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 .
This is a first action on the merits of the application. Claims 1-12 and 14 are pending.
Claim Objections
Claims 1 and 6-8 are objected to because of the following informalities:
Claims 1 and 6: Applicant is respectfully advised to choose between “atomic %” and “atomic%” as a unit to use consistent terminology.
Claim 7: The claim recites, “a polysiloxane protective layer (iv).” Applicant is respectfully advised to amend the claim to acknowledge the antecedent in claim 1, line 12.
Claim 8: Applicant is respectfully advised to provide the missing article, i.e., “(b) applying the further layer (iii).” The claim recites, “applying a protective layer (iv) to the further layer (iii).” Applicant is respectfully advised to amend the claim to acknowledge the antecedent in claim 1, line 12.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The broadest reasonable interpretation of claim 1 covers a gas separation membrane comprising a further layer (iii) and a discriminating layer (ii), each comprising groups of the formula M-(O-)x. At the time of filing, the state of the art was such that a formula representing a metal M and oxygen O would be in a format similar to MxOy (i.e., a formula lacking hyphens in which each group or atom is represented symbolically), as evidenced by US 2022/0219125 A1 ([0037]). Because it is unclear what the hyphens represent, the claim is of uncertain breadth. The nature of the invention is one that includes a chemical formula which is represented symbolically but with symbols that are undefined. The specification does not provide direction on how to provide groups of the formula M-(O-)x. Because there is no working example of a structure represented by the formula, the practitioner of ordinary skill would not have been able to determine what structures are intended without unreasonable experimentation. It is noted that the specification discusses the preparation of the gas separation membrane (p. 19) including use of the metal complex Ti(OiPr)4 (p. 19: titanium (IV) isopropoxide), which might suggest an example of the formula M-(O-)x. However, groups of M-(O-)x are in the claimed “further” and “discriminating” layers (claim 1), but Ti(OiPr)4 in the disclosure is used in a curable composition for a gutter layer and for a protective layer (p. 20, lines 6, 13-16), and this example would not indicate what the hyphens might represent, so this teaching does not appear to apply to the discriminating or further layers. The “Preparation of Gas Separation Membranes” section (p. 19) of the disclosure does not state how the further and discriminating layers are prepared. Rather, these appear to be prefabricated (p. 21, line 3: “[a] discriminating layer was applied”). The providing of groups of the claimed formula uses precursors subject to a suitable plasma treatment (p. 8, lines 2-4, 18-19), but this does not bear a reasonable correlation to the full scope of the claim because these teachings do not give examples or a certain structure for final compositions corresponding to the claimed formula. Therefore, there is insufficient direction provided by the inventor for the providing of groups represented by the formula M-(O-)x. Because the hyphens in the symbol are undefined, undue or unreasonable experimentation is needed to practice the invention, to determine what specific structures might be intended and what the hyphens might represent. Furthermore, the effect or attributes of such structures are not specifically described, as the Formula (1) is associated with reduced permeance above a certain value and below a certain value (p. 6, lines 10-15). Furthermore, because of the hyphens, it is unclear if the formula is intended to represent a binary composition, and if not, it is unclear what additional elements are represented in the formula. It is noted that, for binary compositions, it is unclear how the formula can be satisfied where the oxidation state of the metal or metalloid would not allow for a value of x of at least 4. For example, where M is aluminum (p. 6, line 3) with an oxidation state of +3, three oxygens must be present to form the stable oxide Al2O3, so it is not clear whether Applicant is claiming chemically stable compounds, unstable compounds, or charged substituents of other compounds.
Thus, the disclosed applying of a discriminating layer (p. 21), a suitable plasma treatment process that comprises plasma deposition, especially plasma treatment of compounds comprising M such that a further layer (iii) is formed comprising the groups of Formula (1) (p. 8, lines 2-4), and a silicon-containing precursor compound used in a plasma treatment process that results in the deposition of a further layer (iii) onto layer (ii) as a silica-like top-surface comprising the groups of Formula (1) (p. 8, lines 30-32) does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the invention recited in claim 1.
Claims 2-12 and 14 are rejected for the same reasons, as the claims do not provide sufficient written description to practice the invention.
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 1-12 and 14 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 1: The claim recites, “the further layercomprises groups of Formula (1):
M-(O-)x
Formula (1)
wherein: each M independently is a metal or metalloid atom; O is an oxygen atom; and each x independently has a value of at least 4.”
