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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 41-51 and 54-60 in the reply filed on 07/06/2026 is acknowledged.
Claim Objections
Claims 45 and 58 is objected to because of the following informalities:
Regarding claim 45, line 3, there appears to be an extra space in the phrase “(PBS), polyisoprene,”.
Regarding claim 58, the term “ore” is likely intended to be “or”.
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.
Claim 43 is 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.
Regarding claim 43, the addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
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 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.
Claims 41-42 and 44-51, 54-55, and 57 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz et al. (US20060105158A1; cited in IDS dated 03/31/2025) in view of Janchen et al. (Solar Energy 2004, 76, 339–344; cited in IDS dated 03/31/2025).
Regarding claim 41, Fritz teaches an adsorbing material comprised of porous functional solids incorporated into a polymeric matrix (Title; Abstract) which includes forming a compound comprising a functional solid and at least one organic polymer and at least one rheological additive, where the functional porous solid includes zeolites, preferably type-A, X, and Y zeolites, which have been at least partly substituted with an alkaline or alkaline earth metal ([0018]). Alkali and alkaline earth metals are groups I and II of the periodic table, respectively, and include sodium, lithium, magnesium, and calcium. Fritz teaches the adsorbing material or the shaped article exhibit excellent water adsorption kinetics ([0031]-[0032]).
Fritz teaches at least one polymer matrix is present, where the porous functional solid is incorporated into a polymer matrix ([0021]). Fritz teaches the function of the organic polymer is that of a host material (i.e. polymer matrix) which encapsulates the porous functional solid and provides a processible blend which can be further shaped into a broad variety of articles ([0040]).
The claims require the crude zeolite is a “sodium zeolite,” to which Fritz is silent regarding the crude zeolite being a sodium zeolite.
Janchen teaches a systematic study where zeolites NaA, NaX, and NaY, comprising sodium ions, are modified with hydroscopic salts such as MgCl2 and CaCl2 (Pg. 340, Experimental Section; Title; Abstract).
Advantageously, exchanging monovalent sodium ions by one equivalent of bivalent magnesium ions compensates charge in the zeolite while enlarging the pore volume of the zeolite, allowing more space for the adsorption of water into the pores (Pg. 341).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform ion-exchange on Na-containing zeolites with Mg and Li in the composition of Fritz in order to provide the zeolite with increased pore volume and increased space for adsorption of water into the pores as taught by Janchen.
The claims further require “wherein the polymer composition has a water adsorption capacity per gram of zeolite that is greater than a reference crude zeolite,” to which Fritz is silent.
Janchen teaches a systematic study where zeolites NaA, NaX, and NaY, comprising sodium ions, are modified with hydroscopic salts such as MgCl2 and CaCl2 (Pg. 340, Experimental Section; Title; Abstract). Janchen teaches that a linear increase in water absorption occurs with the degree of Mg ion exchanged into the zeolite, with similar findings for Li ions (Pg. 341, 3.1; Fig. 2; Table 1). Janchen therefore teaches that Mg and Li exchange is a result-effective variable for water adsorption, where greater ion exchange into type-A, X, and Y zeolites leads to increased water adsorption of the zeolite after exchange. This meets the instant limitation as the crude zeolite (i.e. lacking cation exchange) would have lower water adsorption than an ion-exchanged zeolite, where the ions being exchanged are sodium ions for magnesium or lithium ions.
Advantageously, exchanging monovalent sodium ions by one equivalent of bivalent magnesium ions compensates charge in the zeolite while enlarging the pore volume of the zeolite, allowing more space for the adsorption of water into the pores (Pg. 341).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform ion-exchange with Mg and Li in the composition of Fritz in order to provide the zeolite with increased pore volume and increased space for adsorption of water into the pores as taught by Janchen.
Regarding claim 42, Fritz in view of Janchen teach the composition of claim 41.
Fritz further teaches the aluminum silicate zeolites are preferably type-A, X, and Y zeolites, which have been at least partly substituted with an alkaline or alkaline earth metal ([0018]). Alkali and alkaline earth metals are groups I and II of the periodic table, respectively, and include sodium, lithium, magnesium, and calcium.
