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
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.
Claims 1–5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoichi, JP 2001-025629 A.1
Regarding claim 1, Yoichi teaches a hydrogen gas separator 6 comprising a gas separation membrane unit 12. See Yoichi Fig. 2, [0036], [0045]. The hydrogen gas separator 6 reads on the calmed “membrane module.” See Yoichi Fig. 2, [0036], [0045]. The hydrogen gas separator 6 comprises:
A container body, which reads on the “housing.” See Yoichi Fig. 2, [0048].
The membrane unit 12 housed in the container body, which reads on the “membrane structure housed in the housing.” See Yoichi Fig. 2, [0045]. Note that the membrane unit 12 includes a hydrogen separation membrane 14, a first flange 18, and a second flange 16. See Yoichi Fig. 2, [0045]
An O-ring 30 configured to seal a gap between the container body and first flange 18 of the membrane unit 12. See Yoichi Fig. 2, [0054]. The O-ring 30 reads on the “sealing portion configured to seal a gap between the housing and the membrane structure.” See Yoichi Fig. 2, [0054].
A heat sink 32 configured to cool the first casing 24 of the container body in contact with the O-ring 30, which reads on the “cooling portion configured to cool a portion of the housing in contact with the sealing portion.” See Yoichi Fig. 2, [0050].
The membrane unit 12 is a separation membrane structure having hydrogen separation membrane 14 (reading on the claimed “separation membrane”) permeable to a desired component contained in a mixed fluid, as claimed. This is because the hydrogen separation membrane 14 is selectively permeable to hydrogen contained in a reformer gas having impurities. See Yoichi [0036], [0047].
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Regarding claim 2, Yoichi teaches that the heat sink 32 (the “cooling portion”) comprises an internal space 34 in which cooling air circulates, reading on “a refrigerant flow path in which a refrigerant circulates.” See Yoichi Fig. 2, [0050].
Regarding claim 3, Yoichi teaches that the internal space 34 of the heat sink 32 (the “refrigerant flow path”) is disposed outside of the container body (the “housing”), as claimed, because the internal space 34 is located on the outside of first casing 24 of the container body. See Yoichi Fig. 2, [0050].
Regarding claim 4, Yoichi teaches that the heat sink 32 (the “cooling portion”) comprises a fin-like structure formed on the outer surface of the first casing 24 (as seen in Fig. 2), reading on “the cooling portion is a heat dissipation fin formed on an outer surface of the housing.”
Regarding claim 5, Yoichi is interpreted such that the outer box of the heat sink 32 is part of the “housing” because it forms part of the structure of the container body, as seen in Fig. 2. The heat sink 32 comprises an opening (not shown) that allows cooling air to flow into it. See Yoichi Fig. 2, [0050]. The opening reads on the “ventilation hole formed in the housing.”
Regarding claim 8, Yoichi teaches that the O-ring 30 (the “sealing portion”) is capable of moving in a longitudinal direction together with the membrane unit 12 (the “membrane structure”), as claimed, because the O-ring 30 is attached first flange 18 of the membrane unit 12. See Yoichi Fig. 2, [0054].
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yoichi, JP 2001-025629 A in view of Kobayashi et al., US 2016/0193570 A1.
Regarding claim 9, Yoichi teaches that the O-ring 30 (the “sealing portion”) is an O-ring. See Okada [0050].
Yoichi differs from claim 9 because it is silent as to the material used to make the O-ring 30. Therefore, the reference fails to provide enough information to teach the O-ring 30 being constituted by an elastic member, as claimed.
But Kobayashi teaches a membrane module comprising an O-ring that is made from an elastic material such as fluorine, silicone or ethylene propylene diene rubber. See Kobayashi [0111]. The rubber material is beneficial because it is heat and chemically resistant. Id. It would have been obvious to make the O-ring 30 of Yoichi from the rubber material of Kobayashi to improve the heat and chemical resistance of the O-ring 30.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yoichi, JP 2001-025629 A in view of Kobayashi et al., US 2016/0193570 A1 and in further view of Miura et al., US 2020/0384423 A1.
Regarding claim 11, Yoichi teaches the limitations of claim 1, as explained above.
Yoichi differs from claim 11 because it is silent as to the thermal expansion coefficient of the container body and the membrane unit 12. Therefore, the reference fails to provide enough information to teach the container body has a thermal expansion coefficient larger than a thermal expansion coefficient of the membrane unit 12.
But Yoichi teaches that membrane 14 of the membrane unit 12 comprises a porous base material that can be made of ceramic. See Yoichi [0047]. Also, Miura teaches a membrane module comprising a housing that is made of stainless steel. See Miura [0067]. It would have been obvious to manufacture the container body of Yoichi from stainless steel because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07. With this modification, the container body would have a thermal expansion coefficient larger than a thermal expansion coefficient of the membrane 14 of membrane unit 12 because the disclosure acknowledges that stainless steel has a coefficient of thermal expansion larger than ceramic (see Spec. [0032], [0053]), with the structure of Yoichi as modified being substantially the same as the structure described by the Applicant (and therefore presumed to have the same properties). See MPEP 2112.01, subsection I (when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent).
