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 .
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.
(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.
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) 1-9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Deschamps et al. “Poly(ethylene oxide)/poly(butylene terephthalate) segmented block copolymers: the effect of copolymer composition on physical properties and degradation behavior” NPL hereinafter “Deschamps”.
With regards to Claim 1 Deschamps teaches:
Polymer films comprising Poly(Ethylene Oxide) (PEO) and Poly(Ethylene Glycol) (PEG) as well as Poly(Ethylene Oxide) Terephthalate (PEOT) and Poly(Butylene Terephthalate) (PBT) segments synthesized from PEG. (See Deschamps pg. 9335, Abstract) The PEOT/PBT co-polymer reads on applicant’s claimed polymer which has a polyethylene oxide structure including the PEOT which reads on applicant's claimed ethyleneoxy unit at a proportion of 57% or more in terms of weight ratio with respect to 100% of constitutional units of a main chain. (See Deschamps pg. 9336 Table 1 and 2.1 “Polymerizations”) The polymer film also comprises an antioxidant, Irganox 1330 or vitamin E, at 0, 0.5, 1, and 2 wt.% which reads on applicant's claimed antioxidant having an I/O value of 0.4 or less according to applicant’s specification Paragraph 34. (See Deschamps Pg. 9337, 2.4 “Degradation”)
Deschamps discloses a PEOT/PBT copolymer with a “soft” or PEOT segment to “hard” or PBT segment ratio of 21 to 68 percent depending on the segment ratios and weight of the initial PEG molecule with a specific 70/30 soft/hard segment ratio (wt./wt.) of 62% for PEG 1000 which anticipates applicant’s claimed range of 57% or more in terms of weight ratio with respect to 100% of constitutional units of a main chain. In the alternative Deschamps renders the claimed range obvious as it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the range disclosed by Deschamps as discovering the optimum or workable ranges involves only routine skill in the art. Further in cases where the claimed range overlaps or lies inside of prior art ranges a prima facie case of obviousness exists. See MPEP 2144.05
The method of using the apparatus, as per the preamble use as a gas separation membrane, does not expressly or impliedly require any particular structure in addition to that disclosed by Deschamps. The courts have held that the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. The apparatus or product must be structurally distinct from the prior art. See MPEP 2114
With regards to Claim 2 Deschamps teaches:
The polymer film also comprises an antioxidant, vitamin E, at 0, 0.5, 1, and 2 wt.% which reads on applicant's claimed antioxidant having an organic value of 500 which anticipates and reads on applicant's claimed range of 300 to 1,500 and an inorganic value of 145 which anticipates and reads on applicant's claimed range of 0 to 300 according to applicant’s specification Paragraph 34. (See Deschamps Pg. 9337, 2.4 “Degradation”)
Deschamps discloses an antioxidant, in particular vitamin E which has an organic value of 500 which anticipates and reads on applicant's claimed range of 300 to 1,500 and an inorganic value of 145 which anticipates and reads on applicant's claimed range of 0 to 300 according to applicant’s specification Paragraph 34. In the alternative Deschamps renders the claimed range obvious as it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the range disclosed by Deschamps as discovering the optimum or workable ranges involves only routine skill in the art. Further in cases where the claimed range overlaps or lies inside of prior art ranges a prima facie case of obviousness exists. See MPEP 2144.05
With regards to Claim 3 Deschamps teaches:
The polymer film also comprises an antioxidant, vitamin E, which is a liquid under standard conditions of 1 atmosphere of pressure and temperature of 25˚C. (See Deschamps Pg. 9337, 2.4 “Degradation”)
With regards to Claim 4 Deschamps teaches:
The film which comprises both the PEOT/PBT co-polymer and the antioxidant, in particular vitamin E, reads on applicant’s claimed separate functional layer containing “a primary antioxidant and a secondary antioxidant as the antioxidant” which is interpreted in view of applicant’s disclosure, Paragraph 33, to mean that there is a singular antioxidant which performs both as a “radical scavenger” and as a “peroxide decomposition agent”. Applicant discloses vitamin E as performing both of these functions.
With regards to Claims 3 and 4, Courts have held that products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01
The courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on "inherency" under 35 USC § 102, on “prima facie obviousness" under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See MPEP 2112
With regards to Claims 6 and 7:
The method of using the apparatus, as per claim 6, use as a gas separation membrane, does not expressly or impliedly require any particular structure in addition to that disclosed by Deschamps. The courts have held that the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. The apparatus or product must be structurally distinct from the prior art. See MPEP 2114
Claim(s) 5, 8, and 9 is/are rejected under 35 U.S.C. 103 as obvious over Deschamps et al. “Poly(ethylene oxide)/poly(butylene terephthalate) segmented block copolymers: the effect of copolymer composition on physical properties and degradation behavior” NPL hereinafter “Deschamps” as applied above in the rejection of Claim 1 further in view of Kulprathipanja et al. (US 2003/0089228).
With regards to Claims 5, 8 and 9:
Deschamps teaches:
A separate functional layer as detailed above in the rejection of claim 1 which comprises a functional layer comprising an antioxidant, in particular vitamin E, and a polymer as above.
Deschamps does not teach:
The film or co-polymer with an antioxidant which reads on applicant's claimed separate functional layer is formed on a porous support layer.
Kulprathipanja teaches:
A gas separation membrane, and method of forming said gas separation membrane, with a PEG matrix formed on a porous support which reads on applicant's claimed porous support (See Kulprathipanja Abstract, Paragraphs 2, 16, 21, 26)
Deschamps discloses the claimed invention except for Deschamps does not teach the functional layer is located on a porous support. Kulprathipanja teaches that it is known to place a PEG based membrane on a porous support for use in some applications for use as a membrane in order to provide additional structural integrity to the membrane. It would have been obvious to one having ordinary skill in the art at the time of filing to modify the membrane taught by Deschamps to include a porous support as taught by Kulprathipanja, since Kulprathipanja states at Paragraph 3 “The higher the membrane permeability, the more attractive is the use of membranes for a gas separation process. As will hereinafter be shown in greater detail, the permeability of a polymeric membrane may be increased as well as altered by forming a mixed matrix membrane and thus providing a novel membrane of this invention.” In other words that such a modification would increase the permeability of the polymeric membrane compared to the polymeric membrane without the porous support material. See MPEP 2144
Additionally, Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Ho et al. (US 2019/0307610).
With regards to Claim 9 Ho teaches:
A polymeric membrane which reads on applicant's claimed gas separation membrane as it provides breathability and regulation of moisture and which reads on applicant's claimed separate functional layer containing tocopherols which reads on applicant's claimed vitamin E or an analogous thereof. (See Ho Paragraph 9, 14, 41 and Fig. 2 and 3) A porous backing which reads on applicant's claimed porous support layer, part 4. (See Ho Paragraphs 9, 14, and Fig. 2 and 3)
Other Applicable Prior Art
All other art cited not detailed above in a rejection is considered relevant to at least some portion or feature of the current application and is cited for possible future use for reference. Applicant may find it useful to be familiar with all cited art for possible future rejections or discussion.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIT E ANBACHT whose telephone number is (571)272-9876. The examiner can normally be reached on M, T, R, F 11 am - 4 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached on (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9876.
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/BRIT E. ANBACHT/Examiner, Art Unit 1776
BRIT E. ANBACHT
Examiner
Art Unit 1776