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 .
Response to Arguments
Regarding the 35 U.S.C. section 112(b) rejection of claim 1, which was based on the language “an interface between he first and second ionomers is present in the second sub-support”, the issue of indefiniteness has been resolved by the applicant’s amendment which comprised the removal of the aforementioned language from claim 1. Accordingly, the rejection of claim 1 under section 112(b) is withdrawn.
Applicant’s arguments with respect to claim(s) 1, 3-5, and 8-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The applicant asserts that the polymer electrolyte membrane of claim 1, is characterized in that it is manufactured by “(i) making the first porous sub-support entirely wet with a first ionomer dispersion liquid including the first ionomer, (ii) adding the second porous sub-support on the first porous sub-support immediately after the first porous sub-support becomes entirely wet, such that the second porous sub-support becomes partially wet with the first ionomer dispersion liquid, (iii) applying a second ionomer dispersion liquid including the second ionomer to the second porous sub-support, and (iv) drying the first and second porous sub-supports of wet state, whereby: the polymer electrolyte membrane has an in-plane ionic conductivity of 0.03 to 0.1 S/cm and a through-plane ionic conductivity of 0.03 to 0.1 S/cm under conditions of 80°C and 50% relative humidity (RH); the first pores are filled with the first ionomer; a portion of the second pores adjacent to the first porous sub-support are filled with the first ionomer while a remainder of the second pores are filled with the second ionomer, such that the first ionomer present in the second porous sub-support functions as an anchor and the polymer electrolyte membrane has MD tear strength of 150 N/mm or more and TD tear strength of 150 N/mm or more; and a ratio (IS/FS) of stab initial strain (IS) of the polymer electrolyte membrane to stab final strain (FS) of the polymer electrolyte membrane is 0.4 to 1.0,”.
Here, these limitations are interpreted as product-by process limitations, consistent with MPEP section 2113. Determination of patentability of product-by-process claims is based on the product itself, and if the product of a product by process claim is the same as obvious from a product of the prior art, the claim is unpatentable even through the product was made by a different process. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Accordingly, where the product by process limitation of claim 1 presents the process which is used to manufacture the polymer electrolyte membrane, and then presents properties in the polymer electrolyte membrane that are present as a result of this process, a polymer electrolyte membrane of prior art that has these properties would therefore be the same or render the product-by-process obvious, even if it is made by a different process.
Therefore, as the applicant has specifically indicated that these properties are the result of the product-by-process, the properties are the aspect that is being compared to the prior art in regards to determining patentability.
Here, the feature “the polymer electrolyte membrane has an in-plane ionic conductivity of 0.03 to 0.1 S/cm and a through-plane ionic conductivity of 0.03 to 0.1 S/cm under conditions of 80°C and 50% relative humidity (RH);” is addressed by Fuller in view of Teasely.
Additionally, the feature “the first ionomer present in the second porous sub-support functions as an anchor and the polymer electrolyte membrane has MD tear strength of 150 N/mm or more, and TD tear strength of 150 N/mm or more” is addressed by Fuller in view of Spethmann.
Claim Interpretation
The term “anchor”, presented in claim 1, is interpreted as requiring that the anchoring ionomer cause adhesive force between components that it is in contact with, consistent with how the term is presented in in the instant specification, where it is used on the context of describing ionomers causing adhesive forces between sub-support layers to be present (Paragraph 93, “since the first ionomer 21 present in the second porous sub-support 12 functions as an anchor), (i) strong adhesive force between the first and second porous sub-supports 11 and 12 can be secured”).
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.
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, 3-5, and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuller (US 2007/0087245 A) in view of Zimmerman (US 2017/0005356 A1), in further view of Teasely (US 2009/0136817 A1) in further view of Spethmann (US 6110333 A).
