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 .
Status of the Claims
This is a final Office action in response to Applicant’s amendments and remarks filed on November 12th, 2025. Claims 1-2, 6-10, and 14-16 are pending in the current Office action. Claims 3-5 and 11-13 were cancelled by Applicant. Claims 1, 9, and 15 were amended by Applicant.
Status of the Rejection
The rejections of claims 15-16 under 35 U.S.C. § 112(b) are withdrawn in view of Applicant’s amendments.
The rejection of claim 9 under 35 U.S.C. § 102(a)(1) is withdrawn in view of Applicant’s amendments.
The rejections of claims 1-2, 6-8, 10, and 14-16 under 35 U.S.C. § 103 are withdrawn in view of Applicant’s amendments.
New grounds of rejections are necessitated by Applicant’s amendments.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 6-8, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaki (WO 2018/070444 A1) in view of Kusano (US Pat. Pub. 2017/0029585 A1) and Price (WO 2018/115821 A1).
Citations to Yamaki refer to US Pat. Pub. 2019/0218675 A1 as the official English translation on file with the Office.
Regarding claim 1, Yamaki teaches an ion exchange membrane comprising, in order:
an inorganic particle layer comprising inorganic particles and a binder (“a first hydrophilic layer 12” para. 57 and Fig. 1, “As the hydrophilic layer, an inorganic particle layer containing inorganic particles may be mentioned” para. 108, and “The hydrophilic layer may contain a binder” para. 112, and see paras. 105-115),
a layer (Sa) (“a first layer 10a” para. 58 and Fig. 1) comprising a first fluorinated polymer comprising sulfonic acid type functional groups (“a polymer having sulfonic acid functional groups (hereinafter simply referred to also as "polymer (S)")” para. 48 and “In a case where the ion-exchange membrane is made to be a multi-layer, polymers (S) to form the respective layers may be the same or different” para. 63), and
a layer (Sb) (“a second layer 10b” para. 58 and Fig. 1) comprising a second fluorinated polymer comprising sulfonic acid type functional groups (“a polymer having sulfonic acid functional groups (hereinafter simply referred to also as "polymer (S)")” para. 48 and “In a case where the ion-exchange membrane is made to be a multi-layer, polymers (S) to form the respective layers may be the same or different” para. 63), wherein:
the ion exchange membrane further comprises a reinforcing fabric (“a reinforcing material 16” para. 57 and Fig. 1) comprising reinforcing yarns (“a reinforcing fabric made of reinforcing threads and sacrificial threads (hereinafter simply referred to also as "reinforcing fabric (A)")” para. 118, see also paras. 218-219),
the ion exchange membrane is free of fluorine-containing polymers having carboxylic acid groups (“ion-exchange membrane which contains a polymer having sulfonic acid functional groups (hereinafter simply referred to also as "polymer (S)") and which does not contain a polymer having carboxylic acid functional groups (hereinafter simply referred to also as "polymer (C)")” para. 48),
the ion exchange capacity of the first fluorinated polymer is 1.1 milliequivalents/gram dry resin, a value within the claimed range (“fluorinated polymer (FS'-1) (ion-exchange capacity after hydrolysis: 1.1 meq/g dry resin,” para. 195, “Fluorinated polymer (FS'-1) was molded by a melt extrusion method, to obtain film 1” para. 203, and “Transfer substrate 1/film 1/reinforcing fabric 1/film 2/transfer substrate 1 were superimposed one on another in this order, … to obtain a diaphragm precursor” para. 222), and
the ion exchange capacity of the second fluorinated polymer is 1.1 milliequivalents/gram dry resin, a value within the claimed range (“fluorinated polymer (FS'-1) (ion-exchange capacity after hydrolysis: 1.1 meq/g dry resin,” para. 195, “Fluorinated polymer (FS'-1) was molded by a melt extrusion method, to obtain film 2” para. 205, and “Transfer substrate 1/film 1/reinforcing fabric 1/film 2/transfer substrate 1 were superimposed one on another in this order, … to obtain a diaphragm precursor” para. 222).
