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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-29, 31-35 and 40, with amendment, in the reply filed on 11/17/25 is acknowledged.
Claim Rejections - 35 USC § 102 and 103
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.
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) 1-11, 15-17, 21-24 and 29 are rejected under 35 U.S.C. 102(a1) as being anticipated by, or in the alternative, under 35 USC 103 as unpatentable over, Inomata et al (US 2016/0354771).
In the comparative examples and Table 4, Inomata teaches a method for making an ion exchange membrane from a charged vinyl monomer as in claim 7 (AMPS) having a sulfonate group as in claim 6, and a water-insoluble polyfunctional vinyl monomer (EGDM, MBA, TEGDM, BAMPS, etc.) as in claims 8 and 9, free-radical initiator containing an azo group as in claim 11 (AZ-1-3 in table 1 and [0088]; V-50 in comp. example 10). Water content is 5-50% or 10-40%, which significantly overlaps the claimed range – [0158]. This would anticipate the claims.
See MPEP 2131.03-II: When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
In this case, there is sufficient specificity because of the significant overlap, and applicant shows no criticality for this clamed range of water content.
While Table 4 shows water content as 37.1% for the examples, the reference teaches a wider range for water content which significantly overlaps the claimed range.
MPEP 2144.05, I: In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
The water content can also be optimized:
MPEP 2144.05-II: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The reaction is in water solution as claimed claims 1 and 5 without any added solvent – see [0157-0158]. The ingredients including water add up to > 95%, rest being inhibitor and chain transfer agents. See table 1. AMPS has only one vinyl group as in claim 2. For claim 3, the water content can be as low as 5% (Id) meeting this condition.
Claim 4: Example 11 has 40 AMPS and 21.8 compound M1 (a polyfunctional vinyl monomer), 0.7 initiator and 37.1 water, all by weight. However, according to the general teaching of Inomata in the solvent can be in the range 10-40%, which means the claimed range for water falls within the teaching of Inomata. Proportion of charged vinyl to polyfunctional vinyl is 21.8/40 = about 0.5.
Claim 10 – presence of hydroxyl group: applicant’s list of the polyfunctional vinyl monomer crosslinking agent is provided on page 12 of the spec. Inomata teaches most of these, if not all (see the structures under example 1 and table I.) Therefore, if applicant’s compounds have -OH groups, so would the compounds in Inomata. Additionally, the chain transfer agents in Inomata have -OH.
Claim 15 – the resulting product is a membrane, which is a thin film.
Claims 16, 17: the polymerization is done in presence of a solid support – see example 1 details – the solution is cast on aluminum plate and then the nonwoven fabric or other porous substrate as defined in [0214] is pressed on to the solution.([0159])
Claim 23: solid support thickness is 30-250 microns – see [0220]. The base material (support) in example 10 is 17 microns thick.
Claim 24: ion exchange capacity is 1.9 meq/g (same as millimole/g for monovalent ion exchange moiety) or more [0224]
Independent claim 29 is similar to claim 1, with the added element of all reagents and water to be at least 98%, which is the case in Inomata, because the imitator and the chain transfer agent add only to 1.1%.
Claim(s) 12-14, 18-22, 25-28 and 31-35 are rejected under 35 U.S.C. 103 as unpatentable over Inomata et al (US 2016/0354771).
Claims 12 recites the order of process steps. Which Inomata does not teach. However, the order of addition in a process is prima facie obvious unless otherwise shown. MPEP 2144.04. Subject matter of claim 14 is already discussed in claim 2 in rejection 1. Claim 13 recites a pre-solution containing water and the charged vinyl monomer, which is not expected to contain any polyfunctional vinyl crosslinking monomer or any other solvents, which is obvious. Claim 13 is only a part of the order of addition of ingredients, which is prima facie obvious, unless otherwise shown. MPEP 2144.04.
Claims 18-22 recite, inter-alia, a microporous membrane as the support. While Inomata is silent on “microporous,” a membrane by definition is in the range from microfiltration to reverse osmosis, in decreasing pore size. Therefore, since Inomata teaches a porous membrane, it would have been obvious to one of ordinary skill that the membrane is microporous, or one would consider it as microporous, which is at the highest range in porousness of a membrane. The membrane materials like PP, PE, PTFE, are listed in [0214]. The thickness is already addressed above in rejection 1, but also can be optimized to obtain the most fluid flow capacity with the least resistance, while having enough strength. The porosity and pore size for the support membrane can be similarly optimized (base material porosity in example 10 is 39%); more porosity means less strength, but more permeability.
Claims 25-28 and 31-35 recites water uptake and water mass fraction, which are inherent material properties of the membrane. Water uptake and water content in the membrane would depend on the porosity of the membrane as well (capillary action, similar to that of a sponge,) in addition to the hydration of the sulfonate ions. Since porosity and pore size can be optimized to obtain the desired function properties for the membrane, the water intake would also would have been obvious. The ratio, mmol/g(water) is only a calculated value from the water content and the ion exchange capacity. Ion exchange capacity is > 1 – table 4. The membrane is a thin film.
Response to Arguments
Applicant's arguments filed 2/27/26 have been fully considered but they are not persuasive. They are addressed in the rejection. It is observed that applicant’s claims encompass Inomata’s comparative examples in table 4. Argument that Inomata’s general description and inventive examples cannot anticipate the independent claims is, therefore, unpersuasive.
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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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
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