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 with traverse of claims 24-33 in the reply filed on 1/7/26 is acknowledged. The traversal is on the ground(s) that there is no burden. This is not found persuasive because of differing classification and the crowded nature of the art. Long gone are the days in which the prior arts could be found in a shoe box at the PTO.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 24-33 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 24 recites formula (1) in which -(O-)x is unclear. Applicant has disclosed one stricture showing four -Os attached to an Si:
PNG
media_image1.png
220
397
media_image1.png
Greyscale
No structure with x>4 is present. Therefore, what is intended by this formula (1) is unclear. Th “x” also has no upper limit.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 24-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 24 recites at least 10 atomic % of M of formula (1) groups. However, the disclosure has only silicon as M, not any other metal. Therefore, the applicant is not in possession of the claimed invention for any other metals. The same issue arises in claims 27 and 28.
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) 24-33 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP WO2017179396.
This JP reference teaches a gas separation membrane as claimed. It has a support layer of woven or non-woven fabric on which is coated a gas separation composite membrane. The membrane has a polysiloxane layer (see “other layer between support and gas separation layer.”) Over that is a layer selected from PAN, polyimide, etc. Over the gas separation payer is a protective layer of formula (1) with the metals listed in the claims, and contains a metal-oxygen compound including Ti-isopropoxide, (4 oxygen per Ti.) and formula (2) as shown below.
The second compound of formula (2) of claim 25 includes O-Si-O structure of the PDMS; and:
PNG
media_image2.png
257
435
media_image2.png
Greyscale
The thickness of the siloxane layer is overlapping – 100- 10000 nm. Thickness of layer (ii) is about 100 nm in example 1.
Regarding the monovalent metal ions, applicant’s disclosure, page 3, lines 17-24, teaches that monovalent metal ions are undesirable. The disclosure also shows no active step of adding monovalent ions. Page 19 shows analysis of the porous support (PAN membrane) and showing that it contains monovalent metal ions. Therefore, it is believed that the monovalent metal ions come in the PAN membrane. This JP reference uses PAN support membrane over the fabric (example 1). Therefore, the monovalent ions are inherently present as claimed.
For claim 29, considering the support fabric, the porous PAN support layer, the siloxane layer, the PAN or polyamide layer and then the protective siloxane layer, the actual number and type of layers in JP match what is claimed.
JP teaches making gas separation modules using the membrane as well.
Claim 31: this is a process step, and is prima facie unpatentable in a product claim. MPEP 2113.
The reference appears silent on the atomic percentages as in claims, 24 27 and 28. Since applicant’s disclosure has only Si as “M” atom, and since the source of Si is the polysiloxane, the presence of the metal ion on the surface as recited would have been inherent. In addition, since JP teaches other metal ions for crosslinking, they can be optimized based on the degree of cross-linking desired.
Claim(s) 24-33 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mochizuki et al (US 2017/0182469.)
Mochizuki teaches a gas separation membrane having a fabric support and a porous support ([0141], examples.) Applicant describes preparing the layer (ii) on layer (i) as in Mochizuki (spec at page 7.) The structure of M-(O-)x,z is as claimed – inherent, same material and same process (see formulae 1 and 2 for the siloxanes). Membrane is plasma treated as in claim 31 [0075]. Making membrane module – [0902]. The atomic % of the metal also would have been inherent – same membrane, and same process of making. Metal is silicon. Thickness of GLi layer is 20 nm [0036].
The actual membrane has the following layers in a preferred embodiment [0328]: Configuration [0329], support [0337], layers GLe and GLi [0343] and [0436], additional layer [0395], and protective layer [0447]. The cited paragraphs are titles, which are followed by detailed description. All these add to the required and optional layers as in claims 24, 29 and 32.
Conclusion
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.
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, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777