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 § 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) 16-29, 31, and 33 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).
The instant specification states the following regarding the limitation claiming “a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.2 bar”:
[039]: The lateral Bubble measured as described below is determined by the diffusion of gas bubbles in the lateral direction (L1) inside the separator. This in contrast to the commonly known bubble point also described below that is a measure of the diffusion of gas bubbles in the longitudinal direction (L2) of the separator.
[041]: It has been found that the lateral Bubble Point referred to above may be influenced by:
the composition of the dope solution;
the composition and structure of the porous support;
residual solvent in the porous support.
[045]: The pores preferably have a maximum pore diameter (PDmax) measured with the Bubble Point Test method of from 0.05 to 2 μm, more preferably from 0.10 to 1 μm, most preferably from 0.15 to 0.5 μm.
[069]: It has been observed that the lateral Bubble Point of the separator increases when it includes a PEEK or a polyarylene porous support.
[082]: The solvent is then partly removed from the porous support to obtain a desired residual solvent amount. The removal may be carried out by wiping the solvent from the porous support and/or drying the porous support.
Mues discloses bubble points between 1.4 and 3.4 bar (see e.g. [0136], Table 2), with PDmax values between 0.19 and 0.39 μm (see e.g. [0136], Table 2), a porous support material made of PEEK (see e.g. [0033]), a dope solution comprising an organic solvent like N-methyl-2-pyrrolidone (see e.g. [0059]), a resin of polysulfone (see e.g. [0042]), and an inorganic particle (see e.g. [0048]), which is the same dope composition as the instant invention (see claims 19, 22, and 23), wherein solvent is removed in the same manner as done by the instant invention for leaving residual solvent (see e.g. [0095]).
Therefore, Mues anticipates the claim limitation that a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.2 bar because Mues discloses the same properties and process steps that yield the claimed lateral Bubble Point. 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 the separator of Mues would have a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.2 bar because discloses the same properties and process steps that yield the claimed lateral Bubble Point. Therefore, the resulting separators should have the same lateral Bubble Point.
Claim 17: Mues discloses bubble points between 1.4 and 3.4 bar (see e.g. [0136], Table 2), with PDmax values between 0.19 and 0.39 μm (see e.g. [0136], Table 2), a porous support material made of PEEK (see e.g. [0033]), a dope solution comprising an organic solvent like N-methyl-2-pyrrolidone (see e.g. [0059]), a resin of polysulfone (see e.g. [0042]), and an inorganic particle (see e.g. [0048]), which is the same dope composition as the instant invention (see claims 19, 22, and 23), wherein solvent is removed in the same manner as done by the instant invention for leaving residual solvent (see e.g. [0095]).
Therefore, Mues anticipates the claim limitation that a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.5 bar because Mues discloses the same properties and process steps that yield the claimed lateral Bubble Point. 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 the separator of Mues would have a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.5 bar because Mues teaches the same properties and process steps that yield the claimed lateral Bubble Point. Therefore, the resulting separators should have the same lateral Bubble Point.
Claim 18: Mues discloses that the porous support can be a polyether ether ketone (PEEK) polymeric fabric (see e.g. [0033]) amongst a list of other polymers. KSR rationale E states that is it 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 PEEK as the material for the porous support.
Claim 19: Mues discloses that the solvent can be N-methyl-2-pyrrolidone (NMP) or N-ethyl-pyrrolidone (NEP) (see e.g. [0059]) amongst a list of others. KSR rationale E states that is it 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 NMP or NEP as the solvent.
The instant specification says the following regarding the limitation claiming that the porous support includes at least 50 ppm residual solvent:
[082]: The solvent is then partly removed from the porous support to obtain a
desired residual solvent amount. The removal may be carried out by wiping
the solvent from the porous support and/or drying the porous support.
[073]: It has been observed that using porous supports comprising residual
solvent(s) for the preparation of separators may result in an increased lateral
Bubble Point.
Therefore, the claimed bubble point of claim 16, which this claim depends on, can be considered to be a function of the residual solvent. In the rejection for claim 16, it was established that Mues anticipated/rendered obvious the claimed bubble point. Additionally, Mues discloses that the solvent is removed in the same manner as done by the instant invention for leaving residual solvent (see e.g. [0095]). Therefore, Mues anticipates the residual amount of solvent because Mues discloses the same method of removing solvent and the same resulting properties. 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 the separator of Mues would have the claimed residual solvent because Mues teaches discloses the same method of removing solvent and the same resulting properties.