Regarding Claim 1, Fuller is an analogous art to the instant application, being directed to the art of polymer electrolyte membranes (Abstract, “Polyelectrolyte membranes”). Fuller discloses a polymer electrolyte membrane comprising a composite layer which comprises a porous support (Paragraph 0013, “Preferably, the proton exchange membrane is a multilayer composite having a plurality of expanded perfluoropolymer support layers, with particles of perfluorosulfonic acid polymers being imbibed into pores of the support layers.”) and first and second ionomers (Paragraph 0020, “As illustrated, a plurality of support layers 1 are adhered in adjacent fashion to one another, and ionomer 2, shown as particles, is imbibed into each support layer and into the interface 3 between adjacent support layers 1.”). Here, the porous support comprises a plurality of composite layers, one being a first porous sub-support having first pores and another being a second porous sub-support having second pores (Paragraph 0020, “As illustrated, a plurality of support layers 1 are adhered in adjacent fashion to one another, and ionomer 2, shown as particles, is imbibed into each support layer”).
Additionally, in regards to the limitations which require that the polymer electrolyte membrane is manufactured by “(i) making the first porous sub-support entirely wet with a first ionomer dispersion liquid including the first ionomer, (ii) adding the second porous sub-support on the first porous sub-support immediately after the first porous sub-support becomes entirely wet, such that the second porous sub-support becomes partially wet with the first ionomer dispersion liquid, (iii) applying a second ionomer dispersion liquid including the second ionomer to the second porous sub-support, and (iv) drying the first and second porous sub-supports of wet state, whereby: the polymer electrolyte membrane has an in-plane ionic conductivity of 0.03 to 0.1 S/cm and a through-plane ionic conductivity of 0.03 to 0.1 S/cm under conditions of 80°C and 50% relative humidity (RH); the first pores are filled with the first ionomer; a portion of the second pores adjacent to the first porous sub-support are filled with the first ionomer while a remainder of the second pores are filled with the second ionomer, such that the first ionomer present in the second porous sub-support functions as an anchor and the polymer electrolyte membrane has MD tear strength of 150 N/mm or more and TD tear strength of 150 N/mm or more; and a ratio (IS/FS) of stab initial strain (IS) of the polymer electrolyte membrane to stab final strain (FS) of the polymer electrolyte membrane is 0.4 to 1.0…”.
Here, these limitations are interpreted as product-by process limitations, consistent with MPEP section 2113. Determination of patentability of product-by-process claims is based on the product itself, and if the product of a product by process claim is the same as obvious from a product of the prior art, the claim is unpatentable even through the product was made by a different process. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Accordingly, where the product by process limitation of claim 1 presents the process which is used to manufacture the polymer electrolyte membrane, and then presents properties in the polymer electrolyte membrane that are present as a result of this process, a polymer electrolyte membrane of prior art that has these properties would therefore be the same or render the product-by-process obvious, even if it is made by a different process.
Additionally, in regards to the limitation requiring that the polymer electrolyte membrane has an in-plane ionic conductivity of 0.03 to 0.1 S/cm and a through-plane ionic conductivity of 0.03 to 0.1 S/cm under conditions of 80 degrees Celsius and 50% relative humidity, Fuller is silent in regards to their invention’s conductivity. Therefore, we look to Teasley, which is an analogous art to the instant application, being directed towards the art of polymer electrolyte membranes (Abstract). Here, Teasely discusses the proton conductivity of polymers, specifically asserting that the goal of their invention is to determine good ionic conductivity in polymer membranes (Paragraph 0007, “A need remains for polymers for membranes in applications such as fuel cells that exhibit good ionic conductivity,”).
Teasely investigates polymers in their examples 1 and 3-7, identifying that at conditions of 80 degrees Celsius and 50% relative humidity they have in plane conductivities of 0.038, 0.034, 0.074, 0.044, 0.044, and 0.0321 S/cm respectively, and through-plane conductivities of 0.047, 0.047, 0.085, 0.05, 0.05, and 0.033 S/cm respectively. Accordingly, as Teasely presents these conductivities as good examples of proton conductivity at conditions of 80 degrees Celsius and 50% relative humidity, it would therefore be obvious to one ordinarily skilled in the art to modify the polymer electrolyte membrane of Fuller to achieve these conductivities at the claimed conditions, so as to have good ionic conductivity, thereby making obvious the scope of the instant limitation.
Additionally, where the aforementioned in-plane and through plane proton conductivities are made obvious in general conditions, they are therefore made obvious in regards to conditions which include the 80 degrees Celsius and 50% relative humidity.
