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 .
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) 1-3, 5-9,11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al., "Robust and Transparent membrane of Crystalline Silicone via a Melt-Drawing Technique" J. Mat. Chem. C. 2014 2 373-381 (hereinafter "Uehara") listed in IDS
Regarding Claim 1 Uehara discloses process for making a poly (tetramethyl-p-silphenylenesiloxane) polymer article comprising: casting a poly (tetramethyl-p-silphenylenesiloxane) polymer solution on a substrate to form a poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape (film preparation, page-374); drying the poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape to form a dried poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape (film preparation, page-374); and
Uehara didn’t explicitly discloses that removing the dried poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape from the substrate. However, Uehara disclose that samples were cooled and cut to respective size (page-375, 1st para), therefore it would be obvious for one ordinary skilled to interpret that samples were removed form the substrate before it was cut. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding Claim 2 Uehara discloses expanding the dried poly (tetramethyl-p-silphenylenesiloxane) polymer tape to form an expanded poly (tetramethyl-p-silphenylenesiloxane) membrane having a node and fibril microstructure (the expanded PTMS membrane has a microstructure of nodes and interconnected by fibrils with a tensile modulus of 2 GPa and tensile strength of 20 MPa, Figures 7 and 8).
Regarding Claim 3 Uehara discloses, wherein the drying comprises air drying, vacuum drying (film preparation-page 374).
Regarding Claim 5 Uehara discloses , wherein the poly (tetramethyl-p- silphenylenesiloxane) polymer solution comprises the poly (tetramethyl-p- silphenylenesiloxane) polymer and an organic solvent (film preparation-page 374).
Regarding claim 6 Uehara discloses , wherein the substrate is a non- porous (film preparation-page 374, substrate-petri dish).
Regarding claim 7 Uehara discloses wherein the substrate is a non-porous substrate and the non-porous substrate is selected from a glass dish (film preparation, substrate-petri dish )
Regarding claim 8 Uehara discloses, further comprising cutting the dried poly (tetramethyl-p-silphenylenesiloxane) cast tape to a desired size prior to the expanding (page-375).
Regarding Claim 9 and 12 Uehara discloses The PTMS polymer, is a fibrous polymer formed from polymerization of 1,4- bis(hydroxydimethylsilyl)benzene (p 374). The expanded PTMPS polymer membrane is obtained using a melt-drawing process. Therefore, the examiner takes the position that a crystallization of at least 70%, a matrix modulus in at least one direction of 100 to 1000 MPa, and fibrils comprising polymer chains which are oriented along a fibril axis would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product. wherein the poly (tetramethyl-p- silphenylenesiloxane) polymer has a crystallinity of at least 70% and modulus in at least one direction of 100 to 1000 MPa.
Regarding Claim 11 Uehara discloses , wherein the expanded poly (tetramethyl-p- silphenylenesiloxane) polymer membrane comprises a matrix tensile strength in at least one direction from about 1 MPa to about 50 MPa (Figure 8).
Regarding Claim 13 , wherein the poly (tetramethyl-p- silphenylenesiloxane) polymer has a weight average molecular weight from about 350 kDa to 5 MDa (measurement, page-374).
Claim(s) 14-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al., "Robust and Transparent membrane of Crystalline Silicone via a Melt-Drawing Technique" J. Mat. Chem. C. 2014 2 373-381 (hereinafter "Uehara") in view of Ichikawa et. al. Tetramethyl-p-silphenylenesiloxane/ dimethylsiloxane block and graft copolymers as selective permeable membranes (hereinafter “ Ichikawa”) listed in IDS.
Regarding Claim 14 Uehara discloses: casting a poly (tetramethyl-p-silphenylenesiloxane) polymer solution on a substrate to form a poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape (film preparation, page-374). Uehara didn’t particularly disclose that submerging the poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape in a non-solvent bath for solvent induced phase separation. Non solvent induced phase separation is polymer is dissolved in a solvent and submerged in a coagulation bath containing a non-solvent that mixes easily with the solvent but not with the polymer. In Ichikawa, TMPS was submerged in a solvent and reacted with a catalyst and TMPS monomer were eliminated during catalysis (Materials, page-269); and drying the poly (tetramethyl-p-silphenylenesiloxane) polymer tape to form a microporous poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape (Ichikawa, Experimental, page-269).