Regarding claim 44, Fritz in view of Janchen teach the composition of claim 41.
Fritz further teaches the aluminum silicate zeolites are preferably type-A, X, and Y zeolites, which have been at least partly substituted with an alkali or alkaline earth metal ([0018]). Alkali and alkaline earth metals are groups I and II of the periodic table, respectively, and include sodium, lithium, magnesium, and calcium.
The claim further requires “the water adsorption capacity of the polymer composition is from at least 1 % to 33 % greater than the water adsorption capacity of the crude sodium zeolite,” to which Fritz is silent.
Janchen teaches a systematic study where zeolites NaA, NaX, and NaY, comprising sodium ions, are modified with hydroscopic salts such as MgCl2 and CaCl2 (Pg. 340, Experimental Section; Title; Abstract). Janchen teaches that a linear increase in water absorption occurs with the degree of Mg ion exchanged into the zeolite, with similar findings for Li ions (Pg. 341, 3.1; Fig. 2; Table 1). Janchen therefore teaches that Mg and Li exchange is a result effective variable for water adsorption, where greater ion exchange into type-A, X, and Y zeolites leads to increased water adsorption of the zeolite after exchange. Janchen teaches examples, where for Mg ion-exchanged NaA zeolite, the adsorbed water (g/g) is about 0.29 prior to ion-exchange and 0.38 after about 70% ion-exchange (Pg. 340; Fig. 2), which is about 31% greater following ion-exchange. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Janchen (increase of water adsorption by 31% after ion exchange) overlaps with the claimed range (from at least 1 % to 33 %). Therefore, the range in Janchen renders obvious the claimed range.
Advantageously, exchanging monovalent sodium ions by one equivalent of bivalent magnesium ions compensates charge in the zeolite while enlarging the pore volume of the zeolite, allowing more space for the adsorption of water into the pores (Pg. 341).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to performing ion-exchange with Mg and Li which increases the water adsorption of the zeolite by 31% in the composition of Fritz in order to provide the zeolite with increased pore volume and increased space for adsorption of water into the pores as taught by Janchen.
Regarding claim 45, Fritz in view of Janchen teach the composition of claim 41. Fritz further teaches the organic polymer is preferably selected from at least one of polyolefin (e.g. polyethylene or polypropylene), polystyrene, polyamide, polyamide imide, polyester, polyester amide, polycarbonate, ethylene-methacrylate copolymer, polyacrylic ester, poly acrylic acid, polyacetal, polyether sulphone, polyether ketone, polysulphone, polyethylene terephthalate, polybutylene, terephthalate, liquid crystal polymer (LCP) and any combination thereof ([0021]).
Regarding claims 46-47, Fritz in view of Janchen teach the composition of claim 41.
Fritz further teaches a rheological additive is present which serves as a pore forming agent ([0041]). Fritz teaches the rheological additive is selected from natural waxes (e.g. beeswax, paraffin waxes), semi synthetic waxes (e.g. montan waxes), synthetic waxes (e.g. polyolefin waxes, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol, polyolefin glycols, amide wax), modified, oxidized or microcrystalline forms of the aforementioned waxes and any combination of these, where among the polar waxy components, polyethylene glycols, oxidized polyolefin waxes, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol and any combination of these are preferred ([0041]). Fritz further teaches the rheological additive is present from 0.5 to 25 wt.% of the composition ([0045]-[0048]). Taken together, the presence of pore forming agents comprising at least one porous functional solid incorporated in a polymer matrix, where the polymer matrix is incorporated into the pores of the porous material ([0016]-[0018]). The presence of pores in Fritz is synonymous with the term “channels” in the instant specification, see at least ([0010]-[0014]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Fritz (is present from 0.5 to 25 wt.% of the composition) overlaps with the claimed range (range from 2% to 15% by weight with respect to the total weight of the polymer composition). Therefore, the range in Fritz renders obvious the claimed range.