Claim 20: 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. [0022]).
Claim 21: Mues discloses that the first and the second porous layers are the same (see e.g. [0065]; [0092]).
Claim 22: Mues discloses that the porous layer includes a polymer resin (see e.g. [0042]) and hydrophilic inorganic particles (see e.g. [0046]).
Claim 23: Mues discloses that the polymer resin can be polysulfone or polyethersulfone (see e.g. [0042]) amongst a list of others. KSR rationale E states that is it 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 as the polymer.
Claim 24: Mues discloses that the hydrophilic inorganic particles can be zirconium oxide, zirconium hydroxide, titanium oxide, titanium hydroxide, or barium sulfate (see e.g. [0048]; [0049]) amongst a list of other. KSR rationale E states that is it 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, zirconium hydroxide, titanium oxide, titanium hydroxide, or barium sulfate as the hydrophilic inorganic particles.
Claim 25: Mues discloses that the hydrophilic inorganic particles have a particle size D50 of 0.658 µm (see e.g. [0111]).
Claim 26: Mues discloses a thickness of the separator (t2) is from 100 to 1000 µm (see e.g. [0028]), which overlaps with the claimed range of 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 27: Mues discloses that the porous support has a thickness (t1) of 100 µm (see e.g. [0039]).
Claim 28: The water permeability of the claim is direct result of the physical characteristics of the separator. As shown above, Mues anticipates/renders obvious all of the claimed structure of the separator. Therefore, Mues anticipates a separator having a water permeability from 200 to 800 1/bar/h/m2. 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 the separator of Mues would have a water permeability from 200 to 800 1/bar/h/m2 because Mues teaches the same structure and process of making the structure as the instant application and should therefore have the same resulting properties.
Claim 29: Mues discloses an alkaline water electrolysis device (see e.g. [0006]) comprising a separator as defined in claim 16 (see rejection of claim 16 above) located between a cathode and an anode (see e.g. [0006]).
Claim 31: Mues discloses an alkaline water electrolysis device (see e.g. [0006]) comprising a separator as defined in claim 22 (see rejection of claim 22 above) located between a cathode and an anode (see e.g. [0006]).
Claim 33: Mues discloses an alkaline water electrolysis device (see e.g. [0006]) comprising a separator as defined in claim 28 (see rejection of claim 28 above) located between a cathode and an anode (see e.g. [0006]).
Claim(s) 16-24 and 26-34 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 Doyen et al (US 20130337368 A1).
Claim 16: Doyen discloses a separator for alkaline electrolysis (see e.g. [0002]) comprising a porous support (see e.g. [0090]) and a porous layer provided on the porous support (see e.g. [0104]).
The instant specification states the following regarding the limitation claiming “a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.2 bar”:
[039]: The lateral Bubble measured as described below is determined by the diffusion of gas bubbles in the lateral direction (L1) inside the separator. This in contrast to the commonly known bubble point also described below that is a measure of the diffusion of gas bubbles in the longitudinal direction (L2) of the separator.
[041]: It has been found that the lateral Bubble Point referred to above may be influenced by:
the composition of the dope solution;
the composition and structure of the porous support;
residual solvent in the porous support.
[045]: The pores preferably have a maximum pore diameter (PDmax) measured with the Bubble Point Test method of from 0.05 to 2 μm, more preferably from 0.10 to 1 μm, most preferably from 0.15 to 0.5 μm.
[069]: It has been observed that the lateral Bubble Point of the separator increases when it includes a PEEK or a polyarylene porous support.
[082]: The solvent is then partly removed from the porous support to obtain a desired residual solvent amount. The removal may be carried out by wiping the solvent from the porous support and/or drying the porous support.
Doyen discloses a bubble point of at least 1 bar (see e.g. [0111]), with particle size values between 0.05 and 0.50 μm (see e.g. [0118]), a porous support material made of PEEK (see e.g. [0090]), a dope solution comprising an organic solvent like N-methyl-pyrrolidone (see e.g. [0107]), a resin of polysulfone (see e.g. [0106]), and an inorganic particle (see e.g. [0107]), which is the same dope composition as the instant invention (see claims 19, 22, and 23), wherein solvent is removed in the same manner as done by the instant invention for leaving residual solvent (see e.g. [0105]).
Therefore, Doyen anticipates the claim limitation that a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.2 bar because Doyen discloses the same properties and process steps that yield the claimed lateral Bubble Point. 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 the separator of Doyen would have a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.2 bar because discloses the same properties and process steps that yield the claimed lateral Bubble Point. Therefore, the resulting separators should have the same lateral Bubble Point.
