FINAL ACTION
Response to Arguments
Applicant’s arguments with respect to claims 1, 2, 4-6, 8-13 and 31-37 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1, 2, 5, 6, 9-13 and 31-37 are rejected under 35 U.S.C. 103 as being unpatentable over Qiao et al. (U.S. Publication No. 2017/0216765) in view of Liu et al. (U.S. Patent No. 7,637,983).
Concerning claims 1, 2, 11-13, 31, 34, 35 and 37, Qiao discloses a gas separation device comprising a filter unit (square box in Figures 18A & 18B), the filter unit comprising:
An inlet configured to receive a feed gas (CO2/N2);
A thin-film composite membrane (Figure 1) in fluid communication with the inlet (Figures 18A & 18B), the membrane comprising:
A mixed-matrix membrane (20/30) having a thickness of 20-1000 nm (paragraphs 86 & 112) supported by a porous polyacrylonitrile (paragraphs 69-72) substrate (10) having a thickness of 20-200 µm (paragraph 74), the mixed-matrix membrane (20/30) comprising two or more sublayers (20 & 30 and/or the disclosure of two or more selective polymer layers 30 in paragraph 194), wherein at least one of the sublayers (30) comprises:
particle fillers (paragraphs 113 and 114); and
A polymer (paragraph 107); and
An outlet in fluid communication with the thin-film composite membrane, wherein the outlet is configured to provide one or more chemical species (Figures 18A & 18B; paragraphs 196-207 and 263).
With respect to claims 1, 31, 34, 35 and 37, while Qiao continues to disclose that each sublayer has a thickness of 10-90 nm (paragraph 112), the reference does not appear to disclose that at least one of the sublayers comprise 10-75 wt% metal organic framework particles, and 40-90 wt% of a polysulfone or cellulose acetate polymer. Liu discloses a thin-film composite membrane that includes a mixed-matrix membrane for the purposes of gas separation (Abstract). The reference continues to disclose that the thin-film composite membrane includes a layer that comprises 1-50 wt% of metal organic framework particles (column 4, lines 35-68; column 8, lines 10-15), and the remaining wt% of a polysulfone or cellulose acetate polymer (column 3, lines 47-65). Liu discloses that such a layer reduces the hydrocarbon fouling problem of polyimide membranes and dramatically enhance the gas separation permeability performance for CO2 removal from natural gas (column 2, line 50 to column 3, line 2). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize metal organic framework particles as the fillers, and polysulfone or cellulose acetate as the polymer in the sublayers of Qiao in order to reduce the hydrocarbon fouling problem of polyimide membranes and dramatically enhance the gas separation permeability performance for CO2 removal from natural gas as exemplified by Liu.
Furthermore, because Liu discloses that the layer comprises 1-50 wt% of metal organic framework particles, and the remaining wt% of a polysulfone or cellulose acetate polymer (column 8, lines 10-23), then one of ordinary skill would readily recognize that the wt% of said metal organic framework particles and polysulfone or cellulose acetate polymer would need to be optimized for a particular application through routine experimentation. As such, the Courts have held that "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). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, it would have been well within the purview of one of ordinary skill in the art to provide at least one of the sublayers of Qiao when modified by Liu to comprise 10-75 wt% metal organic framework particles, and 40-90 wt% of a polysulfone or cellulose acetate polymer in order to improve the permeability and/or selectivity of said sublayer for a given feed gas in a particular setting; as such is considered a result effective variable that would be optimized by one of ordinary skill during routine experimentation. Only the expected results would be attained.
Thus, claims 1, 2, 11-13, 31, 34, 35 and 37 are not patentable over Qiao in view of Liu.
