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 of claims 26-39 in the reply filed on 11/26/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 40 and 41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election is considered made without traverse for the reason(s) cited above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 26, 27, 31, 32, 33, 36 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (US 2023/0058997A1).
Regarding claims 26, 33 and 39, Zhu teaches a gas separation membrane/module comprising a support layer (Fig. 1, porous support); a layer comprising crosslinked polysiloxane (Fig. 1, PDMS layer; [0006] disclosing crosslinked PDMS), a discriminating layer (Fig. 1, organosilica layer) fromed by plasma treatment of PDMS layer (refer fig. 1 disclosing oxygen plasma etcher); the discriminating layer comprising SiO4 (refer fig. 2); wherein polysiloxane (PDMS) layer is between porous support and discriminating layer. Zhu further discloses that silicon content in organosilica is about 5-27 mol% (refer [0071]).
Zhu further teaches that PDMS layer has an atomic ratio of carbon to silicon of 1.5 to 2 (Refer [0037]). The ratio disclosed by Zhu overlaps the claimed ratio of 1.6 to 1.98. 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). "[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).
Regarding claim 27, Zhu teaches limitations of claim 26 as set forth above. Zhu further teaches that layer comprising crosslinked polysiloxane is crosslinked polydimethylsiloxane (Refer fig. 1; [0031], [0042]).
Regarding claim 31, Zhu teaches limitations of claim 26 as set forth above. Zhu further teaches that the crosslinked polysiloxane layer comprises PDMS (Refer fig. 1; [0031], [0042]).
Regarding claim 32, Zhu teaches limitations of claim 26 as set forth above. Zhu teaches that M is silicon.
Regarding claim 36, Zhu teaches limitations of claim 26 as set forth above. Zhu teaches that discriminating layer is formed by oxygen plasma (refer fig. 1). The limitation “formed by process comprising use of atmospheric glow discharge plasma” is reciting a product-by-process limitation without imparting additional structure to the discriminating layer. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 37, Zhu teaches limitations of claim 26 as set forth above. Zhu teaches that discriminating layer is formed by oxygen plasma (refer fig. 1). The limitation “wherein the plasma treatment of layer (ii) is done in the range of 0.30 to 9.00 J/cm2” is reciting a product-by-process limitation without imparting additional structure to the discriminating layer. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim(s) 39, 30, 34, 35 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (US 2023/0058997A1), in view of Mochizuki et al. (US 2019/0076777A1).
Regarding claim 29, 30, 35, Zhu teaches limitations of claim 26 a set forth above. Zhu does not teach a fluorinated layer located on opposite side of discriminating layer to polysiloxane layer.
Mochizuki teaches a gas separation membrane comprising a porous support (4), a first separation layer (3), a second separation layer (8), and protective layer (9), wherein the protective layer is furthest from the porous support (refer fig. 2). Mochizuki teaches that the second separation layer comprises CYTOP which comprises perfluorinated polymer (refer [0221]). Mochizuki teaches that the second separation layer has a thickness of 20 to 200 nm (refer [0184]). Mochizuki also teaches that the protective layer comprises polysiloxane (refer [0302]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify the gas separation membrane of Zhu to include a second separation layer comprising perfluorinated compound and a protective layer comprising polysiloxane, wherein the protective layer is furthest from the porous support to provide high selectivity as taught by Mochizuki. Regarding the thickness of the second separation layer, thickness of 20 to 200 nm taught by Mochizuki overlaps the claimed thickness of 50 to 500 nm. 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). "[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).
Conclusion
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/PRANAV N PATEL/Primary Examiner, Art Unit 1777