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
Claims 8-9 are withdrawn without traverse.
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.
Claim 3 is 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 3 recites the mass % of vinyl chloride resin but it is not clear if the mass % is with respect to the anion exchange resin layer or the entire membrane. For examination purposes the mass % is assumed to be with respect to the anion exchange resin layer.
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 (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 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.
Claim(s) 1-2, 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Misumi et al. US 3,759,738 in view of Umemura et al. US 5,397,445.
Claim 1, Misumi teaches an anion exchange membrane comprising an anion exchange resin layer (1) reinforced with a backing material sheet (2), wherein the anion exchange resin layer includes an anion exchange resin that has as an anion exchange group a vinylpyridine group that is converted to a strong anion exchange group (col.3, lines 40-55) and a vinyl chloride resin in granular form (col. 4, lines 15-25) and the backing material sheet is made of a polyethylene woven fabric (col. 3, lines 1-25). Misumi teaches the pyridyl group is alkylated or quaternarized (col. 3, lines 40-55) but does not teach the anion exchange group being a pyridinium group formed by protonation of a pyridyl group.
Umemura teaches an anion exchange membrane comprising an anion exchange resin layer reinforced with a backing material sheet, wherein the anion exchange resin layer includes an anion exchange resin that has as an anion exchange group a pyridinium group formed by protonation of a pyridyl group and the backing material sheet is made of a polyethylene woven fabric (col. 4, line 49 – col. 5, line 32). The recitation of the anion exchange group a pyridinium group formed by protonation of a pyridyl group is a very well known technique in the art to convert a pyridyl group to a strong anion exchange group. The recited technique is a functional equivalent to the technique in Misumi and would have been a well known alternative, as shown in Umemura, to one of ordinary skill in the art. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claims 4-5, Misumi further teaches the membrane having a thickness of 130, 150 or 160 microns (examples 3-5) and therefore the woven fabric would likewise be within the recited range of thickness; and the backing material sheet of woven fabric having an open area of 20-80% (abstract) but specific examples of 50% or 45% (examples 4-5).
Claims 6-7 recite properties of the membrane. Applicant’s specification states the recited properties are because of the particular backing material and the use of vinyl chloride resin in granular form as a thickener (par 36 of the printed publication). The prior art to Misumi teaches the use of a polyethylene woven backing and vinyl chloride resin in granular form and, therefore, the recited properties of claims 6-7 are assumed to be present in the prior art membrane.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Misumi et al. US 3,759,738 in view of Umemura et al. US 5,397,445 as applied to claim 1 above, and further in view of Kinoshita et al. US 2019/0176098.
Claims 2-3, Misumi in view of Umemura teaches the membrane of claim 1 but does not teach the average degree of polymerization or the mass % of the vinyl chloride resin.
Kinoshita teaches an anion exchange membrane comprising an anion exchange resin layer reinforced with a backing material sheet, the anion exchange resin layer includes an anion exchange group formed from vinylpyridine (par 38) and a vinyl chloride resin in granular form as a thickener with a weight % of 0-30 (par 58) and the backing material is made of a polyethylene woven fabric (par 62-65). The recitation of the degree of polymerization of the vinyl chloride is a recitation of an optimization of the vinyl chloride to achieve the desired viscosity of the resin. [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, 105 USPQ 233 (1955).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby Ramdhanie can be reached at 571-270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779
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