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 Amendment
In Applicant’s response dated April 7, 2026, claims 28-40 are amended. Claims 28-40 are pending and examined.
Status of Application
In response to Applicant’s amendments, the Claim Objections provided in the Office Action dated January 15, 2026 are withdrawn. Further, in response to Applicant’s amendments the 35 U.S.C. 112(b) rejections provided in the recited Office Action are withdrawn except those as indicated below. The 35 U.S.C. 103 rejections provided below are modified as necessitated by Applicant’s amendments but are otherwise maintained for the reasons provided in the Response to Arguments. In response to Applicant’s amendments to claim 33, the scope of the claim changed, which resulted in new grounds of rejection provided below.
Claim Rejections - 35 USC § 112(b)
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 28-40 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 28 recites in lines 18-20 “the absolute ratio of the elastic strength of the at least one porous layer in the first axial direction of the porous layer and the elastic strength of the at least one porous layer in the second axial direction of the porous layer”. There is insufficient antecedent basis for this limitation in the claim, making the claim indefinite. For purpose of compact prosecution, the Examiner has interpretated the limitation as “an absolute ratio of the elastic strength of the at least one porous layer in the first axial direction of the porous layer and the elastic strength of the at least one porous layer in the second axial direction of the porous layer”. Appropriate correction is required.
Claims 29-40 depend on claim 28 and are therefore also indefinite.
Claim 31 recites “the first direction “ in line 2. Further, Claim 31 recites in lines 8-9 “the swelling ratio of the composite electrolyte membrane in the second direction”. Further, Claim 31 recites “the second direction “ in lines 8-9. There is insufficient antecedent basis for these limitations in the claim. Also, it is unclear if the recited directions are the same as the first axial direction and second axial direction of claim 1. For purpose of compact prosecution, the Examiner has interpreted the limitations as follows:
Line 2: “a first direction";
Lines 8-9: “a swelling ratio of the composite electrolyte membrane in a second direction”.
Appropriate correction is required.
Claim 37 requires wherein the ion exchange material comprises at least one ionomer and beginning at line 2 recites optional limitations requiring the number of ionomers, a proton conducting polymer, and the materials of the proton conducting polymer, making it unclear what is required for the claim, making the claim indefinite. For purpose of compact prosecution, the Examiner has considered any limitations meet the requirements of the claim.
Clarification is required.
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) 28-32 and 34-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. [US20140370404A1, as provided on the IDS dated 6/6/2024 as EP2800194, as provided on the ISR and WO, and as provided on the IDS dated 11/6/2025], hereinafter Kato.
Regarding Claim 28, Kato discloses a composite electrolyte membrane, the composite electrolyte membrane comprising:
a) at least one porous layer comprising a microporous polymer structure [0045 and throughout]; and
b) an ion exchange material at least partially embedded within the microporous polymer structure and rendering the microporous polymer structure occlusive [0196 and throughout];
wherein the composite electrolyte membrane has a modulus of elasticity in a first axial direction and a modulus of elasticity in a second axial direction of the composite electrolyte membrane of at least about 450 MPa [Kato 0214-0218 and throughout, Kato discloses 1 to 1000MPa [0217], which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Kato does not explicitly disclose the relative humidity as claimed; however, Kato recites the standard used for measuring the modulus of elasticity and the claimed relative humidity range is considered a normal indoor range of relative humidity. Thus, in consideration of these factors and the overlap in the claimed MOE range with the prior art, the prior art applies.]
wherein the at least one porous layer has an elastic strength in the first axial direction and an elastic strength in the second axial direction of the porous layer of at least about 30 N/m [0256 and throughout; Kato discloses a high breaking strength of greater than 300 kgf/cm2. The claimed units are N/m, which generally indicates stiffness and not strength. Further, the claimed strength in N/m would be expected to change with thickness of the porous elastic layer; thus, the claimed strength can be increased by merely increasing the thickness. Further, the skilled artisan would know that the elastic modulus of the membrane is related to the elastic strength of the layers. Since Kato discloses the claimed structure with an elastic modulus overlapping the claimed range and a high strength, it would be expected that the elastic strength of the porous layer meets the claimed elastic strength. Further, Kato discloses the claimed structure, and when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies to the claim limitation.];
wherein an absolute ratio of the modulus of elasticity of the composite electrolyte membrane in the first axial direction of the composite electrolyte membrane and the modulus of elasticity of the composite electrolyte membrane in the second axial direction of the composite electrolyte membrane is from about 0.45 to about 2.20 [Kato 0214 and throughout, Table 1 provides the MD and TD elastic modules for the reinforcing material, which overlaps and obviates the claimed range. It would be expected that the composite electrolyte membrane would have the same or merely close ratios as the reinforcing material. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or are “merely close” a prima facie case of obviousness exists. Further, it would be expected that since Kato discloses the claimed structure and an elastic modulus overlapping the claimed range, the mechanical properties related to the absolute ratio of the modulus of elasticity in the first and second axial directions would overlap the claimed range or be merely close. Further, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies.];
wherein an [see 112b above] absolute ratio of the elastic strength of the at least one porous layer in the first axial direction of the porous layer and the elastic strength of the at least one porous layer in the second axial direction of the porous layer is from about 0.45 to about 2.20 [Kato 0214 and throughout, Table 1 provides the MD and TD elastic modules for the reinforcing material, which reads on the at least one porous layer, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or are “merely close” a prima facie case of obviousness exists. Further, it would be expected that since Kato discloses the claimed structure and an elastic modulus overlapping the claimed range, the mechanical properties related to the absolute ratio of the modulus of elasticity in the first and second axial directions would overlap the claimed range. When the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies.].
Regarding Claim 29, modified Kato discloses the composite electrolyte membrane of claim 28, wherein:
the absolute ratio of the elastic strength of the at least one porous layer in the first axial direction of the porous layer and the elastic strength of the at least one porous layer in the second axial direction of the porous layer is from about 0.45 to about 2.20 [0214 and throughout, Table 1 provides the MD and TD elastic modules for the reinforcing material, which reads on the at least one porous layer, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or are “merely close” a prima facie case of obviousness exists. Further, it would be expected that since Kato discloses the claimed structure and an elastic modulus overlapping the claimed range, the mechanical properties related to the absolute ratio of the modulus of elasticity in the first and second axial directions would overlap the claimed range. When the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies.].
Regarding Claim 30, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein:
1) the composite electrolyte membrane has an ultimate tensile strength in the first axial direction of the composite electrolyte membrane of at least about 55 MPa and/or wherein the composite electrolyte membrane has an ultimate tensile strength in the second axial direction of the composite electrolyte membrane of at least about 60 MPa [0256 and throughout; Kato discloses a high breaking strength of greater than 300 kgf/cm2. Further, the skilled artisan would know that the elastic modulus of the membrane is related to the ultimate tensile strength in each direction. Since Kato discloses the claimed structure with an elastic modulus overlapping the claimed range and a high strength, it would be expected that the ultimate tensile strength in the first and/or second axial direction of the composite electrolyte membrane meets the claimed elastic strengths. Further, Kato discloses the claimed structure, and when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies to the claim limitation.]; and/or
2) a total porous layer ultimate web tensile strength in the first axial direction of the porous layer is of at least about 800 N/m and/or wherein a total porous layer ultimate web tensile strength in the second axial direction of the porous layer is of at least about 800 N/m [Kato 256 and throughout; Kato discloses a high breaking strength of greater than 300 kgf/cm2. The claimed units are N/m, which generally indicates stiffness and not strength. Further, the claimed strength in N/m would be expected to change with thickness of the porous layer; thus, the claimed strength can be increased by merely increasing the thickness. Since Kato discloses the claimed structure with an elastic modulus overlapping the claimed range and a high strength, it would be expected that the strength of the porous layer meets the claimed total porous layer ultimate web tensile strength in the first and second axial directions. Further, Kato discloses the claimed structure, and when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies to the claim limitation.]; and/or
3) a total porous layer elastic strength in the first axial direction of the porous layer is of at least about 30 N/m and/or wherein a total porous layer elastic strength in the second axial direction of the porous layer is of at least about 30 N/m [Kato 256 and throughout; Kato discloses a high breaking strength of greater than 300 kgf/cm2. The claimed units are N/m, which generally indicates stiffness and not strength. Further, the claimed strength in N/m would be expected to change with thickness of the porous layer; thus, the claimed strength can be increased by merely increasing the thickness or number of layers. Since Kato discloses the claimed structure with an elastic modulus overlapping the claimed range and a high strength, it would be expected that the elastic strength of the porous layer meets the claimed elastic strength. Further, Kato discloses the claimed structure, and when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies to the claim limitation.].
