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 .
Communications
The examiner called the applicant on Mar. 17, 2026 because the claim set dated Dec. 09, 2024 does not seem to be the most updated version. The applicant’s representative Mr. Enoch Peavey confirms that the most updated claim set should be the one dated Apr. 03, 2024 with amendments. The examiner therefore examines the claim set dated Apr. 03, 2024.
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.
The claims are rejected as follows:
Claims 1, 5 and 9–12 are rejected under 35 35 U.S.C. 103 as being obvious over Mukai et al., JP 2019–166418 A (“Mukai”)1 in view of Aburaya et al., JP 2014014808 A (“Aburaya”)2.
Regarding claim 1:
Mukai discloses that a gas separation membrane (Mukai’s gas separation membrane 10, Mukai Fig. 2, p. 4) comprising an intermediate layer (Mukai’s resin layer 2, Mukai Fig. 2, p. 4) on a polymer membrane substrate (Mukai’s support 4, which is a polymer layer because Mukai discloses its support includes polyolefin resins Mukai Fig. 2, ps. 4–5) and a separation layer (Mukai’s separation layer 3, protective layer 8 and second protective layer 9, Mukai Fig. 2, p. 4) on the intermediate layer (2 of Mukai), wherein
the separation layer (3, 8, 9 of Mukai) is a silica-based separation layer (Mukai discloses its separation layer 3 comprising resin having a siloxane bond, Mukai p. 7, Mukai discloses its protective layer 8 could comprise dimethyl siloxane monomer, which is also silica-based, Mukai p. 16, Mukai also discloses its second protective layer comprising siloxane bond, which is silica based, Mukai p. 21) and therefore the separation layer is a “silica-based separation layer”), and
the silica-based separation layer (3, 8, 9 of Mukai) has a different chemical composition or layer structure in a thickness direction (Mukai discloses that the composition of the protective layer 8, 9 is different from the composition of the separation layer 3, Mukai p. 3).
Mukai is silent about the limitation of that the intermediate layer has a non-porous structure. Mukai discloses its resin layer 2 could be UV 9300, which is commercially available from Momentive.
In the analogous art of gas separation membranes, Aburava discloses a gas separation membrane with a similar structure, where an intermediate layer (Aburava’s nonporous layer 16, Aburava Fig. 2, p. 3) is positioned between a separation layer (Aburava’s separation layer 14, Aburava Fig. 2, p. 3) and a support layer (Aburava’s porous support 12, Aburava Fig. 2, p. 3). Additionally, Aburava discloses its nonporous layer 16 comprising UV 9300, Aburava Fig. 2, p. 5. Aburava discloses gas membrane improves system efficiency, Aburava p. 5. It would therefore have been obvious for one ordinary skill in the art at the time of filing for Mukai’s intermediate layer made of UV 9300 to be nonporous because a membrane made of UV 9300 is known in the art to be nonporous. Additionally, including a nonporous layer in gas separation membrane in known to increase system efficiency.
With such modification, modified Mukai discloses that the gas separation membrane according to claim 1, wherein in the silica-based separation layer (3,8, 9 of Mukai), a rate of an inorganic structure increases from the intermediate layer side toward the other side in the thickness direction (Mukai discloses its second protective layer 9 could include an inorganic filler, Mukai p. 22, and therefore a rate of inorganic structure increases from the intermediate layer side toward the other side in the thickness direction, because Mukai’s inorganic filler only exists in second protective layer 9).
Regarding claim 5:
Modified Mukai discloses that the gas separation membrane according to claim 1, wherein the silica-based separation layer has a multi-layer structure (as mapped in claim 1, Mukai’s separation layer 3, protective layer 8 and second protective layer 9 is a multilayer structure).
Regarding claim 9:
Modified Mukai discloses that the gas separation membrane according to claim 1, wherein the intermediate layer contains polysiloxane (Mukai discloses its resin layer could be polydimethylsiloxane, Mukai p. 6, polydimethylsiloxane is polysiloxane).
Regarding claim 10:
Modified Mukai discloses that the gas separation membrane according to claim 9, wherein the polysiloxane is polydimethylsiloxane (Mukai discloses its resin layer could be polydimethylsiloxane, Mukai p. 6).