Yamaki does not teach an ion exchange capacity of the first fluorinated polymer is lower than an ion exchange capacity of the second fluorinated polymer.
However, Yamaki teaches that the ion exchange capacities of the first and second fluorinated polymers need not be the same (para. 63).
Furthermore, Kusano teaches that it is advantageous for an ion exchange membrane comprising reinforcing fibers disposed therein to have different ion exchange capacities on each side of the reinforcing material (“When a reinforcing material is to be embedded in the layer (β1) 14, from such a viewpoint that the electrolysis voltage can easily be reduced, the ion exchange capacity of the portion of the layer (β1) 14 on the anode side of the reinforcing material is preferably equal to or higher than the ion exchange capacity of the portion on the cathode side of the reinforcing material. The difference between them is, for example, preferably at least 0.1 meq/g dry resin.” para. 69 and Fig. 1).
As Yamaki and Kusano each teach ion exchange membranes comprising multiple layers with a reinforcing material disposed therebetween, Yamaki and Kusano are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the ion exchange membrane of Yamaki such that an ion exchange capacity of one of the fluorinated polymers is lower than an ion exchange capacity of the other of the fluorinated polymers, as taught by Kusano. A person having ordinary skill in the art would have been motivated to make this modification because Kusano teaches this reduces the electrolysis voltage. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
As both sides of the membrane of Yamaki comprise an inorganic particle layer comprising inorganic particles and a binder (i.e., hydrophilic layers 12 and 14, see Fig. 1), this modification will necessarily result in a “layer (Sa)” i.e., a layer in contact with an inorganic particle layer comprising inorganic particles and a binder, having an ion exchange capacity that is lower than an ion exchange capacity of a layer (Sb). In other words, because the structure of Yamaki is symmetrical, whichever layer has the lower ion exchange capacity can be considered the “layer (Sa) comprising a first fluorinated polymer” in modified Yamaki.
Modified Yamaki does not teach the ion exchange membrane is an ion exchange membrane with a catalyst layer, or the ion exchange membrane comprises a catalyst layer on the layer (Sb).
However, Price teaches catalysts (“A cathode catalyst layer” and “An anode catalyst layer” p. 27 lines 1-16) can be added on each side of a multilayered ion exchange membrane (“CCM 1 was prepared using three individual membrane components” Id.) to provide the predictable benefit of catalyzing the oxidation (p. 15 lines 14-25) and reduction reactions (p. 13 lines 19-32).
As Price teaches an ion exchange membrane comprising multiple layers with a reinforcing material disposed therebetween (see e.g., p. 10 lines 1-5), Price is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the ion exchange membrane of Yamaki, by adding a catalyst layer to each side of the ion exchange membrane (i.e., such that one of the catalyst layers is on the layer (Sb)), as taught by Price. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of catalyzing the reduction and oxidation reactions at the membrane, as taught by Price. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Regarding claim 6, Yamaki further teaches the first fluorinated polymer comprises:
a unit based on a fluorinated olefin (“monomer(1)” paras. 79 and 84); and
a unit comprising a sulfonic acid type functional group and a fluorine atom (“monomer (2)”) paras. 79 and 85-94).
Regarding claim 7, Yamaki further teaches the fluorinated olefin is selected from the group consisting of tetrafluoroethylene and chlorotrifluoroethylene (“Monomer (1) may be CF2=CF2, CF2=CFCl, CF2=CFCF3, etc., and from the viewpoint of chemical durability of the diaphragm, CF2=CF2 is preferred” para. 84).
Regarding claim 8, modified Yamaki teaches the limitations of claim 6, as described above.
Yamaki further teaches the unit comprising a sulfonic acid type functional group and a fluorine atom is a unit according to formula (1) (paras. 86-94 teach the monomers have the structure of formula (1) except that M = F, paras. 99-100 show that after polymerization M is converted to an alkali metal ion, see also para. 113).
