DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
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.
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.
2. Claims 1, 5-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kawachi et al (WO 2021/070917).
It is noted that while the rejection is made over WO 2021/070917 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0389203 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0389203.
3. Kawachi et al discloses a polyolefin microporous membrane comprising polyethylene ([0030]; [0054]) and having:
1) melting point in the range of 125-140⁰C ([0055]);
2) a basis weight-equivalent puncture strength of 70-160 gf/(g/m2) or 80-140 gf/(g/m2) ([0021], [0046], [0022]);
3) a shutdown temperature of 125-150⁰C ([0026]);
4) porosity of 25-60% ([0066]).
4. The polyolefin is having a viscosity-average molecular weight of 30,000-5,000,000 ([0060]).
5. The specific example 10 shows the membrane comprising:
a) 70%wt of polyethylene PE8 (Table 1) having viscosity-average molecular weight Mv of 900,000 (Table 3);
b) 30%wt of polyethylene PE2 having viscosity-average molecular weight of 250,000 (Table 3, as to instant claims 3-4);
wherein said Example 10 has:
- basic weight-equivalent puncture strength Sm of 126 gf/(g/m2);
- shutdown temperature Ts of 143.1⁰C;
- melting point of 135⁰C (Table 1).
therefore, the relationship of instant claim 1:
Ts < 0.13 x Sm +130 will be
143. 1 < 0.13 x 126 + 130
143.1 < 146.4 is fulfilled.
6. For the same example 10:
Air permeability 72 sec/100 cm3; film thickness 3.1 micron;
Film thickness-equivalent air permeability of 23 sec/100cm3;
Porosity 36%:
ln 23 + 0.07 x 36 - 5.8
3.1 +2.52 -5.8 = -0.18, i.e. less than zero
Or
ln 23 < -0.07 x 36 + 5.8
3.1 < -2.52 + 5.8
3.1 < 3.28 inequality fulfilled (as to instant claim 6).
7. Though Kawachi et al does not explicitly recite heat shrinkage of the microporous membrane, since the membrane of Kawachi et al is essentially the same as that claimed in instant invention, therefore, said membrane of Kawachi et al will inherently comprise, or alternatively would be reasonably expected to comprise heat shrinkage as that claimed in instant invention as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed polyolefin film, if not taught, may be very well met by the polyolefin membranes of Kawachi et al, since the polyolefin membranes of Kawachi et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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.
8. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kawachi et al (WO 2021/070917).
It is noted that while the rejection is made over WO 2021/070917 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0389203 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0389203.
9. Kawachi et al discloses a polyolefin microporous membrane comprising polyethylene ([0030]; [0054]) and having:
1) melting point in the range of 125-140⁰C ([0055]);
2) a basis weight-equivalent puncture strength of 70-160 gf/(g/m2) or 80-140 gf/(g/m2) ([0021], [0046], [0022]);
3) a shutdown temperature of 125-150C ([0026]);
4) porosity of 25-60% ([0066]).
10. The polyolefin is having a viscosity-average molecular weight of 30,000-5,000,000 ([0060]). The polyolefin includes ethylene homopolymers ([0050]) and further linear polyethylenes ([0051]). Therefore, based on the teachings of Kawachi et al, it would have been obvious to a one of ordinary skill in the art to choose and use ethylene homopolymers (as to instant claims 3-4) and further linear polyethylene as the polyolefin to form the membrane of Kawachi et al as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Given the used polyethylene is linear polyethylene homopolymer, this linear polyethylene homopolymer would be reasonably expected to have substantially no side chain branching, and in any case 0.1%mol or less side chains with 3 carbon atoms and 4 carbon atoms as well (as to instant claim 2). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
11. The specific example 10 shows the membrane comprising:
a) 70%wt of polyethylene PE8 (Table 1) having viscosity-average molecular weight Mv of 900,000 (Table 3);
b) 30%wt of polyethylene PE2 having viscosity-average molecular weight Mv of 250,000 i.e. having lower molecular weight (Table 3, as to instant claims 3-4).
Though Kawachi et al does not explicitly teach melt index of the polyethylene used as the lower molecular weight polyethylene b), since Kawachi et al teaches the used polyolefins having Mv of as low as 30,000, or 150,000 ([0060]), which are values within the ranges for Mv for the lower molecular weight polyethylene as disclosed in instant invention ([0024] of instant specification), therefore, i) the lower molecular weight polyethylene having Mv of as low as 30,000, or 150,000 of Kawachi et al will intrinsically and necessarily have, or would be reasonably expected to have melt index in the range as that claimed in instant invention as well, and ii) based on the teachings of Kawachi et al, it would have been obvious toa one of ordinary skill in the art to choose and use the polyethylene having such molecular weight/melt index as the lower molecular weight polyethylene b) to form the membrane of Kawachi et al as well, since it would have been obvious to choose material based on its suitability.
