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 .
Claims 16-34 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 30, 32, and 34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 30, 32, and 34: These claims claim “an interleave between two separators”. However, the claims that these claims depend on claim “A package including a separator”. Therefore, it is unclear if package comprises one or two separators.
Claim Rejections - 35 USC § 102/103
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 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.
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) 16-28 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mues (US 20200181785 A1).
Claim 16: Mues discloses a separator for alkaline electrolysis (see e.g. abstract) comprising a porous support and a porous layer provided on the porous support (see e.g. abstract).
With regard to the limitation claiming “at least 25 volume percent of the pores of the separator are filled with water”, the instant invention discusses the following (see e.g. [0023] and [0025]):
The separator for alkaline electrolysis (1) according to the present invention comprises a porous support (100) and a porous layer (200) provided on the porous support, characterized in that at least 25 volume percent, more preferably at least 40 volume percent, most preferably at least 50 volume % of the pores of the separator are filled with water. In a particularly preferred embodiment, at least 75 volume % of the pores are filled with water…The water content, i.e. the Volume % of pores filled with water, may be optimized by drying the separator, for example after the liquid induced phase separation step or washing step described below. Drying time and/or temperature may be optimized to obtain a separator according to the present invention.
Mues discloses manufacturing the separator with a phase inversion step with water (see e.g. [0080]; [0090]), an optional washing step (see e.g. [0094]), and an optional drying step (see e.g. [0095]). Therefore, the separator of Mues has at least 25 volume percent of the pores of the separator are filled with water because the method of manufacturing is the same. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that he separator of Mues would have at least 25 volume percent of the pores of the separator are filled with water because the membrane is formed with a phase inversion step with water, which is then washed, and dried like the instant invention.
Claim 17: Mues discloses a separator that has at least 40 volume percent of the pores of the separator are filled with water. water because the method of manufacturing is the same. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that he separator of Mues would have at least 40 volume percent of the pores of the separator are filled with water because the membrane is formed with a phase inversion step with water, which is then washed, and dried like the instant invention.
Claim 18: Mues discloses that the separator includes a first porous layer provided on one side of the porous support and a second porous layer provided on the other side of the porous support (see e.g. [0092]).
Claim 19: Mues discloses that the first and the second porous layers are the same (see e.g. [0065]).
Claim 20: Mues discloses that the porous layer includes a polymer resin (see e.g. [0042]) and hydrophilic inorganic particles (see e.g. [0046]).
Claim 21: Mues discloses that the polymer resin is selected from the group consisting of polysulfone and polyethersulfone (see e.g. [0042]) in a list with other resins. KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select polysulfone or polyethersulfone.
Claim 22: Mues discloses that the hydrophilic inorganic particles are selected from the group consisting of zirconium oxide, titanium oxide, and barium sulfate (see e.g. [0048]) in a list with other particles. KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select zirconium oxide, titanium oxide, or barium sulfate.
Claim 23: Mues discloses that the hydrophilic inorganic particles have a particle size D50 of 0.658 µm (see e.g. [0111]).
Claim 24: Mues discloses that thickness of the separator is between 250 and 750 µm (see e.g. [0028]), overlapping with the claimed range of from 75 to 500 µm. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claim 25: Mues discloses that thickness of the separator is between 100 and 1000 µm (see e.g. [0028]), overlapping with the claimed range of from 100 to 250 µm. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Claim 26: Mues discloses that the porous support is a polymeric fabric (see e.g. [0031]) selected from a polypropylene (PP), a polyphenylene sulphide (PPS), and a polyether ether ketone (PEEK) fabric (see e.g. [0033]) in a list with other particles. KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select polypropylene (PP), a polyphenylene sulphide (PPS), or a polyether ether ketone (PEEK) fabric
Claim 27: Mues discloses that the porous support has a thickness of 125 and 300 µm (see e.g. [0039]).
