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 § 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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masaya et al. (JP2017-148741A; machine translation) in view of Sugawara et al. (8974603B2), SCF Can (“Supercritical Fluids, 2020) and further in view of Mutsuo et al. (JP2015186776A).
Masaya et al. teach a method of regenerating a used zeolite membrane composite by treating with gaseous carbon dioxide (claim 1), wherein, the zeolite is formed on a porous support. Paragraph 54 teaches a pore diameter of 0.8nm, which reads on applicant’s limitations of not larger than 1nm. Masaya et al. teach the invention substantially as claimed with the exception of supercritical carbon dioxide having a density of 600-1000 kg/m3. Sugawara et al. teach a method of cleaning filters with carbon dioxide in any of the gas, liquid or supercritical state. Col. 8, lines 50-65 teaches carbon dioxide in the supercritical state is desirable because it has a higher density and can more effectively purify the filter because high density carbon dioxide is better able to entrain fine particles so that the fine particles in the filter are discharged in an effective manner. Sugawara et al. teach that supercritical CO2 has a high diffusibility and can spread into every corner of the micropores of the filter to enhance the purifying effect. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Masaya et al. to include substitution of gaseous CO2 with supercritical CO2, as taught by Sugawara et al., for purposes of more effectively purifying the filter since the higher density CO2 is better able to entrain fine particles so that the fine particles in the filter are discharged in an effective manner.
Masaya et al. in view of Sugawara et al. fail to teach the claimed density. However, Sugawara et al. do teach supercritical CO2 having a higher density, and since density is a chemical property of the composition, absent of a showing of criticality and/or unexpected results, the skilled artisan would reasonably expect the density limitations to be met since Sugawara et al. is teaching the same composition of a supercritical CO2, as the instantly claimed invention. Alternatively, the prior art of SCF Can teaches that supercritical carbon dioxide density can be in the range of 164kg/m3 to 941kg/m3, depending upon the temperature and pressure conditions. In the absence of a showing of criticality and/or unexpected results, the skilled artisan would reasonably expect the density limitations to be in the claimed range, since SCF Can teaches it is well within the level of the skilled artisan to adjust the density of the supercritical carbon dioxide within applicant’s claimed range, depending upon such factors as temperature and pressure. Furthermore, col. 8, lines 50-65 of Sugawara et al. teaches carbon dioxide in the supercritical state and having a higher density to effectively purify the filter because high density carbon dioxide is better able to entrain fine particles so that the fine particles in the filter are discharged in an effective manner. In view of the teachings of Sugawara et al., it would be well within the level of the skilled artisan, absent of a showing of criticality and/or unexpected results, to adjust the density of the supercritical carbon dioxide, depending upon temperature and pressure conditions, in order to effectively remove fine particles in the filter, thereby achieving a desired level of cleanliness.
In reference to the gas permeance of the predetermined gas being higher after cleaning, the skilled artisan would reasonably expect the limitations to be met for the following reasons. Since the filter is being cleaned and impurities are being removed, the skilled artisan would reasonably expect the gas permeance value to be higher after performing a cleaning step. Claim 1 has now been amended to recite a gas permeance step prior and after cleaning, this appears to be a metric by which the performance of a filter can be evaluated. Mutsuo et al. teach an evaluation method capable of evaluating a zeolite membrane (abstract), wherein the zeolite membrane is used as a separation membrane for gas and liquid mixtures. Mutsuo et al. further teach that the zeolite membrane can be evaluated and its performance measured by measuring the permeation amount of a gas.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the modified method of Masaya et al. to include a gas permeance step, as taught by Mutsuo et al., for purposes of evaluating the performance of the filter. Further, it would be well within the level of the skilled artisan before the effective filing date of the claimed invention, to measure the gas permeance, prior to and after cleaning, in order to determine the effectiveness of the cleaning step, by evaluating the performance of the filter after cleaning.
