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 § 102
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.
Claims 1, 2, 3, 4, 5, 7, 8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Mues’785.
Mues’785 (US Pub. No. 2020/0181785 A1) is directed toward a reinforced separator for alkaline hydrolysis (title).
Regarding Claim 1, Mues’785 discloses a porous-ion permeable (i.e.: ion conductivity) asymmetric (i.e.: pore diameter different than each other) composite membrane for electrolysis (title and ¶22-26). Mues’785 further discloses the composite membrane further comprises a porous substrate (analogous to the porous support in ¶30-40) and a porous asymmetric polymer coating having a first side and a second side (¶40-45). Mues’785 further discloses the polymer coating comprising a polymer (e.g.: polysulfone in Ex. 1) and inorganic particles (e.g. ZrO2 in ¶46-50 and Ex. 1) with the polymer coating having an asymmetric pore distribution with pores having a first size adjacent to the porous substrate and pores having a size smaller than the first size adjacent to the second side as described in ¶65-66). The porous substrate, the polymer, and the inorganic particles are stable at a pH of 8 or higher according to Mues’785 since the reinforced separator is used for alkaline water hydrolysis (title, abstract, ¶2-6, ¶22, and ¶51) and the separator facilitates the transport of hydroxide anion (¶12).
Regarding Claim 2, Mues’785 discloses the membrane of Claim 1, wherein the polymer comprises any of the following: polyethersulfone (¶42), polysulfone (¶42) or PVDF (¶43). Example 1 of Mues’785 uses polysulfone as the polymer (¶124-5 in Table 1).
Regarding Claims 3 and 4, Mues’785 discloses the membrane of Claim 1, wherein the inorganic particle is zirconium oxide (¶46-50) and is used in the dope solution of Ex. 1 to form the membrane (Table 1 and ¶124-125).
Regarding Claim 5, Mues’785 discloses the membrane of Claim 1, wherein the inorganic particles comprise 10 wt.% to 90 wt.% of the polymer coating as evidenced by Ex. 1 where the ratio of ZrO2 to polymer is 40.65 wt.% 12.835 wt.% in the dope solution. Since the dope solution also contains liquids (e.g.: NEP and glycerol) which are not part of the deposited polymer coating, Ex. 1 of Mues’785 explicitly teaches the inorganic particle is 76 wt.% of the polymer coating (¶124-125 in Table 1). It has been held that a prima facie case of anticipation exists when an example from the prior art falls within the claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claims 7 and 8, Mues’785 discloses the membrane of Claim 1, wherein the porous substrate comprises polyphenylene sulfide (PPS), polyether-ether ketone (PEEK), polyethylene (PE), polypropylene (PP), copolymers of ethylene with tetrafluoroethylene (TFE) as indicated in ¶33 and PPS as exemplified in Ex. 1 (¶126).
Regarding Claim 9, Mues’785 discloses the membrane of Claim 1, wherein the polymer is different from the porous substrate as illustrated by Ex. 1 where the polymer support is PPS and the polymer in the coating is polysulfone (¶109-114 and ¶124-126).
Regarding Claim 10, Mues’785 discloses a method of making a porous-ion permeable (i.e.: ion conductivity) asymmetric (i.e.: pore diameter different than each other) composite membrane for electrolysis (title and ¶22-26). Mues’785 further discloses the preparation of a dope solution in Ex. 1 which comprises mixing a polymer (e.g.: polysulfone), inorganic particles (e.g.: ZrO2), and a solvent (e.g.: NEP) where the polymer and the inorganic particles being stable at a pH of 8 or higher to form a membrane casting dope. The components of the dope (i.e.: the polymer and the inorganic particles) are stable at a pH of 8 or higher according to Mues’785 since the reinforced separator is used for alkaline water hydrolysis (title, abstract, ¶2-6, ¶22, and ¶51) and the separator facilitates the transport of hydroxide anion (¶12). Mues’785 teaches casting the membrane casting dope on a porous substrate to form a polymer coating on the porous substrate in ¶126 of Ex. 1 using a slot die coater. Further processing as described in ¶132-135 of Mues’785 teaches the polymer coating has an asymmetric pore distribution with pores having a first size adjacent to the porous substrate and pores having a size smaller than the first size adjacent to the second side. The porous substrate is stable at a pH of 8 or higher according to Mues’785 since it is used for alkaline water electrolysis. The last steps of Claim 10 are described in Mues’785 in ¶132-135 as the polymer coating on the porous substrate forms a wet membrane and annealing the wet membrane to form the stable porous ion-permeable asymmetric composite membrane.
