic anhydride used in the reaction were changed”), in addition to differences in the testing parameters (Moisture permeability was evaluated “measuring time was changed to 30minutes”; Moisture resistance was evaluated, “The moisture permeable film for a total heat exchange element of Supplemental Examples or Supplemental Comparative Examples was cut into a diametrical 60mm, and then, on the film serving as a base, the periphery was bonded and fixed so that the coated surface was on the upper side, thereby manufacturing a total heat exchange element model”). An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential). See MPEP § 716.02(e). Applicant does not disclose the differences between the examples representative of the claimed invention that are used, in addition to the differences between the examples representative of the closest prior art and the testing parameters, in order to determine whether or not the claimed degree of acetylation and degree of polymerization effectively provide an unexpected result to effectively rebut a prima facie case of obviousness. To this end, the Applicant does not provide such discussion to made such objective conclusion, and thereby, the evidence is not persuasive to rebut a prima facie case of obviousness for this reason.
Second, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d)-II. Applicant provides a single supplemental comparative example outside of the claimed range. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d). Applicant merely provides degree of acetylation between 55% and 61%, but fails to provide evidence that the alleged unexpected results occur over the entire claimed range (“degree of acetylation of 60% or less”, which would be inclusive down to 0% degree of acetylation). It is not provided this is sufficient evidence to correlate criticality of the degree of acetylation or degree of polymerization, as required by the claim, and thereby, the evidence is not persuasive to rebut a prima facie case of obviousness for this reason.
Lastly, the argument of the Applicant hinges on “relative moisture permeability”, to make the conclusion that “Thus, the experimental results support the following description in paragraph [0042], “When degree of acetylation of cellulose acetate is more than 60%, there is a case in which moisture permeability decreases”. However, as indicated by the Applicant at page 5 of the Declaration under 37 U.S.C. 1.132 is different than “moisture permeability”. As such, the evidence does not support such conclusion of criticality of the degree of acetylation of the cellulose acetate based on results of moisture permeability. For this reason, the evidence is not persuasive to rebut a prima facie case of obviousness for this reasons.
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 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over TAKEDA (JP 2017-020779 A1 – published 26 January, 2017; see English machine translation furnished with the Office Action mailed on 18 December, 2024 and foreign patent document furnished with the IDS submitted on 11 August, 2023), in view of SAKA (US 5,977,346 – published 2 November, 1999), OOTSUKI (JP S60-259897 – published 21 December, 1985; see English machine translation and foreign patent document furnished with the Office Action mailed on 18 December, 2024), and OHTSUBO (WO 2014-115709 A1 – published 31 July, 2014; see English machine translation and foreign patent document furnished with the Office Action mailed on 18 December, 2024).
As to claim 1, TAKEDA discloses a moisture permeable film for a total heat exchange element (par. 1), containing polyolefin microporous film (par. 30 and 45) having an air resistance of 100 sec or more (par. 51) and moisture permeability of 750 g/m²·24hr (par. 52), and a moisture permeable resin layer provided on at least one surface of the polyolefin microporous film (par. 55-56, in view of par. 26 and figures 1-7),
wherein the moisture permeable resin layer contains a cellulose acetate resin (par. 55-56), and application amount based on mass after drying of the moisture permeable resin layer is 0.1 g/m² or more and 5g/m² or less (par. 31-33, in view of par. 42-43, 69, 78, 82, 86, 93, 100, 104, 110, 115, and 120, at least, which provides drying of the porous film coated with the moisture permeable resin layer, and then calculation of the areal density associated therewith).
However, TAKEDA does not expressly disclose wherein the cellulose acetate has as degree of acetylation of 60% or less and a degree of polymerization of 165 or more and 185 or less.
SAKA provides a cellulose acetate coating (col. 1, lines 26-30) which has a degree of acetylation of 60% or less (Table B-1) and a degree of polymerization of 170 or more and 180 or less (Table B-1 at example B-5). Particularly, the degree of acetylation is known to be selected to obtain improved overall heat exchange properties, improved water resistant adhesion (pg. 2, lines 63-66 of OOTSUKI), improved moisture permeability, and film forming properties (pg. 3, lines 149-154 of OOTSUKI). More so, the degree of polymerization is known to be selected to obtain excellent mechanical properties (pg. 9 of OHTSUBO). Thus, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07. Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify TAKEDA, in view of the teachings of SAKA, to provide the cellulose acetate with the degree of acetylation and degree of polymerization, as claimed, for the purpose of achieving improved overall heat exchange properties, improved water resistant adhesion (pg. 2, lines 63-66 of OOTSUKI), improved moisture permeability, film forming properties (pg. 3, lines 149-154 of OOTSUKI), and excellent mechanical properties (pg. 9 of OHTSUBO).
As to claim 4, TAKEDA, as modified, discloses a total heat exchange element (par. 1) containing the moisture permeable film for a total heat exchange element according to claim 1 (see rejection of claim 1).
As to claim 5, TAKEDA, as modified, discloses wherein the polyolefin microporous film is a polypropylene microporous film (par. 30 and 44).
As to claim 6, TAKEDA, as modified, discloses a total heat exchange element (par. 1) containing the moisture permeable film for a total heat exchange element according to claim 5 (see rejection of claim 5).
Response to Arguments
Applicant's arguments filed 4 March, 2026 have been fully considered but they are not persuasive.
At page 3, Applicant asserts, “However, the Examiner has not articulated any reasoning why similar results would not have been expected, particularly as supported by the teachings in the specification”. "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). See MPEP § 716.02(b) – II.
At page 4, Applicant asserts, “when the degree of acetylation is in the range of 55-60%, a moisture permeable with excellent moisture permeability is obtained, whereas when the degree of acetylation is 61%, the moisture permeability deteriorates”. As previously discussed, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d)-II. Applicant provides a single supplemental comparative example outside of the claimed range. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d). Applicant merely provides degree of acetylation between 55% and 61%, but fails to provide evidence that the alleged unexpected results occur over the entire claimed range (“degree of acetylation of 60% or less”, which would be inclusive down to 0% degree of acetylation). Second, the argument of the Applicant hinges on “relative moisture permeability”, to make the conclusion that “when the degree of acetylation is in the range of 55-60%, a moisture permeable with excellent moisture permeability is obtained, whereas when the degree of acetylation is 61%, the moisture permeability deteriorates”. However, as indicated by the Applicant at page 5 of the Declaration under 37 U.S.C. 1.132 is different than “moisture permeability”. As such, the evidence does not support such conclusion of criticality of the degree of acetylation of the cellulose acetate based on results presented with the testing and with the results being directed to relative moisture permeability not moisture permeability. For this reason, the arguments and evidence presented are not persuasive to rebut a prima facie case of obviousness for these reasons.
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 JENNA M MARONEY whose telephone number is (571)272-8588. The examiner can normally be reached Monday - Friday 7AM to 4PM, EST.
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/JENNA M MARONEY/Primary Examiner, Art Unit 3763 3/25/2026
JENNA M. MARONEY
Primary Examiner
Art Unit 3763