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 .
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.
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) 1 is rejected under 35 U.S.C. 103 as being unpatentable over JPS59225704 (hereinafter JP ‘704) in view of Ichikawa et al (US 20080105613; hereinafter Ichikawa).
As regarding claim 1, JP ‘704 discloses the claimed invention for a gas separation membrane comprising: a porous layer; a first resin layer provided at a surface on one side of the porous layer, the first resin layer including an organopolysiloxane; and a second resin layer provided at a surface of the first resin layer on a side opposite to that of the porous layer ([0001] – ‘…three-layer or four-layer structure in which…is laminated on a porous support, on which a plasma-polymerized membrane of an organosilane compound is deposited…a siloxane elastic layer…’), the second resin layer including an organopolysiloxane (organosilane, silicone rubber (elastic resin), siloxane), and the second resin layer is chemically bonded (crosslinked) to the first resin layer.
JP ‘704 does not disclose wherein the first resin layer has a porosity greater than that of the second resin layer. Ichikawa teaches wherein the first resin layer has a porosity greater than that of the second resin layer ([0026]). Both JP ‘704 and Ichikawa directed to gas separation membrane. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the first resin layer has a porosity greater than that of the second resin layer as taught by Ichikawa in order to reduce flow resistance, provide mechanical support, and enhance adhesion while allowing the dense second layer to maintain high selectivity.
Also regarding claim 1, JP ‘704 as modified discloses the claimed invention for wherein a sum of an average thickness of the first resin layer and an average thickness of the second resin layer is from 50 nm to 500 nm (0.3 mm; 500 nm = 0.5 mm).
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein a sum of an average thickness of the first resin layer and an average thickness of the second resin layer is from 50 nm to 500 nm in order to maximize permeability while maintaining selectivity, minimizing material use, and ensuring mechanical stability, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over JPS59225704 (hereinafter JP ‘704) in view of Ichikawa et al (US 20080105613; hereinafter Ichikawa), as applied supra, and further in view of Raveendran-Nair et al (US 20160280563; hereinafter Raveendran-Nair).
As regarding claim 3, JP ‘704 as modified discloses all of limitations as set forth above. JP ‘704 as modified discloses the claimed invention except for wherein a constituent material of the porous layer is a ceramic material. Raveendran-Nair teaches wherein a constituent material of the porous layer is a ceramic material ([0062]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the first resin layer has a porosity greater than that of the second resin layer as taught by Raveendran-Nair in order to provide mechanical strength, thermal and chemical stability, dimensional stability, and a well-defined porous scaffold for thin selective layers.
Response to Arguments
Applicant's arguments filed 05/08/26 have been fully considered but they are not persuasive.
Applicant argues that JP '704 (Ichikawa), either alone or in combination with the cited references, fails to disclose, teach, or suggest that the sum of the average thickness of the first resin layer and the average thickness of the second resin layer is from 50 nm to 500 nm (0.05–0.5 μm).
The Examiner respectfully disagrees.
As Applicant acknowledges, JP '704 discloses that the thickness of an individual resin layer is less than 0.3 μm (see JP '704, [0001]). JP '704 further teaches a multilayer structure having approximately three or four resin layers. Accordingly, the combined thickness of two adjacent resin layers would have been understood to fall within or overlap the claimed range of 50 nm to 500 nm, depending on the selected layer thicknesses.
Furthermore, Applicant has not provided persuasive evidence demonstrating that the claimed range of the sum of the average thicknesses of the first and second resin layers is critical or produces unexpected results relative to the prior art. Absent such evidence, where the prior art discloses values that overlap or are sufficiently close to the claimed range, optimizing the thickness of individual resin layers to achieve a desired total thickness would have been within the level of ordinary skill in the art before the effective filing date of the claimed invention. Therefore, selecting a combined thickness within the claimed range would have been an obvious matter of routine optimization.
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.
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/DUNG H BUI/ Primary Examiner, Art Unit 1773
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