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 02/02/2026.
Status of Rejections
The previous rejections of the previously presented claims are maintained and updated in response to the Applicant’s amendments.
New grounds of rejection are presented in response to the Applicant’s amendments.
Claims 1-18 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-18 are 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 1: The limitation claiming “the solid polymer electrolyte membrane does not comprise a fluorinated polymer having carboxylic acid type ion-exchange groups” is considered new matter. The specification claims that the membrane can include carboxylic acid type ion exchange groups ([0010,] [0031]) but does not state anywhere that membrane explicitly does not comprise a fluorinated polymer having carboxylic acid type ion-exchange group.
Claim 10: The limitation claiming “the solid polymer electrolyte membrane does not comprise a fluorinated polymer having carboxylic acid type ion-exchange groups” is considered new matter. The specification claims that the membrane can include carboxylic acid type ion exchange groups ([0010,] [0031]) but does not state anywhere that membrane explicitly does not comprise a fluorinated polymer having carboxylic acid type ion-exchange group.
Any claims dependent on the above claims are rejected for their dependence.
Claim Rejections - 35 USC § 112(b)
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 4 and 15 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.
Claims 4 and 15: Both claims claim that the range of TAAVE/TBAVE is at least 1.95. However, the claims these two claims depend on claim a TAAVE/TBAVE ratio of 1Howev111111111111.20-3.00. It is unclear how both ranges can both be true.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 15 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 4 and 15: Both claims claim that the range of TAAVE/TBAVE is at least 1.95. However, the claims these two claims depend on claim a TAAVE/TBAVE ratio of 1Howev111111111111.20-3.00. 37 C.F.R 1.5 (c) states “One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application” and 35 USC § 112(d) states “a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed”. Therefore, both claim 4 and 15 fail to further limit the claims they depend on and do not satisfy the requirements of 35 USC § 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102/103
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, 7-9, and 11-16 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ohashi et al (US 20190100845 A1)
Claim 1: Ohashi discloses a membrane electrode assembly (“zero-gap base electrolyzer”, see e.g. abstract; [0160]), comprising
an anode having a catalyst layer (see e.g. [0222]),
a cathode having a catalyst layer (see e.g. [0222]), and
a solid polymer electrolyte membrane disposed between the anode and the cathode (“layer S”, see e.g. [0175]; #20a on Fig 15), wherein
the solid polymer electrolyte membrane comprises a fluorinated polymer (see e.g. [0100]; [0148]) having ion-exchange groups (see e.g. [0101]; [0114]) and a woven fabric (see e.g. [0149]),
the woven fabric consists of yarns A extending in one direction and yarns B extending in a direction orthogonal to the yarns A (see e.g. reinforcement yarn positioned vertically and reinforcement yarn positioned horizontally on Fig 4), and
the woven fabric has an aperture ratio of at least 50% (“the aperture ratio [is]…more preferably 50% or more and 90% or less”, see e.g. [0154]);
the solid polymer electrolyte membrane does not comprise a fluorinated polymer having carboxylic acid type ion-exchange groups (layer S comprises a sulfonated fluorinated polymer, see e.g. [0096]).
The limitations claiming “the solid polymer electrolyte membrane has 20 maximum membrane thicknesses TA and 20 minimum membrane thicknesses TB, wherein ten TA and ten TB are measured at each of ten different cross-sections of the solid polymer electrolyte membrane when the solid polymer electrolyte membrane is cut in a direction parallel to the direction in which the yarns A in the solid polymer electrolyte membrane extend and at the midpoint between the yarns A, and another ten TA and another Ten TB are measured at each of ten different cross-sections when the solid polymer electrolyte membrane is cut in a direction parallel to the direction in which the yarns B in the solid polymer electrolyte membrane extend and at the midpoint between the yarns” are drawn to a method of measuring a characteristic of the assembly and are not considered to be structurally limiting.
The instant invention describes the effect of “TAAVE/TBAVE ratio of 1.20 – 3.00, where TAAVE is an average maximum membrane thickness obtained by arithmetically averaging the 20 TA and TBAVE is an average minimum membrane thickness obtained by arithmetically averaging the 20 TB” as generating an uneven structure which improves liquid diffusion that results in “a smaller increase in the electrolysis voltage even when the current density is increased” (see [0054 of the instant PGPub).