It would have been obvious for one ordinary skilled in the art to combine the teaching of Uehara with that of Ishikawa for the purpose of high throughput formation of polymer membrane
Further, re: removing the poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape from the substrate. Uehara didn’t explicitly disclose that removing the dried poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape from the substrate. However, Uehara disclose that samples were cooled and cut to respective size (page-375, 1st para), therefore it would be obvious for one ordinary skilled to interpret that samples were removed form the substrate before it was cut. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding Claim 15 Uehara discloses, further comprising expanding the microporous poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape to form an expanded poly (tetramethyl-p-silphenylenesiloxane) membrane having a node and fibril microstructure (the expanded PTMS membrane has a microstructure of nodes and interconnected by fibrils with a tensile modulus of 2 GPa and tensile strength of 20 MPa, Figures 7 and 8).
Regarding Claim 16 Uehara discloses, further comprising cutting the microporous poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape prior to the expanding (page-375).
Regarding Claim 17 Uehara discloses, wherein the substrate is non-porous substrate (page-374, petri dish).
Regarding Claim 18 Uehara discloses , wherein the substrate is a non-porous substrate and the non-porous substrate is selected from a glass dish (film preparation, substrate-petri dish).
Regarding Claim 19 and 23, The PTMS polymer, is a fibrous polymer formed from polymerization of 1,4- bis(hydroxydimethylsilyl)benzene (p 374). The expanded PTMPS polymer membrane is obtained using a melt-drawing process. Therefore, the examiner takes the position that a crystallization of at least 70%, a matrix modulus in at least one direction of 100 to 1000 MPa, and fibrils comprising polymer chains which are oriented along a fibril axis would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product. wherein the poly (tetramethyl-p- silphenylenesiloxane) polymer has a crystallinity of at least 70% and modulus in at least one direction of 100 to 1000 MPa.
Regarding Claim 22 Uehara discloses , wherein the expanded poly (tetramethyl-p- silphenylenesiloxane) polymer membrane comprises a matrix tensile strength in at least one direction from about 1 MPa to about 50 MPa (Figure 8).
Regarding Claim 24 Uehara discloses , wherein the expanded poly (tetramethyl-p- silphenylenesiloxane) polymer membrane comprises a poly (tetramethyl-p- silphenylenesiloxane) polymer having a weight average molecular weight from about 350 kDa to 5 MDa (measurements, page-374).
Allowable Subject Matter
Claims 4,10 and 20-21 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.
Regarding Claim 4 , 20 Uehara discloses making a poly (tetramethyl-p-silphenylenesiloxane) polymer article comprising: casting a poly (tetramethyl-p-silphenylenesiloxane) polymer solution on a substrate to form a poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape but did not disclose that wherein the poly (tetramethyl-p- silphenylenesiloxane) polymer cast tape has an asymmetry in pore size from a first side to a second side of the microporous poly (tetramethyl-p-silphenylenesiloxane) polymer cast tape which is deemed novel and unobvious.
Regarding Claim 10 , 21 Uehara discloses making a poly (tetramethyl-p-silphenylenesiloxane) polymer article comprising:casting a poly (tetramethyl-p-silphenylenesiloxane) polymer solutionon a substrate to form a poly (tetramethyl-p-silphenylenesiloxane) polymer cast tapethe expanded poly (tetramethyl-p- silphenylenesiloxane) polymer membrane but did not disclose that polymer membrane has a porosity greater than about 30% which is deemed novel and unobvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBJANI ROY whose telephone number is (571)272-8019. The examiner can normally be reached 9:30-5:30 pm.
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/DEBJANI ROY/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