The term “channeling agent” as defined in the instant specification is a material immiscible with the base polymer and has an affinity to transport a gas phase substance, while also being capable of forming channels through the entrained polymer ([0038). In this regard, the rheological material of Fritz serves the same purpose as the channeling agent of the instant invention and have overlapping chemical identities. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Further, Fritz teaches an overlapping amount of the rheological additive being present as the channeling agent of the instant claims, as well as teaching identical chemicals to the channeling agent of the instant claims (i.e. polyethylene glycols, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol). Taken together, the rheological additive of Fritz meets the limitation “channeling agent”.
Fritz teaches at least one polymer matrix is present, where the porous functional solid is incorporated into a polymer matrix ([0021]). Fritz teaches the function of the organic polymer is that of a host material (i.e. polymer matrix) which encapsulates the porous functional solid and provides a processible blend which can be further shaped into a broad variety of articles ([0040]). A porous functional solid incorporated into a polymer matrix meets the limitation “wherein the zeolite is entrained in the polymer compositions,” as outlined by the definition of moisture adsorbing desiccant entrained polymers in at least [0015] of the instant specification.
Regarding claim 48, Fritz in view of Janchen teach the composition of claim 41 and 46.
Fritz teaches the rheological additive is selected from natural waxes (e.g. beeswax, paraffin waxes), semi synthetic waxes (e.g. montan waxes), synthetic waxes (e.g. polyolefin waxes, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol, polyolefin glycols, amide wax), modified, oxidized or microcrystalline forms of the aforementioned waxes and any combination of these, where among the polar waxy components, polyethylene glycols, oxidized polyolefin waxes, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol and any combination of these are preferred ([0041]).
Regarding claim 49, Fritz in view of Janchen teach the composition of claim 41 and 46. Fritz teaches the channeling agent as required by claim 46. The term “channeling agent” as defined in the instant specification is a material immiscible with the base polymer and has an affinity to transport a gas phase substance, while also being capable of forming channels through the entrained polymer ([0038). In this regard, the rheological material of Fritz serves the same purpose as the channeling agent of the instant invention and have overlapping chemical identities. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Further, Fritz teaches an overlapping amount of the rheological additive being present as the channeling agent of the instant claims, as well as teaching identical chemicals to the channeling agent of the instant claims (i.e. polyethylene glycols, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol). Taken together, the rheological additive of Fritz meets the limitation “the channeling agent comprises a material that is immiscible with the base polymer and effective to transport a gas phase substances at a faster rate than a base polymer.”
Regarding claim 50, Fritz in view of Janchen teach the composition of claims 41 and 49.
Fritz further teaches at least one polymer matrix is present, where the porous functional solid is incorporated into a polymer matrix ([0021]). Fritz teaches the function of the organic polymer is that of a host material (i.e. polymer matrix) which encapsulates the porous functional solid and provides a processible blend which can be further shaped into a broad variety of articles ([0040]). A porous functional solid incorporated into a polymer matrix meets the limitation “wherein the base polymer and channeling agent form an entrained polymer composition,” as outlined by the definition of moisture adsorbing desiccant entrained polymers in at least [0015] of the instant specification.
Regarding claim 51, Fritz in view of Janchen teach the composition of claim 41. Fritz further teaches the porous functional solid may be added to the polymer component in powder form ([0053]).
Regarding claim 54, Fritz in view of Janchen teach the composition of claim 41.
The claim is directed to process steps for making the polymer composition of claim 41. These are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Fritz in view of Janchen teach the product of claim 41, as outlined above, and accordingly meet the product limitations. See MPEP 2113.
In the case where the process is critical to structural aspects of the product, the process is made obvious by Fritz in view of Janchen.
Fritz teaches a method to prepare an adsorbing material comprised of porous functional solids incorporated into a polymeric matrix (Title; Abstract) which includes forming a compound comprising a functional solid and at least one organic polymer and at least one rheological additive, where the functional porous solid includes zeolites, preferably type-A, X, and Y zeolites, which have been at least partly substituted with an alkaline or alkaline earth metal ([0018]). Alkali and alkaline earth metals are groups I and II of the periodic table, respectively, and include sodium, lithium, magnesium, and calcium. Fritz teaches the adsorbing material or the shaped article exhibit excellent water adsorption kinetics ([0031]-[0032]). Fritz teaches the aluminum silicate zeolites are preferably type-A, X, and Y zeolites, which can be used in the pure state or the doped stated ([0018]). Fritz further teaches the zeolite used in an example is provided by commercial suppliers ([0073]). Accordingly, providing a pure type-A, X, or Y zeolite obtained from a commercial supplier is equivalent to providing a “crude aluminosilicate zeolite” prior to performing the cation exchange step (b), and meets this limitation.