Regarding claim 5, while Qiao discloses that the particles have a largest dimension ranging from 20-50 nm, and Liu discloses that the size of the filler particles can be varied (column 4, line 35 to column 5, line 12), neither reference specifically discloses that the particles have an average diameter from 30-50 nm. Nonetheless, in view of the close proximity of the disclosed dimensions of said particles in Qiao with respect to the claimed diameter of 30-50 nm, and the recognition by Liu that the size of said filler particles can be varied; then it would have been well within the purview of one of ordinary skill in the art to provide the filler particles of Qiao in view of Liu with a diameter of 30-50 nm in order to improve the permeability and/or selectivity of the sublayer for a given feed gas in a particular setting; as such is considered a result effective variable that would be optimized by one of ordinary skill during routine experimentation. Only the expected results would be attained. Note again that the Courts have held that "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). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, claim 5 also does not provide a patentable distinction over the reference of Qiao.
Thus, claim 5 is rejected over Qiao in view of Liu as well.
With respect to claim 6, Qiao continues to disclose a sealing layer (20) comprising PDMS (paragraphs 94-97), and while the reference discloses that said sealing layer has an average thickness of less than 50 nm, Qiao does not appear to specifically disclose that said thickness is from 5-50 nm. Nonetheless, as noted above, such is considered a result effective variable. More specifically, the Courts have held that "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). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). As such, it would have been well within the purview of one of ordinary skill in the art to provide the sealing layer of Qiao with a thickness of 5-50 nm in order to provide a functional and appropriately strong seal for the substrate, and allow a selective polymer sublayer to be placed thereon dependent upon various factors for a given application such as flowrate of the feed gas, type of feed gas, humidity of the environment, etc.; as such is considered a result effective variable that would be optimized by one of ordinary skill during routine experimentation. Only the expected results would be attained.
Therefore, claim 6 is not patentable over Qiao in view of Liu as well.
Regarding claims 9 & 10, while Qiao continues to disclose that the thin-film composite membrane has a CO2 permeance of at least 1000 up to 5000 GPU, and a CO2/N2 selectivity from 15-60; the reference does not appear to specifically disclose a permeance of 100-2000 GPU, and CO2/N2 selectivity from 2-50. However, the Manual of Patent Examining Procedure states that:
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
As such, because the claimed range of Qiao and the claimed range in the instant application sufficiently overlap, a prima facie case of obviousness exists. Thus, because one of ordinary skill could reasonably select a permeance of 100-2000 GPU, and CO2/N2 selectivity from 2-50 based on the teachings of Qiao in order to produce a desired chemical species for a particular application, such limitations are not considered a patentable distinction of Qiao.
Therefore, claims 9 & 10 are also not patentable over Qiao in view of Liu.
Regarding claims 32 & 33, Qiao also discloses that the feed gas comprises one of natural gas, syngas, flue gas, H2, CO2, CH4 and N2; and the chemical species comprises CO2 and/or N2 (paragraphs 205 & 206).
With respect to claim 36, the reference of Qiao also discloses that the thin-film composite membrane comprises 2-50 sublayers (paragraph 194); and
Wherein the thin-film composite membrane is substantially free from defects (paragraphs 188 & 189).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Qiao et al. (U.S. Publication No. 2017/0216765) in view of Liu et al. (U.S. Patent No. 7,637,983) as applied to claim 1 above, and further in view of Sivaniah et al. (U.S. Publication No. 2019/0321787).
Qiao in view of Liu is relied upon as set forth above. Qiao in view of Liu does not appear to disclose that the polymer further comprises a polyether block amide polymer. Sivaniah discloses a thin-film composite membrane comprised of a mixed matrix membrane that includes a polymer matrix and fillers (Abstract). The reference continues to disclose that the polymer comprises a polyether block amide polymer (paragraphs 36 & 37) in order to utilize a polar functional grouping polymer with hydrogen bonding capabilities to the filler and a high gas permeability coefficient (paragraphs 35 and 36). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further utilize a polyether block amide polymer in Qiao when modified by Liu in order to utilize a polar functional grouping polymer with hydrogen bonding capabilities to the filler and a high gas permeability coefficient as exemplified by Sivaniah.
Therefore, claim 8 is not patentable over Qiao in view of Liu and Sivaniah.
Allowable Subject Matter
Claim 4 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.
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 KEVIN C JOYNER whose telephone number is (571)272-2709. The examiner can normally be reached Monday-Friday 8:00AM-4:30PM.
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/KEVIN JOYNER/Primary Examiner, Art Unit 1799
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