Ohashi does not explicitly describe measuring TA and TB to determine TAAVE/TBAVE. However, Ohashi does teach measuring and calculating a thickness ratio of B/A wherein A is the average cross-sectional thickness of the membrane measured in pure water for a region, in which the strengthening materials do not exist and B is the average cross-sectional thickness of the membrane measured in pure water for a region, in which strands of the reinforcement yarn overlap with each other, and in a region, in which the reinforcement yarn overlaps with the sacrifice yarn. The ratio of B/A is representative of the uneven nature of the membrane (“asperities”, [0077]; Fig 5; Fig 7) and should be between 2.0 and 5.0 to lower increase in electrolysis voltage (see e.g. abstract; [0076]-[0077]).
The B of Ohashi (thickness of the membrane with reinforcement yarn and sacrifice yarn) is considered substantially similar to the TAAVE (maximum membrane thicknesses) and A of Ohashi (thickness of the membrane without yarn) is considered substantially similar to the TBAVE (minimum membrane thicknesses). Additionally, B/A and TAAVE/TBAVE represent substantially similar characteristics of the membranes and having substantially similar results. Therefore, B/A would also be substantially similar to TAAVE/TBAVE. The range of B/A (2.0-5.0) falls within the claimed range of TAAVE/TBAVE (1.20 – 3.00). Thus, Ohashi anticipates the limitation. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the claimed limitation is obvious in view of Ohashi because B/A is substantially similar to TAAVE/TBAV. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the relative thicknesses of B and A to get the desired reduction in electrolysis voltage increases.
Claim 2: Ohashi discloses the ion exchange capacity of the fluorinated polymer has an ion exchange capacity of from 0.98 to 1.43 meq/g dry resin (see e.g. [0187]), which falls within the claimed range of 0.90 to 2.00 meq/g dry resin (see MPEP § 2131.03).
Claim 4: The instant invention describes the effect of “the ratio TAAVE/TBAVE ratio is at least 1.95” as generating an uneven structure which improves liquid diffusion that results in “a smaller increase in the electrolysis voltage even when the current density is increased” (see [0054 of the instant PGPub).
Ohashi does not explicitly describe measuring TA and TB to determine TAAVE/TBAVE. However, Ohashi does teach measuring and calculating a thickness ratio of B/A wherein A is the average cross-sectional thickness of the membrane measured in pure water for a region, in which the strengthening materials do not exist and B is the average cross-sectional thickness of the membrane measured in pure water for a region, in which strands of the reinforcement yarn overlap with each other, and in a region, in which the reinforcement yarn overlaps with the sacrifice yarn. The ratio of B/A is representative of the uneven nature of the membrane (“asperities”, [0077]; Fig 5; Fig 7) and should be between 2.0 and 5.0 to lower increase in electrolysis voltage (see e.g. abstract; [0076]-[0077]).
The B of Ohashi (thickness of the membrane with reinforcement yarn and sacrifice yarn) is considered substantially similar to the TAAVE (maximum membrane thicknesses) and A of Ohashi (thickness of the membrane without yarn) is considered substantially similar to the TBAVE (minimum membrane thicknesses). Additionally, B/A and TAAVE/TBAVE represent substantially similar characteristics of the membranes and having substantially similar results. Therefore, B/A would also be substantially similar to TAAVE/TBAVE. The range of B/A falls within the claimed range of TAAVE/TBAVE. Thus, Ohashi anticipates the limitation. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the claimed limitation is obvious in view of Ohashi because B/A is substantially similar to TAAVE/TBAV. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the relative thicknesses of B and A to get the desired reduction in electrolysis voltage increases.
Claim 7: Ohashi discloses that the ion-exchange groups are sulfonic acid type functional groups (see e.g. abstract)
Claim 8: Ohashi discloses that the fluorinated polymer contains units based on a fluorinated olefin (TFE, see e.g. [0100]) and units having sulfonic acid type functional groups (see e.g. [0111]) and fluorine atoms (see e.g. [0101]).