Re claim 1, the limitations of the predetermined gas having a molecule with a kinetic diameter smaller than the average pore diameter of said separation membrane are met by the teachings of the prior art, since both Masaya et al. and Sugawara teaches carbon dioxide gas. Paragraph 51 of applicant’s specification teaches CO2 as one of the predetermined gases. The claim is broadly interpreted as the evaluation of the separation membrane, using gas permeance as a metric, the concept of which is clearly taught by Mutsuo et al., for the reasons recited above. In reference to claim 1, the limitations are taught by the prior art for the following reasons: a) Applicant’s own specification (paragraph 2) teaches using carbon dioxide gas to measure the performance of a zeolite membrane, b) Applicant’s own specification (paragraph 3) teaches cleaning a filter using supercritical or subcritical fluids, c) the prior art of Mutsuo et al. teach measuring the gas permeance in order to determine the performance of a membrane, and d) Masaya et al. and Sugawara et al. teach purifying/regenerating a filter by flowing CO2 gas. In summary, the concepts of cleaning the membrane with supercritical fluids are known in the art and acknowledged by applicant’s specification. Additionally, the concept of using gas permeance to measure the performance of the separation membrane are known and acknowledged by applicant’s specification and the prior art and the use of CO2 for cleaning and measuring the gas permeance are known. Therefore, the examiner maintains the position that the currently presented claims are not patentable over the prior art of record.
Re claim 2, refer to Masaya et al., claim 1 for example. Re claim 3, Sugawara et al. teach carbon dioxide in a gaseous state is filtered by means of the filter 13 (col. 3, lines 25-35). Re claim 4, refer to col. 7, lines 40-45, and col. 9, lines 1-3). Re claim 5, refer Fig. 2 of Sugawara et al. The examiner takes the position that since Sugawara teaches that the supercritical CO2 spreads into every corner of the micropores of the filter, the skilled artisan would reasonably expect the CO2 to contact all surfaces of the membrane and the support. Re claim 6, refer to Fig. 2 of Sugawara et al., in which the filter is introduced into housing 13b, a fluid support port 62, permeate fluid and no permeate fluid exhaust ports (72, 74), with the cleaning fluid supplied into the housing from one port 71, 75, 77.
Response to Arguments
The rejection of the claims, under 112, second paragraph is withdrawn in view of the newly amended limitations.
The rejections of the claims as being unpatentable over Masaya et al. in view of Sugawara and/or the secondary references are maintained for the following reasons.
Applicant argues that it would not be obvious to combine the teachings of Masaya based on the teachings of Sugawara. Specifically applicant argues that while the separation filter of Masaya is used to separate a mixture of gases, there is no teaching that the gas to be treated contains particles. Applicant’s arguments are unpersuasive as CO2 gas contains common trace impurities. Furthermore, the pore diameter of both Masaya and Sugawara overlap. In addition, Applicant’s arguments are not persuasive as it is not commensurate in scope with the instantly claimed invention. The claim only requires a) cleaning with supercritical fluid and b) measuring the gas permeance prior to and after cleaning. In reference to claim 1, the limitations are taught by the prior art for the following reasons: a) Applicant’s own specification (paragraph 2) teaches using carbon dioxide gas to measure the performance of a zeolite membrane, b) Applicant’s own specification (paragraph 3) teaches cleaning a filter using supercritical or subcritical fluids, c) the prior art of Mutsuo et al. teach measuring the gas permeance in order to determine the performance of a membrane, and d)Masaya et al. and Sugawara et al. teach purifying/regenerating a filter by flowing CO2 gas. In summary, the concepts of cleaning the membrane with supercritical fluids are known in the art and acknowledged by applicant’s specification. Additionally, the concept of using gas permeance to measure the performance of the separation membrane are known and acknowledged by applicant’s specification and the prior art and the use of CO2 for cleaning and measuring the gas permeance are known. Therefore, the examiner maintains the position that the currently presented claims are not patentable over the prior art of record. In an interview of 3/12/2026 with Mr. Newak, the examiner discussed a proposal for allowable subject matter, as cited in the attached interview. However, no agreement could be reached at this time.
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nonaka et al. teach a zeolite membrane.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sharidan Carrillo whose telephone number is (571)272-1297. The examiner can normally be reached M-F, 7:00am-4:00pm.
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Sharidan Carrillo
Primary Examiner
Art Unit 1711
/Sharidan Carrillo/Primary Examiner, Art Unit 1711 bsc