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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
12. The specific example 10 shows the membrane comprising:
a) 70%wt of polyethylene PE8 (Table 1) having viscosity-average molecular weight Mv of 900,000 (Table 3);
b) 30%wt of polyethylene PE2 having viscosity-average molecular weight of 250,000 (Table 3);
wherein said Example 10 has:
- basic weight-equivalent puncture strength Sm of 126 gf/(g/m2);
- shutdown temperature Ts of 143.1⁰C;
- melting point of 135⁰C (Table 1).
therefore, the relationship of instant claim 1:
Ts < 0.13 x Sm +130 will be
143. 1 < 0.13 x 126 + 130
143.1 < 146.4 is fulfilled.
13. For the same example 10:
Air permeability 72 sec/100 cm3; film thickness 3.1 micron;
Film thickness-equivalent air permeability of 23cm3;
Porosity 36%:
Ln 23 + 0.07 x 36 - 5.8
3.1 +2.52 -5.8 = -0.18, i.e. less than zero
Or
Ln 23 < -0.07 x 36 + 5.8
3.1 < -2.52 + 5.8
3.1 < 3.28 inequality fulfilled (as to instant claim 6).
14. Though Kawachi et al does not explicitly recite some of the properties of the membrane, such as heat shrinkage and difference of swelling onset between the two polyethylenes a) and b) as cited above, since the membrane of Kawachi et al is substantially the same as that claimed in instant invention, therefore, said membrane of Kawachi et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise not explicitly cited properties, including heat shrinkage and difference of swelling onset between the two polyethylenes a) and b), having values that are either the same as those claimed in instant invention, or are in the ranges overalapping with those as claimed in instant invention, as well. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed polyolefin film, if not taught, may be very well met by the polyolefin membranes of Kawachi et al, since the polyolefin membranes of Kawachi et al are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
15. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al (US 2015/0270521).
16. Uehara et al discloses a polyethylene microporous film comprising:
A) 50-99%wt of an ultra-high molecular weight polyethylene (UHMWPE) having viscosity average molecular weight of 1,000,000-15 million, or 1.2 million to 6 million, specifically exemplified UHMWPE having Mv of 3.5x106, melting point 140⁰C (Table 1) and
B) 1-50%wt a polyethylene having a weight average molecular weight of 10,000-800,000 (Abstract), specifically exemplified polyethylene having Mw of 110, 000 and melting point of 136.3⁰C (Table 1),
wherein the film is having porosity of at least 15% (Abstract).
17. As to instant claims 2-4, the used polyethylenes comprise ethylene homopolymers (as to instant claims 3-4) and further linear polyethylene ([0092]). Given the used polyethylene is linear polyethylene homopolymer, this linear polyethylene will be reasonably expected to have substantially no side chain branching, and in any case 0.1%mol or less side chains with 3 carbon atoms and 4 carbon atoms as well (as to instant claim 2). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
18. Though Uehara et al does not explicitly teach melt index of the polyethylene used as the lower molecular weight polyethylene B), since i) Uehara et al teaches the used polyolefins having Mw of 10,000-800,000, or 20,000-500,000 ([0085], Abstract), ii) both weight average molecular weight and melt index are characteristics of the molecular weight of the polymer and iii) the weight average molecular weight and melt index are inversely related, i.e. the higher the weight average molecular weight, the lower the melt index, therefore, a) the lower molecular weight polyethylene having Mw in the range of 20,000-500,000 of Uehara et al will intrinsically and necessarily have, or would be reasonably expected to have melt index in the range overlapping with that as claimed in instant invention as well. 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
19. Though Uehara et al does not explicitly recite some of the properties of the membrane, as claimed in instant claims 1, 5-7, since the membrane of Uehara et al is substantially the same as that claimed in instant invention, therefore, said membrane of Uehara et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise not explicitly cited properties having values that are either the same as those claimed in instant invention, or are in the ranges overlapping with those as claimed in instant invention, as well (as to instant claims 1, 5-7). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
20. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kawachi et al (WO 2021/070917) in view of Kajiwara et al (JP2018141029).
It is noted that while the rejection is made over WO 2021/070917 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0389203 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0389203.
21. The discussion with respect to Kawachi et al (WO 2021/070917) set forth in paragraphs 8-14 above, is incorporated here by reference.
