DETAILED ACTION
Status of Claims:
Claims 1-9 are pending.
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 1-9 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.
Regarding Claim 1:
The claim states “configured to be housed in a tubular housing…arranged between a first end surface of the membrane structure and the housing”. It is not clear if the housing is intended to be part of the claim or not.
The remaining claims are indefinite because they depend from an indefinite claim.
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.
Claim(s) 1-4 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugiura et al (US 2006/0123753).
Regarding Claim 1:
Sugiura teaches the membrane assembly configured to be housed in a tubular housing (hollow cylindrical case 39), the membrane assembly comprising: a columnar membrane structure (filter module 31); an annular first flange (protruding portion of upper supporting plate 38) surrounding a first end portion of the membrane structure; a first intermediate portion (upper portion of upper supporting plate 38) arranged between a first end surface of the membrane structure and the housing; and a first bonding material (first sealer 35) interposed between the first flange and the membrane structure and between the first intermediate portion and the membrane structure (see para. 0059, fig. 6 annotated below).
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Regarding Claim 2:
Sugiura teaches the membrane assembly according to claim 1, wherein the first intermediate portion and the first flange are formed as a single piece (see fig. 6).
Regarding Claim 3:
Sugiura teaches the membrane assembly according to claim 1, further comprising: an annular second flange surrounding a second end portion of the membrane structure; a second intermediate portion arranged between a second end surface of the membrane structure and the housing; and a second bonding material interposed between the second flange and the membrane structure and between the second intermediate portion and the membrane structure (see fig. 6 annotated above).
Regarding Claim 4:
Sugiura teaches the membrane assembly according to claim 3, wherein the second intermediate portion and the second flange are formed as a single piece (see fig. 6).
Regarding Claim 7:
Sugiura teaches the membrane assembly according to claim 1, wherein the membrane structure is a reactor. Sugiura teaches the structure of the claimed membrane structure, being a “reactor” is the intended use of the membrane assembly and only adds patternable weight to the extent that the prior art structure could function as a reactor. As the membrane assembly of Sugiura is structurally the same as claimed it could function as a reactor. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 8:
Sugiura teaches the membrane assembly according to claim 1, wherein the membrane structure is a separation filter (filter) (see para. 0001).
Regarding Claim 9:
Sugiura teaches the separation membrane module comprising: the membrane assembly according to claim 1; and a tubular housing (case 39) in which the membrane assembly is housed (see para. 0059).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugiura et al (US 2006/0123753).
Regarding Claim 5:
Sugiura teaches the membrane assembly according to claim 1.
Sugiura does not teach wherein the first flange is constituted by a ceramic material.
Sugiura further teaches that ceramic is used as a material in the invention (see para. 0016, 0037). It would have been obvious to one skilled in the art to replace the unspecified material of the first flange with the ceramic material of Sugiura because it is the simple substitution of one material with another known material, obviously resulting in flange with high physical strength (see para. 0037), with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 6:
Sugiura teaches the membrane assembly according to claim 3.
Sugiura does not teach wherein the second flange is constituted by a ceramic material.
Sugiura further teaches that ceramic is used as a material in the invention (see para. 0016, 0037). It would have been obvious to one skilled in the art to replace the unspecified material of the second flange with the ceramic material of Sugiura because it is the simple substitution of one material with another known material, obviously resulting in flange with high physical strength (see para. 0037), with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ramdhanie Bobby can be reached at 571-270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 8/25/2026
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