Regarding claim 15, modified Yamaki renders obvious the limitations of claim 1, as described above. The rejection of claim 1 is incorporated herein by reference.
Yamaki teaches an electrolytic apparatus comprising:
an electrolyzer (“electrolytic cell 110” para. 159 and Fig. 2) comprising an anode (“anode 114” Id.) and a cathode (“cathode 112” Id.), and
an ion exchange membrane (“diaphragm 1” para. 159 and Fig. 2), wherein:
the ion exchange membrane is disposed in the electrolyzer so as to separate the anode and the cathode (“a diaphragm 1 mounted in the electrolytic cell 110 so as to partition inside of the electrolytic cell 110 into a cathode chamber 116 on the cathode 112 side and an anode chamber 118 on the anode 114 side” para. 159 and Fig. 2).
Yamaki does not teach the ion exchange membrane is the ion exchange membrane with a catalyst layer according to claim 1.
However, it is considered that it would be obvious to a person having ordinary skill in the art to modify the ion exchange membrane to be the ion exchange membrane with a catalyst layer according to claim 1 for the same reasons enumerated in the rejection of claim 1.
Regarding the limitation “an electrolytic hydrogenation apparatus”, as currently drafted, this limitation is a recitation of intended use i.e., it defines the apparatus by how it is intended to be used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a limitation directed to an intended use is an apparatus capable of performing the recited use (MPEP § 2114).
In the instant case, the electrolytic apparatus of Yamaki comprises an anode and cathode separated by a cation exchange membrane, and is capable of reducing protons to hydrogen (para. 165). It is therefore considered that the electrolytic apparatus of Yamaki is capable of being used for electrolytic hydrogenation (see also rejection of claim 16, below).
The apparatus of Yamaki therefore reads on the limitation “an electrolytic hydrogenation apparatus”.
Regarding the limitations “the inorganic particle layer is disposed on an anode side of the ion exchange membrane with a catalyst layer” and “the catalyst layer is disposed on a cathode side of the ion exchange membrane with a catalyst layer.”, as currently drafted these limitations are functional recitations i.e., they define the apparatus by what it does, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a functional limitation is an apparatus capable of performing the recited function (MPEP § 2114).
Specifically, the terms “anode” and “cathode” are functional terms referring to electrodes to which a positive and negative bias, respectively, are intended to be applied during operation, and the structures of the “anode” and “cathode” are not limited by the claims as currently drafted.
In the instant case, Yamaki teaches the anode and cathode comprise the same material i.e., “ruthenium-containing Raney nickel” (para. 188). As they both comprise the same material, both the “anode 114” and “cathode 112” of Yamaki are capable of serving as either an anode or a cathode.
Therefore, regardless of which orientation is adopted by the membrane in modified Yamaki, the inorganic particle layer i.e., the inorganic particle layer on the layer (Sa), will be disposed on an “anode” side of the ion exchange membrane with a catalyst layer and the catalyst layer i.e., the catalyst layer on the layer (Sb), will be disposed on a “cathode” side of the ion exchange membrane with a catalyst layer, because both sides of the electrolysis cell are capable of serving as an “anode” or a “cathode” side.
Modified Yamaki therefore renders obvious the limitations “the inorganic particle layer is disposed on an anode side of the ion exchange membrane with a catalyst layer” and “the catalyst layer is disposed on a cathode side of the ion exchange membrane with a catalyst layer.”.
Regarding claim 16, as currently drafted, the limitation “in operation, an aqueous electrolyte solution is supplied to an anode chamber in which the anode is disposed, and an aromatic compound is supplied to a cathode chamber in which the cathode is disposed” is a recitation of intended use. I.e., it defines the apparatus by how it is intended to be used, rather than what it is. For apparatus claims, the broadest reasonable interpretation of a recitation of intended use is an apparatus capable of performing the recited use (MPEP § 2114).
