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 .
Response to Arguments
The rejections under 112(b) are withdrawn in response to the amendments filed 8/26/2026.
Applicant's arguments filed 8/26/2026 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant argues that Nishikawa does not describe a solvent system having a pH greater than 6 as recited in claim 1 because the reference also discloses other potential solvents in addition to DMSO. This is not persuasive. The reference discloses DMSO may be used on its own as the dope solvent, see [0032]-[0033]. The fact that Nishikawa discloses other examples of solvents does not diminish the fact that DMSO is disclosed as a solvent.
The rejections to claims 2-10 and 12-20 are also maintained absent any specific arguments to these rejections.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-9, 12, and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishikawa (EP1298740, see copy of foreign document provided.)
Regarding claim 1, Nishikawa meets the claimed, A process for obtaining a film or film-forming article, said process comprising: a) providing a solvent system comprising at least one molecule bearing a sulfoxide function, said solvent system having a water content less than 1000 ppm by weight and having a pH of greater than or equal to 6; (Nishikawa [0033] describes an organic solvent including DMSO, DMSO has a pH greater than 6, there is no water disclosed in the organic solvent) b) preparing a polymer solution, either by dissolving polymers in said solvent system from step a) or by synthesizing the polymers in said solvent system from step a); (Nishikawa [0032]-[0033] discloses preparing a dope by adding a polyvinylidene fluoride, PVdF, polymer to the organic solvent) c) removing the solvent system from the polymer solution from step b) either by coagulation of the polymer in a coagulation bath, or by evaporation of the solvent to obtain a homogenous flat film, hollow fiber film, or film-forming article, (Nishikawa [0015] describes a coagulation step with the dope and a coagulation bath to form a coated film on a support, [0016] discloses a drying step) with a thickness of less than 1000 micrometers (Nishikawa [0037] describe the formed film is a battery separator which is 10-50µm thick) and a solvent effluent; (Nishikawa [0015] describes a dop/coagulation mixture bath) wherein said coagulation bath comprises a medium that is nonsolvent for said polymers and solvent for said solvent system from step a);(Nishikawa [0016] discloses the bath consists of water, the DMSO is water-soluble as describe in [0033], PVdF is not soluble in water because it coagulates as per [0015]-[0016] and [0035]) wherein the solvent system from step a) is soluble in the medium that is nonsolvent for said polymers when at least 30 g of said solvent system are dissolved in 1000 g of said medium that is nonsolvent for said polymers at 20° C. and at atmospheric pressure;(Nishikawa [0033] discloses DMSO is water-soluble and water is the nonsolvent for the polymers) wherein said polymers are not soluble in said medium that is nonsolvent for said polymers to more than 100 g per 1000 g of nonsolvent at 20° C. and at atmospheric pressure; (Nishikawa [0015]-[0016] discloses that the PVdF is not soluble in water because it is precipitate out) wherein said medium is water; (Nishikawa [0015]-[0016] discloses the coagulation bath consists of water) wherein said polymer solution obtained in step b) contains less than 0.1% of water relative to the total weight of the polymer solution; (Nishikawa [0033] does not disclose any water in the dope solution) wherein said polymer solution obtained in step b) has a pH strictly greater than 6; (Nishikawa [0032]-[0033] describe the dope contains DMSO which has a pH above 6) and wherein the polymer solution comprises from 1% to 50% by weight of polymer(s), relative to the total weight of the polymer solution (Nishikawa [0033] discloses the dope is 5-18 wt% polymer.)
Regarding claim 2, Nishikawa meets the claimed, The process as claimed in claim 1, in which the water content of the solvent system is less than or equal to 900 ppm by weight (Nishikawa [0033] does not disclose any water in the dope.)
Regarding claim 3, Nishikawa meets the claimed, The process of claim 1 as claimed in claim 1 wherein the solvent system has a pH ranging from 6 to 14 (Nishikawa [0032]-[0033] describe the dope contains DMSO which has a pH above 6.)
Regarding claim 4, Nishikawa meets the claimed, The process of claim 1, wherein the solvent system comprises from 5% to 100% by weight of molecules bearing at least one sulfoxide function, relative to the total weight of the solvent system (Nishikawa [0033] discloses the dope contains the polymer and the organic solvent, the polymer being only 5-18% of the total weight of the solvent system meaning the organic solvent is the remaining balance. Other ingredients are optional and the balance disclosed still meets the claimed proportions.)