Regarding Claim 11, Mues’785 discloses the method of Claim 10 further comprising: drying the porous ion-permeable asymmetric composite membrane after annealing the wet membrane as indicated in ¶95 and ¶107.
Regarding Claim 13, Mues’785 discloses the method of Claim 10 further comprising: removing the solvent from the polymer coating and the porous substrate before annealing the wet membrane as described in ¶126-135 where the slot-die coated support was placed into a hot water bath (i.e.: Liquid Induced Phase Separation) followed by exposure of the wet membrane to a hot and humid environment (i.e.: Vapor Induced Phase Separation).
Regarding Claim 14, Mues’785 discloses the method of Claim 10 where the wet membrane is annealed in a hot water bath at a temperature ranging from 40 and 70 degrees C (¶82). In Ex. 1, Mues’785 explicitly teaches a hot water coagulation bath of 65 degrees C (¶127). It has been held that a prima facie case of anticipation exists when an example from the prior art falls within the claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claim 15, Mues’785 discloses the method of Claim 10 wherein the solvent comprises NMP, DMAc, DMF, DMSO, or mixtures thereof as per ¶58.
Regarding Claim 16, Mues’785 discloses the method of Claim 10, wherein the polymer comprises any of the following: polyethersulfone (¶42), polysulfone (¶42) or PVDF (¶43). Example 1 of Mues’785 uses polysulfone as the polymer (¶124-5 in Table 1).
Regarding Claim 17, Mues’785 discloses the method of Claim 10, wherein the inorganic particle is zirconium oxide or titanium dioxide (¶46-50) and ZrO2 is used in the dope solution of Ex. 1 disclosed in Table 1 (¶124-125).
Regarding Claim 18, Mues’785 discloses the method of Claim 10, wherein the porous substrate comprises polyphenylene sulfide (PPS), polyether-ether ketone (PEEK), polyethylene (PE), polypropylene (PP), copolymers of ethylene with tetrafluoroethylene (TFE) as indicated in ¶33 and PPS as exemplified in Ex. 1 (¶126).
Regarding Claim 19, Mues’785 discloses the method of Claim 10, wherein the inorganic particles comprise 10 wt.% to 90 wt.% of the polymer coating as evidenced by Ex. 1 where the ratio of ZrO2 to polymer is 40.65 wt.% 12.835 wt.% in the dope solution. Since the dope solution also contains liquids (e.g.: NEP and glycerol) which are not part of the deposited polymer coating, Ex. 1 of Mues’785 explicitly teaches the inorganic particle is 76 wt.% of the polymer coating (¶124-125 in Table 1). It has been held that a prima facie case of anticipation exists when an example from the prior art falls within the claimed range. See MPEP 2131.03(I) - A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE.
Regarding Claim 20, Mues’785 discloses the method of Claim 10, wherein the polymer is different from the porous substrate as illustrated by Ex. 1 where the polymer support is PPS and the polymer in the coating is polysulfone (¶109-114 and ¶124-126).
Claim Rejections - 35 USC § 103
4. 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.
5. 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.
6. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mues’785 as applied to Claim 1 above, and further in view of Epps et al.
Mues’785 (US Pub. No. 2020/0181785 A1) is directed toward a reinforced separator for alkaline hydrolysis (title). Epps et al. (“Pore Size and Air Permeability of Four Nonwoven Fabrics,” Int. Nonwovens J. 2000, Volume os-9, Issue 2) is directed toward the characterization of different fabrics (title).
