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 .
Information Disclosure Statement
The information disclosure statement filed 11 November 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because it is a “use” claim that does not purport to claim a process, machine, manufacture, or composition of matter. One cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101. The claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP § 2173.05(q).
Claim Rejections - 35 USC § 112(b)
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 5 and 7 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.
Claim 5 recites the limitation “wherein a product of a carbon dioxide transmission coefficient [unit: Barrer] of the gas separation membrane and a thickness [unit: µm] thereof is 5.0x103 or more. It is unclear how a product of a carbon dioxide transmission coefficient and a thickness would result in a unitless value, as it appears that the units do not cancel out.
Claim 7 recites the limitation “A use of a polymer membrane comprising a polycarbonate-polyorganosiloxane copolymer (A) for separation of carbon dioxide from a mixed gas comprising the carbon dioxide.” The claim is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP § 2173.05(q).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 recites the limitation “wherein the mixed gas comprising the carbon dioxide is an exhaust gas.” Claim 1, upon which claim 6 depends upon, recites the limitation “A gas separation membrane for separating carbon dioxide from a mixed gas comprising the carbon dioxide.” (emphasis added) The intended use of the invention is not considered a limitation and is of no significance to claim construction. As the mixed gas is not a positively recited element and does not further limit the claim, the limitation of claim 6 fails to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over International Patent Publication No. WO 2021/198855 A1 to Goossens et al. (hereinafter referred to as Goossens).
Regarding claim 1, Goossens teaches a gas separation membrane (¶0090) for separating carbon dioxide from a mixed gas comprising the carbon dioxide (the intended use of the invention is not considered a limitation and is of no significance to claim construction, see MPEP § 2111.02(II)), the gas separation membrane comprising a polycarbonate-polyorganosiloxane copolymer (A) (¶0004), wherein the polycarbonate-polyorganosiloxane copolymer (A) comprises a polycarbonate block (A-1) consisting of repetition of a structural unit represented by the following general formula (I) and a polyorganosiloxane block (A-2) comprising repetition of a structural unit represented by the following general formula (II),
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555
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427
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500
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386
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wherein R1 and R2 each independently represent a halogen atom, an alkyl group having 1 to 6 carbon atoms, or an alkoxy group having 1 to 6 carbon atoms (¶0015, Pg. 5), X represents a single bond, an alkylene group having 1 to 8 carbon atoms, an alkylidene group having 2 to 8 carbon atoms, a cycloalkylene group having 5 to 15 carbon atoms, a cycloalkylidene group having 5 to 15 carbon atoms, an arylalkylene group having 7 to 15 carbon atoms, an arylalkylidene group having 7 to 15 carbon atoms, -S-, -SO-, -SO2-, -O-, or -CO- (¶0015, Pg. 6), R3 and R4 each independently represent hydrogen, a halogen atom, an alkyl group having 1 to 6 carbon atoms, an alkoxy group having 1 to 6 carbon atoms, or an aryl group having 6 to 12 carbon atoms (¶0051, Pg. 20), and “a” and “b” each independently represent an integer of from 0 to 4 (¶0015, Pg. 5).
Goossens does not explicitly teach wherein a content of the polyorganosiloxane block (A-2) in the polycarbonate-polyorganosiloxane copolymer (A) is from 20 mass% or more to 70 mass% or less.
However, Goossens does teach wherein the content of the polyorganosiloxane block (A-2) in the polycarbonate-polyorganosiloxane copolymer (A) is from 5 to 60 wt% (¶0004), which falls inside the required range of 20 mass% or more to 70 mass% or less. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Regarding claim 2, Goossens teaches the gas separation membrane as applied to claim 1 above, wherein the polyorganosiloxane block (A-2) has an average chain length “n” of from 20 to 150 (Table 1, component PC-Si has average block length = 45).
Regarding claim 3, Goossens teaches the gas separation membrane as applied to claim 1 above, wherein in the general formula (I), “a” and “b” each represent 0 (¶0015, Pg. 5), and X represents an isopropylidene group (¶0016).
