Claims 39-58 are pending in the application with claims 1-38 being cancelled. Claims 46-58 have been withdrawn from consideration as being directed to a non-elected invention. Claims 39-45 are rejected.
All of the rejections have been maintained.
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.
Claim 40 is 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.
Claim 40 contains the trademark/trade name ATEQ. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name ATEQ is used to identify/describe an ATEQ corporation of precision leak and flow testing equipment. The ATQE does not identify the airflow properties; accordingly, the identification/description is indefinite. Elimination of ATEQ from the claim is sufficient to overcome the issue of indefiniteness.
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 39-45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0212612 to Sbriglia (hereinafter “Sbriglia”).
As to claim 39, Sbriglia discloses an article comprising a porous polyethylene membrane formed from an ultrahigh molecular weight polyethylene (UHMWPE) polymer having:
a molecular weight of 2-4 million g/mol (paragraph 24); and
a melt enthalpy of at least 190 J/g (abstract);
wherein the porous polyethylene membrane includes:
a node and fibril microstructure having a structure of nodes interconnected by fibril (abstract);
a detectable first endotherm associated with the UHMWPE polymer ranging from 139 to 143oC (paragraph 26);
a detectable second endotherm associated with the fibrils ranging from 145 to 155oC (paragraph 27); and
a bubble point of 23 KPa within the claimed range (paragraph 79).
As to claim 40, the examiner notes that the term “or” indicates that the airflow of at least 50 L/hr is not positively claimed. The porous polyethylene membrane has a matrix tensile strength in the TD direction and the MD direction of 41.3 MPa and 102.7 MPa, respectively (paragraphs 75 and 76). These are within the claimed ranges.
As to claim 41, the porous polyethylene membrane is biaxially oriented (paragraph 66).
As to claim 42, the porous polyethylene membrane has a molecular weight of 2-4 million g/mol (paragraph 24);
As to claim 43, the article is a membrane or a tape (paragraphs 61, 66 and 81).
As to claim 44, the porous membrane has a porosity of 60% to 90% (paragraph 28).
As to claim 45, the UHMWPE polymer includes 0.001 to 10 mol% of a comonomer (paragraph 25).
Response to Arguments
Applicant's arguments filed on 06/08/2026 have been fully considered but they are not persuasive.
Applicant alleges that the porous UHMWPE membrane has a Gurley number or an ATEQ airflow outside the claimed range according to Applicant’s calculation discussed below:
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Even if assuming Applicant’s calculation is correct, the claim is not patentable over Sbriglia because nothing specific about the airflow of 1309, 1431, 4256 and 4857 L/hr as outlined in the Applicant’s calculation is presently claimed.
Applicant also states that the examiner takes the position that the ATEQ airflow of at least 50 L/hr would inherently be present because the porous membranes in Sbriglia and the claimed invention are structurally and chemically identical.
That is not accurate because the examiner did not make such a claim.
It is important to note that the term “or” in claim 40 suggests that the ATEQ airflow limitation is optional. Instead, Sbriglid discloses that the porous polyethylene membrane has a matrix tensile strength in the TD direction and the MD direction of 41.3 MPa and 102.7 MPa, respectively (paragraphs 75 and 76), meeting the claimed requirement.
Further, the Examiner wishes to point out that the Gurley numbers of 120 and 80 sec/ 100 mL used in the Applicant’s conversion, are not accurately represent the Sbriglia reference, as there are no restrictions on the Gurley numbers in that reference. Hence, in order to remove Sbriglia as prior art, it is necessary to submit a declaration to show that Sbriglia fails to achieve the claimed airflow properties due to the difference in the process disclosed in Sbriglia compared to that in the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nambu et al. (US 2022/0161200) disclose a hydrophilic composite membrane comprising a UHMWPE porous membrane and an ethylene vinyl alcohol resin coating on the porous membrane. The UHMWPE has a molecular weight of 4.6 million and a Gurley value of 0.001 to 5 sec/100 mL (paragraphs 57 and 116).
THIS ACTION IS MADE FINAL. 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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights