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
Applicant’s arguments with respect to claim(s) 1-5, 21, and 23 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.
Additionally, though the applicant’s arguments in regards to the MD:TD IPC ratio are moot, it is noted that the applicant’s arguments are directed towards Karpushkin not suggesting a ratio of 1.00 to less than 1.04, while claim 1 recites a ratio of 0.9 to less than 1.04. This is pointed out here to assist in ensuring that the applicant’s future arguments are directed towards the scope which is claimed.
Further, the applicant asserts “Isotropic conductivity properties could be interpreted to encompass a wide range of conductivity values but would not specifically teach the current narrowly claimed range”. While it is true that isotropic conductivity properties could indicate any conductivity value which is the same when measured in both the machine and transverse directions, the specific value of conductivity properties are not claimed. As the claim requires an MD:TD IPC ratio of 0.9 to 1.04, any conductivity values would read on the claim, as long as the ratio of machine direction and transverse direction in-plane conductivity values falls within the claimed range.
Claim Objections
Claims 1 objected to because of the following informalities:
Claim 1 is objected to due to the phrase “where the membrane has been stretched in both the machine and transverse direction”, due to a lack of a plural on “direction”.
Additionally, claim 1 is objected to due to presenting its limitations in an improper listing format. Claim 1 recites “and said membrane having a ratio of in- plane conductivity in the machine direction to in-plane conductivity in the transverse direction in the range of 0.9 to less than 1.04, where the membrane has been stretched in both the machine and transverse direction at a stretching ratio of 1.7 to 5.”). Here, the final element of the listed limitation should be prefaced with an “and”. A suggested rephrasing to overcome this objection is “, said membrane having a ratio of in- plane conductivity in the machine direction to in-plane conductivity in the transverse direction in the range of 0.9 to less than 1.04, and where the membrane has been stretched in both the machine and transverse direction at a stretching ratio of 1.7 to 5.”
Claim 23 is objected to due to the phrase “where the membrane has been stretched in both the machine and transverse direction”, due to a lack of a plural on “direction”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 21, and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite due to reciting “the range of 0.9 to less than 1.04”, where there is insufficient antecedent basis for this limitation in the claim.
Claim 2 is indefinite due to the inclusion of “(proton/VO2+)” in parentheses, as the parentheses make the claim unclear if the ionic selectivity is required to be a proton/VO2+ selectivity, or if the scope of the parenthesis is optional for the claim.
Claim 3 is indefinite due to reciting “the range of 7 to 25”, where there is insufficient antecedent basis for this limitation in the claim.
Claim 4 is indefinite due to reciting “the range of 9 to 15”, where there is insufficient antecedent basis for this limitation in the claim.
Claim 5 is indefinite due to reciting “the range of 10 μm to 200 μm”, where there is insufficient antecedent basis for this limitation in the claim.
Claim 21 is indefinite due to reciting “the range of 0.9 to 1.02”, where there is insufficient antecedent basis for this limitation in the claim.
Claim 23 is indefinite due to reciting “where the membrane has been stretched in both the machine and transverse direction at a stretching ratio of 2 to 5”, where its parent claim 1 also requires “where the membrane has been stretched in both the machine and transverse direction at a stretching ratio of 1.7 to 5”. Claim 23’s introduction of a second stretching ratio renders the claim unclear, as the language of the claim does not clarify if it requires a second stretching which has been stretched at a different ratio than the stretching of claim 1, or if the claim is presenting a narrower range for the stretching which was introduced in claim 1. Based on the specification’s paragraph 0046, which presents multiple bounds for the range of a single stretching, the claim is interpreted for the purpose of examination as presenting a narrower range for the range of claim 1.
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, 21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murata (US 20060141315 A1).
Regarding Claim 1, Murata discloses a cation exchange membrane (Abstract, “a proton exchange membrane comprising the polymer electrolyte composition.”) comprising a film (Paragraph 0107, “The polymer electrolyte composition of the present invention can be film-formed and used as a proton exchange membrane.”) of fluorinated ionomer containing sulfonate groups (Paragraph 0043, In particular, a perfluorocarbonsulfonic acid polymer represented by the following formula (2) or (3) or a metal salt thereof is preferred”), where a metal salt of a sulfonic acid is a sulfonate, and accordingly a metal salt of perfluorocarbonsulfonic acid polymer is a fluorinated ionomer containing sulfonate groups.