In the instant case, Yamaki teaches the anode chamber and cathode chamber each receive an aqueous solution (para. 191). Yamaki therefore teaches the limitation “in operation, an aqueous electrolyte solution is supplied to an anode chamber in which the anode is disposed”.
While Yamaki does not explicitly teach the cathode chamber is capable or receiving an aromatic compound, Yamaki teaches the cathode chamber is “stainless steel, nickel, etc.” (para. 161), materials the instant specification indicate are capable of receiving an aromatic compound (para. 126). It is therefore considered that the cathode chamber of Yamaki is capable of being supplied with an aromatic compound. Yamaki therefore reads on the limitation “in operation … an aromatic compound is supplied to a cathode chamber in which the cathode is disposed”.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaki in view of Kusano and Price as applied to claim 1 above, and further in view of Yoshida (US Pat. No. 4323434).
Regarding claim 2, modified Yamaki teaches the limitations of claim 1, as described above.
Modified Yamaki does not teach the layer (Sa) comprises a convexo-concave structure on a surface of the layer (Sa) closer to the inorganic particle layer than the layer (Sb).
However, Yoshida teaches that forming a convexo-concave structure on the surfaces of cation exchange membranes (“the roughened surface may quantitatively be defined as a surface having a concavo-convex structure” col. 3 lines 5-25, see also abstract) improves the release of gas bubbles from said surfaces (“whereby gas adsorption on the membrane surface can be made very small.” Id.), thereby lowering the voltage required for electrolysis (“Its specific effect is to lower the electrolysis voltage remarkably without decrease in current efficiency.” col. 2 lines 17-28).
As Yoshida teaches an ion exchange membrane for use in electrolysis, Yoshida is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify both exterior surfaces of the membrane of Yamaki i.e., the surface of the layer (Sa) closer to the inorganic particle layer than the layer (Sb) and the surface of the layer (Sb) closer to the catalyst layer than the layer (Sa) in modified Yamaki , such that they comprise convexo-concave structures, as taught by Yoshida. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of lowering the electrolysis voltage by improving gas desorption, as taught by Yoshida. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaki (WO 2018/070444 A1) in view of Kusano (US Pat. Pub. 2017/0029585 A1).
Citations to Yamaki refer to US Pat. Pub. 2019/0218675 A1 as the official English translation on file with the Office.
Regarding claim 9, Yamaki teaches an ion exchange membrane comprising, in order:
an inorganic particle layer comprising inorganic particles and a binder (“a first hydrophilic layer 12” para. 57 and Fig. 1, “As the hydrophilic layer, an inorganic particle layer containing inorganic particles may be mentioned” para. 108, and “The hydrophilic layer may contain a binder” para. 112, and see paras. 105-115),
a layer (Sa) (“a first layer 10a” para. 58 and Fig. 1) comprising a first fluorinated polymer comprising sulfonic acid type functional groups (“a polymer having sulfonic acid functional groups (hereinafter simply referred to also as "polymer (S)")” para. 48 and “In a case where the ion-exchange membrane is made to be a multi-layer, polymers (S) to form the respective layers may be the same or different” para. 63), and
a layer (Sb) (“a second layer 10b” para. 58 and Fig. 1) comprising a second fluorinated polymer comprising sulfonic acid type functional groups (“a polymer having sulfonic acid functional groups (hereinafter simply referred to also as "polymer (S)")” para. 48 and “In a case where the ion-exchange membrane is made to be a multi-layer, polymers (S) to form the respective layers may be the same or different” para. 63), wherein:
the ion exchange membrane further comprises a reinforcing fabric (“a reinforcing material 16” para. 57 and Fig. 1) comprising reinforcing yarns (“a reinforcing fabric made of reinforcing threads and sacrificial threads (hereinafter simply referred to also as "reinforcing fabric (A)")” para. 118, see also paras. 218-219),