Here Fuller’s first pores are filled with the first ionomer, and a second portion of the second pores adjacent to the first porous sub-support are filled with the first ionomer, while a remainder of the second pores are filled with the second ionomer (Paragraph 0020, “As illustrated, a plurality of support layers 1 are adhered in adjacent fashion to one another, and ionomer 2, shown as particles, is imbibed into each support layer and into the interface 3 between adjacent support layers 1.”), such that an interface between the first and second ionomers is present in the second sub-support, as a result of the manufacturing method disclosed by Fuller, where a dried ionomer-imbibed support layer (Corresponding to the second claimed porous support) is applied thereon on a wet ionomer-imbibed layer (corresponding to the first claimed porous support), the former filling pores with the ionomer dispersion of the latter by diffusion (Paragraph 0051, “the ionomer-imbibed layer is then applied over the first dried layer at a 90° angle with respective to fiber direction. The two layers are then dried together to form a two layered sandwich structure, comprising two porous structural layers with imbibed ionomer.”).
Additionally, in regards to the limitation which requires that the first ionomer present in the second porous sub-support functions as an anchor, this limitation is disclosed by the disclosure of Fuller, as they disclose that the ionomer layers extend between layers, thereby holding the layers together in an anchoring fashion (Paragraph 0019, “Ionomer is imbibed into pores in the individual support layers and is also found between the layers in the interface between adjacent layers, acting as a glue or adhesive to hold the layers together.”), consistent with the context “anchor” is defined in in the instant specification, where it is used on the context of describing ionomers causing adhesive forces between sub-support layers to be present (Paragraph 0093, “since the first ionomer 21 present in the second porous sub-support 12 functions as an anchor), (i) strong adhesive force between the first and second porous sub-supports 11 and 12 can be secured”).
Additionally, in regards to the limitation which requires that the polymer electrolyte membrane has MD tear strength of 150 N/mm or more and TD tear strength of 150 N/mm or more, Fuller is silent in regards to any tear strength of their polymer electrolyte membrane. Therefore, we look to Spethmann, which is an analogous art to the instant application, being directed towards the art of polymer electrolyte membranes comprising a composite layer (Abstract, “A composite membrane including an ion exchange polymer”). Here, Spethmann discusses composite membranes comprising exchange polymers and porous supports, further discussing that a preferable tear strength for a membrane is most preferably at least 200 kN/m (equivalent to 200 N/mm) (Column 2 lines 64-67, column 3 lines 1-5, “In accordance with a preferred form of the present invention, a composite membrane is provided which includes a highly fluorinated ion exchange polymer and a porous support consisting essentially of expanded highly fluorinated nonionic polymer having a porous microstructure of polymeric fibrils. The membrane has a wet tear strength as determined by ASTM D1922 of at least about 10 kN/m, preferably at least about 100 kN/m, and most preferably at least about 200 kN/m.”).
Here, where Spethmann discloses that a most preferable tear strength for a composite polymer electrolyte membrane is 200 N/mm or greater, and where the invention of Fuller is directed towards composite polymer electrolyte membranes (Abstract), it would therefore be obvious to one ordinarily skilled in the art at the time of filing to select a tear strength of 200 N/mm or more for the composite polymer electrolyte membrane of Fuller, thereby making obvious a membrane with has a tear strength of at least 200 N/mm in any direction, including the machine direction and transverse direction, as claimed.
Additionally, in regards to the limitation which requires a ratio of stab initial strain of the polymer electrolyte to stab final strain of the polymer electrolyte is 0.4 to 1.0, Fuller fails to disclose said structure.
Therefore, we look to Zimmerman, which is an analogous art to the instant application, disclosing a solid ionically conductive polymer material (Abstract, “A solid, ionically conductive, polymer material”) as well as further emphasizing the desirability of mechanical strength (Paragraph 0261, “The solid electrolyte must be strong enough to withstand the tension of any winding operation during battery assembly, or bending or other abuse of the battery.”), specifically noting puncture strength as a relevant parameter (Paragraph 00261, “Mechanical strength is typically defined in terms of the tensile strength in both the machine (winding) direction and the transverse direction, in terms of tear resistance and puncture strength.”). Here, where Zimmerman recognizes abuse of a battery over time as being important to compensate for through providing a battery with high mechanical strength, it would therefore be obvious to one ordinarily skilled in the art to make use of a battery material which would mitigate the deformation effects to as great an extent as possible, thereby making obvious structure where a stab initial strain and a stab final strain are as close as possible, resulting in a ratio (IS/FS) which approaches 1.0, thereby reading upon and making obvious the limitation of the instant claim.