22. Though Kawachi et al does not explicitly recite the melt index of the lower molecular weight polyethylene b) and further its melting point,
Kajiwara et al discloses a polyolefin microporous membrane comprising:
A) a high molecular weight polyethylene having viscosity average molecular weight of 500,000-2,500,000, specifically polyethylene ([0023]), used in exemplified amount of 35 pbw ([0080]) and having melting point of 135⁰C ([0080], [0089]) and
B) a polyolefin having melt index of 2-50 g/10 min and melting point of 137⁰C ([0013], [0017]), specifically ethylene homopolymer ([0031]), including linear polyethylene ([0033]),
Wherein the combination of said polyolefins ensures low-temperature fusion properties, heat resistance and mechanical strength of the polyolefin microporous membrane ([0014]).
23. Since both Kawachi et al and Kajiwara et al are related to microporous membranes comprising two polyethylenes having difference molecular weight, and thereby belong to the same field of endeavor, wherein Kajiwara et al explicitly teaches the lower molecular weight polyethylene having melt index of 2-50 g/10 min and melting point of 137⁰C, wherein the combination of said lower molecular weight polyethylene with a high molecular weight polyethylene having Mv of 500,000 to as high as 2,500,000 ensures low-temperature fusion properties, heat resistance and mechanical strength of the polyolefin microporous membrane, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kawachi et al and Kajiwara et al, and to include, or obvious to try to include at least partially the polyethylene having melt index of 2-50 g/10 min and melting point of 137⁰C of Kajiwara et al as the lower molecular weight polyethylene component b) in the membrane of Kawachi et al, so to further improve low-temperature fusion properties, heat resistance and mechanical strength of the polyolefin microporous membrane Kawachi et al as well, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
24. Since the membrane of Kawachi et al in view of Kajiwara et al is substantially the same as that claimed in instant invention, i.e. comprises two polyethylenes each having molecular weights/melt index as claimed in instant invention, and further comprising melting points as required by instant claims, therefore, said membrane of Kawachi et al in view of Kajiwara et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise not explicitly cited properties having values that are either the same as those claimed in instant invention, or are in the ranges overlapping with those as claimed in instant invention, as well (as to instant claims 1, 5-7). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
25. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al (US 2015/0270521) in view of Kajiwara et al (JP2018141029).
26. The discussion with respect to Uehara et al (US 2015/0270521) set forth in paragraphs 15-19 above, is incorporated here by reference.
27. Though Uehara et al does not explicitly recite the melt index of the lower molecular weight polyethylene B),
Kajiwara et al discloses a polyolefin microporous membrane comprising:
A) a high molecular weight polyethylene having viscosity average molecular weight of 500,000-2,500,000, specifically polyethylene ([0023]), used in exemplified amount of 35 pbw ([0080]) and having melting point of 135⁰C ([0080], [0089]) and
B) a polyolefin having melt index of 2-50 g/10 min and melting point of 137⁰C ([0013], [0017]), specifically ethylene homopolymer ([0031]), including linear polyethylene ([0033]),
Wherein the combination of said polyolefins ensures low-temperature fusion properties, heat resistance and mechanical strength of the polyolefin microporous membrane ([0014]).
28. Since both Uehara et al and Kajiwara et al are related to microporous membranes comprising two polyethylenes having different molecular weight, and thereby belong to the same field of endeavor, wherein Kajiwara et al explicitly teaches the lower molecular weight polyethylene having melt index of 2-50 g/10 min and melting point of 137⁰C, wherein the combination of said lower molecular weight polyethylene with a high molecular weight polyethylene having Mv of 500,000 to as high as 2,500,000 ensures low-temperature fusion properties, heat resistance and mechanical strength of the polyolefin microporous membrane, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Uehara et al and Kajiwara et al, and to include, or obvious to try to include at least partially the polyethylene having melt index of 2-50 g/10 min and melting point of 137⁰C of Kajiwara et al as the lower molecular weight polyethylene component B) in the membrane of Uehara et al, so to further improve low-temperature fusion properties, heat resistance and mechanical strength of the polyolefin microporous membrane Uehara et al as well, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
29. Since the membrane of Uehara et al in view of Kajiwara et al is substantially the same as that claimed in instant invention, i.e. comprises two polyethylenes each having molecular weights/melt index as claimed in instant invention, and further comprising melting points as required by instant claims, therefore, said membrane of Uehara et al in view of Kajiwara et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise not explicitly cited properties having values that are either the same as those claimed in instant invention, or are in the ranges overlapping with those as claimed in instant invention, as well (as to instant claims 1, 5-7). 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). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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