the ion exchange membrane is free of fluorine-containing polymers having carboxylic acid groups (“ion-exchange membrane which contains a polymer having sulfonic acid functional groups (hereinafter simply referred to also as "polymer (S)") and which does not contain a polymer having carboxylic acid functional groups (hereinafter simply referred to also as "polymer (C)")” para. 48),
the ion exchange capacity of the first fluorinated polymer is 1.1 milliequivalents/gram dry resin, a value within the claimed range (“fluorinated polymer (FS'-1) (ion-exchange capacity after hydrolysis: 1.1 meq/g dry resin,” para. 195, “Fluorinated polymer (FS'-1) was molded by a melt extrusion method, to obtain film 1” para. 203, and “Transfer substrate 1/film 1/reinforcing fabric 1/film 2/transfer substrate 1 were superimposed one on another in this order, … to obtain a diaphragm precursor” para. 222), and
the ion exchange capacity of the second fluorinated polymer is 1.1 milliequivalents/gram dry resin, a value within the claimed range (“fluorinated polymer (FS'-1) (ion-exchange capacity after hydrolysis: 1.1 meq/g dry resin,” para. 195, “Fluorinated polymer (FS'-1) was molded by a melt extrusion method, to obtain film 2” para. 205, and “Transfer substrate 1/film 1/reinforcing fabric 1/film 2/transfer substrate 1 were superimposed one on another in this order, … to obtain a diaphragm precursor” para. 222).
Yamaki does not teach an ion exchange capacity of the first fluorinated polymer is lower than an ion exchange capacity of the second fluorinated polymer.
However, Yamaki teaches that the ion exchange capacities of the first and second fluorinated polymers need not be the same (para. 63).
Furthermore, Kusano teaches that it is advantageous for an ion exchange membrane comprising reinforcing fibers disposed therein to have different ion exchange capacities on each side of the reinforcing material (“When a reinforcing material is to be embedded in the layer (β1) 14, from such a viewpoint that the electrolysis voltage can easily be reduced, the ion exchange capacity of the portion of the layer (β1) 14 on the anode side of the reinforcing material is preferably equal to or higher than the ion exchange capacity of the portion on the cathode side of the reinforcing material. The difference between them is, for example, preferably at least 0.1 meq/g dry resin.” para. 69 and Fig. 1).
As Yamaki and Kusano each teach ion exchange membranes comprising multiple layers with a reinforcing material disposed therebetween, Yamaki and Kusano are analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the ion exchange membrane of Yamaki such that an ion exchange capacity of one of the fluorinated polymers is lower than an ion exchange capacity of the other of the fluorinated polymers, as taught by Kusano. A person having ordinary skill in the art would have been motivated to make this modification because Kusano teaches this reduces the electrolysis voltage. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
As both sides of the membrane of Yamaki comprise an inorganic particle layer comprising inorganic particles and a binder (i.e., hydrophilic layers 12 and 14, see Fig. 1), this modification will necessarily result a “layer (Sa)” i.e., a layer in contact with an inorganic particle layer comprising inorganic particles and a binder, having an ion exchange capacity that is lower than an ion exchange capacity of a layer (Sb). In other words, because the structure of Yamaki is symmetrical, whichever layer has the lower ion exchange capacity can be considered the “layer (Sa) comprising a first fluorinated polymer”.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaki in view of Kusano as applied to claim 9 above, and further in view of Yoshida (US Pat. No. 4323434).
Regarding claim 10, modified Yamaki teaches the limitations of claim 9, as described above.
Modified Yamaki does not teach the layer (Sa) comprises a convexo-concave structure on a surface of the layer (Sa) closer to the inorganic particle layer than the layer (Sb).
However, Yoshida teaches that forming a convexo-concave structure on the surfaces of membranes (“the roughened surface may quantitatively be defined as a surface having a concavo-convex structure” col. 3 lines 5-25) improves the release of gas bubbles from said surfaces (“whereby gas adsorption on the membrane surface can be made very small.” Id.), thereby lowering the voltage required for electrolysis (“Its specific effect is to lower the electrolysis voltage remarkably without decrease in current efficiency.” col. 2 lines 17-28).
