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 .
Examiner Notes
Claims 1 and 4-20 are currently pending. Claims 1, 4, 11, and 12 have been amended, claim 20 is newly added, and claims 2-3 have been cancelled.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4-14, 16-17, and 19 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Luehn (US 2016/0250829) and Jiang et al. (Chem. Soc. Rev., 2012, 41, 6010-6022) incorporated by reference.
Regarding claims 1 and 12, Luehn discloses a multilayer composite comprising at least one first layer and at least one further layer wherein one of the two layers comprises one adsorption material and at least one polymeric support material in admixture with the adsorption material (0012). The polymeric support material including thermoplastic resins (0012) and the adsorption comprising a covalent organic framework (COF) (0034) having organic structures in which organic molecules are joined by covalent chemical bonds (0039; see e.g., Jiang et. al. incorporated by reference). Luehn teaches the polymeric support including thermoplastic elastomers such as ethylene-propylene-diene comprising dienes such as norbornene (0058).
Regarding claims 4-11 and 16, Luehn discloses the same resin component (0058) and COF (Jiang: Fig. 1) as disclosed in the specification consequently, the properties of water absorption rate, melting point, relative permittivity, dielectric loss tangent and linear expansion coefficient in an in-plane direction are expected of the prior art resin and film.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 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." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Regarding claim 13, Jiang teaches the covalent bond in the COF is a carbon-nitrogen double bond (Fig. 10).
Regarding claim 14, Jiang teaches a COF wherein terminals of the plurality of linker portions each have a carbon atom and the plurality of multi-site core portions have a nitrogen atom and the covalent bond of the COF is a carbon-nitrogen double bond in which a respective carbon atom of the plurality of linker portions and a respective nitrogen atom of the plurality of multi-site core potions are bonded with each other (Fig. 10).
Regarding claim 17, Luehn teaches the COF is a porous crystalline three-dimensional organic structure (0039) in particle form (0051).
Regarding claim 19, Jiang teaches wherein the plurality of linker and/or multi-site core potions have an alkyl group (Fig. 3 and page 6017 section 3.2.3).
Claim Rejections - 35 USC § 103
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Luehn.
Regarding claim 15, Luehn discloses the adsorption material being admixed in a ratio of 0.001 to 80% by weight based on the total weight of the adsorption material and polymeric support material (0033). Given the breadth of the claimed and disclosed ranges, there is a reasonable expectation that the content ratio of Luehn in weight% will overlap with the claimed ratio of 10 to 70 vol% (MPEP 2144.05).
Alternatively, Luehn teaches that the adsorption material is incorporated into the support to absorb volatile compounds (0024). As there is no evidence indicating the ratio of COF is critical. Where 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Luehn as applied to claim 1 above, and further in view of Yaghi et al. (US 2010/0143693).
Regarding claim 18, Luehn discloses the limitations of claim 1 as discussed above. Luehn does not teach therein the plurality of linker and/or multi-site core portions have a phosphorus element.
Yaghi, in the analogous field of covalent organic frameworks teaches wherein the covalent bonds between the core and linker portions take place between carbon, boron, oxygen, nitrogen or phosphorus atoms (0007).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious of the COF of Luehn to have a phosphorus element as taught by Yaghi, as a phosphorus element is capable of forming a bond with a bridging oxygen atom for formation of a COF (0107).
Alternatively, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” to using a phosphorus element as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Luehn as applied to claim 1 above, and further in view of Furuta et al. (US 5,997,765).
Regarding claim 19, Luehn discloses the limitations of claim 1 as discussed above. Luehn does not teach thermoplastic resins selected form a cyclic olefin-based resin and a liquid crystal polymer.
Furuta, in the analogous field of resin films (column 1, lines 5-10), teaches a liquid crystal polymer composition (column 5, lines 60-65).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the polymeric support material of Luehn to comprise a liquid crystal polymer composition as taught by Furuta, as the composition has excellent heat resistance, mechanical properties, processability, impact resistance, improved anisotropy, and gas barrier property (column 5, lines 60-65)
Response to Arguments
Due to the cancellation of claim 3, the 35 U.S.C. 112(b) rejection is moot.
Applicant’s arguments that Luehns working examples exclusively use HDPE which is not one of the specific thermoplastic resin categories claimed in amended claim 1 have been fully considered but they are not persuasive.
Prior art references are relevant for all they contain. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). As the broader disclosure teaches thermoplastics within the claimed resin categories, the limitations are met by the disclosure of Luehn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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