Regarding claim 4, Goossens teaches the gas separation membrane as applied to claim 1 above, wherein in the general formula (II), R3 and R4 each represent a methyl group (¶0051, Pg. 19 ; a C1 alkyl is a methyl group).
Regarding claim 5, Goossens teaches the gas separation membrane as applied to claim 1 above. Goossens does not explicitly teach wherein a product of a carbon dioxide transmission coefficient [unit: Barrer] of the gas separation membrane and a thickness [unit: µm] thereof is 5.0x103 or more. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the gas separation membrane as taught by Goossens to optimize the permeance of said membrane for the target gas. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP § 2144.05(II)(A).
Regarding claim 6, Goossens teaches the gas separation membrane as applied to claim 1 above. As previously explained, for the limitation of “A gas separation membrane for separating carbon dioxide from a mixed gas comprising the carbon dioxide” in claim 1, the intended use of the invention is not considered a limitation and is of no significance to claim construction (see MPEP § 2111.02(II)). The mixed gas is not a positively recited element and the gas separation membrane as taught by Goossens therefore reads on all limitations of claim 1. Similarly, the exhaust gas of claim 6 is not a positively recited element and Goossens therefore reads on all the limitations of claim 6.
Allowable Subject Matter
Claim 8 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 8 requires:
“A method of separating carbon dioxide from a mixed gas comprising the carbon dioxide, comprising a step of bringing the mixed gas comprising the carbon dioxide into contact with a gas separation membrane,
wherein the gas separation membrane comprises a polycarbonate-polyorganosiloxane copolymer (A),
wherein the polycarbonate-polyorganosiloxane copolymer (A) comprises a polycarbonate block (A-1) consisting of repetition of a structural unit represented by the following general formula (I) and a polyorganosiloxane block (A-2) comprising repetition of a structural unit represented by the following general formula (II), and
wherein a content of the polyorganosiloxane block (A-2) in the polycarbonate-polyorganosiloxane copolymer (A) is from 20 mass or more to 70 mass% or less:
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wherein R1 and R2 each independently represent a halogen atom, an alkyl group having 1 to 6 carbon atoms, or an alkoxy group having 1 to 6 carbon atoms, X represents a single bond, an alkylene group having 1 to 8 carbon atoms, an alkylidene group having 2 to 8 carbon atoms, a cycloalkylene group having 5 to 15 carbon atoms, a cycloalkylidene group having 5 to 15 carbon atoms, an arylalkylene group having 7 to 15 carbon atoms, an arylalkylidene group having 7 to 15 carbon atoms, -S-, -SO-, -SO2-, -O-, or -CO-, R3 and R4 each independently represent hydrogen, a halogen atom, an alkyl group having 1 to 6 carbon atoms, an alkoxy group having 1 to 6 carbon atoms, or an aryl group having 6 to 12 carbon atoms, and “a” and “b” each independently represent an integer of from 0 to 4.
The underlined portion of claim 8 indicates the limitations which the Examiner has found to be non-obvious in view of the prior art. Goossens is the nearest prior art. Neither Goossens nor the related prior art teach a method of separating carbon dioxide from a mixed gas wherein the gas separation membrane comprises a polycarbonate-polyorganosiloxane copolymer. Although Goossens teaches the use of a polycarbonate-polyorganosiloxane copolymer as a membrane, Furthermore, neither Goossens nor the related prior art provide a rationale for modifying any of the previously discussed teachings to meet all of the requirements as set forth by claim 8; although Goossens does teach utilizing a polycarbonate-polyorganosiloxane copolymer as a membrane, they do not suggest that carbon dioxide may be a suitable target gas and such a modification would therefore not have been obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Juliano (US 3781378) teaches the use of block copolymers of polydiorganosiloxane and polycarbonate as high temperature membranes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL MARIE SLAUGOVSKY whose telephone number is (571)272-0188. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm EST.
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/RACHEL MARIE SLAUGOVSKY/Examiner, Art Unit 1776
/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
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