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 .
Response to Amendment
Applicant’s amendment filed May 13, 2026 has been entered. Claims 1, 7, 8, and 10 are currently amended. Claims 2, 3 and 9 have been canceled. Claims 1, 4-8, and 10-12 are pending and under examination.
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.
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.
Claims 1, 4, 7, 8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Summey et al. (US 2021/0126319) in view of Nasu et al. (US 2015/0065595) and Hamer (US 4,620,956).
Regarding claim 1, Summey et al. teach a preparation method for microporous film/membrane (Abstract), wherein the method uses a dry film stretching technology, with no processing oil being added to a polymer material for subsequent removal to create pores therein or any pore-forming microparticles that promote the formation of micropores (paragraphs [0002], [0005]-[0011], [0027], [0035]-[0037], [0039], [0112] and [0130]); comprising a nonporous precursor extrusion process, involving heating and extruding a semi-crystalline thermoplastic polymer to form a nonporous precursor (paragraphs [0008], [0014] – polyethylene and polypropylene are semi-crystalline thermoplastic polymers, [0037], [0112] and [0118]); an annealing process (paragraphs [0015] and [0041]; Figure 1); a longitudinal stretching with or without transverse relaxation process, involving stretching the nonporous precursor longitudinally with or without carrying out transverse relaxation at a temperature within or which overlaps the claimed range from room temperature to a temperature below the melting point of the polymer, to form a longitudinal stretched film (Figure 1; paragraphs [0008]-[0011] and [0047]-[0051]); a transverse stretching without longitudinal relaxation process, involving, starting at a temperature within or which overlaps the claimed range from above the glass transition point of the polymer to a temperature below the melting point temperature thereof, carrying out transverse stretching at least once on the longitudinal stretched film without concurrently carrying out longitudinal relaxation, relaxation magnification in the longitudinal direction is 0%, to form a longitudinal/transverse stretched film (Figure 1; paragraphs [0052] – “TD stretching may be performed with or without machine direction (MD) relax”, [0053], [0050] – cold stretching and hot stretching temperatures suggested; [0067] – TD stretch without MD relaxation) ; a transverse relaxation process, involving, starting at a temperature above the glass transition point of the polymer to a temperature below the melting point temperature thereof, carrying out transverse relaxation at least once on the longitudinal and/or transverse stretched film, to form the microporous film (Figure 1 – “Additional MD and/or TD stretching with or without TD or MD relaxation”); paragraphs [0011] and [0063]-[0067]; ); and a winding process, involving rolling up the microporous film into rolls and storing thereof (paragraphs [0089]-[0090]; further, winding the films/membranes produced by the method, as claimed, for storage or transport or prior to additional treatment, is understood to be a routine expedient in the art). Summey et al. teach the semi-crystalline material is a polyolefin, such as polypropylene or polyethylene (paragraphs [0014], [0112] and [0118]). Summey et al. teach and suggest transverse stretching amounts that overlap the claimed range (Figure 1; paragraph [0052]; a magnification of 1.1-2.5 fold is equivalent to stretching 10-150% and Summey et al. disclose transverse stretching amounts of 100-1200%, which overlaps the claimed range. Overlapping ranges are prima facie obvious).
Summey et al. teach and suggest an annealing process at a temperature relatively lower than an extrusion temperature/melt temperature (Figure 1; paragraphs [0015] and [0041]), but do not further teach an aging process wherein the film is taken off a roll extrusion production line to be kept aside to complete aging. Further, while Summey et al. imply that the annealing process is utilized to produce a recrystallization phenomenon as claimed, as one having ordinary skill in the art would understand (paragraph [0041]); Summey et al. do not make this explicit.
However, Nasu teach an analogous process wherein an aging process is also included with the annealing process and suggest the film is taken off a roll extrusion production line to be kept aside to complete aging (paragraphs [0083]-[0085] – dry process; [0095] and [0096] anneal and age in roll form for up to 100 hours). Further, Hamer makes clear that the purpose of annealing in the analogous art is to provide a recrystallization phenomenon as claimed (col. 4, line 47-col. 5, line 14).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Summey et al. and Nasu et al. and to have aged the extruded precursor/film of Summey et al. by taking the precursor/film offline, as suggested by Nasu, for the purpose, as suggested by Nasu, of improving the properties of the produced microporous film.