Regarding claim 11:
It is noted here that the term “transmittance” is interpreted as “permeation”, because the applicant’s published disclosure names an upstream side of the gas separation membrane and the transmit side of the gas separation membrane, the transmit side is therefore interpreted as “permeation side.” Spec. [0083]. Additionally, such interpretation is legit because the unit GPU is a non-SI unit used to measure the permeance of gas through a membrane.
Modified Mukai discloses that the gas separation membrane according to claim 1, wherein CO2 transmittance at 25°C is 90 GPU or more (Mukai discloses its permeation rate of carbno dioxide at 30 °C is preferably 10 to 300 GPU, Mukai p. 23, overlapping the claimed range, and therefore support a prima facie case of obviousness. MPEP 2144.05(I); note that the temperature of 30 °C is merely close to 25 °C).
Regarding claim 12:
It is noted here that the term “transmittance” is interpreted as “permeation”, because the applicant’s published disclosure names an upstream side of the gas separation membrane and the transmit side of the gas separation membrane, the transmit side is therefore interpreted as “permeation side.” Spec. [0083]. The term “transmittance ratio” is therefore interpreted as “permeation ratio”.
Modified Mukai discloses that the gas separation membrane according to claim 1, wherein a CO2/CH4 transmittance ratio at 25°C is 15 or more (Mukai discloses the ratio of the carbon dioxide permeation flux to the methane permeation flux at 30 ° C. and 5 MPa is preferably 30 or more, Mukai p. 23, such range falls within the claimed range of 15 or more, and support a prima facie case of obviousness. MPEP 2144.05(I); note that the temperature of 30 °C is merely close to 25 °C).
Claims 3 and 6 are rejected under 35 35 U.S.C. 103 as being obvious over Mukai in view of Aburaya, and in further view of Mochizuki ’731 US 2016/0354731 A1 (“Mochizuki ’731”).
Regarding claim 3:
Modified Mukai does not disclose that the gas separation membrane according to claim 1, wherein in the silica-based separation layer (3, 8, 9 of Mukai), a content of an Si atom and an oxygen atom increases and a content of a carbon atom decreases from the intermediate layer side toward the other side in the thickness direction.
However, Mukai discloses that its second protective layer 9 may contain a filler, Mukai discloses its filler could be inorganic particles as disclosed in JP-A 2015–1602013, Mukai p. 7. And the US equivalent of JP-A 2015–160201—Mochizuki ’731, teaches that the inorganic fillers could be silica particles, Mochizuki ’731 [0067]. Silica has a molecular formula of SiO2. Mochizuki ’731 discloses the protective layer could preferably be 40% by mass, Mochizuki ’731 [0069]. And since modified Mukai’s 2nd protective layer 9 is located on the top surface of the gas separation membrane, it is further away from the intermediate layer side. Compared to the protective layer 8, the protective layer 9 therefore has more Si atom and oxygen atom because of the 40% of Silica. And the carbon atom content will be decreased because 40 wt% of the film is now inorganic filler, which read on the limitation of “a content of an Si atom and an oxygen atom increases and a content of a carbon atom decreases from the intermediate layer side toward the other side in the thickness direction”.
Regarding claim 6:
Modfiied Mukai does not disclose that the gas separation membrane according to claim 5, wherein the silica-based separation layer includes at least a first separation layer (protective layer 8) laminated on the intermediate layer and a second separation layer (2nd protective layer 9) laminated on the first separation layer (8 of MuKai), a content of an Si atom and an oxygen atom in the second separation layer (9 of Mukai) is higher than a content of an Si atom and an oxygen atom in the first separation layer (as discussed in claim 3, due to inorganic filler silica, 2nd protective layer would have a higher content of Si atom and oxygen atom), and a content of a carbon atom in the second separation layer is lower than a content of a carbon atom in the first separation layer (as discussed in claim 3, due to inorganic filler silica, 2nd protective layer would have a lower content of C atom due to a decrease in weight% of film that is replaced by filler).
Claim 4 is rejected under 35 35 U.S.C. 103 as being obvious over Mukai in view of Aburaya as applied to claim 1 above, and in further view of Mochizuki et al., US 2018/0272292 A1 (“Mochizuki”).
