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 .
Election/Restrictions
Applicant’s election of species without traverse in the reply filed on 1/6/2026 is acknowledged.
Claims 2, 3, 6, 7, 9-11, 13, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/6/2024.
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, 4, 5, 8, 12, and 15-20 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 recites a Markush group for X1 worded according to the format A, B, optionally C, and mixtures thereof. It is generally unclear what is meant or implied by the inclusion of “optionally” with respect to the list of species. A Markush group is a closed list of alternatives and thus, the selection of only one or a mixture from the list is already being required (i.e. in a Markush listing, all listed species are “optional” so long as one is present). It is unclear if the recitation of “optionally” is simply redundant or if it is meant to indicate X1 in formula (I) itself is not required. For instance, if one chooses “optionally C” from the list, does this mean X1 is no longer a required feature of formula (I)? The term “optionally” within the listing of potential alternatives gives rise to ambiguity as to its intended scope. See MPEP 2173.05(h)(II).
Claim 1 recites “wherein Y1- or Y2- or both are R50-C(O)-O-”. The scope of the claim is indefinite as the claim fails to define what the other Y is if only one of Y1 or Y2 is R50-C(O)-O-. Accordingly, the intended scope of the claim is unclear.
Claim 1 includes the structure
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. The image is distorted to the extent that it is uncertain whether a R2-C=CH2 is being required or if the bottom portion corresponds to two fused benzene rings. Therefore, the intended scope of the claim is unclear.
As claims 4, 5, 8, 12, and 15-20 depend from claim 1, they are rejected for the same issues discussed above.
Claim 8 recites a Markush group for X1’ worded according to the format A, B, optionally C, and mixtures thereof. It is generally unclear what is meant or implied by the inclusion of “optionally” with respect to the list of species. A Markush group is a closed list of alternatives and thus, the selection of only one or a mixture from the list is already being required (i.e. in a Markush listing, all listed species are “optional” so long as one of them is present). It is unclear if the recitation of “optionally” is simply redundant or if it is meant to indicate X1’ itself is not required. For instance, if one chooses “optionally C” from the list, does this mean X1’ is no longer a required feature? The term “optionally” within the listing of potential alternatives gives rise to ambiguity as to its intended scope. See MPEP 2173.05(h)(II).
Claim 8 includes the structure
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. The image is distorted to the extent that it is uncertain whether a R2-C=CH2 is being required or if the bottom portion corresponds to two fused benzene rings. Therefore, the intended scope of the claim is unclear.
As claim 12 depends from claim 8, claim 12 is rejected for the same issues discussed above.
Claim Rejections - 35 USC § 102
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, 4, 5, 8, 12, and 15-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (CN111303360A). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 4, 5, 8, and 12, the following two rationales are presented in the alternative.
RATIONALE 1: Wang teaches anion exchange polymers of the structure:
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(Example 4), consistent with Applicant’s election of species. The above polymer is created via polycondensation of phenanthrene, terphenyl, and N-methyl-4-piperidinone in an acidic media comprising trifluoroacetic acid, neutralizing the resulting polymer salt with potassium carbonate, isolating tertiary amine containing polymer, quaternizing with methyl iodide, and then exchanging iodide anions for hydroxide. The initial salt intermediate prior to K2CO3 neutralization would comprise repeating residues of phenanthrenylene, triphenylene, and X1 residues of
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where R30 = alkyl (methyl), R31 is hydrogen, and Y1- is CF3-C(O)-O- owing to the acidic medium used. Therefore, the instantly claimed polymers are anticipated by Wang.
RATIONALE 2: Wang teaches anion exchange polymers of the structure:
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(Example 4), consistent with Applicant’s election of species. The above polymer comprises repeating residues of phenanthrenylene, triphenylene, and X1 residues of
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where R30 and R31 = alkyl (methyl). The examiner selects the claimed option that only Y2- is R50-C(O)-O-, of which it does not appear claim 1 requires Y1- is any particular anion should such a selection be made. Therefore, the instantly claimed polymers are anticipated by Wang.
Regarding Claim 15, Wang discloses an anion exchange membrane comprising anion exchange polymer such as those relied upon in RATIONALE 2 (film formation and ion exchange of Example 1; Page 10 penultimate paragraph).
Regarding Claim 16, Wang teaches the anion exchange membranes can be used in fuel cells (Page 3).