Claim 28: Mues discloses that the porous support has a thickness of 100 µm (see e.g. [0038]).
Claim Rejections - 35 USC § 103
Claim(s) 29, 31, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hinata (CN 104852063 A, Espacenet translation used for citations) in view of Mues.
Claim 29: Hinata discloses a package including a separator and a packaging material (see e.g. abstract), wherein the water vapour transmission rate (WVTR) of the packaging material is between 0 and 30 g/m2/24 hours (see e.g. [0116]) overlapping with the claimed range of less than 1 g/m2/24 hours. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Hinata does not explicitly teach that the separator is as defined in claim 16. Mues discloses the separator as defined in claim 16 (see rejection of claim 16 above). This separator is reinforced to improve mechanic performance and “combines sufficient gas barrier properties without the occurrence of a bubble trap and sufficient penetration of electrolyte into the separator to ensure ionic conductivity” (see e.g. [0014]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to use the separator taught in Mues with the package of Hinata because the positive characteristics listed above.
Claim 31: Hinata discloses a package including a separator and a packaging material (see e.g. abstract), wherein the water vapour transmission rate (WVTR) of the packaging material is between 0 and 30 g/m2/24 hours (see e.g. [0116]) overlapping with the claimed range of less than 1 g/m2/24 hours. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Hinata does not explicitly teach that the separator is as defined in claim 20. Mues discloses the separator as defined in claim 20 (see rejection of claim 20 above). This separator is reinforced to improve mechanic performance and “combines sufficient gas barrier properties without the occurrence of a bubble trap and sufficient penetration of electrolyte into the separator to ensure ionic conductivity” (see e.g. [0014]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to use the separator taught in Mues with the package of Hinata because the positive characteristics listed above.
Claim 33: Hinata discloses a package including a separator and a packaging material (see e.g. abstract), wherein the water vapour transmission rate (WVTR) of the packaging material is between 0 and 30 g/m2/24 hours (see e.g. [0116]) overlapping with the claimed range of less than 1 g/m2/24 hours. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Hinata does not explicitly teach that the separator is as defined in claim 26. Mues discloses the separator as defined in claim 26 (see rejection of claim 26 above). This separator is reinforced to improve mechanic performance and “combines sufficient gas barrier properties without the occurrence of a bubble trap and sufficient penetration of electrolyte into the separator to ensure ionic conductivity” (see e.g. [0014]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to use the separator taught in Mues with the package of Hinata because the positive characteristics listed above.
Claim(s) 30, 32, and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hinata in view of Mues as applied to claims 29, 31, and 33 above, and in further view of DuPont (“XL-100 Membrane”, 2014).
Claim 30: Hinata in view of Mues does not explicitly teach an interleave between two separators. Dupont teaches including an interleave (“coversheet”) with each membrane to protect the membrane from damage during handling and processing while maintaining the moisture content (see e.g. page 1). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the package of Hinata in view of Mues include an interleave with each separator to protect the membrane from damage during handling and processing while maintaining the moisture content. Additionally, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to make sure the interleave is between separators so that they do not damage each other.
Claim 32: Hinata in view of Mues does not explicitly teach an interleave between two separators. Dupont teaches including an interleave (“coversheet”) with each membrane to protect the membrane from damage during handling and processing while maintaining the moisture content (see e.g. page 1). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the package of Hinata in view of Mues include an interleave with each separator to protect the membrane from damage during handling and processing while maintaining the moisture content. Additionally, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to make sure the interleave is between separators so that they do not damage each other.
Claim 34: Hinata in view of Mues does not explicitly teach an interleave between two separators. Dupont teaches including an interleave (“coversheet”) with each membrane to protect the membrane from damage during handling and processing while maintaining the moisture content (see e.g. page 1). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the package of Hinata in view of Mues include an interleave with each separator to protect the membrane from damage during handling and processing while maintaining the moisture content. Additionally, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to make sure the interleave is between separators so that they do not damage each other.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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