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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on 11/24/25 is acknowledged. The traversal is on the ground(s) that that the multiple groups can be searched and examined together without undue burden. This is not found persuasive because all products and methods are patently distinct from one another, thereby results in search burden, and can be made by a different process set forth in the restriction requirements.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 7 recites the limitation "the compound" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-4, 8, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Kim et al. (US 7,488,549).
Regarding claims 1-2, Kim discloses an ionomer comprising a copolymer of
PNG
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154
228
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Greyscale
, wherein R1 and R2 is methyl.
The preamble language of the limitation(s) "an ionomer for a high-temperature polymer electrolyte membrane" has been considered to be a recitation of intended use because the body of each of Claim 1 do not depend on the preamble for completeness. Intended use limitations are not further limiting in so far as the structure of the product is concerned. Note that "in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art." In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458,459 (CCPA 1963). See MPEP § 2111.02." In the instant case, the ionomer of Kim et al. is deemed capable of using for a HTPEM fuel cell. Nevertheless, the fuel cell of Kim is inherently “high-temperature” as it generates heat during operation.
Regarding claim 3, Kim discloses the molecular weight as claimed (col. 4, lines 19-20).
Regarding claim 4, the claim attempts to limit the substituents that are not necessarily required to be part of the structure. It is not clear if the Applicant intends the phosphorus (P)containing functional group comprises a phosphate group, a phosphonate group, or any combination thereof to be a required part of the copolymer structure. In other words, claim 4 further limit what may qualify as a phosphorus (P)containing functional group, but do nothing to narrow the scope of X1 to X4. For the purpose of examining the prior art, the Examiner considers the substituent of claim 4 to be optional, and therefore do not further limit the article.
Regarding claim 8, Kim discloses a PEMFC with the nominal features as claimed (Fig. 1).
Regarding claim 17, Kim discloses a vehicle (Abstract).
Claims 1-2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haring et al. (US 2009/0221787).
Regarding claims 1-2, Haring discloses an ionomer comprising a copolymer of
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92
258
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Greyscale
(Fig. 20), [0039]).
The preamble language of the limitation(s) "an ionomer for a high-temperature polymer electrolyte membrane" has been considered to be a recitation of intended use because the body of each of Claim 1 do not depend on the preamble for completeness. Intended use limitations are not further limiting in so far as the structure of the product is concerned. Note that "in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art." In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458,459 (CCPA 1963). See MPEP § 2111.02." In the instant case, the ionomer of Haring et al. is deemed capable of using for a HTPEM fuel cell. Nevertheless, the fuel cell of Haring is inherently “high-temperature” as it generates heat during operation.
Regarding claim 4, the claim attempts to limit the substituents that are not necessarily required to be part of the structure. It is not clear if the Applicant intends the phosphorus (P)containing functional group comprises a phosphate group, a phosphonate group, or any combination thereof to be a required part of the copolymer structure. In other words, claim 4 further limit what may qualify as a phosphorus (P)containing functional group, but do nothing to narrow the scope of X1 to X4. For the purpose of examining the prior art, the Examiner considers the substituent of claim 4 to be optional, and therefore do not further limit the article.
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.
Claims 3-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 7,488,549) in view of Thomas (US 2010/0063168).
Regarding claims 3-4, Kim discloses an ionomer comprising of
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118
318
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Greyscale
, wherein n=100-100,000 and X1 is SO3H instead of phosphorus (P)containing functional group comprising the phosphorus functional group as claimed.
Thomas discloses an ionomer comprising a copolymer for a fuel cell, which is analogous art to that of Kim, wherein Thomas shows that (C)-phosphorus (P)containing functional group comprising the phosphorus functional group as claimed is an equivalent structure known in the art (Fig. 1). Thomas discloses that the (C)-phosphorus containing functional group is directly attached to an arylene group, which is the same attachment to that of Kim. Therefore, because these two functional groups were art-recognized equivalents before the effective filing ate of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute SO3H for C-phosphorus containing functional group with the structure as claimed in the invention of Kim. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would further have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Kim’s ionomer contain phosphorus containing functional group, as demonstrated by Thomas, in order to obtain a fuel cell with positive impact on the proton conductivity of the ionomers [0010].
Furthermore, Thomas discloses that the (C)-phosphorus containing functional group is directly attached to an arylene group, which is the same attachment to that of Kim. A preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted either SO3H for Thomas’s (C)-phosphorus containing functional group with a reasonable expectation of success and absence of evidence to the criticality of the specific phosphorus functional group and the location of the attachment.
Regarding claim 7, Kim in view of Thomas discloses a phosphorous containing functional groups as set forth above, however, Kim in view of Thomas fails to disclose relation 1 as presently claimed.
However, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
Additionally, a person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to optimize the number of phosphorus group in combination of the repeating units in the overall copolymer since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the overall compound to achieve relation 1 in order to obtain a suitable proton conductivity [0010].
Pertinent Prior Art of Record:
Kerres et al. (Comparative investigation of novel PBI blend ionomer membranes from nonfluorinated and partially fluorinated poly arylene ethers).
Kerres disclose
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148
354
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Greyscale
, however, does not explicitly disclose X= the specific phosphonate groups in claims 5-6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785