Regarding Claim 31, modified Kato discloses the composite electrolyte membrane according to claim 28,
wherein a swelling ratio of the composite electrolyte membrane in a first direction is up to about 6 % at about 100 % relative humidity at 100 0C, and/or
wherein a swelling ratio of the composite electrolyte membrane in a second direction is equal or less than about 7 % at about 100 % relative humidity at 100 0C [Kato 0124-0126, 0161 Kato discloses the claimed structure of claim 28 and further discloses methods for controlling the swelling. Further, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same swelling properties. Thus, the prior art applies to the claim limitation.].
Regarding Claim 32, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein the microporous polymer structure of the at least one porous layer comprises a fluorinated polymer [Kato 0195 and throughout],
selected from at least one of: the fluorinated polymer is polytetrafluoroethylene (PTFE) [Kato 0195] and expanded polytetrafluoroethylene (ePTFE) [Kato 0195].
Regarding Claim 34, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein the microporous polymer structure of the at least one porous layer comprises a hydrocarbon polymer [Kato 0228-0254 and throughout],
wherein the hydrocarbon polymer comprises polyethylene, polypropylene, polycarbonate, or mixtures thereof [Kato 0228-0254 and throughout].
Regarding Claim 35, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein :
the composite electrolyte membrane has a thickness from about 10 µm to about 115 µm when measured at 50 % relative humidity at 25°C [Kato 0224, Table 1, Kato discloses 0.1 um to 50 um, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Further, Table 1 provides examples anticipating the claimed range.]. Other “and/or” limitations of claim 35 were treated as not required limitations.
Regarding Claim 36, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein the at least one porous layer has a first surface and a second surface and
wherein the ion exchange material forms a layer on at least one of the first surface or the second surface of the at least one porous layer [Kato 0265, 0330-0332, example 1 and others, Kato discloses impregnating the ion exchange material on a first surface and a second surface, which meets the claim limitation.];
or wherein the at least one porous layer has a first surface and a second surface and wherein an ion exchange material forms a layer on both the first surface and the second surface of the at least one porous layer [Kato 0265, 0330-0332, example 1 and others, Kato discloses impregnating the ion exchange material on a first surface and a second surface, which meets the claim limitation.].
Regarding Claim 37, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein the ion exchange material comprises at least one ionomer[Kato 0064-0065, 0105-0123 and throughout],
optionally (see 112b rejection) wherein at least one of: the ion exchange material comprises at least two ionomers the at least one ionomer comprises a proton conducting polymer [Kato 0064-0065, 0105-0123 and throughout],
wherein one of:
the proton conducting polymer comprises hydrocarbon ionomer [Kato 0064-0065, 0105-0123 and throughout];
the proton conducting polymer comprises perfluorinated ionomer [Kato 0064-0065, 0105-0123 and throughout];
the proton conducting polymer comprises perfluorosulfonic acid [Kato 0064-0065, 0105-0123 and throughout] .