Additionally, Murata discloses that the film has a machine direction and a transverse direction perpendicular to said machine direction (Paragraph 0204, “this film was stretched at 120°C. by a simultaneous biaxial stretching apparatus (manufactured by Toyo Seiki Seisaku-Sho, Ltd.) at a draw ratio of 2.0 times in the machine direction, at a draw ratio of 2.0 times in the transverse direction”).
Additionally, Murata makes obvious the membrane having a water swell in both the machine direction and the transverse direction of less than 5%, where Murata discloses that a preferable dry and wet dimensional change, which is a water swell, is from 0 to 10% (Paragraph 0122, “The dry and wet dimensional change of the proton exchange membrane produced in the present invention is preferably from 0 to 100%, more preferably from 0 to 50%, and most preferably from 0 to 10%.”), further stating that preferably the change in both the machine and transverse direction satisfy the range (Paragraph 0122, “The dimension means a length in the machine or transverse direction of the proton exchange membrane and both lengths preferably satisfy the above-described range.”). Murata further discloses that dimensional stability is a desirable attribute for the membrane (Paragraph 0116, “the proton exchange membrane of the present invention can be easily enhanced in the mechanical strength and the dry and wet dimensional stability.”). Accordingly, it would be obvious to one ordinarily skilled in the art to select a membrane with the highest dimensional stability, which is a water swell of 0%. This makes obvious the limitation of the instant claim which requires that a water swell in both the machine direction and the transverse direction are less than 5%.
Additionally, in regards to the limitation which requires that the membrane has a ratio of in-plane conductivity in the machine direction to in-plane conductivity in the transverse direction in the range of 0.9 to less than 1.04, Murata is silent in regards to any in-plane conductivity of the invention. However, Murata does disclose that minimizing the anisotropy of properties in the film is a desirable feature in the membrane (Paragraph 0107, “In particular, inflation molding is preferred also in view of obtaining a film with small anisotropy.”). Accordingly, it would be obvious to one ordinarily skilled in the art make use of a film with isotropic properties, properties which have the same value when measured in different directions. Accordingly, isotropic properties include conductivity, which in turn includes in-plane conductivity. Where the in-plane conductivity is isotropic, this means that the values of the machine direction in-plane conductivity and transverse direction in-plane conductivity are the same, which is a ratio between these values of 1.0. Accordingly, Murata makes obvious a ratio of in-plane conductivity in the machine direction to in-plane conductivity in the transverse direction of 1.0, which falls within the claimed range of 0.9 to less than 1.04.
Additionally, Murata makes obvious the limitation of the instant claim which requires that the membrane has been stretched in both the machine and transverse directions at a stretching ratio of 1.7 to 5. Specifically, Murata discloses an embodiment which has been stretched in both the machine and transverse directions at a stretching ratio of 2.0 (Paragraph 0204, “and this film was stretched at 120 °C by a simultaneous biaxial stretching apparatus (manufactured by Toyo Seiki Seisaku-Sho, Ltd.) at a draw ratio of 2.0 times in the machine direction, at a draw ratio of 2.0 times in the transverse direction”). Here, Murata further teaches that this proton exchange membrane demonstrates a piercing strength twice as large as a proton exchange membrane with identical compositional features which did not undergo a stretching process (Paragraph 0205, “The piercing strength of this proton exchange membrane was measured by using a handy compression tester (manufactured by Kato Tech Co., Ltd.) (radius of probe: 0.5 mm, piercing rate: 2 mm/s, performed in air at 25.degree. C.) and found to be about 2 times larger than that of the proton exchange membrane of Example 11. Thus, enhancement of the film strength was confirmed.”). Accordingly, Murata makes obvious to one ordinarily skilled in the art a stretching ratio of 2.0 in both the machine and transverse directions to achieve enhanced film strength in the cation exchange membrane, thereby making obvious the limitation of the instant claim which requires that the membrane has been stretched in both the machine and transverse directions at a stretching ratio of 1.7 to 5.
