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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/31/26 has been entered.
Election/Restrictions
Claims 9-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/25/25.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 36 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support in the specification for a surface charge that is opposite from bulk fixed charges of the cross-linked ion-transferring polymeric layer.
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 31 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. Claim 31 is vague and indefinite for a) lacking antecedent basis for “the positively charged functionalizing layer and b) improper Markush group using the word “comprises”.
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.
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) 1-8, 31-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011025867 to Lin in view of US 5389449 to Afeyan.
Claims 1-4, 6-8, 31:
Lin teaches a method for manufacturing an ion exchange membrane that forms a cross-linked ion-transferring polymeric layer on a surface of a polymeric microporous substrate. The process includes the polymeric microporous substrate (pg. 9) coated with a solution of charged monomer (i.e., iongenic monomer), multifunctional monomer, and polymerization initiator and polymerized/crosslinked by heat or UV (pg. 13).
Lin does not teach adsorbing a further chlorosulfonated methacrylate group to this cross-lined ion-transferring polymeric layer or the subsequent aminating and functionalization.
However, Afeyan teaches the surface modification of ion exchange membranes (abstract). The process applies a halosulfonating agent onto the substrate (4:61-65), such as a chlorosulfonating agent (4:66-68), aminating the chlorosulfonated surface by applying PEI (5:50-63), and functionalizing the amine groups in the PEI (i.e., quaternized; positively charged) (6:10-13).
Afeyan does not teach the chlorosulfonating agent includes a methacrylate group, although is open to any agent that can react with various substrate to produce chlorosulfone groups on the substrate surface (5:42-48).
Turning back to Lin, the main monomer used by Lin is 2-SEM. By comparison, the claimed chlorosulfonated methacrylate compound is 2-methacryloyloxy ethylsulfonyl.
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314
548
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334
406
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These compositions are the same except for the substitution of and -OH group for a -Cl group.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Lin followed by the method of Afeyan to produce a functionalized ion exchange membrane. It further would have been obvious to use the chlorinated 2-SEM as the chlorosulfonating agent in order to maintain compositional consistency across the membrane structure, better incorporate it into the cross-linked ion-transferring polymeric layer, and avoids the problem of forming undesirable sulfonic acid groups (5:11-32).
Claim 5:
Afeyan teaches PEI with a MW from 600-1000000 Da (5:59).
Claims 32-33:
As these are properties of the resulting membrane, they are inherent as stemming from an identical method of manufacture.
Claims 34-35:
Membrane is 55-155 microns thick (pg. 12).
Claim 36:
Surface charge and bulk charge are different (pg. 1).
Response to Arguments
Applicant's arguments filed 3/31/26 have been fully considered but they are not persuasive.
Afeyan teaches aminating with PEI. This is going to result in “a surface intermediate layer comprising a chemically immobilized amine containing group”. Thereafter, the amine groups are quaternized or derivatized which is “reacting the surface intermediate layer with a charged functionalizing layer” in the context of this invention. For example, functionalizing to form the charged functionalizing layer includes binding a charged functionalizing group to the chemically immobilized amine layer (Applicant’s spec., pg. 22 and 34). This interpretation of functionalization is precisely what Afeyan teaches.
Regarding claim 36, this claim appears to be relying on support from [0057] of the PGPUB. However, this subject matter is also taught by Lin, pg. 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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