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 .
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.
Claims 1-10 and 12 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.
Claims 1 and 12 recite a membrane having a specified range of “methane slip”, “carbon dioxide recovery”, and “power consumption”. These characteristics are not generically known terms of art, are not defined within the claim, and are not given sufficient definitions within the content of the disclosure. Additionally, it is unclear how these parameters can be defined without the use of a gas separation system that specifically utilizes a carbon dioxide/methane mixture as feedstock. For the purposes of examination, the examiner is considering such terms to constitute an intended use result rather than material characteristic.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 7-11, and 13-15 is/are rejected under 35 U.S.C. 102(a1/a2) as being anticipated by 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) 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).
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).
Claim Rejections - 35 USC § 103
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) 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.
Claim(s) 6 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimune.
Regarding claim 6, Yoshimune discloses a copolymer comprising repeating units of formula (1) and (2) in a defined ratio (fig. 1). While Yoshimune does not disclose the exact mol%, 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 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).
Conclusion
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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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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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779