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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on 03/02/2026.
Status of Rejections
The rejection(s) of claim(s) 12 is/are obviated by the Applicant’s cancellation.
All other previous rejections are withdrawn in view of the Applicant’s amendments.
New grounds of rejection are necessitated by the Applicant’s amendments.
Claims 1, 3, 4, 17, 22-27, 33, 58-61, 64, 65, 68, 69, 71, and 80 are pending and under consideration for this Office Action.
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.
Claim(s) 1, 3, 4, 17, 22-27, 33, 58-61, 64, 65, 68, 71, and 80 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coates et al (US 20130296499
A1) in view of Park et al (US 20170365864 A1).
Claim 1: Coates discloses a material, comprising a polyelectrolyte (see e.g. abstract) wherein the polyelectrolyte comprises a first repeat unit selected from a moiety represented by the structural formula I (see e.g. abstract):
PNG
media_image1.png
320
412
media_image1.png
Greyscale
Formula 1 of Claim 1
PNG
media_image2.png
714
776
media_image2.png
Greyscale
Polyelectrolyte of Coates
wherein:
PNG
media_image3.png
78
38
media_image3.png
Greyscale
indicates the point of attachment to other repeat units;
R11 (R1a) can be a C1-15 alkyl (see e.g. [0007]);
R12 and R13 (R2b and R1b) each independently, can be C1-15 alkyl or a C5-10 cycloalkyl (see e.g. [0007]);
Z11 (Z1) is a C1-10 alkylene (see e.g. [0007]);
X- is OH- (see e.g. [0007] and [0036]); and
As shown above, Coates discloses a finite list of possibilities for R11, R12, and R13. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify Coates by selecting C1-4 alkyl for R11 (R1a), C1-4 alkyl or a C5-7 cycloalkyl for R12 (R2b), and C1-4 alkyl or a C5-7 cycloalkyl for R13 (R1b) because KSR rationale E states that it is obvious to choose from “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’.
Coates does not explicitly teach that material is part of a composite material, comprising a reinforcement material and the polyelectrolyte in contact with said reinforcement material, wherein the reinforcement material is a porous material; the porous material has 70% to 85% porosity, and the porous material is impregnated with the polyelectrolyte.
Coates teaches that the polyelectrolyte is intended to be used in a membrane for a fuel cell (see e.g. [0002] and [0006]). Park teaches a membrane for fuel cells (see e.g. [0004]) comprising a composite of a polyelectrolyte and a reinforcement material (see e.g. [0013]), wherein the reinforcement material is a porous material (see e.g. [0023]); and the porous material is impregnated with the polyelectrolyte (see e.g. [0027]; [0042]; [0047]) with a porosity ranging from 50-90% (see e.g. abstract). The membrane of Park is shaped for easy coating and impregnation with electrolytes that has good ion mobility (see e.g. [0013]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to incorporate the polyelectrolyte taught in Coates into a fuel cell membrane, such as that taught in Park because the polyelectrolyte of Coates is explicitly designed to be used be used with said membranes and the membrane of Park is designed to work with the polyelectrolytes in Coates. MPEP § 2144.07 states that ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’.
Claim 3: Coates in view of Park teaches that the reinforcement material comprises a polyolefin (such as polypropylene, e.g. [0020] of Park).
Claim 4: Coates in view of Park teaches that the reinforcement material comprises a perfluorinated polyolefin (see e.g. [0020]; [0047]; [0048] of Park).
Claim 17: Coates in view of Park teaches that the average size of pores of the porous material is from 0.01 µm to 100 µm, overlapping with the claimed range of about 300 nm to about 1 µm. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)’.
Claim 22: Coates in view of Park teaches that the polyelectrolyte further comprises a second repeat unit Z2, wherein Z2 is can be a linear C1-10 alkylene (see e.g. [0020] and [0022]). Coates discloses a finite list of possibilities for Z2. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify Coates by selecting a C2-8 alkylene because KSR rationale E states that it is obvious to choose from “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states ‘The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)’.
Claim 23: Coates in view of Park discloses that the polyelectrolyte comprises at least a first polymer chain and a second polymer chain, and the first polymer chain is cross-linked to the second polymer chain (see e.g. [0035] of Coates).
Claim 24: Coates in view of Park teaches that the polyelectrolyte further comprises at least one connecting moiety (see e.g. [0025] and [0035]).
Coates in view of Park does not explicitly teach that the connecting moiety is
PNG
media_image4.png
582
340
media_image4.png
Greyscale
wherein
PNG
media_image5.png
108
34
media_image5.png
Greyscale
indicates the point of attachment of the connecting moiety to the first polymer chain;
PNG
media_image6.png
110
24
media_image6.png
Greyscale
indicates the point of attachment of the connecting moiety to the second polymer chain;
Y11, Y13, each independently, is a C1-3 alkylene;
Y12 is a C2-io alkylene or a (C1-3 alkylene)(C6 aryl)(C1-3 alkylene).
However, the polymer of Coates in considered to substantially similar to that of the instant invention (see rejection of claim 1 above) formed by a substantially similar method (ROMP, see e.g. [0058] of the instant PGPub and [0034] of Coates) and would, therefore, be expected by a person having ordinary skill in the art before the effective filing date of the instant invention to have similar properties, such as having the connecting moiety with the formula above.
