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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 16 and 17 are both method claims. Both of these claims do not recite any specific method steps. Therefore, it is not clear what exact method is being performed in these claims.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 – 3 and 11 – 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TW 2020125512 to Okada et al. (hereinafter referred to as Okada).
In regard to claim 1, as discussed in the abstract, Okada discloses a composition that can be used for membrane formation. The composition includes microparticles dispersed in a resin and a solvent. The microparticles can be surface modified silica microparticles. The resin can be formed of a dimethyl polysiloxane, which is a silicone material. The solvent used is an appropriate solvent capable of dissolving the resin material. The claim is only directed to the membrane-forming composition. How it is used with a substrate does not affect its structure.
In regard to claim 2, as discussed in examples 11 and 15, the composition can have a solid concentration of 10 mass% or less.
In regard to claim 3, as discussed above, the structure of the substrate does not affect the structure of the claimed membrane-forming composition. The membrane-forming composition of Okada has all of the required structural limitations and is considered to be capable of being used with a substrate having a surface mean pore size of 0.01 to 1 micron.
In regard to claim 11, the composition of Okada includes all of the required structural limitations and can be considered a gas separation membrane-forming composition.
In regard to claim 12, the composition of Okada is capable of being used as an intermediate layer in a gas separation membrane.
In regard to claim 13, as discussed in the abstract, Okada uses the composition to form a gas separation membrane.
Claims 1, 4 – 8, 10 – 12, and 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2008-101197 (hereinafter referred to as JP ‘197), as further evidenced by JP 2011-177372.
In regard to claims 1, 4, 5, and 14, JP ‘197 discloses a highly water-repellent composition comprising: at least one microparticulate pigment that is surface-treated with monooctyl silane and has a primary particles diameter in a range of 1 nm – 15 microns; at least one silicone compound selected from silicone resin and/or liquid silicone rubber; and a volatile solvent, wherein the blended mass of microparticulate pigment surface treated with the monooctyl silane is in a range of 40-80 mass% relative to the mass of the composition excluding the volatile solvent.
JP ‘197 further indicates that as the liquid silicone rubber, condensed liquid silicone is used, that the highly water-repellent composition is formed into a paint or coating agent, that the volatile solvent such as a cyclic silicone is a solvent well compatible with the silicone resin and/or the liquid silicone rubber, and that in examples 8 – 11, a composition was prepared by dispersing silica/alumina-treated titanium oxide surface-treated with octyl triethoxy silane in decamethylcyclopentasiloxane to obtain a slurry, and adding to and mixing with the slurry a type of condensed liquid silicone rubber, i.e. one-liquid RTV rubber, and the composition was applied to a resin film and dried, that is, a coating film was formed.
Here, the volatile solvent, such as cyclic silicone, used in the examples is a solvent for dissolving a silicone, and the condensed liquid silicone rubber can normally be said to be a cross-linked silicone obtained by crosslinking polydiorganosiloxane with a crosslinking agent (see, for example, JP 2011-177372 paragraph [0028] for evidence).
In addition, the condensed liquid silicone rubber corresponds to both the component (A) “silicone made from polydiorganosiloxane” and component (D) “cross-linked silicone obtained by crosslinking polydiorganosiloxane with a crosslinking agent” of the present application.
Therefore, JP ‘197 is considered to disclose a composition having all of the structural features of the claimed membrane-forming composition. Further, the claims are only directed to the membrane-forming composition. How it is used with a substrate does not affect its structure.
In regard to claim 6, JP ‘197 discloses using solvents that have one or more oxygen or nitrogen atoms and which have a dielectric constant of 1 to 30, such as ethanol that has oxygen in the compound and a dielectric constant of about 24.3.
In regard to claim 7, JP ‘197 discloses using ethanol and propanol as the solvent, which are monohydric alcohols.
In regard to claim 8, the surface-modified microparticles in JP ‘197 can be formed of silica.
In regard to claim 10, JP ‘197 discloses solvents that are hydrocarbons, such as methanol and ethanol.
In regard to claim 11, the composition of JP ‘197 includes all of the required structural limitations and can be considered a gas separation membrane-forming composition.
In regard to claim 12, the composition of JP ‘197 is capable of being used as an intermediate layer in a gas separation membrane.
Allowable Subject Matter
Claim 15 is allowed.
Claim 9 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.
The following is a statement of reasons for the indication of allowable subject matter:
In regard to claim 9, there is no teaching or suggestion in JP ‘197 for silica microparticles having a surface to which a dendrimer or a hyperbranched polymer has been added.
In regard to claim 15, both Okada and JP ‘197 dislcose similar compositions, as discussed above. Okada further discloses using the composition with a substrate to form a membrane. Neither reference teaches or suggests a composition and substrate where the composition exhibits a permeation speed through the porous substrate of more than 0
µ
m/s0.5 and 100
µ
m/s0.5 or less, as determined by the Lucas-Washburn equation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Other prior art references listed on the PTO-892 (Notice of References Cited) are considered to be of interest disclosing similar compounds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773
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