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 the process claims (claims 1-13, 16, & 17) in the reply filed on 7/20/26 is acknowledged.
Claims 14-15 & 18, directed towards a product, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/20/26.
Claim Objections
Claim 4: Claim 4 is objected to because of the following informalities: “The” in line 3 of the claim is capitalized. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karakane et al. (US Patent 4,871,461; hereafter ‘461).
Claim 1: ‘461 is directed towards a method of manufacturing a thin film composite membrane (title & abstract), comprising:
forming a crosslinked quaternary ammonium polymer selective layer on a porous support or inside the pores of a porous support through Menshutkin polymerization (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
The Examiner acknowledges that ‘461 does not teach that the composite membrane is for alkaline water electrolysis.
However, it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause, Kropa v. Robie, 88 USPQ 478. Moreover, when the preamble states a purpose or intended use for the invention, it is not limiting; it merely indicates the environment in which the claimed invention operates, Loctite Corp. V. Ultraseal Ltd., 228 USPQ 90, 94.
Claim 2: The porous support is a polyethersulfone membrane (col. 8, lines 12-15).
Claim 3: The porous support is hydrophilized before forming the crosslinked quaternary ammonium polymer selective layer (the membrane is first coated with polyammonium acrylate or melamine-crosslinked polyacrylic acid composite; see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
Claim 4: The hydrophilization is performed by organic coating (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
Claim 5: The organic coating comprises a polyacrylic acid component (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
Claim 6: The organic coating treatment includes coating an organic material and then crosslinking the coated organic material (Example 5, col. 9, line 55 – col. 10, line 25).
Claim 7: The Menshutkin polymerization is performed by dip coating (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
Claim 8: The selective layer is formed by impregnating or applying a first solution including tertiary amine-based monomers and a second solution including alkyl halide-based monomers into or on the porous support and performing a polymerization reactive between the monomers of the first solution and the second solution (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
Claim 9: The alkyl halide-based monomer includes two or more alkyl halide groups (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
Claim 10: The tertiary amine-based monomer is polyethyleneimine (Example 9, col. 12, lines 55-65).
Claim 11: The solvent of the first solution is water (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
Claim 12: The alkyl halide-based monomer is an alkyl with 1-3 carbons and two halide ions with the structure X-R-X wherein X represents halides and R represents an alkyl with 1-3 carbons (col. 3, line 50 – col. 4, line 5).
Applicant is advised the species claim is anticipated no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)).
Claims 16 & 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nitadori et al. (US Patent 5,084,173; hereafter ‘173).
Claims 16 & 17: ‘173 is directed towards a thin film composite membrane (title) formed by depositing ethylene vinyl alcohol on a polyolefin porous support (see abstract and claims 1, 2, & 13).
The Examiner acknowledges that ‘173 does not teach that the composite membrane is for alkaline water electrolysis.
However, it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause, Kropa v. Robie, 88 USPQ 478. Moreover, when the preamble states a purpose or intended use for the invention, it is not limiting; it merely indicates the environment in which the claimed invention operates, Loctite Corp. V. Ultraseal Ltd., 228 USPQ 90, 94.
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over ‘461, as applied above, and further in view of Chinn et al. (US PG Pub 2006/0105012; hereafter ‘012).
Claim 13: ‘461 teaches that the first and second solvents are aqueous systems (see Example 1, col. 8, lines 4-30, col. 5, line 40 – col. 6, line 40, Example 5, col. 9, line 55 – col. 10, line 25, and Example 9, col. 12, lines 55-65).
‘461 does not teach using one of the enumerated solvents for the halide source.
However, ‘012, which is towards a process comprising forming an amine by the Menshutkin reaction (¶ 87) teaches that both the amine and halide sources can be dissolved in a chloroform based solvent systems (¶ 130).
It would have been obvious to one of ordinary skill in the art at the time of filing to use chloroform as the solvent because it is a recognized solvent for Menshutkin reactions solutions and would have predictably produced the desired results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/868,486 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are combinations and subcombinations of each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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