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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (CON of PCT/JP2022/002828, filed 26 January 2022) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority (JP2021-011579, filed 28 January 2021) under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over HYODO et al. (JP 2016175063 A; machine translation provided and referenced herein).
Regarding Claim 1, HYODO discloses a method for restoring the separation performance of a DDR-type zeolite membrane utilizing a thermal regeneration process (i.e., [a] membrane heat treatment method for heating a membrane; abstract). Briefly, the DDR-type zeolite membrane comprises a DDR-type zeolite with pores formed by a polyhedron containing an oxygen 8-membered ring (i.e., a membrane having small pores; pg. 3, par. 1). During treatment of a mixed fluid, compounds of the mixed fluid degrade the membrane by adhering to and depositing on the membrane surface and pores (i.e., a membrane… with adsorbates adsorbed therein; pg. 1, par. 1) to the point that the “permeation characteristics” are lowered and a regeneration process to recover the permeation characteristics is necessitated (par. spanning pg. 3-4).
This regeneration process entails heating the zeolite membrane to a predetermined regeneration temperature between 100 °C and 550 °C at a temperature increasing rate of 1 °C/hr to 100 °C/hr (i.e., raising a temperature of the membrane to an intermediate heating temperature; heating and keeping said membrane at said intermediate heating temperature for a predetermined period of time; raising the temperature of said membrane to a main heating temperature that is higher than said intermediate heating temperature) for a predetermined holding time of 2 hrs to 30 hrs (i.e., heating and keeping said membrane at said main heating temperature for a predetermined period of time; pg. 4, pars. 1-2). Under such a regenerative process, the adhered/deposited compounds are desorbed and removed thereby improving membrane permeation flux (pg. 4, par. 3).
HYODO is deficient in explicitly disclosing “a first recovery amount that is a difference in permeability of said membrane between after said operation b) and before said operation a) is 50% or more and 95% or less of a second recovery amount that is a difference in permeability of said membrane between after said operation d) and before said operation a)”. However, the recited limitation is directed toward an inherent result from the practice of the claimed method, i.e., because the prior art discloses or makes obvious all claimed method steps (a) through (d) as claimed, the end result of the instantly recited limitation is necessarily expected. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II).
Regarding Claim 2, HYODO makes obvious the membrane heat treatment method of Claim 1. HYODO is deficient in explicitly disclosing “said permeability of said membrane after (n+ 1) times repetitions of degradation of said permeability of said membrane and said operations a) to d) is 95% or more of said permeability of said membrane after n times repetitions of degradation of said permeability of said membrane and said operations a) to d), where n is an integer greater than or equal to 1 and less than or equal to 2000”. However, the recited limitation is directed toward an inherent result from the practice of the claimed method, i.e., because the prior art discloses or makes obvious all claimed method steps (a) through (d) as claimed, the end result of the instantly recited limitation is necessarily expected. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II).
Regarding Claim 3, HYODO makes obvious the membrane heat treatment method of Claim 1. HYODO further discloses the predetermined regeneration temperature is up to 550 °C from presumably room temperature (e.g., during treatment of a mixed fluid) at a temperature increasing rate of 1 °C/hr to 100 °C/hr (pg. 4, pars. 1-2). Indeed, in one example, HYODO discloses a predetermined regeneration temperature of 380 °C (pg. 5, par. 5). This implies that to reach the predetermined regeneration temperature, the temperature must be gradually increased and thereby cross the recited range of an intermediate heating temperature higher than or equal to 60 °C and lower than or equal to 180 °C and therefore, establishes a case of prima facie obviousness (MPEP 2144.05).
Regarding Claim 4, HYODO makes obvious the membrane heat treatment method of Claim 1. HYODO further discloses the predetermined regeneration temperature is 380 °C (pg. 5, par. 5), which reads on the recited range of a main heating temperature is higher than or equal to 150 °C and lower than or equal to 450 °C.
Regarding Claim 5, HYODO makes obvious the membrane heat treatment method of Claim 1. HYODO further discloses the DDR-type zeolite membrane comprises a DDR-type zeolite (i.e., said membrane is a zeolite membrane; pg. 3, par. 1).
Regarding Claim 6, HYODO makes obvious the membrane heat treatment method of Claim 5. HYODO further discloses the DDR-type zeolite membrane comprises a DDR-type zeolite with pores formed by a polyhedron containing an oxygen 8-membered ring (i.e., said zeolite membrane is composed of a maximum 8-membered ring zeolite; pg. 3, par. 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: HERSHKOWITZ et al., US 7,938,886 B2; NATSUYAMA, et al., US 2022/0040673 A1; and RAVIKOVITCH, et al., US 2014/0157986 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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/Ryan B Huang/Primary Examiner, Art Unit 1777
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