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
In regards to the 112 rejections of claims 1-5 and 21-23 in the previous office action of record, the applicant’s amendments to the claims have resolved said issues of indefiniteness, and said rejections are accordingly withdrawn.
Applicant's arguments filed December 16, 2025 have been fully considered but they are not persuasive.
In regards to the 102 rejection of claims 1, 2, 5, and 21-23 over Karpushkin, the applicant asserts that the process of Karpushkin is markedly different than that of the claimed invention, where Karpushkin does not suggest partially releasing the tension during the annealing step, which is shown in the present examples, and that therefore it cannot be inferred that the resulting properties can be inherent if the process steps are different.
Here, this argument has been fully considered but has not been found to be persuasive. Here, in regards to a parameter being inherent, it is not required that the full set of process steps be the same, but rather that process steps which are indicated as being responsible for said parameter are the same. Here, where the instant specification indicates that biaxial stretching of a membrane results in a water swell in the machine direction and transverse direction to be less than about 5% (Paragraph 0045, “In exemplary embodiments, the biaxial stretching causes the membrane to have a water swell in both the machine direction and the transverse direction of less than about 5%,”). Accordingly, where Karpushkin discloses a biaxially stretched membrane (Page 117 column 1, “therefore, the conditioned membranes were biaxially stretched”), their membrane would therefore inherently comprise the same water-swell structure as that of the instant application, based on meeting the required structure in regards to inherency.
Additionally, the applicant asserts that in regards to the in-plane conductivity in the machine and transverse directions, Karpushkin does suggest an MD:TD IPC ratio within the range of 1.00 to 1.04, and that isotropic conductivity properties could be interpreted to encompass a wide range of conductivity values, but would not specifically teach the current narrowly claimed range.
Here, this argument has been fully considered but has not been found to be persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., an MD:TD IPC range of 1.00 to 1.04) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 requires an MD:TD IPC range of 0.9 to less than 1.04, and claim 21 requires an MD:TD IPC range of 0.9 to 1.02. The range of 1.00 to 1.04 is not required by any currently presented claim.
Additionally, in regards to the applicant’s assertion that isotropic conductivity properties could be interpreted as encompassing a wide range of conductivity values, this statement is true, but is not material to the discussion of conductivity ratios. An isotropic conductivity property, based on the dictionary definition of “isotropic” being “having a physical property which has the same value when measured in different directions”, has an MD:TD IPC ratio of 1.0. Here, the claimed feature is the ratio between the MD and TD conductivities, rather than any specific value of conductivity. Accordingly, where Karpushkin discloses isotropic properties within their material (Page 117 column 1, “A definite advantage of biaxially oriented films over the uniaxially oriented ones is the in-plane isotropy of properties”), they therefore to teach a MD:TD IPC ratio of 1.0, which falls within the claimed range.
Additionally, the applicant asserts that the claims have a unique special technical feature because Karpushkin teaches neither the relaxation step or the MD:TD IPC ratio. As discussed above, the relaxation step is neither claimed nor required by the instant claims, and Karpushkin does teach the MD:TD IPC ratio. Additionally, the applicant’s assertion that the instant claims have a unique special technical feature is a statement relevant to the traversal of a restriction requirement based on unity of invention. Here, the applicant’s traversal in the response filed on June 9, 2025 has been recorded, and response to said traversal was presented in the office action of June 25, 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.
Claim(s) 1, 2, 5, and 21-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karpushkin (Effect of Biaxial stretching on the ion conducting properties of Nafion membranes, 2016, (Cited in Applicant’s IDS dated 12/21/21, NPL citation No. 1.)).
Regarding Claims 1 and 21, Karpushkin is an analogous art to the instant application, disclosing structure which comprises a cation exchange membrane comprising a film of fluorinated ionomer containing sulfonate groups (Page 117 column 1, “The commercial ion-exchange Nafion membrane is a semicrystalline sulfonated fluorine-containing polymer consisting of…”). Additionally, Karpushkin discloses that their film comprises both a machine direction and a transverse direction perpendicular to said machine direction through disclosure that their film undergoes biaxial stretching (Page 117 column 1, “therefore, the conditioned membranes were biaxially stretched”), where the film is stretched in a direction which is the machine direction in one axis, and in a direction which is the transverse direction in a second axis.