Additionally, this obvious IS/FS ratio which is made obvious would be measured by any method of measuring IS and FS values, including the details of the ASTM F134 process of the claim, wherein a 50 mm x 50 mm sample is taken from the polymer electrolyte membrane, fixing the sample to a holder, and repeatedly stabbing the sample with a probe for puncture testing according to ASTM F1342 under a compression more at a stab load of 10 N, a temperature of 23±2 degrees Celsius, relative humidity of 50±5%, a cycle period of 20 times and a test speed of 100 mm/min, measuring the displacement of the sample after the first, second and twentieth stabs respectively wherein displacement due to an initial load of 0.2 N is regarded as a zero point, calculating IS and FS based on equations 1 and 2 of the claim. Here, where Zimmerman makes obvious an IS/FS ratio of 1.0, this ratio would be obvious as a result from any method of IS/FS measurement, including the method of the instant claim. Additionally, where the instant claim is a product, the process step of evaluating a parameter is not necessarily required to be present structure, where it is instead required that a product undergoing said process step would have the required result. Where Zimmerman makes obvious the result, they therefore satisfy the requirement of the claim in regards to the process step.
Regarding Claim 3, modified Fuller makes obvious the invention of Claim 1. As discussed above, Zimmerman teaches the desirability of mechanical strength (Paragraph 0261, “The solid electrolyte must be strong enough to withstand the tension of any winding operation during battery assembly, or bending or other abuse of the battery.”), specifically noting puncture strength as a relevant parameter (Paragraph 00261, “Mechanical strength is typically defined in terms of the tensile strength in both the machine (winding) direction and the transverse direction, in terms of tear resistance and puncture strength.”). Here, the puncture strength parameter is defined in terms of young’s modulus which is the ratio of stress to strain. Zimmerman further discloses that the range of the Young’s modulus for the electrolyte made from the solid polymer material is 3.0 Mpa-4.0 GPa, and that it can be engineered to be higher by utilizing additives such as glass fiber or carbon fiber (Paragraph 0261, “These parameters are defined in terms of Young's modulus which is the ratio of stress to strain. The range of Young's modulus for the electrolyte made from the solid polymer material is 3.0 MPa-4.0 GPa, and it can be engineered to be higher by utilizing additives such as glass fiber or carbon fiber if required.”). Accordingly, this identifies the mechanical and puncture strength (which are the stab and strain values) as being a results effective variable.
Accordingly, it would be obvious to one ordinarily skilled in the art to modify the polymer electrolyte membrane of Fuller by providing the stab strain values to be those in the ranges claimed, so as to withstand the abuse of the battery that occurs during use and operation, thereby reading upon and making obvious the limitations of the instant claim.
Regarding Claims 4 and 5, modified Fuller makes obvious the invention of Claim 1. Additionally, in regards to the limitation of the instant claim which requires a first pure layer disposed on the first porous sub-support, the first pure layer comprising an ionomer identical to the first ionomer, and a second pure layer disposed on the second porous sub-support, the second pure layer comprising an ionomer identical to the second ionomer, where a thickness of the entire composite layer is 30% to 80% of a thickness of the entire polymer electrolyte membrane, Fuller fails to disclose said structure. Therefore, we look to Spethmann, which is an analogous art to the instant application, being directed towards the art of polymer electrolyte membranes comprising a composite layer (Abstract, “A composite membrane including an ion exchange polymer”).
Spethmann discloses structure wherein the polymer electrolyte membrane further comprises a first pure layer disposed on the first surface, the first pure layer comprising a first ionomer and a second pure layer comprising a second ionomer (Column 7 line 67, Column 8 lines 1-5, “The fully embedded composite membrane of this invention preferably has a layer of unreinforced ion exchange polymer with a thickness of at least about 2 μm provided at each surface of the membrane and most preferably has at least about 5 μm provided at each surface of the membrane.”), disclosing the coating of a unreinforced ion exchange polymer on each surface of the membrane, where the portion on the first surface is the first pure layer and the portion on the second surface is the second pure layer.
