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 .
DETAILED ACTION
Applicant’s response filed September 29, 2025 is acknowledged. Claims 1, 8, and 19-20 are amended and claims 3, 7, 11-13, 18, and 21 are canceled. Claims 1-2, 4-6, 8-10, 14-17, 19-20, and 22-26 are pending and further considered on the merits.
Response to Amendment
In light of applicant’s amendment, the examiner modifies the grounds of rejection set forth in the office action filed July 1, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 recites a method of forming a cross-linked polymeric membrane having a gel content greater than or equal to 95%, where the contacting with the cross-linking agent is for a pre-determined period of time between 1 minute to 120 hours. However, the disclosure is silent with respect to achieving a gel content higher than 95% with cross-linker contact time periods of 1 minute. Since the originally filed disclosure does not support the embodiment presented in claim 10, claim 10 is considered new matter.
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) 1-2, 4-6, 8-10, 14-17, 19-20, and 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murdock et al., US 2020/0087473 (Murdock, of record) in view of Farahani et al., WO 2019/209177 (Farahani, IDS). For the purposes of examination, the examiner is relying on the national stage entry of WO 2019/209177, hereinafter referred to/from as US 2021/0236998 (Farahani).
Regarding claims 1-2, 4-6, and 8, Murdock discloses a method of forming a cross-linked polymeric membrane (abstract, ¶ 0065), the method comprising:
Contacting a polybenzimidazole membrane (see “PBI gel membranes”, ¶ 0065) with a cross-linking solution (see “a,a’-dichloro-p-xylene”, ¶ 0065) to form the cross-linked polymeric membrane;
Wherein the cross-linking solution comprises a cross linker dissolved in a polar protic solvent such as methanol (see “methanol”, ¶ 0065).
Murdock does not explicitly disclose an example where an acyl halide-containing cross linker such as terephthaloyl chloride is used. However, Murdock discusses alternative cross-linking agents for PBI membranes based on a desired reactive functionality, where the cross-linking agents include terephthaloyl chloride (¶ 0150). Additionally, Farahani discloses that a variety of acyl halide cross linking agents such as trimesoyl chloride are effective in crosslinking PBI membranes (¶ 0011).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the method of Murdock to utilize an acyl halide-containing cross linker as described in Murdock and Farahani in order to incorporate a desired reactive functionality into the cross-linked polymeric membrane, where the acyl halide cross linking agent is recognized as a viable and well-known alternative and produces no more than predictable and reliable results, absent evidence to the contrary.
Murdock does not disclose a method where the polymeric membrane has a gel content greater than or equal to 95%. However, Farahani discloses methods of forming a polymeric membrane comprising a gel content of at least 80% (¶ 0072) with cross-linking contact times of up to 120 hours (¶ 0016, 0059).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the method of Murdock to provide polymeric membranes having a gel content equal to or greater than 95%, since it is desirable to have stable PBI membranes (Farahani, ¶ 0003, 0043, 0072) and discovering an optimum value (% gel content) of a result effective variable (in relation to cross-linking contact time) involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.05, Section II, Part B).
Regarding claims 9-10, Murdock (in view of Farahani) discloses a method where the cross-linking contacting occurs at a temperature between 5-100°C for a time between 1 minute to 120 hours (¶ 0065).
Regarding claims 14-15, Farahani further discloses performing solvent exchange with a polar protic solvent comprised in the cross-linking solution on the polymeric membrane prior to a cross-linker contacting step (see “THF”, ¶ 0080-0081), where the
Regarding claim 16, Murdock (in view of Farahani) discloses a method where the cross-linked membrane has a thickness between 1-1000 microns (¶ 0012).
Regarding claim 17, Murdock (in view of Farahani) discloses a method wherein the cross-linked polymeric membrane is hydrophilic (see “polybenzimidazole”, ¶ 0005).
Regarding claims 19-20, 22-24, and 26, Murdock (in view of Farahani) is relied upon in the rejections set forth above, where the membrane has a polymer gel content of greater than or equal to 95% after polymer dissolution (¶ 0062-0066).
Regarding claim 25, Murdock (in view of Farahani) discloses a membrane in the form of a flat sheet membrane (¶ 0062-0066).
Response to Arguments
Applicant's arguments filed September 29, 2025 have been fully considered but they are not persuasive.
Applicant argues that the use of methanol in the method of Murdock teaches away from the primary purpose of Murdock in producing PBI membranes without the use of organic solvents. This argument is not found persuasive. Murdock does not use methanol during the production of the PBI membranes. Rather, Murdock utilizes methanol in the post-membrane cross-linking step (¶ 0065-0066).
Applicant’s remaining arguments with respect to the rejection(s) of claim(s) 1 and 19 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 in view of Farahani et al., US 2021/0236998.
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 DIRK R BASS whose telephone number is (571)270-7370. The examiner can normally be reached 8-4:30 EST Monday-Friday.
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, Bobby Ramdhanie can be reached at (571) 270-3240. 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.
DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/ Primary Examiner, Art Unit 1779
Prosecution Insights