DETAILED ACTION
Information Disclosure Statement
The information disclosure statement filed April 27, 2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the reference WO 2017106401 was not provided. That item of the IDS was not considered, however, the other items of information that do comply with all the requirements of 37 CFR 1.97 and 37 CFR 1.98 are considered. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
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 1-7, 10-15, and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (US 2017/0355811).
Regarding claims 1, 2, 6, 7, and 10-14: Bae et al. teaches the compound
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where R2 is
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(para. 28), which is the instant compound of claim 1 where Ar is an arylene, namely
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; Y1 is EW, which is a haloalkyl/CF3; Ra is an alkyl/methyl. In the disclosed structure for R2, n is 1-20, and R is an alkyl group (para. 27). The disclosed R2 structure reads on the
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. In this case Y2 is an alkylene of 1-20 carbon atoms, Z is -NRN1RN2- where the RN1 and RN2 are an alkyl group and Ak and FG are alkylene/alkyl groups, and the claimed x is 1. In the embodiment where the disclosed R groups attached to the nitrogen atom in the R2 group are an alkyl other than methyl, such as ethyl, then Ak is methylene, FG is methyl, and Z is not -CRC2RC3- and not -N(CH3)2-, since if R is ethyl, the Z group would be -N(C2H5)2-. While the disclosed x + y =1, the r is from 100 to 1,000,000 (para. 28), meaning that combining the “r” monomer disclosed with the adjacent monomer, then x + y = 2, which overlaps the limitation that each of m and n is 1.
While not all of the embodiments of Bae et al. read on all of the claimed embodiments, the embodiment described above does read on the claims. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the above embodiment of Bae et al., for example when R is not methyl, and would have been motivated to do so since Bae et al. teaches that R can be any alkyl group, and methyl is only one example of an alkyl group.
Regarding claim 3: Bae et al. teaches more broadly the structure of the polymer as
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(para. 7) where R2 can be
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(para. 24) and n can be 1-20 (para. 24). This overlaps with the claimed structure where Ar, Ew, Ra, m, n and x are defined above as in claim 1, and the “n” of the reference is 13-20. In this case Z is -CH2-, and FG is a substituted alkyl when n is above 13, or a ammonium cation when n is 13. Since there are other alternatives for R and n in the reference, there are embodiments wherein not all Z moieties are -CH2-.
Regarding claim 4: Bae et al. teaches the aromatic group can be
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(para. 20). When this substitution is made for the aromatic component while the moieties EW, Ak, Z, FG, m, n, and x are as defined above in claim 1, this is the claimed compound.
Regarding claim 5: Bae et al. teaches the aromatic group can be
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(para. 20) and R2 can be
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where R is an alkyl group (para. 24).
Regarding claim 15: Bae et al. also teaches FG can be
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(para. 23), which is a bromine substituted C2 alkyl. The salt of a bromine comprises an anion.
Regarding claim 19: Bae et al. teaches a structure (see above) that is free of ether linkages.
Regarding claim 20: Bae et al. teaches a composition comprising the compound (abstract).
Regarding claim 21: Bae et al. teaches the composition comprises a polymer (abstract).
Regarding claim 22: Bae et al. teaches the composition comprises a membrane (abstract).
Regarding claim 23: Bae et al. teaches a stress of at least 30 MPa and/or a strain of at least 40% (fig. 5). Since the reference does not teach exposing to 6M KOH at 120°C for 7 days, this chart shows the stress and strain prior to exposure to 6M KOH at 120°C for 7 days.
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive.
A) Applicant’s argument that the patented claims cited in the double patenting rejections do not render the claims as amended as obvious is not persuasive. The patented claims and the amended claims still overlap in scope, with the analysis of the Z moiety set forth in the rejection above.
B) Applicant’s argument that the polymers in Bae et al. require all of its Z to be -CRC2RC3- is not persuasive. The previously cited embodiment may have had all Z moieties defined in this way. However, the broader teaching of Bae et al. also includes Z as -NRN1RN2- where RN1 and RN2 do not have to be methyl, but can be any alkyl group.
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 1-7, 10-15, and 19-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,024,576. Although the claims at issue are not identical, they are not patentably distinct from each other because the compound of the instant claim 1 reads on the copolymer of claim 1 of the patent. The Ar in the instant reads on Ar1 and Ar2 of the patent. CF3 is the EW and Y1 of the instant. The moiety of R1 to Ra in the patent shown in claim 1 and further embodied in claim 3 reads on the instant Y2-Z-Ak-FG arm, and is also a substituted alkyl, which is how the instant Ra is defined. Therefore, the copolymer of the patent and the compound of the instant are overlapping in scope.
Claims 1-7, 10-15, and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,826,746. Although the claims at issue are not identical, they are not patentably distinct from each other because the polymer of the claims of the patent reads on the compound of the instant claims. Ar from the patent is Ar from the instant, EW from the patent is Ew from the instant, and the Y2-Z-Ak-FG arm of the instant overlaps with the branch after the first Ar group in the polymer of the patent.
Claims 1-7, 10-15, and 19-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,318,770. Although the claims at issue are not identical, they are not patentably distinct from each other because the polymer of claim 1 of the patent reads on the compound of the instant claims. Ar from the patent is Ar from the instant, EW from the patent is Ew from the instant, and the Y2-Z-Ak-FG arm of the instant overlaps with the branch after the first Ar group in the polymer of the patent.
Claims 1-7, 10-15, and 19-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- of U.S. Patent No. 11,621,433. Although the claims at issue are not identical, they are not patentably distinct from each other because the polymer of the patent overlaps with the polymer of the instant claims. The Ar unit in the patent reads are the Ar units in the instant. R1 can be halomethyl, which reads on Y1 and EW of the instant. The R2 moiety of the patent can have the formula II, which reads on the Y2-Z-Ak-FG arm since n can be 2-20 and R3 can overlap with the FG groups of the instant.
Claims 1-3, 11-15 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 14-16 of U.S. Patent No. 11,236,196. Although the claims at issue are not identical, they are not patentably distinct from each other because The polymer of claim 10 of the patent reads on the compound of the instant where Ar in the patent is Ar in the instant, CF3 is EW and Y1 in the instant, and R2 in the patent is the Y2-Z-Ak-FG arm of the instant and Ra of the instant since it is also a substituted alkyl group.
Claims 1-7, 10-15 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-8 and 10-15 of U.S. Patent No. 10,435,504. Although the claims at issue are not identical, they are not patentably distinct from each other because The polymer of claim 10 of the patent reads on the compound of the instant where Ar in the patent is Ar in the instant, CF3 is EW and Y1 in the instant, and R2 in the patent is the Y2-Z-Ak-FG arm of the instant and Ra of the instant since it is also a substituted alkyl group.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