Regarding claim 4:
Modified Mukai does not disclose that the gas separation membrane according to claim 1, wherein O/Si, which is a ratio of the number of oxygen atoms to the number of Si atoms on a surface of the silica-based separation layer, is less than 1.7.
In the analogous art of gas separation membranes, Mochizuki discloses a gas separation membrane, comprising protective layer 8, intermediate layer 3 and support layer 4, Mochizuki, Fig. 10, [0241]. Mochizuki discloses a O/Si ratio in the protective layer is less than 1.7, O/Si Fig. 10, [0396]. It would therefore have been obvious for one ordinary skill in the art at the time of filing for modified Mukai’s protective layer 9 to have a O/Si ratio oof less than 1.7 as disclosed by Mochizuki because such ratio is known to be suitable for protective layers. Additionally, Mochizuki discloses its protective layer provides sufficient protection to permit transport and also improves durability.
Claim 8 is rejected under 35 35 U.S.C. 103 as being obvious over Mukai in view of Aburaya as applied to claim 1 above, and in further view of Tsuru et al., JP 2017131849 A (“Tsuru”)4.
Regarding claim 8:
Modified Mukai does not disclose that the gas separation membrane according to claim 1, wherein a raw material of the silica-based separation layer is a volatile organosilicon compound.
In the analogous art of gas separation filters, Tsuru discloses a gas separation layer comprising volatile organosilicon compound, Tsuru [0007] and [0009]. Tsuru discloses its gas separation layer is excellent in gas selectivity, Tsuru, [0006]. It would therefore have been obvious for one ordinary skill in the art at the time of filing to include Tsuru’s volatile organosilicon compound for excellent gas selectivity.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 7:
Modified Mukai does not disclose that the gas separation membrane according to claim 6, wherein C/Si, which is a ratio of the number of carbon atoms to the number of Si atoms in the first separation layer, is 1.5 or more and 1.8 or less, and C/Si, which is a ratio of the number of carbon atoms to the number of Si atoms in the second separation layer, is 1.0 or more and less than 1.5.
It would not have been obvious for one ordinary skill in the art at the time of filing to further modify Mukai for such limitation because none of the prior art shows or renders such limitation as being obvious.
Response to Arguments
Claim Rejections - 35 USC § 103
The applicant argues just because Mukai discloses its second protective layer 9 could include an inorganic filter, does not require that “a rate of inorganic structure increases from the intermediate layer side toward the other side in the thickness direction”, Applicant Rem. dated Jun. 24, 2026 (“Applicant Rem.”) p. 7. The applicant argues that Mukai is unclear what material concentration (that makes up the second protective layer) is replaced when a filler is added. And adding a filter, even if organic, does not necessarily require “a rate of an inorganic structure” increases from the intermediate layer side toward the other side in the thickness direction. Id.
It is noted here that in the rejection proposed, Mukai’s filler of inorganic particles included in the 2nd layer is mapped to the claimed “inorganic structure”. Since Mukai only discloses such inorganic particle filler be included in its second protective layer 9, a rate of such inorganic filter would be non-zero in second protective layer 9, and a rate of such inorganic filter would be zero in other layers, and therefore read on the claimed “a rate of an inorganic structure increases from the intermediate layer side (Mukai’s layer 2) toward the other side (Mukai’s layer 9) in the thickness direction.
Applicant’s argument is therefore not persuasive.
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 QIANPING HE whose telephone number is (571)272-8385. The examiner can normally be reached on 7:30-5:00 M-F.
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/Qianping He/Primary Examiner, Art Unit 1776
1 Mukai is the 53-page FOR dated May. 23, 2024. A copy of Mukai’s machine translation is provided with the office action. The examiner relies on the original document for the figure and machine translation for the text.
2 A copy of Aburaya is provided with the Office Action. The examiner relies on the original document for the figure and machine translation for the text.
3 Mochizuki ’731 is the US equivalence of JP-A 2015–160201, the examiner uses Mochizuki ’731 to teach the disclosed suitable inorganic filler because it is easier to reference a US prior art.
4 Tsuru is the 23-page FOR dated May. 23, 2024. The examiner relies on the original document for the text and machine translation for the figure.
Prosecution Insights