It is unclear what is represented by Formula (1), as it is unclear what the hyphens represent (e.g., bonds to other unnamed other atoms, an explicit omission of unspecified elements, etc.), so the metes and bounds of the claim are unclear. For example, it is unclear if Formula (1) requires a binary composition.
Claims 2-12 and 14 are rejected because of their dependence from claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
REJECTION 1
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of co-pending Application No. 18850188 (“reference application”).
Regarding claim 1 and claim 3 of the reference application, the claims appear to be alike except for (i) the support layer of the reference application is not optional; (ii) the protective layer is optional; and (iii) the discriminating layer of the reference application comprises more than 10 atomic% and less than 50 atomic% of M of Formula (1) groups, rather than more than 10 atomic % of M of Formula (1) groups.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding (i) and (ii), the inclusion of the optional limitations are within the broadest reasonable interpretations of the claims, so the claims correspond in scope under their broadest interpretations.
Regarding (iii), it has been held that obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art (MPEP 2144.05 (I)), so the claimed range is obvious in view of the range of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
REJECTION 2
Claims 1, 3, 6, 8, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 8, 9, and 10 of U.S. Patent No. 12611635 (“reference document”).
Regarding claim 1 and claim 1 of the reference document, the claims appear to be alike except for (i) the support layer of the reference document is not optional; (ii) the non-selective layer is called a buffer layer in the reference document rather than a further layer; (iii) the protective layer is optional in the reference document; (iv) the reference document claim includes additional limitations; (v) the buffer/further layer of the reference document comprises 4 to 10 atomic % of M of Formula (1) groups rather than 1.5 to 10 atomic %.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding (i) and (iii), the inclusion of the optional limitations are within the broadest reasonable interpretations of the claims, so the claims correspond in scope under their broadest interpretations.
Regarding (ii), Applicant’s choice of terminology does not confer patentable distinctiveness on either claim.
Regarding (iv), a less limited claim is obvious in view of a more limited claim.
Regarding (v), it has been held that obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art (MPEP 2144.05 (I)), so the claimed range is obvious in view of the range of the reference application.
In addition, claims 3, 6, 8, and 12 appear to correspond to claims 5, 8, 9, and 10 of the reference document, respectively. In the case of instant claim 8, it would be obvious to attach the optional layers of the membrane to form a single membrane structure.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
A thorough search for pertinent prior art did not locate any prior art that discloses or suggests the invention recited in claims 1-12 and 14.
The concept of a gas separation membrane comprising the following layers:
(i) optionally a support layer;
(ii) a discriminating layer;
(iii) a non gas separation selective further layer; and
(iv) a protective layer on top of the further layer (iii);
wherein:
(a) the further layer (iii) and the discriminating layer (ii) each independently comprise groups of Formula (1):
M-(O-)x Formula (1)
wherein:
each M independently is a metal or metalloid atom;
O is an oxygen atom; and
each x independently has a value of at least 4;
(b) the further layer (iii) comprises 1.5 to 10 atomic % of M of Formula (1) groups, wherein M is as hereinbefore defined; and
(c) the discriminating layer (ii) comprises more than 10 atomic % of M of Formula (1) groups, wherein M is as hereinbefore defined (claim 1)
is considered to define patentable subject matter over the prior art.
The closest prior art is Van Kessel (US 2015/0190762 A1), which discloses a composite membrane comprising a porous support, a polymeric layer (i.e., a further layer), a discriminating layer, and a protective layer ([0145]), wherein the polymeric layer comprises a metal complex ([0068]) that may be titanium tetra-isopropoxide, titanium tetraethoxide, or other structures ([0143]) that appear to satisfy Formula (1). However, Van Kessel does not suggest that the discriminating layer includes such metal complexes ([0056]).
Sawada et al. (US 2018/0272291 A1) discloses a protective-layer-covered gas separation membrane (Abstract) comprising a porous support ([0116]); a specific resin layer with high gas separation selectivity ([0081]); an additional layer ([0250]); and a protective layer ([0065]).
However, Sawada does not suggest that the additional and selective layer include groups represented by Formula (1).
Claims 1-12 and 14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112 set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL E GITMAN whose telephone number is (571)272-7934. The examiner can normally be reached M-Th 7:15-5:45pm.
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/GABRIEL E GITMAN/Primary Examiner, Art Unit 1772
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