As Yoshida teaches an ion exchange membrane for use in electrolysis, Yoshida is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify both exterior surfaces of the membrane of Yamaki i.e., the surfaces of the layers (Sa) and (Sb) closer to an inorganic particle layer than the other polymer layer, such that they comprise convexo-concave structures, as taught by Yoshida. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of lowering the electrolysis voltage by improving gas desorption, as taught by Yoshida. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaki in view of Kusano as applied to claim 9 above, and further in view of Price (WO 2018/115821 A1).
Regarding claim 14, Modified Yamaki renders obvious the limitations of claim 9, as described above. The above rejection of claim 9 is incorporated herein by reference.
Modified Yamaki teaches the ion exchange membrane according to claim 9.
Modified Yamaki does not teach a step of adding a catalyst layer to the ion exchange membrane according to claim 9, wherein adding the catalyst layer comprises forming the catalyst layer on the layer (Sb).
However, Price teaches catalysts (“A cathode catalyst layer” and “An anode catalyst layer” p. 27 lines 1-16) can be added on each side of a multilayered ion exchange membrane (“CCM 1 was prepared using three individual membrane components” Id.) by forming the catalyst layers on each of the membrane layers (p. 14 lines 21-29 and p. 16 lines 5-14) to provide the predictable benefit of catalyzing the oxidation (p. 15 lines 14-25) and reduction reactions (p. 13 lines 19-32).
As Price teaches an ion exchange membrane comprising multiple layers with a reinforcing material disposed therebetween (see e.g., p. 10 lines 1-5), Price is analogous art to the instant invention.
It would therefore have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to modify the method used to form the ion exchange membrane of Yamaki, by adding a step of adding a catalyst layer to the ion exchange membrane, wherein adding the catalyst layer comprises forming the catalyst layer on the layers (Sa) and (Sb), as taught by Price. A person having ordinary skill in the art would have been motivated to make this modification to achieve the predictable benefit of forming a membrane capable of catalyzing the reduction and oxidation reactions at the membrane, as taught by Price. Furthermore, combining prior art elements according to known methods to yield predictable results establishes a prima facie case of obviousness (MPEP § 2143(I)(A)).
Response to Arguments
Applicant’s arguments, see Remarks p. 7, filed 11/12/2025, with respect to the rejections of claims 15-16 under 35 U.S.C. § 112(b), have been fully considered and are persuasive. The rejections of claims 15-16 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments, see Remarks p. 7-9, filed 11/12/2025, with respect to the rejections of claim 9 under 35 U.S.C. § 102(a)(1), have been fully considered and are persuasive. The rejection of claim 9 under 35 U.S.C. § 102(a)(1) has been withdrawn.
Applicant’s arguments, see Remarks p. 9-12, filed 11/12/2025, with respect to the rejections of claims 1-2, 6-8, 10, and 14-16 under 35 U.S.C. § 103 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made as necessitated by Applicant’s amendments.
Applicant’s Argument #1
Applicant argues on p. 8 that Rusch does not the limitation “the ion exchange membrane further comprises a reinforcing fabric comprising reinforcing yarns” as recited in amended claims 1 and 9 and previously recited in claims 3 and 11, now cancelled. Specifically, Applicant argues that the GORE-TEX® membrane recited in Rusch is not in the form of reinforcing yarns.
Examiner’s Response #1
Examiner agrees. However, as the new grounds of rejection do not rely upon Rusch, Applicant’s argument is considered moot.
Applicant’s Argument #2
Applicant argues on p. 9 that Rusch does not teach the limitation “the ion exchange membrane is free of fluorine-containing polymers having carboxylic acid groups” as recited in amended claims 1 and 9. Specifically, Applicant argues that while Rusch teaches “a liquid composition of perfluorosulfonic acid copolymer (Flemion 950 EW from Asahi Glass)” (col. 16 lines 29-45), Femion® is not, in fact, a perfluorosulfonic acid copolymer, but rather a fluoropolymer containing carboxylic acid groups.