Claim 17: Doyen discloses a bubble point of at least 1 bar (see e.g. [0111]), with particle size values between 0.05 and 0.50 μm (see e.g. [0118]), a porous support material made of PEEK (see e.g. [0090]), a dope solution comprising an organic solvent like N-methyl-pyrrolidone (see e.g. [0107]), a resin of polysulfone (see e.g. [0106]), and an inorganic particle (see e.g. [0107]), which is the same dope composition as the instant invention (see claims 19, 22, and 23), wherein solvent is removed in the same manner as done by the instant invention for leaving residual solvent (see e.g. [0105]).
Therefore, Doyen anticipates the claim limitation that a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.5 bar because Doyen discloses the same properties and process steps that yield the claimed lateral Bubble Point. 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 the separator of Doyen would have a lateral Bubble Point of the separator, measured according to the method described in the description, is at least 0.5 bar because discloses the same properties and process steps that yield the claimed lateral Bubble Point. Therefore, the resulting separators should have the same lateral Bubble Point.
Claim 18: Doyen discloses that the porous support can include a polyether ether ketone (PEEK) (see e.g. [0090]) fabric (see e.g. [0112]). KSR rationale E states that is it 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 PEEK as the material for the porous support.
Claim 19: Doyen discloses that the porous support includes a solvent of N-methyl pyrrolidone, N-ethyl pyrrolidone, or N-butyl pyrrolidone (see e.g. [0107]) amongst a list of others. KSR rationale E states that is it 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 N-methyl pyrrolidone, N-ethyl pyrrolidone, or N-butyl pyrrolidone as the solvent.
Claim 20: Doyen 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. [0048]).
Claim 21: Doyen discloses that the first and the second porous layers are the same (see e.g. [0048]).
Claim 22: Doyen discloses that the porous layer includes a polymer resin (see e.g. [0107]) and hydrophilic inorganic particles (see e.g. [0107]).
Claim 23: Doyen discloses that the polymer resin can be polysulfone (see e.g. [0106]) amongst a list of others. KSR rationale E states that is it 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 as the polymer.
Claim 24: Doyen discloses that the hydrophilic inorganic particles can be zirconium oxide, zirconium hydroxide, titanium oxide, or titanium hydroxide (see e.g. [0107]) amongst a list of others. KSR rationale E states that is it 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, zirconium hydroxide, titanium oxide, or titanium hydroxide as the hydrophilic inorganic particles.
Claim 26: Doyen discloses a thickness of the separator (t2) is 250 µm (see e.g. [0096]).
Claim 27: Doyen discloses a thickness (t1) of 100 µm (see e.g. [0209]).
Claim 28: The water permeability of the claim is direct result of the physical characteristics of the separator. As shown above, Doyen anticipates/renders obvious all of the claimed structure of the separator. Therefore, Doyen anticipates a separator having a water permeability from 200 to 800 1/bar/h/m2. 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 the separator of Doyen would have a water permeability from 200 to 800 1/bar/h/m2 because Doyen teaches the same structure and process of making the structure as the instant application and should therefore have the same resulting properties.
Claim 29: Doyen discloses an alkaline water (see e.g. [0002]) electrolysis device (see e.g. [0041]) comprising a separator as defined in claim 16 (see rejection of claim 16 above) located between a cathode and an anode (see e.g. [0041]).
Claim 30: Doyen discloses a zero-gap configuration (see e.g. [0092]: “resilience in the thickness direction is a key property for realizing the preferred zero-gap configuration with the electrodes”).
Claim 31: Doyen discloses an alkaline water (see e.g. [0002]) electrolysis device (see e.g. [0041]) comprising a separator as defined in claim 22 (see rejection of claim 22 above) located between a cathode and an anode (see e.g. [0041]).
Claim 32: Doyen discloses a zero-gap configuration (see e.g. [0092]: “resilience in the thickness direction is a key property for realizing the preferred zero-gap configuration with the electrodes”).
Claim 33: Doyen discloses an alkaline water (see e.g. [0002]) electrolysis device (see e.g. [0041]) comprising a separator as defined in claim 28 (see rejection of claim 28 above) located between a cathode and an anode (see e.g. [0041]).
Claim 34: Doyen discloses a zero-gap configuration (see e.g. [0092]: “resilience in the thickness direction is a key property for realizing the preferred zero-gap configuration with the electrodes”).
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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