Regarding claim 5, Nishikawa meets the claimed, The process of claim 4, wherein the molecules bearing at least one sulfoxide function correspond to formula (1): in which: X and Y, which may be identical or different, are chosen, independently of each other, from oxygen, sulfur, SO, SO2, NH and NR″;a and b, which may be identical or different, represent, independently of each other, 0 or 1; n is equal to 1 or 2; R, R′ and R″, which may be identical or different, are chosen, independently of each other, from a linear or branched alkyl radical, containing from 1 to 12 carbon atoms, a linear or branched alkenyl radical, containing from 2 to 12 carbon atoms, and an aryl radical containing from 6 to 10 carbon atoms; R, R′ and R″ possibly being substituted with radicals chosen from alkyl, alkenyl, aryl and halogen, and possibly containing one or more heteroatoms chosen from O, S, N, P and Si; R and R′ also possibly forming, together with the atoms that bear them, a hydrocarbon-based cyclic structure optionally containing one or more heteroatoms chosen from O, S and N, said cyclic structure including in total 5, 6, 7, 8 or 9 ring members (Nishikawa [0033] discloses DMSO which meets the claims when a and b are 0, n is 1, and R and R’ are linear alkyl radicals containing 1 carbon atom.)
Regarding claim 6, Nishikawa meets the claimed, The process of claim 4, wherein the molecules bearing at least one sulfoxide function correspond to formula (la):in which: R and R′, which may be identical or different, are chosen from a linear or branched alkyl radical containing from 1 to 4 carbon atoms, a linear or branched alkenyl radical containing from 1 to 4 carbon atoms, and a phenyl radical; and n is equal to 1 or 2 (Nishikawa [0033] discloses DMSO which meets the claim if R and R’ are linear alkyl radicals containing 1 carbon atom and n is 1.)
Regarding claim 7, Nishikawa meets the claimed, The process of claim 4, wherein the molecules bearing at least one sulfoxide function are dimethyl sulfoxide molecules (Nishikawa [0033] discloses DMSO.)
Regarding claim 8, Nishikawa meets the claimed, The process of claim 1, in which the polymer solution comprises from 5% to 30% by weight of polymers, relative to the total weight of the polymer solution (Nishikawa [0033] discloses the dope is 5-18 wt% polymer.)
Regarding claim 9, Nishikawa meets the claimed, The process of claim 1, wherein the polymers are chosen from polyurethanes, polysulfones, polyvinylidene fluorides, polyether sulfones, polyphenyl sulfones, cellulose acetate, polyamides, polyacrylics, poly-epoxies, polymethacrylates, polycarbonates, silicones, vinyl polymers, polyamide-imides and polyimides (Nishikawa [0033] discloses polyvinylidene fluoride, PVdF.)
Regarding claim 12, Nishikawa meets the claimed, The process of claim 1, wherein the concentration of said water in the coagulation bath is at least 20% by weight (Nishikawa [0015] discloses the coagulation solution consists of water, [0035] discloses at least 30% of water.)
Regarding claim 18, Nishikawa meets the claimed, The process of claim 1, wherein said film or the film-forming article is a flat film, wherein said flat film has a thickness of less than 800 micrometers (Nishikawa [0037] discloses a battery separator of about 10-50 µm thickness, [0021] discloses producing the film via a smoothing jig.)
Regarding claim 19, Nishikawa meets the claimed, The process of claim 1, wherein step b) occurs before step c), and said process forms a flat film (Nishikawa [0015]-[0016] and [0021] disclose making the dope prior to the coagulation step and disclose a smoothing jig to make the film.)
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over modified Nishikawa.
Regarding claim 10, the cited portion of Nishikawa does not disclose the temperature the dope is mixed at and does not meet the claimed, The process of claim 1, wherein the polymer solution is obtained by dissolving the polymers in the solvent system from step a) at a temperature ranging from 10° C to 120°C, however one of the embodiments in Example 1 [0044] describe the prepared dope temperature is 30°C.
The courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to combine the step of mixing the polymer and the DMSO as described in Nishikawa with the step of preparing the dope at 30°C as described in Nishikawa Example 1 because it is a known method of producing a dope solution for film formation, see Example 1. [0044].
Claims 13-17 are under 35 U.S.C. 103 as being unpatentable over Doi (JP2011101883, see English translation provided with the IDS filed 11/20/2025.)
Regarding claim 13, Nishikawa does not describe further treatment of the coagulation/DMSO mixture and does not meet the claimed, The process of claim 1, further comprising a step d) of treating the solvent effluent obtained on conclusion of step c).
Analogous in the field of DMSO related processes, Doi meets the claimed, The process of claim 1, further comprising a step d) of treating the solvent effluent obtained on conclusion of step c) (Doi [0010] describes treating DMSO-wastewater streams.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of making a film with DMSO of Nishikawa with the method of treating the waste DMSO-containing effluent described in Doi in order to reduce waste and recover DMSO material to lower costs, see Doi [0010]-[0011].
Regarding claim 14, Doi further meets the claimed, The process of claim 13, wherein the treatment step d) comprises a preliminary step d1) of separating the solvent effluent to recover the molecules bearing at least one sulfoxide function, and aqueous effluent of the solvent effluent (Doi [0033]-[0034] describes sing reverse osmosis to separate a concentrated DMSO stream and an aqueous wastewater stream.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the DMSO waste treatment process of modified Nishikawa with the separation steps in Doi in order to obtain a concentrated DMSO stream for further recycling, see Doi [0042].
Regarding claim 15, Doi further meets the claimed, The process of claim 14, wherein the treatment step d) comprises a chemical, biological and/or thermal oxidation, which is performed either directly on the solvent effluents derived from step c) or on the aqueous effluent derived from the preliminary step d1) (Doi [0036]-[0037] and [0040] describe biological decomposition and oxidation.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the DMSO treatment steps of modified Nishikawa with the oxidation steps of Doi in order to further purify the water product into a useable water stream, see Doi [0040]-[0041].
Regarding claim 16, Doi does not explicitly meet the claimed, The process of claim 13, wherein the treatment step d) is performed at the site of implementation of steps a) to c) of the process of claim 1, however, Doi does disclose performing the wastewater treatment process claimed. Since performing the wastewater treatment either on-site or off-site are the only two possible location options of the treatment process, it would have been obvious to a person of ordinary skill in the art to simply select the location of the treatment process from one of the only two options and preform the process at the site with a reasonable expectation of success, see MPEP §2143(I)(E).
Regarding claim 17, Doi meets the claimed, The process of claim 13, wherein the treatment step d) is performed at a site different from the site of implementation of steps a) to c) of the process of claim 1 (Doi [0031] discloses the waste stream of material came from a factory and [0025] describes one stream of water effluent is supplied to another water plant.)
Since performing the wastewater treatment either on-site or off-site are the only two possible location options of the treatment process, it would have been obvious to a person of ordinary skill in the art to simply select the location of the treatment process from one of the only two options and preform the process off site with a reasonable expectation of success, see MPEP §2143(I)(E).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa modified by Jiyou (JPS54151574A, see English translation provided.)
Regarding claim 20, Nishikawa does not disclose performing the steps b and c simultaneously or hollow fibers and does not meet the claimed, The process of claim 1, wherein step b) and step c) occur simultaneously, and said process forms a hollow-fiber film.
Analogous in the field of film formation, Jiyou also discloses coagulating a polymer mixed with DMSO to form an article and meets the claimed, The process of claim 1, wherein step b) and step c) occur simultaneously, and said process forms a hollow-fiber film (Jiyou page 7and page 9 describe combining a polymer with a core liquid DMSO solution as the two components are being discharged into a water coagulation bath. This process produces hollow fibers, see page 10.)
It would have been obvious to a person of ordinary skill in the art before the filing date to modify the process disclosed in Nishikawa such that the mixing of the solvent and the polymer occur while the solution is being discharged into the coagulation bath in order to allow the core liquid to produce fibers that are homogenous and have a circular cross section, see Jiyou page 10.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/V.B./Examiner, Art Unit 1744
/John J. DeRusso/Primary Examiner, Art Unit 1744
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