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 .
Priority
Benefit of domestic having an earliest filing date of 09/20/2021 under 35 U.S.C. 120, 121, or 119e is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
The TABLE on P9 of the specification is illegible.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 54-59,64,70,72-88,92-94,101-103,105 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 54-68 of copending Application No. 18/615,108 in view of BONYADI (US 20160256836).
This is a provisional nonstatutory double patenting rejection.
Instant claims 18/693,083
Claims 18/615,108
Comments
54
54
Same except including intended use and a filter product with a membrane in a housing, which is obvious for the purpose of purification of liquids (BONYADI par. [0044]).
55-58
55-58
Same pore size
59,64,87-88,105
59-60,64,66
Same thickness
70
61
Same polypropylene
72-80
62
Same layered membrane
81-83
63
Same layered membrane
84-86
65
Same layered membrane
92-94
67
Same flow time
101-103
68
Same hydrophilic
Claim Rejections - 35 USC § 112
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 87-91,101-103,105 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 87-88,105, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 87-88,105 recites the broad recitation less than 20 microns or 14 microns, and the claim also recites less than 19 microns, less than 18 microns, etc. which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 89-91, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 89-91 recites the broad recitation less than 25%, and the claim also recites less than 20%, less than 15%, less than 10%, and less than 5%.which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 101-103, it is unclear whether the claim should be read as “a hydrophilic [treatment or coating] on at least one side thereof” or “a [hydrophilic treatment] or [coating on at least one side thereof]”. Thus the claim scope cannot be ascertained.
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.
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) 54-91,101-103,105 are rejected under 35 U.S.C. 103 as being unpatentable over KONDO (US 20200277465).
Regarding claims 54-83,87-88,105, KONDO teaches base films for impregnation and improved impregnated products (title, Figs.) including a dry-process microporous membrane for filtration (par. [0001,0028]),
wherein a layer of the membrane has a thickness less than e.g. 10 microns (par. [0061]), which anticipates the claimed range of less than 14 microns (or 12 microns or 10 microns); and,
wherein a layer of the membrane has an average pore size from 0.01 microns to about 2.0 microns, which overlaps the instantly claimed range of less than 0.035 microns (or 0.030 microns, 0.025 microns, 0.020 microns, 10-20 nm, which is equivalent to 0.01-0.02 microns) and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
wherein the layer is a polypropylene-containing layer (par. [0010]);
wherein the membrane may be a monolayer, bilayer, trilayer, or multilayer membrane (par. [0016]); and,
wherein the membrane may be a tri-layer having a polypropylene-containing layer, a polyethylene-containing layer, and a polypropylene-containing layer in that order (par. [0103]).
Regarding claims 84-86, KONDO teaches the membrane may be a tri-layer membrane of PP/PE/PP (par. [0103]), not PE/PP/PE. However, one having ordinary skill in the art would recognize a PE/PP/PE tri-layer membrane as an obvious engineering design choice based on the desired properties (see e.g. par. [0007] on P2).
It is obvious to one having ordinary skill in the art to try various combination materials known in the art by choosing from a finite number of identified, predictable solutions (e.g. a membrane having various combinations of PE and PP) with a reasonable expectation of success by reaching a workable solution in order to provide a suitable composite membrane. See MPEP 2143.I.(E).
Regarding claims 89-91, KONDO’s membrane has the same structure and function. This includes the property of shrinkage. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01).
See also par. [0068] with a slight variation in test parameters.
Regarding claims 101-103, KONDO teaches a hydrophilic treatment or coating (KONDO claim 4).
Claim(s) 92-97,104 are rejected under 35 U.S.C. 103 as being unpatentable over KONDO (US 20200277465) in view of BONYADI (US 20160256836).
Regarding claims 92-97,104, KONDO’s membrane has the same structure and function. This includes the property of flow time. Since the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01).
If not inherent, then it would be obvious to one having ordinary skill in the art to optimize the membrane for desired properties such as flow time. See BONYADI, which teaches microporous polyamide-imide membranes (title, Figs.) including a flow time of 400 second to about 40,000 seconds, which anticipates the claimed range of 400 second to about 40,000 seconds or overlaps the claimed range of 11,000-40,000 second and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the membrane of KONDO with a desired flow time in order to optimize the filter properties for improved performance. The references are combinable, because they are in the same technological environment of filtration membranes. See MPEP 2141 III (G).
See BONYADI par. [0030] for flow time measurement parameters.
Claim(s) 98-100 are rejected under 35 U.S.C. 103 as being unpatentable over KONDO (US 20200277465) in view of FISHER (US 5013439).
Regarding claims 98-100, KONDO is silent as to whether the membrane is transparent or translucent. However, FISHER teaches microporous membranes having increased pore densities and process for making the same (title, Figs.) including a membrane that is transparent or translucent, possibly due to an increased pore density and decreased pore size (C3/L49-65), which improve filter properties (abstract).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the membrane of KONDO to be translucent as taught by FISHER in order to improve filter properties. The references are combinable, because they are in the same technological environment of separations. See MPEP 2141 III (A) and (G).
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Liam Royce/ Primary Examiner, Art Unit 1777
LIAM A. ROYCE
Primary Examiner
Art Unit 1777
Prosecution Insights