Spethmann further discloses that their pure layers ensure the complete filling of the microporous support structure by the ionomer, resulting in the pure layer being present at both ends of the porous support (Column 9 lines 25-31, “Impregnation is performed so that the pores of the microporous support are at least partially filled, but preferably are completely filled with polymer. Most preferably, impregnation is performed so that the microporous support is embedded in the highly fluorinated sulfonate polymer, i.e., an unreinforced layer of the sulfonate polymer is present on both surfaces of the microporous support.”). Based on this benefit of ensuring filling of the pores of the porous sub-supports, it would be obvious to one ordinarily skilled in the art to apply the pure layer structure of Spethmann to the invention of Fuller, thereby reading upon and satisfying the limitation of the instant claim, where the pure layers are formed by the first ionomer and second ionomer, thereby comprising ionomers identical to their associated ionomers.
Additionally, in regards to the instant claim which requires that the thickness of the entire composite layer is 30 to 80% of the thickness of the entire polymer electrolyte membrane, Fuller discloses structure where the thickness of their composite membrane is less than or equal to 50 microns (Paragraph 0045, “the composite membranes have a maximum of four, and a preferred maximum of three layers, and have a thickness of no more than about 100 μ and preferably less than or equal to about 50 μ.”), specifically presenting an example embodiment with a thickness of 40 microns (Paragraph 0051, “The multilayer composite membrane is 40 μ thick”). Additionally, Spethmann discloses that their pure layers are each about 2 to 5 microns thick (Column 8, lines 1-5, “The fully embedded composite membrane of this invention preferably has a layer of unreinforced ion exchange polymer with a thickness of at least about 2 μ provided at each surface of the membrane and most preferably has at least about 5 μ provided at each surface of the membrane.”). Accordingly, where this pure layer is made obvious by Spethmann as discussed above, the composite layer has a thickness of 40 microns, and the pure layers have a total thickness of 10 microns, resulting in structure where the thickness of the composite layer is 80% of a thickness of the entire polymer electrolyte membrane, as well as having a thickness of the entire polymer electrolyte membrane of 50 microns, satisfying the limitation of claim 5.
Regarding Claim 8, modified Fuller makes obvious the invention of claim 1. Additionally, Fuller further discloses structure wherein the first and second porous sub-supports are in contact with each other (Paragraph 0015, “In another embodiment, a method for making multilayer composites of the invention involves laying down a plurality of porous support structures on top of one another”).
Regarding Claim 9, modified Fuller makes obvious the invention of claim 1. Additionally, Fuller further discloses structure wherein the porous support further comprises a third porous sub-support in contact with the second porous sub-support (Paragraph 0044, “Composite membranes combining two layers and three layers are preferred. In various embodiments, an improvement in strength of the membrane is observed even when there are two layers. When the composite membrane layers contain three layers, a preferred embodiment is for relatively thicker layers to form outside layers, while a third layer is a center inside layer.”).
Regarding Claim 10, modified Fuller makes obvious the invention of claim 1. Fuller further discloses structure where the first and second ionomer are identical (Paragraph 0020, “As illustrated, a plurality of support layers 1 are adhered in adjacent fashion to one another, and ionomer 2, shown as particles, is imbibed into each support layer and into the interface 3 between adjacent support layers 1.”).
Regarding Claim 11, modified Fuller makes obvious the invention of claim 1. Fuller further discloses a membrane electrode assembly comprising an anode, a cathode, and a polymer electrolyte membrane according to claim 1, disposed between the cathode and the anode (Paragraph 0007, “Fuel cells based on the polyelectrolyte membrane include a membrane electrode assembly having a cathode, an anode, and a proton exchange membrane disposed between the cathode and anode, wherein the proton exchange membrane is a polyelectrolyte membrane of the invention.”).
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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/J.W.E./Examiner, Art Unit 1725
/Sean P Cullen, Ph.D./Primary Examiner, Art Unit 1725
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