Fritz teaches at least one polymer matrix is present, where the porous functional solid is incorporated into a polymer matrix ([0021]). Fritz teaches the function of the organic polymer is that of a host material (i.e. polymer matrix) which encapsulates the porous functional solid and provides a processible blend which can be further shaped into a broad variety of articles ([0040]). A porous functional solid incorporated into a polymer matrix meets the limitation “wherein the zeolite is entrained in the polymer compositions,” as outlined by the definition of moisture adsorbing desiccant entrained polymers in at least [0015] of the instant specification.
The claim further require “drying the treated cation exchanged zeolite to provide a dried cation exchanged zeolite.” Fritz teaches the zeolite/polymer composite is used for drying applications ([0002]), acting by removing water ([0063]). Accordingly drying the zeolite would be obvious to a skilled artisan in order to allow the zeolite material to adsorb water.
Further, Janchen explicitly teaches this aspect, where NaA, NaX, and NaY zeolites are exchanged with Li, Ca, Mg, Zn, Co, Al, and Fe and are calcined (i.e. high temperature heating) in high vacuum prior to being used in water adsorption experiments (Pg. 340, 2. Experimental section and materials; Pg. 341, Fig. 2). Drying zeolites is extremely common in the art. Advantageously, calcined ion-exchanged zeolites display increased water adsorption capacities and integral heat of sorption values compared with the non-exchanged counterparts (Pg. 343-344, Conclusions; Table 1).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to calcine ion-exchanged zeolites prior to performing water adsorption in the process of Fritz in order to increase the water adsorption capacity and integral heat of sorption values as taught by Janchen.
The claims further require “wherein the dried cation exchanged zeolite has a water adsorption capacity that is greater than the water adsorption capacity of the crude zeolite before cation exchange treatment,” and “a water adsorption capacity per gram of zeolite that is greater than the crude zeolite,” to which Fritz is silent.
However, Janchen teaches a systematic study where zeolites NaA, NaX, and NaY, comprising sodium ions, are modified with hydroscopic salts such as MgCl2 and CaCl2 (Pg. 340, Experimental Section; Title; Abstract). Janchen teaches that a linear increase in water absorption occurs with the degree of Mg ion exchanged into the zeolite, with similar findings for Li ions (Pg. 341, 3.1; Fig. 2; Table 1). Janchen therefore teaches that Mg and Li exchange is a result-effective variable for water adsorption, where greater ion exchange into type-A, X, and Y zeolites leads to increased water adsorption of the zeolite after exchange. This meets the instant limitation as the crude zeolite (i.e. lacking cation exchange) would have lower water adsorption than an ion-exchanged zeolite, where the ions being exchanged are sodium ions for magnesium or lithium ions.
Advantageously, exchanging monovalent sodium ions by one equivalent of bivalent magnesium ions compensates charge in the zeolite while enlarging the pore volume of the zeolite, allowing more space for the adsorption of water into the pores (Pg. 341).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform ion-exchange with Mg and Li in the process of Fritz in order to provide the zeolite with increased pore volume and increased space for adsorption of water into the pores as taught by Janchen.
Regarding claim 55, Fritz in view of Janchen teach the composition of claim 41. Fritz further teaches the method to prepare the adsorbing material comprised of porous functional solids incorporated into a polymeric matrix (Title; Abstract) includes forming a compound comprising a functional solid and at least one organic polymer and at least one rheological additive, where the functional porous solid includes zeolites, preferably type-A, X, and Y zeolites, which have been at least partly substituted with an alkaline or alkaline earth metal ([0018]). Alkali and alkaline earth metals are groups I and II of the periodic table, respectively, and include sodium, lithium, magnesium, and calcium
The claim further requires the solution is “MgCl2 or LiCl”. To which Fritz does not specify the reagent for incorporating the alkali and alkaline earth metals into the zeolite.