Claim 9: Ohashi discloses that the fluorinated olefin is a C2-3 fluoroolefin having at least one fluorine atom in the molecule (TFE, see e.g. [0100]).
Claim 11: Ohashi discloses water (see e.g. [0002]; [0189]) electrolysis apparatus (see e.g. [0160]), comprising a membrane electrode assembly according to Claim 1 (see rejection of claim 1 above).
Claim 12: An electrolytic apparatus (see e.g. [0160]), comprising a membrane electrode assembly according to Claim 1 (see rejection of claim 1 above).
The limitation of the preamble claiming that the electrolytic apparatus is a hydrogenation apparatus is considered an intended use. MPEP § 2111.02 II states ‘If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)’.
Claim 13: Ohashi discloses a solid polymer electrolyte membrane (see e.g. abstract; [0160]), comprising
a fluorinated polymer (see e.g. [0100]; [0148]) having ion-exchange groups (see e.g. [0101]; [0114]) and a woven fabric (see e.g. [0149]),
the woven fabric consists of yarns A extending in one direction and yarns B extending in a direction orthogonal to the yarns A (see e.g. reinforcement yarn positioned vertically and reinforcement yarn positioned horizontally on Fig 4),
the woven fabric has an aperture ratio of at least 50% (“the aperture ratio [is]…more preferably 50% or more and 90% or less”, see e.g. [0154]), and
the solid polymer electrolyte membrane does not comprise a fluorinated polymer having carboxylic acid type ion-exchange groups (layer S comprises a sulfonated fluorinated polymer, see e.g. [0096]).
The limitations claiming “the solid polymer electrolyte membrane has 20 maximum membrane thicknesses TA and 20 minimum membrane thicknesses TB, wherein ten TA and ten TB are measured at each of ten different cross-sections of the solid polymer electrolyte membrane when the solid polymer electrolyte membrane is cut in a direction parallel to the direction in which the yarns A in the solid polymer electrolyte membrane extend and at the midpoint between the yarns A, and another ten TA and another Ten TB are measured at each of ten different cross-sections when the solid polymer electrolyte membrane is cut in a direction parallel to the direction in which the yarns B in the solid polymer electrolyte membrane extend and at the midpoint between the yarns” are drawn to a method of measuring a characteristic of the assembly and are not considered to be structurally limiting.
The instant invention describes the effect of “TAAVE/TBAVE ratio of 1.20 – 3.00, where TAAVE is an average maximum membrane thickness obtained by arithmetically averaging the 20 TA and TBAVE is an average minimum membrane thickness obtained by arithmetically averaging the 20 TB” as generating an uneven structure which improves liquid diffusion that results in “a smaller increase in the electrolysis voltage even when the current density is increased” (see [0054 of the instant PGPub).
Ohashi does not explicitly describe measuring TA and TB to determine TAAVE/TBAVE. However, Ohashi does teach measuring and calculating a thickness ratio of B/A wherein A is the average cross-sectional thickness of the membrane measured in pure water for a region, in which the strengthening materials do not exist and B is the average cross-sectional thickness of the membrane measured in pure water for a region, in which strands of the reinforcement yarn overlap with each other, and in a region, in which the reinforcement yarn overlaps with the sacrifice yarn. The ratio of B/A is representative of the uneven nature of the membrane (“asperities”, [0077]; Fig 5; Fig 7) and should be between 2.0 and 5.0 to lower increase in electrolysis voltage (see e.g. abstract; [0076]-[0077]).
The B of Ohashi (thickness of the membrane with reinforcement yarn and sacrifice yarn) is considered substantially similar to the TAAVE (maximum membrane thicknesses) and A of Ohashi (thickness of the membrane without yarn) is considered substantially similar to the TBAVE (minimum membrane thicknesses). Additionally, B/A and TAAVE/TBAVE represent substantially similar characteristics of the membranes and having substantially similar results. Therefore, B/A would also be substantially similar to TAAVE/TBAVE. The range of B/A falls within the claimed range of TAAVE/TBAVE. Thus, Ohashi anticipates the limitation. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the claimed limitation is obvious in view of Ohashi because B/A is substantially similar to TAAVE/TBAV. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the relative thicknesses of B and A to get the desired reduction in electrolysis voltage increases.