Additionally, in regards to the limitation which requires structure wherein said membrane has a water swell in both the machine and transverse directions of less than 5%, Karpushkin does not explicitly disclose said structure. However, Karpushkin’s membrane is produced by a process which has the same steps as that of the process of the instant application which produces a membrane that presents the claimed property. Here, the instant specification presents that biaxial stretching is responsible for the water swell value (Paragraph 0045, “In exemplary embodiments, the biaxial stretching causes the membrane to have a water swell in both the machine direction and the transverse direction of less than about 5%,”). As Karpushkin presents that their membrane is biaxially stretched (Page 117 column 1, “therefore, the conditioned membranes were biaxially stretched”), their membrane would therefore inherently comprise the same water-swell structure as that of the instant application. Accordingly, the membrane of Karpushkin therefore inherently comprises the required water-swell of less than 5%.
Additionally, Karpushkin discloses structure where the membrane has an in-plane isotropy of properties (Page 117 column 1, “A definite advantage of biaxially oriented films over the uniaxially oriented ones is the in-plane isotropy of properties”), where said properties includes conductivity. Here, isotropy of conductivity means that the in-plane conductivities are isotropic, or equal. Accordingly, this therefore indicates that a ratio of in-plane conductivity in the machine direction to in-plane conductivity in the transverse direction is 1, thereby inherently satisfying the limitation of the instant claim which requires structure where said ratio is from 0.9 to less than 1.04 as required by claim 1, and where said ratio is from 0.9 to 1.02, as required by Claim 21.
Regarding Claim 2, Karpushkin anticipates the invention of Claim 1. Additionally, Karpushkin discloses an embodiment in their figure 1 (Page 118), which has a Vanadium ion through-plane resistance of 0.2 ohm cm2. Here, this is equivalent to a through-plane conductivity of 200 mS cm-1. Additionally, the same embodiment, at a draw ratio of about 2.1, has a Vanadium ion permeability of about 2.5 10-6 cm2 min-1. Accordingly, where the instant specification defines the ionic selectivity as being expressed as through plane conductivity divided by ion permeability (Paragraph 0023), with units of mS cm-1/10-6 cm2 min-1 specified in the instant claim, the vanadium ion selectivity of the membrane of Karpushkin is therefore 200/2.5, or 80 mS cm-1/10-6 cm2 min-1. Additionally, Karpushkin discloses that their method of determining ion permeability comprises using a two-compartment dialysis cell where the vanadium component is VOSO4 (Page 117 column 2, “The cell compartments (0.8 ml each) were loaded with aqueous solutions of…”) which is the same method of ion permeability determination used by the instant application. This means that the measured cation used in the determination of vanadium ion permeability is VO2+, which results in the vanadium ion permeability being the same as the vanadyl ion permeability, meaning that the vanadyl VO2+ ion selectivity of the membrane of Karpushkin is the same as the vanadium ion selectivity, resulting in structure where the ionic selectivity is 80 mS cm-1/10-6 cm2 min-1, which is greater than 60 mS cm-1/10-6 cm2 min-1 as required by the instant claim.