Regarding Claim 38, modified Kato discloses the composite electrolyte membrane according to claim 37, wherein:
the at least one ionomer has a total equivalent weight (EW) from about 500 g/eq to about 2000 g/eq [Kato 0129, Kato discloses 300 to 1300 g/eq, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.].
Regarding Claim 39, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein the modulus of elasticity of the composite electrolyte membrane in the first axial direction and the modulus of elasticity of the composite electrolyte membrane in the second axial direction is independently selected from about 450 MPa to about 2300 MPa at about 50 % relative humidity [Kato 0214, The skilled artisan would expect the MOE of the composite membrane to be similar to or the same as the MOE of the porous layer. Kato does not explicitly disclose the relative humidity as claimed; however, Kato recites the standard used for measuring the modulus of elasticity and the claimed relative humidity range is considered a normal indoor range of relative humidity. Therefore, Kato’s MOE of 1000 MPa or lower either overlaps and obviates or would be considered merely close. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or is “merely close” a prima facie case of obviousness exists. Further, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same mechanical properties. Thus, the prior art applies.].
Regarding Claim 40, modified Kato discloses the composite electrolyte membrane according to claim 28, wherein the composite electrolyte membrane preferentially swells in a third axial direction of the composite electrolyte membrane, wherein the composite electrolyte membrane has a swelling from about 5% to 150% in the third axial direction of the composite electrolyte membrane at about 100% relative humidity and 100 ° C [Kato 0124-0126, 0161 Kato discloses the claimed structure of claim 28 and further discloses methods for controlling the swelling. Further, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kato’s composite electrolyte membrane with the same structure as the claimed structure would have the same swelling properties. Thus, the prior art applies to the claim limitation.].
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato as applied to claim 28 in further view Berta et al. [US20070072036A1], hereinafter Berta.
Regarding Claim 33, modified Kato discloses the composite electrolyte membrane according to claim 32, wherein the fluorinated polymer is perfluorinated expanded polytetrafluoroethylene (ePTFE) [Kato 0195]. Kato is silent to and wherein the composite electrolyte membrane has a total content of microporous polymer structure (mass per unit area) selected from: from -about 5.5 g-m-2 to about 80 g-m-2, based on the a total area of the composite electrolyte membrane. Berta teaches a composite electrolyte membrane with an ion exchange material impregnated throughout a porous microstructure of the expanded PTFE membrane so as to render an interior volume of the expanded PTFE membrane substantially occlusive [Berta 0022 and throughout]. Berta’s example 1 has an absolute ratio of strength of the at least one porous layer of 67/76 [Berta 0119], which anticipates the claimed range of claim 28, and a mass per area of 7.0 g/m2 [Berta 0119], which anticipates the claimed range of total content of claim 33. Further, Berta’s examples 5 and 8 have an absolute strength ratio of 267/282 [Berta 0143, 0151], which anticipates the claimed range of claim 28, and a mass per area of 7.5 g/m2 [Berta 0143, 0151], which anticipates the claimed range of total content of claim 33. Berta’s composite electrolyte membranes are considered analogous art and it would have been obvious to one of ordinary skill in the art before the effective filing date to combine Berta’s teaching of the total content (mass per unit area) of expanded PTFE with Kato’s composite electrolyte membrane for the predictable result of a composite electrolyte membrane with a workable range of total content for impregnation with an ion exchange material [Berta 0022].
Alternative rejection of claim 31:
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato as applied to claim 28 in further view of Lloyd et al. [WO201301299A1, as provided on the IDS dated 6/6/2024], hereinafter Lloyd.
