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 .
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Claims 26-30, 37, 39-40, and 44-52 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3 June 2026 has been entered.
Claim Objections
Claim 51 is objected to because of the following informalities:
“one more secondary antioxidants” in line 4 should read “one or more secondary antioxidants”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
Claims 26-30, 37, 39-40, 44-50 and 52 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 26 recites “wherein the membrane is uncoated and 50 or more or 60 or more inches wide”. A broad range followed by a narrow range renders the claim indefinite. See MPEP 2173.05(c)(I). For purposes of examination, this limitation will be read as “50 or more inches wide”.
Claims 27-30, 37, 39-40, 44-50 and 52 are rejected as being dependent on indefinite claim 26.
Claim(s) 26-30, 39-40, 44-50, and 52 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pre-grant Publication 2014/0127492 to Stokes et al. cited in previous Office action (herein Stokes) in view of U.S. Pre-grant Publication 2023/0056490 to Sakakibara et al. cited in previous Office action (herein Sakakibara).
Regarding claims 26-30 and 50, Stokes teaches a microporous membrane (abstract) comprising a polyolefin resin and made via a dry stretching process wherein a film is uniaxially stretched or biaxially stretched (paragraph 0012). Stokes teaches that the microporous membrane can be used in various end use application such as garments (paragraph 0020) or battery separators (paragraph 0105). Stokes teaches that the polyolefin in the microporous membrane can be a homopolymer or a copolymer (paragraph 0010) or combinations thereof (paragraph 0026). Stokes teaches that films 60 inches or wider can be used to make the membrane (paragraph 0058).
Stokes is silent as to a secondary antioxidant being present and the oxygen induction time of the membrane.
Regarding the secondary antioxidant, Sakakibara teaches a microporous membrane (abstract) comprising polyethylene or polypropylene (paragraph 0082) that is used as a separator for a lithium-ion secondary cell (paragraph 0072). Sakakibara teaches that the membrane comprises one or more antioxidants that can be secondary antioxidants (paragraph 0127) in an amount of 100 ppm to 1 wt% (paragraph 0129) which overlaps the claimed range. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. MPEP 2144.05 (I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the microporous membrane of Stokes to include the secondary antioxidants of Sakakibara it has been held to be obvious to apply a known technique to a known product to yield predictable results. See MPEP 2143(I)(D).
Regarding the oxygen induction time, Figure 3 of the instant specification discloses that the presence of an antioxidant or the use of a blend of polymers results in a microporous membrane that achieves the claimed oxygen induction times (the comparative example has a single polymer and no antioxidant while the inventive examples have both). Therefore, one of ordinary skill in the art would reasonably expect the microporous membrane of Stokes as modified according to Sakakibara which has a secondary antioxidant and a blend of polymers to achieve the claimed oxygen induction times.
Regarding claims 39-40, Stokes and Sakakibara teach all the limitations of claim 26 as discussed above.
As discussed above, Stokes teaches that the microporous membrane can be uniaxially stretched or biaxially stretched (paragraph 0012).
Regarding claim 44, Stokes and Sakakibara teach all the limitations of claim 26 as discussed above.
Stokes teaches that the microporous membrane can be laminated to a non-woven material, mesh, and/or fabric (paragraphs 0059-0091).
Regarding claim 45, Stokes and Sakakibara teach all the limitations of claim 44 as discussed above.
Stokes teaches that the laminate including the microporous membrane can have at least two layers (paragraphs 0059-0091).
Regarding claims 46-49, Stokes and Sakakibara teach all the limitations of claims 26 and 44 as discussed above.
Stokes teaches that the microporous membrane can be used in applications requiring waterproof and breathability performance such as outerwear, disposable garments, and garments or items in medical-related applications (paragraph 0020). One of ordinary skill in the art would reasonably consider outerwear and garments or items in medical-related applications to meet the limitation of being personal protective equipment, i.e. outerwear protects one from environmental conditions and medical items and garments protect the wearer from contamination. Regarding the garments being exposed to hot dryers, autoclaves, or the like, a recitation of the intended use of the garment does not further limit the actual structure of the garment itself.
Regarding claim 52, Stokes and Sakakibara teach all the limitations of claim 26 as discussed above.
As discussed above, Sakakibara teaches that the antioxidants can be just secondary antioxidants (paragraph 0127).
Claim(s) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stokes and Sakakibara as applied above and in further view of Japanese Publication JP 2010-036355 to Sakakibara et al. cited in previous Office action (herein Ameyama, the second named inventor, see machine translation).
Regarding claim 37, Stokes and Sakakibara teach all the limitations of claim 26 as discussed above.
Stokes is silent as to a terpolymer being present.
Ameyama teaches a microporous membrane for a battery separator (paragraph 0001) wherein the membrane comprises a polyolefin resin which can be homopolymers, copolymers, and terpolymers of propylene and ethylene or mixtures thereof (paragraphs 0013-0014).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyolefin of Stokes to include the terpolymers of Ameyama because it is known in the art as being suitable for the intended purpose. See MPEP 2144.07.
Claim(s) 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stokes in view of Sakakibara.
Regarding claim 51, Stokes teaches a microporous membrane (abstract) comprising a polyolefin resin and made via a dry stretching process wherein a film is uniaxially stretched or biaxially stretched (paragraph 0012). Stokes teaches that the microporous membrane can be used in various end use application such as garments (paragraph 0020) or battery separators (paragraph 0105). Stokes teaches that the polyolefin in the microporous membrane can be a homopolymer or a copolymer (paragraph 0010) or combinations thereof (paragraph 0026). Stokes teaches that films 60 inches or wider can be used to make the membrane (paragraph 0058). Stokes does not teach that the film requires a coating thereby meeting the limitation that it be uncoated.
