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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shqau et al (US 2011/0247492A1).
Regarding claims 1-3, Shqau teaches a zeolite membrane complex comprising: a porous support (refer [0006]); and a zeolite membrane formed on said support and containing aluminum (refer [0020]), silicon (refer [0020]), and a structure directing agent including carbon (refer [0008] disclosing tetramethylammonium), wherein said structure directing agent exists in pores of said zeolite membrane (refer [0005]-[0007] disclosing SDA remaining in the membrane).
Shqau further discloses that the structure directing agent exist in a range of about 2% to about 25% (refer [0035]) and drying of membrane is controlled to achieve desired amount of remaining SDA in the membrane (Refer [0036]). Shqau also teaches that molar ratio of SDA/Al2O3 on the order of about 0.5:1 to about 20:1 (refer [0037]). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The limitation “when a mixed solution having a temperature of 60°C and containing 50 mass¾ of water and 50 mass¾ of ethanol is supplied with a permeate pressure of -94.66 kPaG, a total permeation flux is higher than or equal to 1.0 kg/m2h, and a separation factor of water to ethanol is greater than or equal to 1000” is directed to properties of the membrane that is a result of the claimed structure of the membrane. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Also refer In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980).
Regarding claim 4, Shqau teaches limitations of claim 1 as set forth above. Shqau teaches that SDA comprises nitrogen ([0008] disclosing tetramethylammonium). Since SDA residue remain in the zeolite, it is inherent/obvious that some of nitrogen also remains in the zeolite.
Regarding claim 5, Shqau teaches limitations of claim 1 as set forth above. Shqau teaches that aluminum/silica molar ratio is ranging from 0.02 to 1. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). 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). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Regarding claim 6, Shqau teaches limitations of claim 1 as set forth above. Shqau teaches that said zeolite membrane contains FAU type zeolite (refer [0019]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shqau et al (US 2011/0247492A1), in view of Miyahara et al. (US 2020/0283303A1).
Regarding claim 7, Shqau teaches limitations of claim 1 as set forth above. Shqau teaches that said zeolite membrane contains FAU type zeolite (refer [0019]). Shqau does not teach that said zeolite membrane contains an AEI-, AFT-, AFX-, ANA-, CIA-, ETL-, ERI-, KFI-, LTA-, MER-, RHO-, or SOD-type zeolite. However, it is known in the art to use zeolites including AEI type, AEN type, AFN type, AFV type, AFX type, BEA type, CHA type, DDR type, ERI type, ETL type, FAU type (X type, Y type), GIS type, LEV type, LTA type, MEL type, MFI type, MOR type, PAU type, RHO type, SAT type, and SOD type (refer [0034] of Miyahara). Selecting known zeolite type in the zeolite membrane complex of Shqau would have been an obvious matter of choice to one of ordinary skill in the art.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shqau et al (US 2011/0247492A1), in view of Miyahara et al. (US 2020/0283303A1).
Regarding claim 8, Shqau teaches limitations of claim 1 as set forth above. In Fig. 6, Shqau discloses an experimental setup wherein a reactor comprising the membrane complex is supplied with a starting material to be separated. Shqau does not disclose that the reactor comprises a catalyst.
Akaogi discloses that zeolites can be used for adsorbing materials, desiccants, separating agents, catalysts, catalyst carriers, detergent aids, ion exchangers, waste water treatment agents, fertilizers, food additives, cosmetic additives and the like, and, in particular, is useful in gas separation applications (Refer [0002]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to provide zeolite membrane with a catalyst to provide catalytic reaction as taught by Akaogi. The limitation “wherein said zeolite membrane complex separates a high-permeability substance having high permeability in a mixture of substances from other substances by allowing said high-permeability substance to permeate said zeolite membrane complex, the mixture of substances containing a product substance generated by a chemical reaction of said starting material in the presence of said catalyst” is reciting a manner of operating the reactor without imparting additional structure to the reactor. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Response to Arguments
Applicant’s arguments with respect to claim(s) 08/18/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PRANAV N PATEL/Primary Examiner, Art Unit 1779