Janchen teaches a systematic study where zeolites NaA, NaX, and NaY, comprising sodium ions, are modified with hydroscopic salts such as MgCl2 and CaCl2 (Pg. 340, Experimental Section; Title; Abstract).
Advantageously, exchanging monovalent sodium ions by one equivalent of bivalent magnesium ions compensates charge in the zeolite while enlarging the pore volume of the zeolite, allowing more space for the adsorption of water into the pores (Pg. 341).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform ion-exchange on Na-containing zeolites with Mg and Li in the process of Fritz in order to provide the zeolite with increased pore volume and increased space for adsorption of water into the pores as taught by Janchen.
Regarding claim 57, Fritz in view of Janchen teach the composition of claim 41.
Fritz teaches at least one polymer matrix is present, where the porous functional solid is incorporated into a polymer matrix ([0021]). Fritz teaches the function of the organic polymer is that of a host material (i.e. polymer matrix) which encapsulates the porous functional solid and provides a processible blend which can be further shaped into a broad variety of articles ([0040]). A porous functional solid incorporated into a polymer matrix meets the limitation “wherein the zeolite is entrained in the polymer compositions,” as outlined by the definition of moisture adsorbing desiccant entrained polymers in at least [0015] of the instant specification.
Fritz further teaches a rheological additive is present which serves as a pore forming agent ([0041]). Fritz teaches the rheological additive is selected from natural waxes (e.g. beeswax, paraffin waxes), semi synthetic waxes (e.g. montan waxes), synthetic waxes (e.g. polyolefin waxes, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol, polyolefin glycols, amide wax), modified, oxidized or microcrystalline forms of the aforementioned waxes and any combination of these, where among the polar waxy components, polyethylene glycols, oxidized polyolefin waxes, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol and any combination of these are preferred ([0041]). Fritz further teaches the rheological additive is present from 0.5 to 25 wt.% of the composition ([0045]-[0048]). Taken together, the presence of pore forming agents comprising at least one porous functional solid incorporated in a polymer matrix, where the polymer matrix is incorporated into the pores of the porous material ([0016]-[0018]). The presence of pores in Fritz is synonymous with the term “channels” in the instant specification, see at least ([0010]-[0014]).
The term “channeling agent” as defined in the instant specification is a material immiscible with the base polymer and has an affinity to transport a gas phase substance, while also being capable of forming channels through the entrained polymer ([0038). In this regard, the rheological material of Fritz serves the same purpose as the channeling agent of the instant invention and have overlapping chemical identities. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Further, Fritz teaches an overlapping amount of the rheological additive being present as the channeling agent of the instant claims, as well as teaching identical chemicals to the channeling agent of the instant claims (i.e. polyethylene glycols, ethylene-vinyl acetate copolymer, ethylene-vinyl alcohol). Taken together, the rheological additive of Fritz meets the limitation “channeling agent” as required by the claim. Further, Fritz teaching overlapping rheological additives as the instant claims would also require the additives of Fritz to have “an affinity” to transport a gas phase substances at a faster rate than a base polymer as well as have “a water vapor transmission rate of at least two times that of the base polymer.”
The claims require the crude zeolite is a LTA or FAU “sodium zeolite,” to which Fritz is silent regarding the crude zeolite being a sodium zeolite.
Janchen teaches a systematic study where zeolites NaA, NaX, and NaY, comprising sodium ions, are modified with hydroscopic salts such as MgCl2 and CaCl2 (Pg. 340, Experimental Section; Title; Abstract).
Advantageously, exchanging monovalent sodium ions by one equivalent of bivalent magnesium ions compensates charge in the zeolite while enlarging the pore volume of the zeolite, allowing more space for the adsorption of water into the pores (Pg. 341).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform ion-exchange on Na-containing zeolites with Mg and Li in the process of Fritz in order to provide the zeolite with increased pore volume and increased space for adsorption of water into the pores as taught by Janchen.