As to the annealing portion of the step, one having ordinary skill in the art would have found it prima facie obvious before the effective filing date of the claimed invention to have combined the teaching of Summey et al. and Hamer and to have annealed the precursor/film of Summey et al. such that a recrystallization phenomenon as claimed was achieved, as suggested by Hamer, for the purpose, as suggested by the references, of achieving a known and desired result from the annealing step in order to facilitate formation of a desired microporous film from the subsequent stretching steps.
As to claim 4, Nasu et al. teach an annealing and aging time of up to 100 hours/over 4 days (paragraphs [0095] and [0096]). The reason to combine the references is the same as that set forth above.
As to claim 7, Summey et al. teach and suggest longitudinal stretching temperatures within or which overlap the claimed ranges (paragraph [0050]).
As to claim 8, Summey et al. teach and suggest transverse stretching temperatures within or which overlap the claimed range (Figure 1; paragraph [0050] giving cold/hot stretching temperatures and [0052])
As to claim 10, Summey et al. teach and suggest relaxation magnification in amounts within or which overlap the claimed range (Figure 1; paragraphs [0011], [0012], [0050], [0066] and [0067]; relaxation amount is a result effective variable impacting film properties that would have been readily optimized as a routine expedient).
As to claim 11, Summey et al. teach and disclose porosity values above 50% or below 90% (paragraph [0079]).
As to claim 12, Summey et al. teach and suggest air permeability amounts that are within or which overlap the claimed range (paragraphs [0017], [0076] – using a corresponding Gurley value measurement); Figure 11).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Summey et al. (US 2021/0126319) in view of Nasu et al. (US 2015/0065595) and Hamer (US 4,620,956), as applied to claims 1, 4, 7, 8 and 10-12 above, and further in view of Sawada (US 2016/0079580).
As to claim 5, the combination teaches and suggests the method set forth above. Summey et al. do not teach a second aging as claimed.
However, Sawada teaches and suggest a second aging can be performed after longitudinal stretching as claimed (paragraphs [0065]-[0067], [0105],[0110]-[0127] – wound on a roll and aged).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Summey et al. and Sawada and to have included a second aging as claimed in the method of Summey et al., as suggested by Sawada, for the purpose, as suggested by Sawada, of improving and tailoring the properties of the produced microporous film for a particular application.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Summey et al. (US 2021/0126319) in view of Nasu et al. (US 2015/0065595) and Hamer (US 4,620,956), and further in view of Sawada (US 2016/0079580), as applied to claim 5 above, alone or further in view of MacDonald et al. (US 2015/0274907).
As to claim 6, the combination teaches and suggests the method set forth above, including a second aging step lasting an extended period of time/hours. Further, Nasu et al. suggest aging times of up to 100 hours.
The combination suggests a second aging step as claimed and the combination further suggests aging for hours and optimizing the second aging time to achieve desired results. As such, one having ordinary skill in the art would have optimized the aging time, including to lengths as claimed, as a routine expedient.
Alternatively, MacDonald et al. analogously further flesh out the annealing/aging relationship between time and temperature and make clear that lower temperatures with longer times (e.g. 3 to 7 days) or higher temperatures with shorter times are effective to achieve the desired annealing/aging results (paragraph [0076]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Summey et al. and MacDonald et al. and to have performed the second aging step for a period of time within the claimed range, as suggested by MacDonald et al., for the purpose, as suggested by MacDonald et al., of achieving the desired result in an art recognized suitable and equivalent alternative manner.
Response to Arguments
Applicant’s arguments filed May 13, 2026 have been fully considered, but they are not persuasive.