Regarding claim 31, modified Kato discloses the composite electrolyte membrane of 28 as provided in claims 28 and 31 above. Lloyd discloses a composite electrolyte membrane with a microporous ePTFE layer and an ion exchange material at least partially embedded within the microporous structure [Lloyd pgs. 5-6 and throughout], which is considered analogous to the structure of claim 28. Lloyd discloses swelling less than 6% as required by claim 31 [Lloyd pgs. 19-20 and throughout, Fig. 1]. Further Lloyd demonstrates that the amount of swelling is related to membrane thickness (membranes tested were 1.515 mil to 7.745 mil or 38.5 µm to 194 µm). Per Fig. 1, the thinner membrane swelled 2% and the thicker membrane swelled 5.35, both of which anticipate the claimed range of 6%. Lloyd’s test was conducted at 50% RH. Given that Lloyd discloses the same structure as the claimed structure of claim 28 and the overlap of Lloyd’s range with the claimed range, it would be expected by the skilled artisan that Lloyd’s range at 100% relative humidity at 100 ° C would either overlap the claimed range or be merely close. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or are “merely close” a prima facie case of obviousness exists. Further, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Lloyd’s composite electrolyte membrane with the same structure as the claimed structure would have the same swelling properties. Thus, the prior art applies. It would have been obvious to one of ordinary skill in the art before the effective filing date to apply Lloyd’s teaching to Kato’s composite electrolyte layer with the predictable result of a composite electrolyte membrane with resistance to swelling of the composite electrolyte membrane [Lloyd pg. 19, Kato 0124-0126, 0161].
Alternative rejection of claims 31 and 40:
Claim(s) 31 and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato as applied to claim 28 in further view of Kim et al. [US20210242481A1, as provided on the IDS dated 11/6/2025], hereinafter Kim.
Regarding claim 31, modified Kato discloses the composite electrolyte membrane of 28 as provided in claims 28 and 31 above. Kim discloses a composite electrolyte membrane with a microporous ePTFE layer and an ion exchange material at least partially embedded within the microporous structure [Kim 0066-0068 and throughout], which is considered analogous to the structure of claim 28. Kim discloses swelling less than 6% as required by claim 31 [Kim 0020, 0147 Kim discloses less than 2%, which overlaps the claimed range of less than 6% in the first direction and 7% or less in the second direction (see 112b rejection). Kim’s test was not conducted at 100 % relative humidity and 100 ° C as required by the claim, however, given that Kim discloses the same structure as the claimed structure of claim 28 and the overlap of Kim’s range with the claimed range, it would be expected by the skilled artisan that Kim’s range at 100% relative humidity at 100 ° C would either overlap the claimed range or be merely close. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or are “merely close” a prima facie case of obviousness exists. Further, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kim’s composite electrolyte membrane with the same structure as the claimed structure would have the same swelling properties. Thus, the prior art applies. It would have been obvious to one of ordinary skill in the art before the effective filing date to apply Kim’s teaching to Kato’s composite electrolyte layer with the predictable result of a composite electrolyte membrane with resistance to swelling of the composite electrolyte membrane [Kim 0020 and throughout, Kato 0124-0126, 0161].
Regarding Claim 40, modified Kato discloses the composite electrolyte membrane according to claim 28 and further discloses methods for controlling the swelling [Kato 0124-0126, 0161]. Kim discloses wherein the composite electrolyte membrane preferentially swells in a third axial direction of the composite electrolyte membrane [Kim 0147, thickness swell ratio of examples 1 and 2 is greater than the MD length and TD length swelling ratios],
wherein the composite electrolyte membrane has a swelling from about 5% to 150% in the third axial direction of the composite electrolyte membrane at about 100% relative humidity and 100 ° C [Kim 0147, Kim discloses example 1 is 6% and example 2 is 24%. Kim’s test was not conducted at 100 % relative humidity and 100 ° C as required by the claim, however, given that Kim discloses the same structure as the claimed structure of claim 28 and the overlap of Kim’s range with the claimed range, it would be expected by the skilled artisan that Kim’s range at 100% relative humidity at 100 ° C would either overlap the claimed range or be merely close. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" or are “merely close” a prima facie case of obviousness exists. Further, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are assumed to be inherent per MPEP 2112.01, I. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Therefore, the skilled artisan would expect that Kim’s composite electrolyte membrane with the same structure as the claimed structure would have the same swelling properties. Thus, the prior art applies. It would have been obvious to one of ordinary skill in the art before the effective filing date to apply Kim’s teaching to Kato’s composite electrolyte layer with the predictable result of a composite electrolyte membrane with resistance to swelling of the composite electrolyte membrane [Kim 0020 and throughout, Kato 0124-0126, 0161].
