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 1-19 are pending.
Drawings
The drawings are objected to because, in Fig. 2, the reference characters are not clear, as shown below, which presumably is intended to show “3” at one end of the lead line. Reference characters must be plain and legible. See 37 CFR 1.84(p)(1).
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claim 1 recites, “the outer surface is a dense surface.” A “dense” surface is interpreted as a surface that has a lower porosity ([0013]) relative to another surface of the membrane.
Claim 1 recites, “the TOC dissolving-out amount.” “TOC” is interpreted as “total organic carbon.” See US 20190143277 A1 at [0166].
Claim 5 recites, “wherein in the circumferential direction of the hollow fiber membrane, a plurality of the air pores are regularly arranged.” Merriam-Webster defines “regular” as “recurring, attending, or functioning at fixed, uniform, or normal intervals,” so the claim is interpreted as reciting a fixed interval between air pores through the entire circumferential direction of the membrane.
Claim 11 recites “cold-stretching.” Cold-stretching is interpreted as a stretching or drawing treatment that is preceded by a cooling step (claim 11, “S4”).
Claim Objections
Claims 1, 4, 5, 11, and 15 are objected to because of the following informalities:
Claim 1: In line 4, Applicant is respectfully advised to amend “the TOC dissolving-out amount” to “a TOC dissolving-out amount” since the term lacks an antecedent and does not appear to be an inherent feature of a hollow fiber membrane. For the same reason, Applicant is respectfully advised to amend “the deoxidation efficiency” to “a deoxidation efficiency.”
Claim 4: Applicant is respectfully advised to amend “the average major axis of the air pores is 2-8 times of the average minor axis” to “a average major axis of the air pores is 2-8 times of a average minor axis” since these terms lack antecedents.
Claim 5: Applicant is respectfully advised to amend “the length direction” and “the width direction” to “a length direction” and “a width direction” since these terms lack antecedents.
Claim 11: Applicant is respectfully advised that “extruding polyolefin” (line 3) lacks a necessary article (i.e., “a”). In lines 6-7, “the flow velocity of the cavity-forming fluid of” appears to be a typographical error for “the flow velocity of the cavity-forming fluid is.”
Claim 15: In line 2, “the wind-cooling length” appears to be a misstatement of “a wind-cooling length” since there is no antecedent for the term.
Appropriate correction is required.
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 1-19 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 1: The term “high-efficiency” in claim 1 is a relative term which renders the claim indefinite. The term “high-efficiency” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2-19 are rejected because of their dependency from claim 1.
Claim 4: The terms “the average major axis” and “the average minor axis” lack sufficient antecedent basis, and will be interpreted as “an average major axis” and “an average minor axis.” For the purposes of examination only, the claim will be interpreted as depending from claim 2.
Claim 9: The claim recites, “a skin layer area and a porous area along the thickness direction of the membrane.” It is unclear what is meant by “a skin layer area and a porous area” since “layer” and “thickness direction” imply a three-dimensional structure, but “area” implies a two-dimensional structure, and it is unclear if or how these structures relate to the outer/dense surface and the inner surface, as these antecedents are not acknowledged. In addition, “continuous fibers are in transition between the skin layer area and the porous area” is unclear since it is unclear if “fibers” refers to of the hollow fiber membrane itself or additional fibers embedded in the membrane. The specification does not elaborate on this idea, and the figures do not appear to show fiber structures that are distinct from the air pores. Lastly, it is not clear what is meant in “continuous fibers are in transition between the skin layer area and the porous area,” i.e., it is unclear if the fibers are exhibiting some form of transition, or if they are present in a “transition” between the skin layer area and the porous area. For the purposes of examination only, the skin layer area is interpreted as a layer coinciding with the dense or outer surface, and the porous area is interpreted as the inner surface characterized by the area ratio of claim 1, “area” will be interpreted as “volume” or “layer,” and “continuous fibers” are interpreted as additional fibers in the structure of the membrane.
Claim 10 is rejected because of its dependence from claim 9.
Claim 10: The claim recites, “the average pore diameter of the porous area gradiently changes from the area close to one side of the inner surface to the area close to one side of the outer surface.” These limitations are unclear because (i) each instance of “the area” lacks antecedent basis; (ii) “area” refers to a two-dimensional structure, but “gradiently changes” appears to refer to a three-dimensional structure, so it is unclear what is meant by “area”; (iii) “close” is a relative term with undefined metes and bounds; and (iv) it is unclear what is meant by “one side of the outer surface” since it is unclear how a ”surface” can have more than one side. For the purposes of examination only, this text will be interpreted as “an average pore diameter of the porous layer gradiently changes from a volume adjacent to one side of the inner surface to a volume adjacent to the outer surface.”
