Appeal 2007-1368
Application 10/601,602
of ordinary skill in the art can make the claimed membranes. However, as
set forth by the Examiner, Appellants' original Specification fails to provide
any guidance with respect to making separation membranes within the scope
of claims 8-17. We do not accept Appellants' argument that the claimed
membrane "is known and available to those skilled in the art as shown in the
Affidavit under Rule 1.132, submitted after final rejection" (page 28 of
principal Br., first para.). While the declarant, one of the present inventors,
makes the bald statement that "[s]ince the polymer membrane is
commercially available, one skilled in this art could make the assembly of
the invention without a disclosure by the applicants of how to make the
polymer membrane used in the assembly" (page 2 of Declaration, third
para.), the Declaration advances no evidentiary support for the statement.
Indeed, as explained by the Examiner, the Declaration provides evidence
that prior art membranes must be modified in some way to qualify as
membranes within the scope of claims 8-17. As emphasized by the
Examiner, the Declaration expressly states that "modification of this [prior
art] membrane base to provide the required low alkali metal ion transport
efficiency permselective polymer membrane component of the claimed
assembly is necessary to provide the desired properties" (sentence bridging
pages 2 and 3 of Decl.). The Declaration goes on to state that "Nafion 551
disclosed in the applicants' patent application, Example 10, as useful, is an
example of a perfluorosulfonic acid polymer further modified to have the
desired low alkali metal ion transport efficiency properties by the addition of
Teflon fibers to a base perfluorosulfonic acid polymer so as to produce the
useful membrane component of the applicants' claimed assembly" (page 4 of
4
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