The claims further require “drying the treated cation exchanged zeolite to provide a dried cation exchanged zeolite.” Fritz teaches the zeolite/polymer composite is used for drying applications ([0002]), acting by removing water ([0063]). Accordingly drying the zeolite would be obvious to a skilled artisan in order to allow the zeolite material to adsorb water.
Further, Janchen explicitly teaches this aspect, where NaA, NaX, and NaY zeolites are exchanged with Li, Ca, Mg, Zn, Co, Al, and Fe and are calcined (i.e. high temperature heating) in high vacuum prior to being used in water adsorption experiments (Pg. 340, 2. Experimental section and materials; Pg. 341, Fig. 2). Drying zeolites is extremely common in the art. Advantageously, calcined ion-exchanged zeolites display increased water adsorption capacities and integral heat of sorption values compared with the non-exchanged counterparts (Pg. 343-344, Conclusions; Table 1).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to calcine ion-exchanged zeolites prior to performing water adsorption in the process of Fritz in order to increase the water adsorption capacity and integral heat of sorption values as taught by Janchen.
The claims further require “wherein the dried cation exchanged zeolite has a water adsorption capacity that is greater than the water adsorption capacity of the crude zeolite before cation exchange treatment,” and “a water adsorption capacity per gram of zeolite that is greater than the crude zeolite,” to which Fritz is silent.
However, Janchen teaches a systematic study where zeolites NaA, NaX, and NaY, comprising sodium ions, are modified with hydroscopic salts such as MgCl2 and CaCl2 (Pg. 340, Experimental Section; Title; Abstract). Janchen teaches that a linear increase in water absorption occurs with the degree of Mg ion exchanged into the zeolite, with similar findings for Li ions (Pg. 341, 3.1; Fig. 2; Table 1). Janchen therefore teaches that Mg and Li exchange is a result-effective variable for water adsorption, where greater ion exchange into type-A, X, and Y zeolites leads to increased water adsorption of the zeolite after exchange. This meets the instant limitation as the crude zeolite (i.e. lacking cation exchange) would have lower water adsorption than an ion-exchanged zeolite, where the ions being exchanged are sodium ions for magnesium or lithium ions.
Advantageously, exchanging monovalent sodium ions by one equivalent of bivalent magnesium ions compensates charge in the zeolite while enlarging the pore volume of the zeolite, allowing more space for the adsorption of water into the pores (Pg. 341).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform ion-exchange with Mg and Li in the process of Fritz in order to provide the zeolite with increased pore volume and increased space for adsorption of water into the pores as taught by Janchen.
Claims 43 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz et al. (US20060105158A1; cited in IDS dated 03/31/2025) in view of Janchen et al. (Solar Energy 2004, 76, 339–344; cited in IDS dated 03/31/2025), with evidentiary support provided by Drobek et al. (Encyclopedia of Membranes, 31 August 2016; cited in IDS dated 03/31/2025) and applied to claim 43.
Regarding claim 43, Fritz in view of Janchen teach the composition of claim 41. Fritz teaches the aluminum silicate zeolites are preferably type-A, X, and Y zeolites, which can be used in the pure state or the doped stated ([0018]). Fritz further teaches the zeolite used in an example is provided by commercial suppliers ([0073]). type-A zeolites are synonymous with Linde Type A (LTA) zeolites, as evidenced by Drobek (Pg. 2055), which meets the limitation “LTA-type.” Further, X-type and Y-type zeolites are both synonymous with FAU-type zeolites, where the difference between the two is the amount of silica in the aluminosilicate, as evidenced by Drobek (Pg. 2059). Thus, Fritz teaches the zeolite is a LTA or FAU topology zeolite.
Claims 56 and 58-60 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz et al. (US20060105158A1; cited in IDS dated 03/31/2025) in view of Janchen et al. (Solar Energy 2004, 76, 339–344; cited in IDS dated 03/31/2025) and further in view of Franklin et al. (J. Chem. Soc., Faraday Trans. I, 1988, 84, 8, 2755-2770; cited in IDS dated 03/31/2025), with evidentiary support provided by Drobek et al. (Encyclopedia of Membranes, 31 August 2016; cited in IDS dated 03/31/2025) and applied to claim 43.