Response to Arguments
Regarding Applicant’s arguments on pgs. 8-10 regarding the claim objections provided in the Office Action dated January 15, 2026, Applicant’s amendments are sufficient and thus those objections are fully withdrawn. As discussed above, the Applicant’s amendments to address the substantial number of 35 U.S.C. 112(b) overcome some of the rejections provided in the recited Office Action; however, some of the rejections were not addressed and all of the claims remain rejected for indefiniteness for the reasons described above.
Applicant's arguments on pgs. 11-12 in reference to the claimed elastic strength of the porous layer and the absolute ratio of elastic strength of the porous layer have been fully considered but they are not persuasive. Independent claim 28 broadly claims a composite electrolyte membrane comprising a porous layer comprising a microporous polymer impregnated with an ion exchange material. Kato teaches a composite electrolyte membrane comprising a porous layer comprising a microporous polymer impregnated with an ion exchange material as described in claim 28 above. Thus, the claimed and prior art products are considered identical or substantially identical in structure. The Examiner has recited MPEP 2112, I. Per MPEP 2112, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Thus, the claimed properties of claim 28 would be expected for the broadly claimed structure of claim 28.
To differentiate the instant invention over the prior art, the independent claim should recite structural or compositional limitations demonstrating evidence of novelty or nonobviousness over the prior art.
Additionally, for purpose of compact prosecution, the Examiner has provided pertinent prior art below regarding the claimed elastic strength and absolute ratio of elastic strength for the Applicant’s consideration for further amendments.
For the reasons provided above, evidence of obviousness over the prior art outweighs evidence of nonobviousness and the rejections are maintained.
In response to Applicant’s amendments to claim 33, the scope of the claim changed, which resulted in an additional rejection above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As provided previously: Kazacos et al [US20080292964A1], Kazacos discloses a perfluorinated composite electrolyte membrane 50 µm thick with minimal swelling, 1032 g/eq EW, 37 MPa tensile strength [Kazacos 0020 and throughout], which is relevant to at least claims 28 (elastic strength), 31 (swelling ratio), 32 (fluorinated polymer, PTFE), 35 (thickness), 37/38 (total equivalent weight of ionomer) and 40 (swelling).
Further, Akita et al. [US20110287335A1], Akita discloses a perfluorinated composite electrolyte membrane embedded with polyelectrolyte [Akita 0060] where the elastic strength and absolute ratio of elastic strength overlaps the claimed range [Akita 0076, Table 2 and throughout], which is considered relevant to at least claim 28.
Further, Berta et al. [US20070072036A1], Berta teaches a composite electrolyte membrane with an ion exchange material impregnated throughout a porous microstructure of the expanded PTFE membrane so as to render an interior volume of the expanded PTFE membrane substantially occlusive [Berta 0022 and throughout]. Berta’s examples 1, 5, and 8 meet the limitations of elastic strength and absolute ratio of elastic strength [Berta 0119, 0143, 0151], which is considered relevant to at least claim 28.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. T. LEONARD whose telephone number is (571)270-1681. The examiner can normally be reached Monday, Wednesday, Thursday 9:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at (571)270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M. T. LEONARD/Examiner, Art Unit 1724
/STEWART A FRASER/Primary Examiner, Art Unit 1724
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