Stokes is silent as to a secondary antioxidant being present and the oxygen induction time of the membrane.
Regarding the secondary antioxidant, Sakakibara teaches a microporous membrane (abstract) comprising polyethylene or polypropylene (paragraph 0082) that is used as a separator for a lithium-ion secondary cell (paragraph 0072). Sakakibara teaches that the membrane comprises one or more antioxidants that can be secondary antioxidants (paragraph 0127) in an amount of 100 ppm to 1 wt% (paragraph 0129) which overlaps the claimed range. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. MPEP 2144.05 (I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the microporous membrane of Stokes to include the secondary antioxidants of Sakakibara it has been held to be obvious to apply a known technique to a known product to yield predictable results. See MPEP 2143(I)(D).
Regarding the oxygen induction time, Figure 3 of the instant specification discloses that the presence of an antioxidant or the use of a blend of polymers results in a microporous membrane that achieves the claimed oxygen induction times (the comparative example has a single polymer and no antioxidant while the inventive examples have both). Therefore, one of ordinary skill in the art would reasonably expect the microporous membrane of Stokes as modified according to Sakakibara which has a secondary antioxidant and a blend of polymers to achieve the claimed oxygen induction times.
Regarding the membrane being exposed to hot dryers, autoclaves, or the like, a recitation of the intended use of the membrane does not further limit the structure of the membrane itself.
Response to Amendment
In view of Applicant’s amendments filed 3 June 2026, previous rejections under 35 U.S.C. 103 have been withdrawn. New grounds of rejection are set forth above.
Applicant's arguments filed 3 June 2026 have been fully considered but they are not persuasive.
Applicant argues that Stokes does not teach an uncoated, dry-process, antioxidant-dosed membrane having the claimed OIT (Remarks, pages 6 and 7). As discussed above, Stokes teaches an uncoated, dry-process membrane. Applicant is correct that Stokes does not teach an antioxidant nor the claimed OIT performance; however, the rejection of the claimed invention was not based on Stokes alone. Therefore, Applicant’s arguments with respect to only Stokes not teaching the claimed invention are moot.
Applicant argues that Sakakibara does not teach the claimed secondary antioxidant because a preferred embodiment of Sakakibara uses a mixture of antioxidants (Remarks, page 7). Applicant is improperly limiting the teachings of Sakakibara to only a single preferred embodiment. Sakakibara explicitly teaches that the antioxidant can be a secondary antioxidant (paragraph 0127). See MPEP 2123.
Applicant argues that the pending rejection is reliant on impermissible hindsight reasoning because the disclosure of the instant specification is referred to state that the membrane of the prior art has the claimed OIT performance (Remarks, pages 7-8). The claimed invention is directed to a membrane comprising a blend of polymers and a secondary antioxidant having the claimed OIT performance. The membrane of Stokes as modified according to Sakakibara comprises a blend of polymers and a secondary antioxidant. The fact that neither Stokes nor Sakakibara do not teach the claimed OIT is immaterial because Applicant’s recognition of a latent property of a membrane comprising a blend of polymers and a secondary antioxidant does not make said membrane patentable if the same blend of polymers and a secondary antioxidant is either taught or rendered obvious by the prior art. See MPEP 2145(II). The membrane of Stokes as modified according to Sakakibara has the same composition and is made using a similar process to the claimed invention. Therefore it cannot have mutually exclusive properties, i.e. if the claimed invention has the claimed OIT performance, then the membrane of Stokes as modified according to Sakakibara must also have the same OIT performance.
Applicant argues because Examiner cannot determine the criticality of the claimed polymer blend and secondary antioxidant, a case of prima facie case of obviousness has not been established (Remarks, page 8). Criticality is used to rebut a prima facie case of obviousness, not establish one. See MPEP 2144. A prima facie case of obviousness has been established because the membrane of Stokes as modified according to Sakakibara contains a polymer blend and a secondary antioxidant which Applicant’s disclosure shows to achieve the claimed OIT performance. Recognition of a latent property does not render a previously known invention patentable. See MPEP 2145(II). Criticality can be used to overcome an obviousness rejection by demonstrating that the claimed polymer blend and secondary antioxidant achieves unexpectedly good OIT performance. However, criticality cannot be established because the inventive and comparative examples disclosed in the instant application only compare the claimed invention against a membrane having 100% copolymer and no antioxidant. A comparative example having a blend of copolymers but no secondary antioxidant and another example having a secondary antioxidant and no blend would allow one to determine where the criticality lay. Comparing the claimed invention to a single unrelated membrane does not do that.
Applicant argues that the claimed invention achieves unexpected performance in hot dryers, autoclaves, and the like (Remarks, page 8). Applicant has provided no showing of evidence demonstrating said unexpected performance. At best, the disclosure of the instant application shows that the claimed membrane performs better to an unrelated and completely different membrane.
Applicant argues that Stokes does not teach the claimed width (Remarks, page 9). Stokes explicitly teaches 60 inch wide films (paragraph 0058).
Applicant argues that Stokes does not teach an uncoated, dry-process, antioxidant-dosed membrane having the claimed OIT (Remarks, page 9). As discussed above, Stokes teaches an uncoated, dry-process membrane. Applicant is correct that Stokes does not teach an antioxidant nor the claimed OIT performance; however, the rejection of the claimed invention was not based on Stokes alone. Therefore, Applicant’s arguments with respect to only Stokes not teaching the claimed invention are moot.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY M DAVIS whose telephone number is (571)272-6957. The examiner can normally be reached M-F 7-4:30, off 2nd Friday.
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/ZACHARY M DAVIS/Primary Examiner, Art Unit 1783
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