As an initial matter, while it does not appear that the amended limitations added to claim 1 have been specifically argued, it is noted that Summey et al. teach the semi-crystalline material is a polyolefin, such as polypropylene or polyethylene (paragraphs [0014], [0112] and [0118]). Further, Summey et al. teach and suggest transverse stretching amounts that overlap the claimed range (Figure 1; paragraph [0052]; a magnification of 1.1-2.5 fold as claimed is equivalent to stretching by 10-150%. Summey et al. disclose transverse stretching amounts of 100-1200%, which overlaps the claimed range. Overlapping ranges are prima facie obvious).
Generally, applicant’s arguments suggest that because the relied upon prior art references disclose more stretching and relaxing options than those specified by the claim that the prior art is not applicable. This argument is not persuasive.
Utilizing Figure 1 of Summey et al. for easy reference, the process of Summey et al. begins with “obtain nonporous membrane precursor”. As further set forth in the reference and the body of the rejection, this reads upon claimed step a). Next, Summey et al. disclose an optional annealing step. After this, Summey et al. disclose “MD stretching with or without TD relaxation”. This reads upon step c), “longitudinal stretching with or without transverse stretching”. Continuing, Summey et al. disclose “TD stretching with or without MD relaxation”. This reads upon step d). While Summey et al. allow for MD relaxation in one scenario (i.e. “with…MD relaxation”), they also disclose the claimed “without longitudinal relaxation” (i.e. “without MD relaxation”). After this, Summey et al. disclose “Additional MD stretching with or without TD relaxation”. This reads upon step e), which merely requires “a transverse relaxation process”. Again, while Summey et al. allow for “with or without TD relaxation”, it follows that Summey et al. teach and suggest the claimed “transverse relaxation process” (also see the cited paragraphs [0011] and [0063]-[0067] above for further teaching in Summey et al. in this regard).
As set forth above in the rejection, the recited annealing step in Summey et al. was not sufficient to fully meet the limitations set forth in step b). However, the secondary references provide teaching as to how to specifically carry out an analogous annealing process and what the result of such a process would be. The process suggested by Nasu develops the idea that the annealing of the nonporous membrane would also include a rolled aging process of up to 100 hours. This is understood to teach and suggest the claimed “annealing and aging” because the elevated temperature is held for an extended period of time with the material in rolled form. Such a process is understood to at least suggest the manipulative limitations of step b). Hamer provides further clarity as to what such an annealing and aging process achieves (i.e. “a recrystallization phenomenon”).
It is not clear what is not reasonably taught or suggested by the combined art. Page 2 of the arguments recite “the following distinguishing features”. However, as set forth above, the prior art teaches and suggests each of these three features and it is not clear why the examiner’s position is not considered reasonable or appropriate. Further, it is not clear how the information set forth in the table is intended to overcome the teaching relied upon by the examiner. It is not clear if unintended results are being asserted. However, if so, it is not clear what those results are or how they are not taught and suggested by the applied references.
As to claim 4, Nasu teaches annealing with aging times of up to 100 hours/4 days. As such, the combination suggests annealing and aging for up to 100 hours/4 days. This overlaps the claimed range and renders it prima facie obvious.
Further, applicant argues that “Summey consistently teaches concurrent longitudinal relaxation during TD stretching” and that “in contrast, the present application intentionally performs TD stretching without longitudinal stretching, followed by a separate TD relaxation stage”. However, as set forth above, Figure 1 of Summey demonstrates that Summey teaches more than this including “TD stretching…without MD relaxation” followed by “additional MD stretching with…TD relaxation”. Further, see paragraphs [0011] and [0063]-[0067] in Summey.
Further, if applicant is arguing that no additional stretching is allowed to be performed in the claimed method after step d), this argument is not commensurate in scope with the claim as the claim does not exclude additional stretching. All that is required is that the “a transverse relaxation process” is carried out on “the longitudinal and/or transverse stretched film” and this is understood to be taught and suggested by the relied upon references as set forth in the rejection.
Absent sufficient evidence of new or unexpected results, the examiner submits the claims would need to be further amended to overcome the prima facie case of obviousness. The examiner also notes his availability to discuss the application via telephonic interview.
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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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