DETAILED ACTION
This detailed action is in response to the application filed on March 25, 2024 and any subsequent filings.
By preliminary amendment Applicant has canceled claims 1-53 and added Claims 54-85. Claims 54-85 are pending.
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 Objections
Claims 1 and 71 are objected to because of the following informalities:
In Claim 1, the claim must start with an indefinite article to be grammatically correct;
In Claim 1, the recitation of “dry process” is inconsistent with the recitation of “dry-process” where that term is used in all other claims; and,
In Claim 71 an extra spaced appears between “membrane” and “average” in line 2.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 69-85 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for water and alcohol, does not reasonably provide enablement for all solvents. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The specification does not provide sufficient evidence to support enablement of these claims based on the In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), factor analysis below such that undue experimentation would be required to arrive at the claimed invention. As to the breadth of the claims, the claims encompass all solvents. As to the nature of the invention and the amount of direct provided by the inventor, the invention claims all solvents. As to the state of the prior art, level of ordinary skill, and predictability in the art, no evidence supports or detracts from enablement. As to the existence of working examples, no working examples for all solvents have been identified weighing against a finding of enablement. Finally, as to the quantity of experimentation required to make or use the invention, undue experimentation would be required to determine the conditions necessary to make and use the claimed invention for all solvents.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
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.
Claims 54-85 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.
Claim 54 recites the limitation "at least one layer" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claims 55-58 each recite the average pore size yet do not specify if this is the average pore size of the at least one layer or the membrane. For purposes of examination, the limitation will be interpreted to mean the average pore size of the membrane.
Claim 67 recites an unknown method to determine an unknown characteristic “flow time” of a membrane using an unknown technique “IPA.” For purposes of examination, the claim will be interpreted as requiring a membrane.
Claim 68 recites a membrane comprises either a hydrophilic treatment distinct from a coating on the at least one side of the membrane or the membrane having a hydrophilic or hydrophilic coating on at least one side.
Regarding Claim 69, the terms "e.g." render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 69 recites the limitation "at least one layer" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 84 recites a membrane comprises either a hydrophilic treatment distinct from a coating on the at least one side of the membrane or the membrane having a hydrophilic or hydrophilic coating on at least one side.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
Claim Rejections - 35 USC § 103
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.
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.
Claims 54-85 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo, U.S. Publication No. 2020/0277465 (Kondo”).
Applicant’s claims are directed towards a device and a method.
Regarding Claims 54-66, Kondo discloses a filter product adapted to filter solvent for use in microelectronics processing comprising (note the intended use does not distinguish over the prior art) a dry process membrane (Paragraph 28 (“Pr”)), wherein at least one layer of the dry-process microporous membrane has: (i) an average pore size less than 0.035 microns (Claim 1), and (ii) a thickness less than 14 microns (Pr16, 61).
Kondo does not disclose a filter housing.
It would have been obvious to one or ordinary skill in the art prior to the effective filing date of the claimed invention to use the membrane disclosed by Kondo in a housing because, according to Kondo, the membrane can be used for filtration (Pr7), which requires a housing to direct fluid flow.
Regarding Claims 69-85, Kondo discloses a method of filtering, the method comprising flowing the fluid through a filter product having a dry-process microporous membrane (Pr1,7,109, Claims 1, 50 (note filtration use)), wherein at least one layer of the dry-process microporous membrane has: (i) an average pore size less than 0.035 microns (Claim 1), and (ii) a thickness less than 14 microns (Pr16,61).
Kondo does not disclose a solvent or a housing.
It would have been obvious to one or ordinary skill in the art prior to the effective filing date of the claimed invention to use the membrane disclosed by Kondo for filtering a solvent because solvents accumulate contaminants that must be removed. It would have also been obvious to use the membrane disclosed by Kondo in a housing because, according to Kondo, the membrane can be used for filtration (Pr7), which requires a housing to direct fluid flow.
Additional Disclosures Included: Claims 55-58, 70-74: claimed average pore sizes from 0.010-0.030 microns (Claim 1 discloses average pores sizes within this range). Claims 59, 60, 64, 66, 75, 76, 81, 83: claimed membrane thicknesses of less than 10 microns and 10, 12, and 14-20 microns (Pr61 discloses thicknesses within this range). Claims 61, 77, 78: wherein the at least one layer is a polypropylene-containing layer (Pr10). Claims 62, 79: wherein the dry-process microporous membrane is a monolayer membrane, a bilayer membrane, tri-layer membrane, or multi-layer membrane (Pr16). Claims 63, 80: wherein the dry-process microporous membrane is a tri-layer membrane having a polypropylene-containing layer, a polyethylene-containing layer, and a polypropylene-containing layer in that order (Pr103). Claims 65, 82: wherein the dry-process microporous membrane is a tri-layer membrane having a polyethylene-containing layer, a polypropylene-containing layer, and a polyethylene-containing layer in that order (note it would have been obvious to use a PE/PP/PE configuration versus the PP/PE/PP configuration disclosed by Kondo because, according to Kondo, this choice can be made to achieve desired properties and characteristics and this is one of a finite number of variations for a tri-layer membrane that would lead to predictable solutions having a reasonable expectation of success). Claim 67: wherein the dry-process microporous membrane has a flow time using IPA from 400 to 40,000 seconds (note substantially similar structures inherently have the same properties (see MPEP 2112.01); see also 112(b) analysis above). Claims 68, 84: wherein the dry-process microporous membrane comprises a hydrophilic treatment or coating on at least one side thereof (Claim 4). Claim 85: wherein the solvent is an aqueous solvent, an alcohol, or an organic solvent (Pr109 (note use as water barrier)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK ORME whose telephone number is (408)918-7585. The examiner can normally be reached Monday - Thursday, 7:30 am - 6:00 pm Pacific Time.
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/PATRICK ORME/Primary Examiner, Art Unit 1779
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