Regarding Claims 17 and 18, Wang describes thin-film composite membranes (e.g. 5-500 microns) comprising a porous substrate material impregnated or coated with the anion exchange polymer (Page 5, Paragraphs 5-10).
Claim Rejections - 35 USC § 103
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) 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN111303360A) in view of Yan (US 2019/0036143 A1).
Regarding Claims 19 and 20, Wang teaches anion exchange polymers of the structure:
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(Example 4), consistent with Applicant’s election of species. The above polymer comprises repeating residues of phenanthrenylene, triphenylene, and X1 residues of
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where R30 and R31 = alkyl (methyl). The examiner selects the claimed option that only Y2- is R50-C(O)-O-, of which it does not appear claim 1 requires Y1- is any particular anion should such a selection be made.
Wang discloses an anion exchange membrane comprising anion exchange polymer. Wang teaches the anion exchange membranes can be used in fuel cells (Page 3). Wang differs from the subject matter claimed with respect to the particulars of electrode assembly of claims 19 and 20.
Yan also pertains to the use of aryl piperidone materials in fuel cell assemblies (Abstract; Examples). Yan teaches membrane electrode assemblies (“10” in Figure 1; ¶ 82) comprising anion exchange polymer, anode (“12” of Figure 1) comprising anode catalyst (“26” of Figure 1) on a first surface of the membrane; cathode (“14’ of Figure 1) comprising cathode catalyst (“28” of Figure 1) on a second surface of the anion exchange membrane (“16” of Figure 1). Yan further describes anode transport layer (gas diffusion layer; “18” of Figure 1; ¶ 82) adjacent to anode (“12” of Figure 1) and a cathode porous transport layer (gas diffusion layer “20” of Figure 1; ¶ 82) adjacent to the cathode (“14” in Figure 1).
Wang teaches the exchange polymers possess high ionic conductivity, good mechanical properties, and good chemical stability (Page 10). It would have been obvious to one of ordinary skill in the art to utilize the anion exchange polymers of Wang in assemblies such as those taught by Yan because such polymers possess high ionic conductivity, good mechanical properties, and good chemical stability as taught by Wang.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 8, 12, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. U.S. Pat. No. 11,980,879. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 1 of ‘879 pertains to anion exchange polymers of the formula [(Ar1-X1)n-(Ar2-X1)m- whereby Ar1 is directed toward instantly claimed species and X1 can be of any of the listed formulae for X1 in the instant claims. X1 of ‘879 and of instant claims are not patentably distinct as both can be
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or alternatively, X1 can be of
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whereby only Y2- is one of the listed anions. Therefore, ‘879 anticipates the present claims. The remaining limitations of the claims are found within the claims of ‘879.
Claims 1, 4, 8, 12, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/823,975. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 1 of ‘975 pertains to anion exchange polymers of the formula [(Ar1-X1)n-(Ar2-X1)m- whereby Ar1/Ar2 is directed toward instantly claimed species and X1 can be of any of the listed formulae for X1 in the instant claims. X1 of ‘975 and of instant claims are not patentably distinct as X1 can be of
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whereby only Y2- is one of the listed anions. Therefore, ‘975 anticipates the present claims. The remaining limitations of the claims are found within the claims of ‘975.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 8, 12, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/438,762. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 3 of ‘762 pertains to anion exchange polymers of the formula [(Ar1-X1)n-(Ar2-X1)m- whereby Ar1 is directed toward instantly claimed species and X1 can be
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. Therefore, ‘762 anticipates the present claims. The remaining limitations of the claims are found within the claims of ‘762.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 5, 8, 12, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/532,047. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 1 of ‘047 pertains to anion exchange polymers of the formula [(Ar1-X1)n-(Ar2-X2)m- whereby Ar1 is directed toward instantly claimed species and X1 can be of any of the listed formulae for X1 in the instant claims. The anion of X1 can be those instantly claimed (Claims 5 and 14). The remaining limitations of the claims are found within the claims of ‘047.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, 5, 8, 12, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/775,222. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 1 of ‘222 pertains to anion exchange polymers of the formula [(Ar1-X1)n-(Ar2-X2)m- whereby Ar1 is directed toward instantly claimed species and X1 can be of any of the listed formulae for X1 in the instant claims. The anion of X1 can be those instantly claimed (Claims 8 and 20). The remaining limitations of the claims are found within the claims of ‘222.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759