Regarding Claim 6, Mues’785 discloses the membrane of Claim 1 wherein the porous substrate has an open area of at least 20% (¶37) with porous supports including polyphenylene sulfide (PPS) and polypropylene (PP) as per ¶33. Mues’785 further discloses the PPS support of Ex. 1 has an open area of 60% (¶110). Mues’785 explains in ¶37 that sufficient open area is important to allow facile penetration of the electrolyte into porous separator during the electrolytic process of water hydrolysis. However, Mues’785 is does not specify an air permeance of 0.5 ft3/ft2/min or more for the porous support.
Epps et al. characterizes various measurements pertaining to fabrics including polypropylene. In Table 2, Epps et al. characterizes the open area (i.e.: porosity) and the air permeance (i.e.: air permeability) of two samples of polypropylene (Samples C and D). Epps et al. is related to Mues’785 since both references use polypropylene as supports/fabric material. The two PP samples of Epps et al. have an open area of ~80% (similar to range suggested by Mues’785) and an air permeability of 38.66 cm3/cm2/s for Sample C and 13.86 cm3/cm2/s for Sample D. When the air permeabilities of Sample C and D are converted to the units of Claim 6, the resultant quantities are 7.6 ft3/ft2/min for Sample C and 2.7 ft3/ft2/min for Sample D.
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the porous support of Mues’785 by substituting the PP fabric disclosed by Epps et al. with the reasonable expectation of forming a porous membrane that has sufficient open area and air permeance to allow facile penetration of the electrolyte into said membrane.
It has been held that a prima facie case of obviousness exists when the prior art discloses a range that overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
7. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Mues’785 as applied to Claim 11 and further in view of Koseoglu-Imer et al.
Mues’785 (US Pub. No. 2020/0181785 A1) is directed toward a reinforced separator for alkaline hydrolysis (title). Koseoglu-Imer et al. (“The determination of performances of polysulfone (PS) ultrafiltration membranes fabricated at different evaporation temperatures for the pretreatment of textile wastewater,” Desalination 2013, 316, 110-119) is directed toward the processing of PS membranes (pg. 110: title).
Regarding Claim 12, Mues’785 discloses the method of Claim 11 that includes a drying step in ¶95 and ¶107. However, Mues’785 does not explicitly state the drying temperature of the composite membrane. One of ordinary skill in the art of membrane production would understand that the drying temperature of the wet membrane will affect the properties of the resultant polymer coating on the porous support as such careful selection of the drying temperature is required.
Koseoglu-Imer et al. discloses different evaporation temperatures that are applied for drying a polysulfone membrane (pg. 110: abstract) and how they impact physical properties. The temperatures evaluated were 25, 35, 45, 55, and 65 degrees Celsius and were characterized by water permeability, porosity, surface roughness, and contact angle (pg. 110: abstract). Koseoglu-Imer et al. found that lower temperatures resulted in higher porosity (Fig. 1 on pg. 113) and high permeability (pg. 116: Table 3) while higher evaporation temperatures resulted in a more robust membrane that was more resistant to fouling (pg. 118-119: Conclusion) and had a lower roughness (pg. 115: Figure 2 and pg. 116: Table 2). The water contact angle (i.e.: hydrophilicity) was independent of dry temperature (pg. 116: Table 3 and pg. 118-119: Conclusion). Therefore, Koseoglu-Imer et al. teaches a drying temperature range of 25 degrees Celsius to 65 degrees Celsius.
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the drying procedure of Mues’785 by using the temperature range disclosed by Koseoglu-Imer et al. with the reasonable expectation of forming a more robust membrane for alkaline water electrolysis by using a higher temperature (i.e.: 45 to 65 degrees Celsius).
It has been held that a prima facie case of obviousness exists when the prior art discloses a range that overlaps with the claimed range. See MPEP 2144.05(I) - OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mues’054 (US Pub. No. 2023/0243054 A1) is directed toward a separator for alkaline water electrolysis (abstract).
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is 703-756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
10. 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.
/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
Prosecution Insights