Claim 14: Ohashi discloses the ion exchange capacity of the fluorinated polymer has an ion exchange capacity of from 0.98 to 1.43 meq/g dry resin (see e.g. [0187]), which falls within the claimed range of 0.90 to 2.00 meq/g dry resin (see MPEP § 2131.03).
Claim 15: The instant invention describes the effect of “the ratio TAAVE/TBAVE ratio is at least 1.95” as generating an uneven structure which improves liquid diffusion that results in “a smaller increase in the electrolysis voltage even when the current density is increased” (see [0054 of the instant PGPub).
Ohashi does not explicitly describe measuring TA and TB to determine TAAVE/TBAVE. However, Ohashi does teach measuring and calculating a thickness ratio of B/A wherein A is the average cross-sectional thickness of the membrane measured in pure water for a region, in which the strengthening materials do not exist and B is the average cross-sectional thickness of the membrane measured in pure water for a region, in which strands of the reinforcement yarn overlap with each other, and in a region, in which the reinforcement yarn overlaps with the sacrifice yarn. The ratio of B/A is representative of the uneven nature of the membrane (“asperities”, [0077]; Fig 5; Fig 7) and should be between 2.0 and 5.0 to lower increase in electrolysis voltage (see e.g. abstract; [0076]-[0077]).
The B of Ohashi (thickness of the membrane with reinforcement yarn and sacrifice yarn) is considered substantially similar to the TAAVE (maximum membrane thicknesses) and A of Ohashi (thickness of the membrane without yarn) is considered substantially similar to the TBAVE (minimum membrane thicknesses). Additionally, B/A and TAAVE/TBAVE represent substantially similar characteristics of the membranes and having substantially similar results. Therefore, B/A would also be substantially similar to TAAVE/TBAVE. The range of B/A falls within the claimed range of TAAVE/TBAVE. Thus, Ohashi anticipates the limitation. Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the claimed limitation is obvious in view of Ohashi because B/A is substantially similar to TAAVE/TBAV. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the relative thicknesses of B and A to get the desired reduction in electrolysis voltage increases.
Claim 16: Ohashi discloses a membrane electrode assembly (“zero-gap base electrolyzer”, see e.g. abstract; [0160]), comprising: the solid polymer electrolyte membrane according to Claim 13 (see rejection of claim 13 above).
Claim Rejections - 35 USC § 103
Claim(s) 3, 5, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi.
Claim 3: Ohashi discloses that denier count of the yarns A and the denier count of the yarns B each independently have a denier count of from 20 to 150 (see e.g. [0149]), which overlaps with the claimed range of 15 to 50. 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 5: Ohashi discloses that said yarns A and said yarns B are each independently made of at least one material from a list including polytetrafluoroethylene and tetrafluoroethylene-perfluoroalkyl vinyl ether copolymer (see e.g. [0148]). 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 select either polytetrafluoroethylene or tetrafluoroethylene-perfluoroalkyl vinyl ether copolymer from the list of Ohashi for yarns A and B because KSR rationale E states that is obvious to choose ‘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 10: Ohashi discloses that the fluorinated polymer contains units based on a fluorinated olefin (TFE, see e.g. [0100]) and units having sulfonic acid type functional groups (see e.g. [0111]) and fluorine atoms (see e.g. [0101]). Exemplary monomers used for the polymer are “vinyl compounds having functional groups that can be converted” with the general formula:
CF2=CFO-(CF2YFO)a-(CF2)b-SO2F (see e.g. [0101]):
The instant invention similarly discloses that the monomer can have the general formula:
CF2=CF-L-(A)n
wherein L is an n+1 valent perlluorohydrocarbon group that may contain an etheric oxygen atom and A is a group which can be converted to a sulfonic acid type functional group, such as SO₂F, -SO2Cl and -SO2Br, and n is 1 or 2. (see e.g. [0148]-[0149]).