Claim 25: Coates in view of Park discloses that the polyelectrolyte comprises at least a first polymer chain, a second polymer chain, and a third polymer chain, and the first polymer chain is cross-linked to the second polymer chain and to the third polymer chain (see e.g. [0035] of Coates).
Claim 26: Coates in view of Park teaches that the polyelectrolyte further comprises at least one connecting moiety (see e.g. [0025] and [0035] of Coates).
Coates in view of Choi does not explicitly teach that the connecting moiety is
PNG
media_image7.png
172
328
media_image7.png
Greyscale
or
PNG
media_image8.png
242
302
media_image8.png
Greyscale
PNG
media_image5.png
108
34
media_image5.png
Greyscale
indicates the point of attachment of the connecting moiety to the first polymer chain;
PNG
media_image6.png
110
24
media_image6.png
Greyscale
indicates the point of attachment of the connecting moiety to the second polymer chain;
PNG
media_image9.png
52
22
media_image9.png
Greyscale
indicates the point of attachment of the connecting moiety to the third polymer chain; and R6 is H or a C(O)O(C1-3 alkyl).
However, the polymer of Coates in considered to substantially similar to that of the instant invention (see rejection of claim 1 above) formed by a substantially similar method (ROMP, see e.g. [0058] of the instant PGPub and [0034] of Coates) and would, therefore, be expected by a person having ordinary skill in the art before the effective filing date of the instant invention to have similar properties, such as having the connecting moiety with the formula above.
Claim 27: Coates in view of Park discloses that R11 methyl (see e.g. [0018] of Coates).
Claim 33: Coates in view of Park discloses that R12 is methyl (see e.g. [0018] of Coates).
Claim 58: Coates in view of Park discloses that R13 is methyl (see e.g. [0018] of Coates).
Claim 59: Coates in view of Park discloses that Z2 is a linear unsubstituted C2-8 alkylene (see rejection of claim 22 above).
Claim 60: Coates in view of Park discloses that Z2 is a linear C8 alkylene (see rejection of claim 22 above).
Claim 61: Coates in view of Park discloses that Z2 is a linear C8 alkylene (see rejection of claim 22 above).
The limitation claiming “optionally substituted with a C1-3 alkyl, a C1-3 haloalkyl, a C1-3 alkyl(C6-14 aryl), or a - (C1-3 alkylene)O(C1-3 alkylene)(C6-14 aryl)” is an optional limitation that does not limit the claim. MPEP § 2143.03 states ‘Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir.
2009).’
Claim 64: Coates in view of Park does not explicitly teach that Z2 is a chemical moiety represented by the following structural formula:
PNG
media_image10.png
108
196
media_image10.png
Greyscale
However, the polymer of Coates in considered to substantially similar to that of the instant invention (see rejection of claim 1 above) formed by a substantially similar method (ROMP, see e.g. [0058] of the instant PGPub and [0034] of Coates) and would therefore, be expected by a person having ordinary skill in the art before the effective filing date of the instant invention to have similar properties, such as having the moiety with the formula above.
Claim 65: Coates in view of Park does not explicitly teach that R4 and R5 is each independently H or a C3-8 alkenyl, or R4 and R5 taken together with the carbon atoms to which they are attached form a C5-7 cycloalkyl.
However, the polymer of Coates in considered to substantially similar to that of the instant invention (see rejection of claim 1 above) formed by a substantially similar method (ROMP, see e.g. [0058] of the instant PGPub and [0034] of Coates) and would therefore, be expected by a person having ordinary skill in the art before the effective filing date of the instant invention to have similar properties, such as having the moiety with the formula above.
Claim 68: Coates in view of Park teaches that the polyelectrolyte is represented by the formula (see e.g. [0007], [0020], [0024], and [0032] of Coates):
PNG
media_image11.png
316
494
media_image11.png
Greyscale
wherein n is an integer from 5-100 (by converting the ratio to integers, see e.g. [0024] of Coates);
m is an integer from 0-95 (see e.g. [0024] of Coates).
Claim 69: Coates in view of Park teaches that the polyelectrolyte is represented by the formula (see e.g. [0007], [0018]], [0020], [0024], and [0033] of Coates):
PNG
media_image12.png
188
484
media_image12.png
Greyscale
Claim 71: Coates in view of Park discloses that the polyelectrolyte comprises from about 0.05-100 wt% of the first repeat units represented by structural formula I (see e.g. [0024] of Coates), which overlaps with the claimed range of about 20 to about 60 wt%. MPEP § 2144.05 I states ‘In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)’.
Claim 80: Coates in view of Park discloses a membrane electrode assembly, comprising; a membrane comprising a film of the composite material of Claim 1 (see rejection of claim 1 above), and an electrode (fuel cells inherently include electrodes, see e.g. abstract).
Response to Arguments
Applicant’s arguments filed 03/02/2026 with respect to the rejection(s) of the claim(s) under 35 USC 103 over Coates et al (US 20130296499 A1) in view of Choi et al (US 20130288157 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC 103 over Coates in view of Park.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. 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, Luan Van can be reached at 571-272-8521. 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.
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795