Examiner’s Response #2
Examiner agrees. Examiner thanks Applicant for pointing out the factual error in Rusch, and apologizes for any delays in prosecution that may have resulted from relying on this teaching. As the revised grounds of rejection do not rely on Rusch, however, this point is considered moot.
Applicant’s Argument #3
Applicant argues on p. 9-12 that Rusch in view of Shimohira and Mauritz, or Rusch in view of Shimohira, Mauritz and Yamaki do not reasonably render obvious the limitations of the amended claims.
Examiner’s Response #3
Applicant’s specific arguments regarding Rusch, Shimohira, Mauritz and Yamaki are considered moot, as the new grounds of rejection do not specifically rely upon any of the teachings or matter discussed in the arguments.
Applicant’s Argument #4
Applicant argues on p. 11 that the instant invention provides unexpected results that would overcome a prima facie case of obviousness. Specifically, Applicant argues that the results reported in Table 1 of the instant specification provide evidence that the combined limitations recited in claims 1 and 9 provide properties superior to that which would have been expected by a person having ordinary skill in the art before the filing date of the instant application.
Examiner’s Response #4
Examiner respectfully disagrees. In order for an assertion of unexpected results to overcome a prima facie finding of obviousness, Applicant must provide evidence that has a nexus to the claimed invention (MPEP § 716.01(b)), such evidence must be commensurate in scope with the claims (MPEP § 716.02(d)), and Applicant must demonstrate that the benefit demonstrated by such evidence is, in fact, unexpected (MPEP § 716.02(b)(I) and 716.02(c)).
In the instant case, Applicant has pointed to the experimental results provided in Table 1 of the instant application as the sole evidence in support of unexpected results. Table 1 of the instant application describes 9 examples corresponding to the instant invention (Ex. 1 through Ex. 9), as well as two comparative examples (Ex. 10 and Ex. 11). Of those examples corresponding to the instant invention, 7 i.e., Ex. 2-6 and Ex. 8-9, describe a system comprising a tri-layer structure, which is not recited in claims 1 or 9. Thus, of the data provided in Table 1, only that corresponding to examples Ex. 1 and Ex. 7 can reasonably be considered to have a nexus to the invention as claimed.
As currently claimed, both claims 1 and 9 require the layer (Sa) to have a lower ion exchange capacity than the layer (Sb), however neither claim requires any particular value for this difference in ion exchange capacity. In fact, as the specific ion exchange capacities for the layers (Sa) and (Sb) overlap as currently claimed, layer (Sa) need only have an ion exchange capacity lower than layer (Sb) by an infinitesimal amount. As Applicant has only provided two examples of membranes having a nexus to the claims as currently drafted, the evidence provided by Applicant cannot reasonably be considered commensurate with the scope of the claim. I.e., the two data points provided by Applicant cannot provide evidence of unexpected results over the entirety of the ranges claimed in claims 1 and 9.
Furthermore, Applicant has not demonstrated that any asserted benefits would be unexpected. As described in the rejections above, each of the proposed modifications provides an art recognized benefit. The data in table one only provides a standard Nafion® membrane with or without an inorganic particle layer as a comparison to the membranes of the instant invention. However, the closest prior art is considered to be the membranes of Yamaki, which differ from the claimed invention only in that the ion exchange capacities of the layers are not explicitly different from one another. Absent a comparison between the instant invention and the prior art membranes, and an explanation of why any differences in the observed properties would not be expected based on the teachings of e.g., Kusano, Applicant’s assertion that the benefits are unexpected cannot be persuasive (see MPEP § 716.02(e)).
For at least the above reasons, Applicant’s assertion that prima facie findings of obviousness are or should be overcome by unexpected benefits is not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ALEXANDER R. PARENT/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795