Claim 19: The claim recites, “Use of the high-efficiency degassing polyolefin hollow fiber membrane . . . the hollow fiber membrane is used for removing oxygen.” The claim is indefinite because it does not set forth any steps involved in the method. Applicant is respectfully advised that a method or process claim must set forth at least one active, positive step delimiting how this use is actually practiced. See MPEP 2173.05(q).
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (US 2024/0189778 A1), as evidenced by Lowery et al. (US 4,541,981) and Takahara et al. (US 4,770,852).
Taguchi discloses a hollow fiber membrane ([0016], [0043]) contains poly(4-methyl-1-pentene) as a main component (Abstract) that is useful for degassing applications ([0198]) (i.e., high-efficiency degassing polyolefin hollow fiber membrane) comprising an inner surface around a hollow cavity and an outer surface (Fig. 4; claim 29; [0130]) (i.e., a main body, wherein one side of the main body is an inner surface facing an inner cavity, the other side of the main body is an outer surface), a dense layer on the outer surface ([0058]) (i.e., the outer surface is a dense surface); and a thickness that is more preferably 30 μm or more, and particularly preferably 100 μm or less ([0045]) (i.e., the average thickness of the hollow fiber membrane is 45-65 μm, noting that it has been held that obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art (MPEP 2144.05 (I)).
Taguchi does not explicitly disclose (i) a non-directional tortuous pathway that is formed in the main body; (ii) an area ratio of air pores in the inner surface that is 10%-30%; (iii) a ratio of the average outer diameter to the average inner diameter of the hollow fiber membrane that is 1.45-1.55; (iv) a TOC dissolving-out amount of the hollow fiber membrane that is less than or equal to 3 μg/L; or (v) a deoxidation efficiency of the hollow fiber membrane that is greater than 80%.
Regarding (i), Taguchi teaches a poly(4-methyl-1-pentene) (i.e., polymethylpentene or PMP) membrane (Abstract, [0010]), and it was known in the art that the pores of the microporous hollow fibers made from polymethylpentene are essentially interconnected through tortuous paths which may extend from one exterior surface or surface region to another, as evidenced by Lowery. See col. 19, lines 52-59 and col. 25, line 16. Therefore, the hollow fiber membrane of Taguchi is interpreted as comprising a non-directional tortuous pathway formed in the main body.
Regarding (ii), the hollow fiber membrane of Taguchi is presumed to comprise an area ratio of air pores in the inner surface that is 10%-30%, because it has all of the structural characteristics described in the claim. See MPEP 2112.01 (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"). In addition, since Taguchi teaches a membrane with a porosity of 30% or more and 70% or less ([0068]), and it was known that a polyolefin hollow fiber membrane with a porosity of 10 to 60% could have an inner surface aperture ratio (i.e., an area ratio of air pores in the inner surface) of 10 to 30%, as evidenced by Takahara (col. 2, lines 57-64), the skilled practitioner would have expected the hollow fiber membrane of Taguchi to comprise an area ratio of air pores in the inner surface that is 10%-30%.
Regarding (iii), given the disclosure in Taguchi of an outer diameter that is, for example, 200 μm ([0046]) and an inner diameter of, for example, 150 μm or more, or 100 μm or more ([0047]), which would indicate a ratio of the average outer diameter to the average inner diameter in the range of, for example, 1.3-2, it would have been obvious to optimize the ratio of outer to inner diameter. It is noted that when the prior art teaches the general conditions of a claim, it is not inventive to find optimum or workable ranges. See MPEP 2144.05(II)(A).
Regarding (iv), the hollow fiber membrane of Taguchi is presumed to comprise a TOC dissolving-out amount that is less than or equal to 3 μg/L, because it has all of the structural characteristics described in the claim. See MPEP 2112.01 (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"). Applicant is respectfully advised that the discovery of a previously unappreciated property of a prior art composition, does not render the old composition patentably new to the discoverer. See MPEP 2112(I).
Regarding (v), the hollow fiber membrane of Taguchi is presumed to comprise a deoxidation efficiency of the hollow fiber membrane that is greater than 80%, because it has all of the structural characteristics described in the claim. See MPEP 2112.01 (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"). Applicant is respectfully advised that the discovery of a previously unappreciated property of a prior art composition, does not render the old composition patentably new to the discoverer. See MPEP 2112(I).