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al., US 2013/0287678 A1 in view of Yoichi, JP 2001-025629 A.
Regarding claims 1 and 6, Okada teaches a hydrogen production apparatus 1, which reads on the claimed “membrane module.” See Okada Fig. 1, [0056]. The hydrogen production apparatus 1 comprises:
A “housing,” which is the box of membrane reactor 20. See Okada Fig. 1, [0056].
A first separation membrane 33, which reads on the “membrane structure housed in the housing.” See Okada Fig. 1, [0056].
The first separation membrane 33 is a reactor having a separation membrane permeable to water vapor, as claimed. See Okada Fig. 1, [0056]. Note that the limitation indicating that the water vapor is a “product of a conversion reaction in which a source gas containing hydrogen and carbon dioxide is converted to liquid fuel” fails to patentably distinguish over the prior art because it describes the intended use rather than the structure of the claimed apparatus. See MPEP 2114 (manner of operating the device does not differentiate apparatus claim from the prior art).
The first separation membrane 33 is a separation membrane structure having a separation membrane permeable to a desired component contained in a mixed fluid, as claimed, because the first separation membrane is permeable to H2O and CO2, as seen in Fig. 1.
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Okada differs from claims 1 and 6 because it is silent as to the hydrogen production apparatus comprising a sealing portion configured to seal a gap between the “housing” and the first separation membrane.
But, as seen in Fig. 1 of Okada, the first separation membrane 33 is positioned in the housing such that water and carbon dioxide permeate the membrane 33 but hydrogen does not. Also, Fig. 4 provides an experiment apparatus for testing membrane performance where a first membrane is sealed within a structure by a gasket. See Okada Fig. 4, [0079]. It would have been obvious to provide a gasket between first separation membrane 33 and the housing to seal a gap between the housing and the first separation membrane 33 to prevent hydrogen gas from moving into the area comprising water and carbon dioxide.
Okada as modified also differs from claims 1 and 6 because it is silent as to a cooling portion configured to cool a portion of the housing in contact with the sealing portion.
But Okada teaches that the first gas separation membrane 33 can operate at relatively high temperatures. See Okada abstract.
With this in mind, Yoichi teaches a membrane device comprising an O-ring sealing between a membrane and a housing holding the membrane, where the device comprises a heat sink 32 (the “cooling portion”) configured to cool a portion of the housing in contact with the O-ring. See Yoichi Fig. 2, [0050]. The heat sink 32 is beneficial because it reduces the temperature of the O-ring to prevent thermal deterioration. Id.
It would have been obvious to use the heat sink 32 of Yoichi with Okada to reduce the temperature of the gasket to prevent thermal deterioration of the gasket.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Okada et al., US 2013/0287678 A1 in view of Yoichi, JP 2001-025629 A and in further view of Miura et al., US 2020/0384423 A1.
Regarding claim 11, Okada as modified teaches the limitations of claim 1, as explained above.
Okada as modified differs from claim 11 because it is silent as to the thermal expansion coefficient of the housing and the first membrane. Therefore, the reference fails to provide enough information to teach the housing has a thermal expansion coefficient larger than a thermal expansion coefficient of the first membrane 33.
But Okada teaches that the first membrane can be made of a ceramic material. See Okada [0100]. Also, Miura teaches a membrane module comprising a housing that is made of stainless steel. See Miura [0067]. It would have been obvious to manufacture the housing of Okada from stainless steel because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07. With this modification, the housing would have a thermal expansion coefficient larger than a thermal expansion coefficient of the first membrane because the disclosure acknowledges that stainless steel has a coefficient of thermal expansion larger than ceramic (see Spec. [0032], [0053]), with the structure of Okada as modified being substantially the same as the structure described by the Applicant (and therefore presumed to have the same properties). See MPEP 2112.01, subsection I (when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent).
Claims 1, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Koizumi et al., WO 2015/166656 A12 in view of Yoichi, JP 2001-025629 A.
Regarding claims 1, 8 and 10, Koizumi teaches a separation membrane structure module 100, which reads on the claimed “membrane module.” See Koizumi Fig. 1, [0019]. The separation membrane structure comprises:
A housing 30, which reads on the “housing.” See Koizumi Fig. 1, [0019].
A membrane structure 20 housed in the housing 30, which reads on the “membrane structure housed in the housing.”
A “sealing portion configured to seal a gap” between the housing 30 and the membrane structure 20 comprising O-ring 39, blocking member 35 and O-ring 37. See Koizumi Fig. 1, [0031].
The membrane structure 20 is a separation membrane structure having a separation membrane permeable to a desired component contained in a mixed fluid, as claimed, because the membrane structure can be used in fluid separation with a fluid being illustrated as passing through the membrane, as seen in Fig. 1.
The “sealing portion” is capable of moving in a longitudinal direction together with the membrane structure 20 because it is attached to the outside of the membrane structure 20. See MPEP 2114 (functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function). Note also that if the entire module 100 was moved in a longitudinal direction (e.g., transported from one location to another), the “sealing portion” (O-ring 39, blocking member 35 and O-ring 37) would move in the longitudinal direction with the membrane structure 20 (and the other components of the module 100).