Regarding Claims 3 and 4, Murata makes obvious the invention of Claim 1. Additionally, Murata discloses structure where the membrane’s ion exchange ratio is from 7 to 25, disclosing embodiments which have a ratio of 7 to 12. Murata’s cation exchange membrane’s perfluorocarbonsulfonic acid metal salt has a structure (3) (Paragraph 0043, “In particular, a perfluorocarbonsulfonic acid polymer represented by the following formula (2) or (3) or a metal salt thereof is preferred:”):
PNG
media_image1.png
39
567
media_image1.png
Greyscale
Here, e and g are from about 0 to less than 1, e+g=1, f is an integer of 0 to 10, and Y is a hydrogen atom or an alkali metal atom. For this structure, where e is about 0, g is about 1, f is from 5 to 10, and Y is an alkali metal atom, the cation exchange ratio ranges from 7 to 12, as 7 carbon backbone atoms are present per one proton exchange group SO3Y, thereby satisfying the claim which requires that the ion exchange ratio be from 7 to 25, in regards to claim 3. It would be obvious to one ordinarily skilled in the art to select this set of options based on routine experimentation, as a finite and limited set of options are presented by Murata, thereby making obvious the selection of the options which satisfy the instant claim.
Additionally, in regards to claim 4, when f is from 7 to 10, the ion exchange ratio ranges from 9 to 12, satisfying the limitation of claim 4 which requires that the ion exchange ratio be in the range of 9 to 15.
Regarding Claim 5, Murata makes obvious the invention of Claim 1. Additionally, Murata teaches structure where the cation exchange membrane has a thickness in the range of 10 microns to 200 microns. Murata discloses that the film has a preferable thickness of 5 to 50 microns (Paragraph 0121, “and most preferably from 5 to 50 μm.”), as well as disclosing embodiments which have thickness of 50 microns (Paragraph 0204, “as in Example 11 to obtain a 50 μm-thick proton exchange membrane”), thereby motivating one ordinarily skilled in the art to select a 50 micron thick cation exchange membrane.
Regarding Claim 21, Murata makes obvious the invention of Claim 1. Additionally, where the instant claim requires the membrane has a ratio of in-plane conductivity in the machine direction to in-plane conductivity in the transverse direction in the range of 0.9 to less than 1.02, as discussed above Murata makes obvious structure wherein the membrane has a ratio of in-plane conductivity in the machine direction to in-plane conductivity in the transverse direction of 1.0, which falls within the claimed range of 0.9 to less than 1.02.
Regarding Claim 23, Murata makes obvious the invention of Claim 1. Additionally, as discussed above in regards to claim 1, where Murata makes obvious a membrane which has been stretched in both the machine and transverse direction at a stretching ratio of 2.0, it therefore satisfies the instant claim, which requires that the membrane has been stretched in both the machine and transverse directions at a stretching ratio of 2 to 5.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murata (US 20060141315 A1), further in view of 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 Claim 2, Murata makes obvious the invention of Claim 1. Additionally, the instant specification defines ion selectivity as ion resistance divided by ion permeability in paragraph 0023. Murata discloses a through plane proton conductivity of 0.23 S/cm (Paragraph 0159, “The proton conductivity of the obtained proton exchange membrane was as high as 0.23 (S/cm).”) which is equivalent to 230 mS/cm. However, Murata is silent in regards to ion permeability. Accordingly we look to Karpushkin, which is an analogous art to the instant application, disclosing 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…”). Karpushkin discloses that an optimal permeability of vanadium ions is about 2.5*10-6cm/min (Page 26 column 1, “The Viv permeability and the proton conductivity data in Figure 1 suggested that the membranes treated at intermediate DR of 1.5–1.75 were optimal in view of the vanadium redox-flow batteries applications.”), based on data depicted in their figure 1. Based on Karpuskin’s disclosure that a vanadium ion permeability of 2.5*10-6cm/min is optimal, it would be obvious to one ordinarily skilled in the art to make use of a membrane which has such of an ion permeability. Accordingly, where the proton conductivity is 0.23 S/cm and the ion permeability is 2.5*10-6cm/min, then 230 mS/cm divided by 2.5*10-6cm/min results in a ion selectivity of 92 mS cm-1/10-6 cm2 min-1, which satisfies the limitation of the instant claim which requires that the ion permeability is greater than 60 mS cm-1/10-6 cm2 min-1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN W ESTES whose telephone number is (571)272-4820. The examiner can normally be reached Monday - Friday 8:00 - 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 5712721453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.W.E./ Examiner, Art Unit 1725
/BASIA A RIDLEY/ Supervisory Patent Examiner, Art Unit 1725
Prosecution Insights