Regarding claim 3, Taguchi teaches a porosity of 30% or more and 70% or less ([0068]) (i.e., the porosity of the hollow fiber membrane is 30%-50%), and given an inner surface aperture ratio (i.e., an area ratio of air pores in the inner surface) of 10 to 30%, as evidenced by Takahara (col. 2, lines 57-64), the teachings of Taguchi are interpreted as encompassing a porosity that is 1.5-3.5 times of the area ratio of the air pores in the inner surface.
Taguchi does not explicitly disclose that the difference between the maximum thickness and the minimum thickness of the hollow fiber membrane is less than or equal to 5 μm, and the difference is less than or equal to 10% of the average thickness of the hollow fiber membrane.
However, Taguchi teaches that a coefficient of variation of the thickness of the dense layer should be as small as possible ([0059]), that thickness is a result-effective variable ([0045]), and that thickness should be relatively uniform ([0032]), so Taguchi is interpreted as teaching that differences in thickness are a result-effective variable that can and should be minimized. A result-effective variable is one which the skilled practitioner would desire to optimize and is considered prima facie obvious and without patentable weight. See MPEP 2144.05 (II)(A).
Claim Objections
Claims 2 and 4-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 2 and 4-19.
The concept of a high-efficiency degassing polyolefin hollow fiber membrane, comprising a main body, wherein one side of the main body is an inner surface facing an inner cavity, the other side of the main body is an outer surface, a non-directional tortuous pathway is formed in the main body, the outer surface is a dense surface, and the area ratio of air pores in the inner surface is 10%-30%;
the average thickness of the hollow fiber membrane is 45-65 μm and the ratio of the average outer diameter to the average inner diameter of the hollow fiber membrane is 1.45-1.55;
the TOC dissolving-out amount of the hollow fiber membrane is less than or equal to 3 μg/L; and
the deoxidation efficiency of the hollow fiber membrane is greater than 80% (claim 1);
wherein the inner surface is provided with a plurality of oval air pores, the major axis of each air pore is oriented to the length direction of the hollow fiber membrane, the minor axis of each air pore is oriented to the circumferential direction of the hollow fiber membrane, the average major axis of the air pores is 150-300 nm, the average minor axis of the air pores is 10-60 nm, and the degree of hollowness of the hollow fiber membrane is 35%-55% (claim 2);
wherein the average major axis of the air pores is 2-8 times of the average minor axis; and
the difference between the maximum major axis and the minimum major axis of the air pores is 150-350 nm, and the difference between the maximum minor axis and the minimum minor axis of the air pores is 10-100 nm (claim 4);
wherein in the circumferential direction of the hollow fiber membrane, a plurality of the air pores are regularly arranged to form an air permeable area for air permeability;
the length direction of the air permeable area is consistent with the circumferential direction of the hollow fiber membrane; the width direction of the air permeable area is consistent with the length direction of the hollow fiber membrane; and
the average length of the air permeable area is 400-1,100 nm and greater than the average width of the air permeable area (claim 5);
wherein the outer surface is also provided with a plurality of crazing cracks and the width of each crack is less than or equal to 20 nm; and the surface energy of the outer surface is 15-40 mN/m (claim 8);
wherein the main body of the hollow fiber membrane is provided with a skin layer area and a porous area along the thickness direction of the membrane, and continuous fibers are in transition between the skin layer area and the porous area;
one side of the skin layer area is an outer surface and one side of the porous area is an inner surface; and
the thickness of the skin layer area is 0.5-4 μm, the thickness of the skin layer area accounts for 1%-8% of the thickness of the hollow fiber membrane, and the porosity of the skin layer area is less than or equal to 10% (claim 9)
is considered to define patentable subject matter over the prior art.
Likewise, the concept of a method for preparing the high-efficiency degassing polyolefin hollow fiber membrane according to claim 1, comprising the steps of claim 11 is considered to define patentable subject matter over the prior art.
The closest prior art appears to be Taguchi et al. (US 2024/0189778 A1), which discloses a hollow fiber membrane ([0016], [0043]) contains poly(4-methyl-1-pentene) as a main component (Abstract) that is useful for degassing applications ([0198]) (i.e., high-efficiency degassing polyolefin hollow fiber membrane) comprising an inner surface around a hollow cavity and an outer surface (Fig. 4; claim 29; [0130]) (i.e., a main body, wherein one side of the main body is an inner surface facing an inner cavity, the other side of the main body is an outer surface), a dense layer on the outer surface ([0058]) (i.e., the outer surface is a dense surface); and a thickness that is more preferably 30 μm or more, and particularly preferably 100 μm or less ([0045]).