Regarding claim 56, Fritz in view of Janchen teach the composition of claim 41, 54, and 55.
The claim is directed to the concentration process steps for making the polymer composition of claim 41. These are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Fritz in view of Janchen teach the product of claim 41, as outlined above, and accordingly meet the product limitations. See MPEP 2113.
In the case where the process steps claimed result in structural features in the product, Fritz and Janchen are silent regarding the limitation “the crude zeolite and the MgCl2 or LiCl solution are in a ratio from 0.5 g/20 mL to 2 g/20 mL,”.
Franklin teaches a process for exchanging magnesium into sodium zeolites of X and Y-type where 0.2 g aliquots of zeolite were contacted with magnesium chloride solutions have a total normality of 0.1 equiv. dm-3, where the normality of the solution is the valency of the ion (i.e. two for Mg) multiplied by the molarity (mol dm-3) in solution (Pg. 2756-2757). Franklin teaches one or two continual treatments of the zeolite with magnesium chloride provides 70% magnesium ion exchange, where further soaking allows the maximally exchanged forms (Pg. 2756). Franklin further teaches Mg/Na isotherms which are highly sigmodal and show a strong preferences for magnesium within the zeolite at low magnesium loadings (Pg. 2757-2761; Fig. 1-4). Franklin teaches a skilled artisan that magnesium chloride solutions exchange with sodium in NaX and NaY zeolites provide magnesium incorporation ranging from 0 to at least 70% in the Mg-NaX and Mg-NaY exchanged zeolites. A skilled artisan could readily optimize and adjust the zeolite to ion-exchange solution ratio to arrive at an ion-exchanged zeolite with the desired concentration ratio of crude zeolite to MgCl2. See MPEP 2144.05.
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to soak NaX and NaY type zeolites with magnesium chloride solutions in the process of Fritz in order to provide maximally exchanged Mg-zeolites, of from 0 to at least 70% as taught by Franklin.
Regarding claims 58-60, Fritz in view of Janchen teach the composition of claim 41 and 54.
The recitations “wherein the process comprises repeating step (b) one or more times,” “wherein the process comprises repeating step (c) one or more times,” and ““wherein the process comprises repeating each of step (b) and step (c) one or more times,” are process limitations. These are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Fritz in view of Janchen teach the product of claim 41, as outlined above, and accordingly meet the product limitations. See MPEP 2113.
In the case where the repeated steps provide structural features, Fritz teaches the aluminum silicate zeolites are preferably type-A, X, and Y zeolites, which have been at least partly substituted with an alkaline or alkaline earth metal ([0018]). Fritz teaches the solid components are dried ([[053]; [0060]; [0075]). Fritz is silent regarding performing the ion-exchange process, which comprises contacting and drying, multiple times. However, repetition of a batchwise process, when the batchwise process is taught, is not patentable in the absence of showings of criticality. See MPEP 2144.05.
Additionally, Franklin teaches that one or two continual treatments of the zeolite with magnesium chloride provides 70% magnesium ion exchange, where further soaking allows the maximally exchanged forms (Pg. 2756). Advantageously, performing additional ion-exchange steps allows for greater amount of ions to be exchanged into the zeolite, as taught by Fig. 1-4 and Pg. 2756-2757.
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to soak NaX and NaY type zeolites with magnesium chloride solutions one or two continual times in the process of Fritz in order to allow for greater amount of magnesium ions to be exchanged into the zeolite as taught by Franklin.
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
Claims 41-48 and 54-60 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 25-28, 32-35, and 41-43 of copending Application No. 17594074 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each contain overlapping and identical claim terminology.
Further, the claims of the instant application use the language “comprising”, broadening the scope of the claims such that the claims of the application fully encompass the limitations of the patent, such that there would be an unjust extension of the right to exclude.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Klein et al. (US20140287174A1): Klein teaches an agent for the formation of channels in an entrained polymer comprising an active agent (Abstract; Fig. 1).
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
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