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 and Species I, claims 1-7, 10-15 and 19-23 in the reply filed on August 4, 2025 is acknowledged.
Claims 8, 9, 16-18, and 24-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 4, 2025.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 6, 10-15, and 19-23 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Bae et al. (US 2017/0355811).
Regarding claims 1, 2, 6, and 10-14: Bae et al. teaches the compound
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(fig. 1), which is the instant claimed compound of claim 1 where Ar is an arylene, namely
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; Y1 is EW, which is a haloalkyl/CF3; Y2 is Ak, Ak is alkylene; Z is -CH2- thereby making at least one Z not -N(CH3)2-; the claimed x is 1, FG is a substituted alkyl, namely a bromine substituted alkyl; Ra is methyl/alkyl, the claimed m, which is x in the reference is 45 or 65, and the claimed n, which is y in the reference, is 35 or 55. The
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moiety is the
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of the reference. Y2 is Ak is alkylene, such as -CH2-, Z is -CH2-, Ak is alkylene, such as -CH2-, x would be 1 and FG is a bromine substituted C2 alkyl. When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art (MPEP 2131).
Regarding claim 15: Bae et al. teaches FG is a bromine substituted C2 alkyl (see structure). 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.
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 3-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (US 2017/0355811).
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. While Bae et al. does not show the structure of the embodiment where n =13-20 before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select n as 13-20 and would have been motivated to do so since Bae et al. teaches it is an acceptable embodiment to achieve the disclosed invention.
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. While Bae et al. does not show the structure of the embodiment where the aromatic group is as claimed, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select the aromatic group as disclosed and would have been motivated to do so since Bae et al. teaches it is an acceptable embodiment to achieve the disclosed invention.
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). When this substitution is made for the aromatic component and the R2 component, while the moieties EW, Ak, Ra, m, n, and x are as defined above in claim 1, this is the claimed compound. While Bae et al. does not show the structure of the embodiment where the aromatic group and R2 group are as claimed, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select the aromatic and R2 groups as disclosed and would have been motivated to do so since Bae et al. teaches it is an acceptable embodiment to achieve the disclosed invention.
Regarding claim 7: Bae et al. teaches the R2 can be
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where R is an alkyl group (para. 24). When this substitution is made for the R2 component, while the moieties EW, Ak, Ra, m, n, and x are as defined above in claim 1, this is the claimed compound. While Bae et al. does not show the structure of the embodiment where the R2 group is as claimed, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select the R2 groups as disclosed and would have been motivated to do so since Bae et al. teaches it is an acceptable embodiment to achieve the disclosed invention.
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, 2, 4, 5, 10, 11, 13-15, and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,987,664. 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 claimed polymer. The Ar of the instant polymer overlap with the three aryl groups, Y1 and EW of the instant polymer overlap with CF3 of the polymer of the patent and the Y2-Z-Ak-FG arm of the instant and Ra overlap with the branched moiety, since it is a substituted alkyl.
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.
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