Regarding claims 2 and 4, Taguchi does not suggest oval air pores.
Regarding claim 5, Taguchi does not suggest air permeable areas arranged in the circumferential direction of the hollow fiber membrane.
Regarding claim 8, Taguchi does not suggest crazing cracks.
Regarding claim 9, Taguchi does not suggest continuous fibers in transition between a skin layer area and a porous area.
Regarding claim 11, Taguchi does not suggest pre-crystallizing, wind cooling, twice cold-stretching, or heat-shaping steps.
Other close prior art is Kessler et al. (US 6,497,752 B1), which discloses a hollow fiber membrane (col. 9, lines 33) suited for gas exchange (col. 3, line 59) made from a polyolefin (col. 8, lines 60-62) (i.e., a high-efficiency degassing polyolefin hollow fiber membrane) comprising an interior surface (col. 5, line 44), a lumen, and an outer dense separation layer (col. 5, line 25; col. 16, lines 25-31) (i.e., a main body, wherein one side of the main body is an inner surface facing an inner cavity, the other side of the main body is an outer surface; the outer surface is a dense surface), and a thickness between 10 and 300 μm (col. 16, lines 21-22) (i.e., the average thickness of the hollow fiber membrane is 45-65 μm)
Regarding “the ratio of the average outer diameter to the average inner diameter of the hollow fiber membrane is 1.45-1.55,” Kessler teaches an outside diameter between 30 and 3000 μm, especially preferably between 50 and 500 μm, and that a wall thickness of the hollow-fiber membrane between 5 and 150 μm is advantageous, and a thickness between 10 and 100 μm is especially advantageous (col. 16, lines 31-36), so that, for example, a possible outer diameter of 300 μm and a possible thickness of 50 μm, an inner diameter can be calculated to be 200 μm, and a ratio of the average outer diameter to the average inner diameter of the hollow fiber membrane is 1.5; so Kessler is interpreted as implicitly teaching ratios that encompass the claimed ratio.
Regarding claim 2, Kessler teaches a porosity of 30 to 75% (col. 5, lines 29-30) (i.e., a degree of hollowness of the hollow fiber membrane is 35%-55%), and that openings may be non-circular, but the ratio of the major axis to the minor axis does not exceed 2:1 (col. 13, lines 45-48), so Kessler does not suggest an average major axis of the air pores that is 150-300 nm, the average minor axis of the air pores that is 10-60 nm since these parameters exceed the ratio of 2:1.
Regarding claim 4, Kessler likewise does not suggest the differences and the ratios regarding the average major axis of the air pores is 2-8 times of the average minor axis, given that the ratio of the major axis to the minor axis does not exceed 2:1 (col. 13, lines 45-48).
Regarding claim 11, Kessler does not suggest pre-crystallizing, wind cooling, or annealing, heat-stretching, and heat-shaping steps.
Other close prior art is Takatake et al. (JPH06246139A), which discloses a polyolefin ([0020]) membrane that passes gas at a higher rate as compared with a membrane having the same gas separation factor (Abstract) formed as a hollow fiber membrane ([0001]) (i.e., a high-efficiency degassing polyolefin hollow fiber membrane) comprising:
a porous interior of the hollow membrane with an inner surface ([0011]) (i.e., a main body, wherein one side of the main body is an inner surface facing an inner cavity) and a dense layer on its outer surface ([0006]) (i.e., a main body, wherein the other side of the main body is an outer surface; the outer surface is a dense surface).
Regarding claim 8, Takatake teaches that the outer surface has irregularities such as wrinkled, scaly, wavy, or numerous hill-like structures ([0014]). However, there is no suggestion that crazing cracks of less than or equal to 20 nm are present.
Regarding claim 11, Takatake teaches spinning ([0022]) and extrusion ([0021]), a poly(4-methyl-1-pentene) polymer (i.e., PMP) ([0020]), air cooling ([0021]) (i.e., wind cooling), heat treatment ([0022]) (i.e., annealing), stretching in multiple stages ([0024]), and shrinking and heat-fixing stretched hollow fibers ([0024]) (heat shaping). However, Takatake does not suggest rolling a cooled product before heat treatment, differing conditions for the multiple cold stretchings, or heat stretching after cold stretching, noting that Tatake only teaches gradually increasing temperatures during the multiple stretchings ([0024]), rather than twice cold-stretching and subsequent heat stretching.
Regarding claim 19, the above references do not suggest using polyolefin hollow fiber membrane of claim 1 for removing oxygen in ultrapure water.
Claims 2 and 4-19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, 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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