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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 6, 8, 10, 12, 14, 16, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 12,512,560 B2, Zhang et al.
Zhang et al. teach a polyolefin resin microporous membrane which is comprised of silane graft-modified polyolefin by a silane crosslinking reaction, see the abstract. Zhang et al. further teach a catalyst which is used to crosslink the single graft-modified polyolefin with the silane, before the sheet molding step, see column 22, lines 13-22. The crosslinking of the silane with the polyolefin using a catalyst meets the limitation of claim 6 The solvents used in extraction, column 20, lines 25-32, and for the coating solution, column 23, lines 39-44, is disclosed to be alcohols such as ethanol. Further, for the plasticizer a non-volatile solvent capable of forming a uniform solution at the melting point of the polyolefin is used, such as esters, and higher alcohols, see column 18, lines 61-67. Zhang et al. does not teach the relative energy difference. The curable resin composition of claim 6 is anticipated by Zhang et al., having a curing catalyst, an alcohol and a silane modified organic polymer. Since the combination of prior art elements renders the claimed combination of elements in the curable resin composition of claim 6 anticipated, it follows that the claimed properties will naturally follow in this obvious prior art composition as well. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art. A chemical composition and its properties are inseparable. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). Please see MPEP 2112 for further explanation.
As for claim 8, Zhang et al. teach that the solvent for the coating solution, column 23, lines 39-44, is disclosed to be alcohols such as ethanol. For the plasticizer a non-volatile solvent capable of forming a uniform solution at the melting point of the polyolefin is used, such as esters, and higher alcohols, see column 18, lines 61-67.
Regarding claims 10 and 12, Zhang et al. teach a polyolefin resin microporous membrane which is comprised of silane graft-modified polyolefin by a silane crosslinking reaction, see the abstract.
Regarding claims 14, 16, 18, and 20, Zhang et al. teach that the pressing temperature preferably 20 °C or higher, allowing adhesion to be demonstrated, column 26, lines 66-67, and column 27, line 1. Further, Zhang et all teach hot pressing of the membrane, column 27, lines 1-5.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 7, 9, 11, 13, 15, 17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 12,512,560 B2, Zhang et al.
As for claim 7, Zhang et al. teach that the solvent, which can be alcohol, percentage in the solvent immersion test shows a retention of 0 to 1.2%, which translates to from 0 ppm to 12,000 ppm, see table 3, example 15 and 17, which overlaps with the claimed range of alcohol retention. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As for claim 9, Zhang et al. teach that the solvent for the coating solution, column 23, lines 39-44, is disclosed to be alcohols such as ethanol. For the plasticizer a non-volatile solvent capable of forming a uniform solution at the melting point of the polyolefin is used, such as esters, and higher alcohols, see column 18, lines 61-67.
Regarding claims 11 and 13, Zhang et al. teach a polyolefin resin microporous membrane which is comprised of silane graft-modified polyolefin by a silane crosslinking reaction, see the abstract.
Regarding claims 15, 17, 19, and 21, Zhang et al. teach that the pressing temperature preferably 20 °C or higher, allowing adhesion to be demonstrated, column 26, lines 66-67, and column 27, line 1. Further, Zhang et all teach hot pressing of the membrane, column 27, lines 1-5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VLADIMIR VLADIMIROVIC ZOTOV whose telephone number is (571)272-0627. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi R Kelley can be reached at (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.V.Z./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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