This monomer is converted into the following polymer
-[CF2 -CF(-L-(SO3M)n)]- (1)
wherein
L is an n+1 valent perfluorohydrocarbon group that may contain an etheric oxygen atom,
M is a hydrogen atom, an alkali metal or a quaternary annonium cation,
n is 1 or 2, and
when n is 2, the multiple M may be the same or different (see e.g. [0150] and [0153]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date that the resulting polymer of Ohashi would have the claimed formula of -[CF2 -CF(-L-(SO3M)n)]- because the starting monomer is the same as the instant invention and both are converted to sulfonic acid functional groups.
Claim(s) 6 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi in view of Kaneko et al (US 20170313836 A1).
Claim 6: Ohashi does not explicitly teach that the densities of said yarns A and said yarns B each independently have a density of from 70 to 150 yarns/inch. Kaneko an electrolysis cell (see e.g. abstract) having a membrane formed of woven yarns (see e.g. abstract and [0049]) with a total yarn density ranging from 176-850 yarns/inch. Therefore, the densities of the yarns in a first direction and the yarns in a direction perpendicular to the first direction would 0 < x < 176-850 yarns/inch. It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the membrane of Ohashi so that the that the densities of said yarns A and said yarns B each independently have a density of 0 < x < 176-850 yarns/inch as taught in Kaneko because Kaneko teaches this overall density is suitable for the membrane types taught in Ohashi and Kaneko. The range of 0 < x < 176-850 overlaps with the claimed range of 70 to 150 yarns/inch. 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 17: Ohashi does not explicitly teach that the densities of said yarns A and said yarns B each independently have a density of from 70 to 200 yarns/inch. Kaneko an electrolysis cell (see e.g. abstract) having a membrane formed of woven yarns (see e.g. abstract and [0049]) with a total yarn density ranging from 176-850 yarns/inch. Therefore, the densities of the yarns in a first direction and the yarns in a direction perpendicular to the first direction would 0 < x < 176-850 yarns/inch. It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the membrane of Ohashi so that the that the densities of said yarns A and said yarns B each independently have a density of 0 < x < 176-850 yarns/inch as taught in Kaneko because Kaneko teaches this overall density is suitable for the membrane types taught in Ohashi and Kaneko. The range of 0 < x < 176-850 overlaps with the claimed range of 70 to 200 yarns/inch. 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(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi in view of Jung et al (US 20150183653 A1).
Claim 18: Ohashi does not explicitly teach that the anode and the cathode each further comprise a gas diffusion layer. Ohashi teaches that the membrane can be used for a variety of electrolytic processes, including chlor-alkali electrolysis (see e.g. [0002]). Jung teaches an electrolytic apparatus (see e.g. abstract), making it analogous art (see MPEP § 2141.01(a)I). Jung teaches that apparatuses for preparing electrolyzing sodium chloride (see e.g. [0025]) and uses gas diffusion electrodes for the anode and cathode for moving hydrogen (see e.g. [0065]). 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 the assembly of Ohashi so that the anode and the cathode each further comprise a gas diffusion layer. As taught in Jung for when the assembly is used to sodium chloride
Response to Arguments
Applicant's arguments filed 02/02/2026 have been fully considered but they are not persuasive.
On page(s) 7, the Applicant argues that Ohashi does not read on the claims because “Ohashi describes a membrane that crtically includes and relies on the presence of a layer C comprising a fluorine-containing polymer having a carboxylic acid group”. This is not considered persuasive. The solid polymer electrolyte membrane of Ohashi comprises a sulfonated fluorinated polymer (see e.g. [0096]).
On page(s) 7, the Applicant argues that the thicknesses described in Ohashi are different from the instant invention between they are measured when the membrane is swollen with water, whereas the instant invention does a measurement when the membrane is dry. This is not considered persuasive. The dry vs swollen thickness arguments are based on unclaimed subject matter. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page(s) 7, the Applicant argues that some of the yarns in Ohashi are intended to be dissolved during electrolysis and thus Ohashi does not read on claim 1. This is not considered persuasive. The claim does not contain a material limitation on the yarns and the Applicant’s arguments are directed to something that happens to the membrane after it has been used. The membrane of Ohashi discloses/renders obvious all of the positively recited structure of the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795