Regarding Claim 5, Karpushkin anticipates the invention of Claim 1. Additionally, Karpushkin discloses that their invention makes use of Nafion 112, which is a product which is a membrane with an initial thickness of 50 microns (Supported by Yasuo (US 20020146616 A1, Paragraph 0052, “for instance, a Nafion 112 membrane made by Dupont with a thickness of 50 μm)”). Additionally, Karpushkin discloses an embodiment with a draw ratio where the membrane shas been stretched in both the machine and transverse direction at a stretching ratio of about 2.1 as shown in their figure 1 (Page 118) , disclosing that their draw ratio represents a ratio of biaxial stretching (Page 117, column 1, “This work was aimed at investigating the properties of Nafion membranes subject to annealing at different temperatures and simultaneous biaxial stretching to different draw ratios”). Here, a stretching across the plane of the membrane would have an effect on the thickness of the membrane which would range from maintaining the initial thickness (experiencing a maximum reduction of density due to stretching), to having a thickness that is reduced based on maintaining a constant volume of the membrane (having no reduction of density due to stretching). Here a stretching of 2.1 along the plane of the membrane would result then, in a thickness reduction to at most (1/2.1)%, thereby resulting in a thickness that ranges from 23.8 microns to 50 microns, which falls within the range of the instant claim that requires the thickness to be from 10 to 200 microns.
Regarding Claims 22 and 23, Karpushkin anticipates the invention of Claim 1. Additionally, Karpushkin discloses an embodiment where the membrane shas been stretched in both the machine and transverse direction at a stretching ratio of about 2.1 as shown in their figure 1 (Page 118) , disclosing that their draw ratio represents a ratio of biaxial stretching (Page 117, column 1, “This work was aimed at investigating the properties of Nafion membranes subject to annealing at different temperatures and simultaneous biaxial stretching to different draw ratios”), which falls within the stretching ratio range of 1.1 to 5 of Claim 22, and 2 to 5 of claim 23.
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.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karpushkin (Effect of Biaxial stretching on the ion conducting properties of Nafion membranes, 2016, (Cited in Applicant’s IDS dated 12/21/21, NPL citation No. 1.)) in view of Hamdy (Impact of ultraviolet radiation on the performance of polymer electrolyte membrane, Published May 9, 2020, Journal of Solid State Electrochemistry 24:1217–1229).
Regarding Claims 3 and 4, Karpushkin anticipates the invention of Claim 1. Additionally, in regards to the limitation of the instant claim 3 which requires structure which has an ion exchange ratio in the range of 7 to 25, and claim 4 which requires that said ratio be from 9 to 15, though Karpushkin discloses the use of the membrane Nafion 112 (Page 117 column 1 “Nafion 112 membranes”), they are silent in regards to the specific structure of said membranes. Therefore we look to Hamdy, which is further analogous to the instant application, examining the properties of Nafion 112 (Abstract, “The effect of ultraviolet (UV) radiation, with wide range of wavelengths, on Nafion 112 membrane was studied”).
Here, Hamdy discloses the general chemical formula of Nafion 112 in their figure 1, presented below:
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Here, the Nafion 112 membrane comprises at least 9 carbon atoms per one cation exchange SO-3H group, where the group is identified as such by Hamdy (Page 1218 column 1 “The exemplified structure of hydrolyzed Nafion is shown in Fig. 1, where the sulfonic acid group is shown in its anhydrous form, SO3H. When exposed to water, the hydrolyzed form (SO3− H3O+) appears, allowing for proton transport across the material. Though Hamdy is silent in regards to the values of x and y in the formula of the Nafion polymer, as the function of Nafion is to transport protons through the material (Page 1217 column 1, “The intended function of the membrane was to provide a proton-conducting and a gas barrier. In the 1960s, PEM turned out to be a key factor for the fuel cell, since it acts as an electrolyte and the structure of the interface between PEM and [electrode catalyst] controls the reaction kinetics. From this understanding, a substantial part of the fuel cell related research was focused on improving PEM properties, developing a stronger, more durable and flexible solid polymer electrolyte, and increasing its proton conductivity. Currently, Nafion is the PEM that serves as a benchmark in the fuel cell industry.”), it would therefore be obvious to one ordinarily skilled in the art to make use of a Nafion 112 membrane with the maximum possible ratio of cation exchange groups to carbon backbone atoms, thereby making obvious the case where x and y are 1, thereby resulting in the ion exchange ratio being 9, which satisfies both the limitations of Claims 3 and 4, which require it be from 7 to 25, and be from 9 to 15 respectively.
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.
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/J.W.E./Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725