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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 7, in the reply filed on February 23, 2026 is acknowledged.
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, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020-203227 to Iizuka (hereinafter referred to as Iizuka).
In regard to claim 1, as shown in figure 1, Iizuka discloses a composite membrane (10) capable of acting as a gas separation membrane. The composite membrane (10) includes a porous support layer (2) and a separation layer (1). The porous support layer (2) forms a first layer and the separation layer (1) forms a second layer that is provided at the surface on one side of the first layer and that includes a compound having gas separation ability. The porous support layer (2) can most preferably have a thickness of 5 to 150 microns. The separation layer (1) can most preferably have a thickness of 5 to 200 nm. Thus, an average thickness of the second layer (1) is smaller than an average thickness of the first layer (2). Iizuka discloses manufacturing the composite membrane by forming the separation layer as a coating. Inkjet printing is described as a coating method. Thus, the second layer can be considered an inkjet coating.
In regard to claim 2, the separation layer in Iizuka is disclosed to contain a cellulose compound.
In regard to claim 4, the separation layer (1) coats the entire surface of the porous support layer (2). Thus, the coverage rate of the second layer with respect to the first layer is 95.0% or greater.
Claims 1, 2, and 4 – 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication No. 2019/0076777 to Mochizuki et al. (hereinafter referred to as Mochizuki).
In regard to claim 1, as shown in figures 1 and 2, Mochizuki discloses a gas separation membrane (10) with a plurality of layers. The support layer (4) and/or first separation layer (3) can be considered to form a first layer. The second separation layer (8) and/or protective layer (9) can be considered to form a second layer that is provided at the surface on one side of the first layer (3 and/or 4) and that includes a compound having gas separation ability. Alternately, the support layer (4) can be the first layer and the first separation layer (3) can be the second layer. The support layer can mist preferably have a thickness of 5 to 150 microns, as discussed in paragraph [0080]. The thickness of the first separation layer is preferably 100 nm or less and 50 nm or more, as discussed in paragraphs [0088] and [0089]. The second separation layer has a thickness of 20 to 200 nm. Thus, in any of the arrangements discussed above, the average thickness of the second layer is smaller than the average thickness of the first layer. The second layer (3 or 8) are formed as a coating, see paragraphs [0079] and [0350]. How the coating is formed relates to the method of making the membrane. There is no evidence the layers (3 or 8) in Mochizuki are structurally different that a layer formed by inkjet coating.
In regard to claim 2, as discussed in paragraphs [0095], the compound can include a PET or cellulose compound.
In regard to claim 4, the separation layer (3 or 8) coats the entire surface of the porous support layer (4, or 3 and 4). Thus, the coverage rate of the second layer with respect to the first layer is 95.0% or greater.
In regard to claim 5, as discussed above, the first separation layer (3) can be considered to form the second layer and has a thickness that falls within the claimed range.
In regard to claim 6, as discussed in paragraphs [0312] – [0316], a resin layer can be provided between the support layer (4) and the first separation layer (3). The resin layer can be considered to be part of the first layer. As discussed in paragraph [0316], the resin layer includes an organopolysiloxane.
In regard to claim 7, as discussed above, the second separation layer (8) can be the second layer. As discussed in paragraphs [0187] – [0189], thus layer can be a multilayer structure. Alternately, the first separation layer (3), the second separation layer (8), and the protective layer (9) can together be considered a multilayer second layer.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Iizuka.
Iizuka is discussed above in section 4. As discussed above, Iizuka discloses a separation layer (1), which forms the second layer, having a thickness of 5 to 200 nm. This overlaps with the claimed range of 1 to 100 nm. The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q. 549; In re Wertheim 191 USPQ 90 (CCPA 1976).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki.
Mochizuki is discussed above in section 5. As discussed in paragraphs [0312] – [0316], a resin layer can be provided between the support layer (4) and the first separation layer (3). The resin layer can be considered to be part of the second layer. As discussed in paragraph [0320], the resin layer has a thickness such that the resin layer and first separation layer combine to form a second layer with a thickness that is smaller than the average thickness of the first layer (4). As discussed in paragraphs [0316] and [0317], the resin layer includes a polymethylsiloxane derivative, but does not disclose one of the hydrogen atoms of some methyl groups to be substituted with a hydroxyl group or an amino group. Nevertheless, such substitutions are well-known in the art and would have been obvious to one having ordinary skill in the art. MPEP 2144.03 (A-E). It has been held within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Other prior art references listed on the PTO-892 (Notice of References Cited) are considered to be of interest disclosing similar membranes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773