The O-ring 39 and blocking member 35 collectively read on the “annular fixed portion fixed to an inner surface” of the housing 30. See Koizumi Fig. 1, [0031]. Blocking member 35 reads on the “inclined surface facing a side surface of the” membrane structure 20, because the blocking member 35 has an inclined surface facing a side surface of the membrane structure 20, as seen in Fig. 1.
The O-ring 37 reads on the “annular abutting portion attached to the side surface and abutting the inclined surface,” as seen in Fig. 1.
Koizumi differs from claims 1 and 10 because it is silent as to the module 100 comprising a cooling portion configured to cool a portion of the housing 30 in contact with the sealing portion.
But Koizumi teaches that the module 100 can be used with high-temperature fluids. See Koizumi [0044].
With this in mind, Yoichi teaches a membrane device comprising an O-ring sealing between a membrane and a housing holding the membrane, where the device comprises a heat sink 32 (the “cooling portion”) configured to cool a portion of the housing in contact with the O-ring. See Yoichi Fig. 2, [0050]. The heat sink 32 is beneficial because it reduces the temperature of the O-ring to prevent thermal deterioration. Id.
It would have been obvious to use the heat sink 32 of Yoichi with the module 100 of Koizumi to cool the O-ring 39 to prevent thermal deterioration.
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Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Koizumi et al., WO 2015/166656 A1 in view of Yoichi, JP 2001-025629 A and in further view of Miura et al., US 2020/0384423 A1.
Regarding claim 11, Koizumi as modified teaches the limitations of claim 1, as explained above.
Koizumi as modified differs from claim 11 because it is silent as to the thermal expansion coefficient of the housing 30 and the membrane structure 20. Therefore, the reference fails to provide enough information to teach the housing 30 has a thermal expansion coefficient larger than a thermal expansion coefficient of the membrane structure 30.
But Koizumi teaches that the housing 30 can be made of metal while the membrane structure 24 comprises a membrane that can be made of alumina. See Koizumi [0022], [0031]. Also, Miura teaches a membrane module comprising a housing that is made of stainless steel. See Miura [0067]. It would have been obvious to manufacture the housing 30 of Koizumi from stainless steel because this would merely represent the selection of a known material based on the suitability of its intended use. See MPEP 2144.07. With this modification, the housing 30 would have a thermal expansion coefficient larger than a thermal expansion coefficient of the membrane structure 24 because the disclosure acknowledges that stainless steel has a coefficient of thermal expansion larger than alumina (see Spec. [0032], [0053]), with the structure of Koizumi as modified being substantially the same as the structure described by the Applicant (and therefore presumed to have the same properties). See MPEP 2112.01, subsection I (when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent).
Response to Arguments
35 U.S.C. 112(b) Rejections
The Examiner withdraws the previous 35 U.S.C. 112(b) rejections in light of the amendments.
35 U.S.C. 102 & 103 Rejections
The Applicant argues that the O-ring 30 of Yoichi (the claimed “sealing portion’) is not configured to seal a gap between the container body (the “housing”) and the membrane unit 12 (the “membrane structure”), as claimed. See Applicant Rem. filed July 27, 2026 (“Applicant Rem.”) 5. Instead, it is argued that the O-ring 30 seals a gap between the first flange 18 and the container body. Id.
The Examiner respectfully disagrees with the Applicant’s analysis. The membrane unit 12 of Yochi includes multiple components, including membrane 14, first flange 18, and second flange 16. See Yochi Fig. 2, [0045]. The claim requires that the sealing portion is configured to seal a gap between the housing and the membrane structure. As noted, the membrane unit 12 reads on the “membrane structure.” Also, the O-ring 30 seals a gap between the first flange 18 of the membrane unit 12 and the container body, as acknowledged by the Applicant. Therefore, Yoichi reads on the claimed configuration because the O-ring 30 seals a gap between the container body and the first flange 18 (which is part of the membrane unit 12, i.e., the “membrane structure”).
With respect to the rejection over Okada in view of Yoichi, the Applicant argues that this combination is overcome by the amendment of claim 1 incorporating claim 7, asserting that claim 7 was not included in the rejections. See Applicant Rem. 6. Original claim 7 requires that the membrane structure is a separation membrane structure having a separation membrane permeable to a desired component contained in a mixed fluid. Figure 1 of Okada clearly shows the first separation membrane 33 (reading on the claimed “membrane structure”) having a separation membrane permeable to a desired component contained in a mixed fluid. Therefore, finality is proper because the Applicant had a fair opportunity to react to how Okada reads on the subject matter of claim 7. See MPEP 12.07.03(a) (the ultimate criterion of whether a rejection is considered new is whether the applicant had a fair opportunity to react to the thrust of the rejection).
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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 T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dieterle can be reached at 571-270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776
1 Yoichi is in the record as the 28-page Foreign Reference filed June 10, 2024.
2 Koizumi is in the record as the 66-page Foreign Reference filed February 10, 2026.
Prosecution Insights