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 .
DETAILED ACTION
Applicant’s response filed April 10, 2026 is acknowledged. Claims 1 and 12 are amended and claims 6-7 are canceled. Claims 1-5 and 8-12 are pending and further considered on the merits.
Response to Amendment
In light of applicant’s amendment, the examiner withdraws the 35 U.S.C. 112 second paragraph rejections and maintains all other rejections provided in the previous office action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5, and 8-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimune et al., “Flexible carbon hollow fiber membranes derived from sulfonated poly(phenylene oxide)”, Separation and Purification Technology, Vol. 75; 2010, pgs. 193-197 (Yoshimune, IDS).
Regarding claims 1 and 15, Yoshimune discloses a selectively permeable membrane capable of separation carbon dioxide and methane in a gaseous stream (abstract), the membrane comprising a carbonization product of a sulfonated poly(phenylene ether) copolymer (abstract, Section 2.1 – 2.2), the copolymer comprising repeating units of formula (1) and (2) in a defined ratio (fig. 1) where the degree of sulfonation is between 20 – 50 % (see “the degree of substitution was adjusted to 0.45”, Section 2.1) and having a carbon dioxide permeability of at least 60 x 10-6 cm3 (STP)/cm2*s*cm Hg (Section 2.3, fig. 7) and carbon dioxide/methane selectivity greater than 40 (Table 3).
While Yoshimune does not disclose the exact mol% of formula (1) and (2), it would have been obvious at the time the invention was made to provide the claimed mol% of these formulas since it has been held that where the general conditions of a claim are provided in the prior art, discovering the optimum or workable ranges involves no more than ordinary skill in the art absent a showing of criticality or unexpected results (MPEP 2144.05, Section II, Part A).
Regarding claim 2, Yoshimune discloses a membrane comprising 20-90 wt% of the carbonization product of the sulfonated poly(phenylene ether) copolymer (Section 3.1).
Regarding claim 3, Yoshimune discloses a membrane comprising a hollow carbon fiber derived from carbonization of a hollow fiber comprising the sulfonated poly(phenylene ether) copolymer (abstract).
Regarding claims 5 and 8-10, limitations drawn to a membrane formed by the process of said claims are not considered to be further limiting since patentability does not depend on the method of production but by the product itself (MPEP 2113). Additionally, Yoshimune discloses the membrane described in the independent claim and it appears claims 5 and 8-10 would not impart a non-obvious difference to the recited membrane.
Regarding claims 11 and 13, Yoshimune discloses a method of separating carbon dioxide from methane in a gaseous stream (abstract) whereby said membrane (described above) contacts a gaseous mixture on one side and selectively permeates methane, where the retentate comprises carbon dioxide and permeate comprises a higher concentration of methane (abstract, Section 3.2).
Regarding claim 14, Yoshimune is relied upon in the rejection of claim 3 set forth above. Additionally, Yoshimune discloses forming the membrane via extrusion through a dual-layer nozzle using an organic solvent and non-solvent (Section 2.2).
Regarding claim 12, Yoshimune is relied upon in the rejection of claims 1 and 11 set forth above. While Yoshimune discloses performing the method continuously (Section 3.2), Yoshimune does not disclose the contact time period of at least 720 hours. However, it would have been obvious to one having ordinary skill in the art to perform the method for at least 720 hours since it can be envisaged that membranes performing over increasing time periods would provide an increase in separation and since it has been held that where the general conditions of a claim are provided in the prior art, discovering the optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.05, Section II, Part A).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimune in view of Zhang et al., US 10717041 (Zhang).
Regarding claim 4 Yoshimune does not disclose the membrane comprising an additional carbonization polymer. However, Zhang discloses that it is common to form gas separation membranes out of a blend of polymers including a poly(phenylene ether) and polysulfone (abstract, C9/L27-64).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the membrane of Yoshimune to include an additional polymer as described in Zhang in order to control properties to the membrane such as diffusion coefficient, selectivity, and rigidity.
Response to Arguments
Applicant's arguments filed April 10, 2026 have been fully considered but they are not persuasive.
Applicant argues Yoshimune does not disclose the specified polymer composition or degree of sulfonation of the copolymer. In response, the examiner directs applicant’s attention to the rejections set forth above and in the previous office action. Formulas (1) and (2) are specifically recited in the reaction scheme provided in Yoshimune sections 2.1 – 2.2 and figure 1. Additionally, the degree of sulfonation is stated as 45% in section 2.1. While the previous office action omitted the degree of sulfonation, the relevant citation was provided in the 35 U.S.C. 102 rejection, where claim 7 was specified as rejected in section 7 of the office action.
Applicant’s arguments regarding the mol% of specific copolymer components is not found persuasive. Applicant generally alleges that amended claim 1 is novel without discussing why the specific mol% of copolymer is novel and non-obvious in light of the prior art. For this reason, the examiner maintains that those mol% now included in amended claim 1 are obvious for those reasons provided in the rejection set forth above.
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 DIRK R BASS whose telephone number is (571)270-7370. The examiner can normally be reached 8-4:30 EST Monday-Friday.
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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779
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