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 .
Applicant’s Election/Restriction was submitted on 12/5/25 has been received.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Election/Restrictions
The different species previously withdrawn from consideration as a result of a restriction requirement are rejoined and fully examined for patentability.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/4/23 is considered by the examiner.
Drawings
The drawings submitted on 4/4/23 has been considered.
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 3-5, 7-9 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. Specifically, Claim 3 discloses, “divalent perfluoralkylene group which may have an ether-bonding oxygen atom,” “each independently a monovalent perfluoroalkyl group which may have an ether-bonding oxygen,” “monovalent perfluoroalkyl group which may have an ether-bonding oxygen atom,” “at least one hydrogen atom may be substituted by a hydrocarbon grop,” perfluoralkyl group which may have an ether-bonding oxygen atom,” claim 7 discloses, “a perfluoroalkylene group which may have an ether-boding oxygen,” “a perfluoroalkylene group which may have an ether-bonding oxygen,” “branched perfluoroalkyl group which may have an ether-boding oxygen atom,” claim 8 discloses, “at least one hydrogen atom may be substituted by a hydrocarbon group,” “a perfluorakylene group which may have an ehter0bonding oxygen,” appears to be ambiguous as the claim language makes the scope unclear. The specification does not clearly explain when “may” applies, a skilled artisan might not know whether the feature is essential or incidental. Appropriate corrections or further clarification are required.
Claims 9 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. Specifically, the limitation, “Rf are, if two or more,” appears to be indefinite as Rf is not by itself. SO2Rf is collectively grouped denoted by a. Therefore, in one SO2Rf group there is only one Rf. Appropriate corrections or further clarifications are required.
Dependent claims dependent on independent claims rejected under 35 U.S.C 112, second paragraph will also be rejected for the same reasons.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-6, 8, 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amemiya et al. (US Publication 20160164129) in view of Yuan et al. (CN211530098).
Regarding claims 1, 5, the Amemiya et al. reference discloses a membrane electrode assembly comprising an anode having a catalyst layer containing a proton-conducting polymer and a catalyst, a cathode having a catalyst layer containing a proton-conducting polymer and a catalyst (P31), and a solid polymer electrolyte membrane (Nafion; P53) disposed between said anode and said cathode. The proton-conducting polymer in said catalyst layer of at least one of the anode and the cathode is a polymer (H) having units containing a cyclic ether structure and having an ion exchange group (Formula 1). The solid polymer electrolyte membrane contains a fluorinated polymer (S) having an ion exchange group. The content of said units containing a cyclic ether structure to all units contained in said polymer (H) is M1 [mol%] is calculated to be 525 mols (P18, utilizing x/y=1, and MW of 300,000). The Amemiya et al. reference does not explicitly disclose the thickness of the solid polymer electrolyte membrane. However, Yuan et al. reference discloses that the thickness of 5 microns or 10 microns (Table) of the proton electrolyte membrane (Nafion, Table) is related to good conductivity. Therefore, it would have been obvious before the effective filing date of the invention to incorporate Nafion that is 5 microns or 10 microns for the PEM as disclosed by the Yuan et al. reference for the Nafion layer used for the PEM disclosed by the Amemiya et al. reference (P53) for improved conductivity in electrochemical devices.
As a result, the thickness of solid polymer electrolyte membrane is T1 [µm], the ratio of M1/T1 is 4.5 or more.
Regarding claims 2, the Amemiya et al. reference disclsoes the content of said units containing a cyclic ether structure is from 50 to 80 mol% to all units contained in said polymer (H) the x/y=1 (“x and y are each independently an integer of 1”).
Regarding claims 3 and 4, the Amemiya reference discloses the units containing a cyclic ether structure are at least one type of units selected from (u22)
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Regarding claim 5, the Amemiya et al. reference in view of the Yuan et al. reference (herein referred to as modified Amemiya et al. reference) discloses the thickness of solid polymer electrolyte membrane is T1 [µm], the ratio of M2/T1 is 4.5 or more wherein M1=M2.
Regarding claim 6, the modified Amemiya et al. reference discloses polymer (H) further has units based on a perfluoromonomer and the units based on a perfluoromonomer are units which do not contain a cyclic ether structure and have an ion exchange group (group with y subscript).
Regarding claim 8, the modified Amemiya et al. reference discloses the fluorinated polymer (S) has at least one of units represented u31 in which q and m = 0 and n and p = 1 as disclosed in y.
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Regarding claim 10, the modified Ameniya et al. reference is silent in disclosing the ion exchange capacity of the polymer (H) is form 1.1 to 2.8 milliequivlanets/g. However, it is the position of the Examiner that such properties are inherent, given that both the modified Ameniya et al. reference and the present application utilize similar or the same components. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. In re Robertson, 49 USPQ2d 1949 (1999). 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. MPEP2112.01 I
Regarding claim 11, the modified Ameniya et al. reference is silent in disclosing the TQ value of the polymer H is form 200-330°C However, it is the position of the Examiner that such properties are inherent, given that both the modified Ameniya et al. reference and the present application utilize similar or the same components. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. In re Robertson, 49 USPQ2d 1949 (1999). 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. MPEP2112.01 I
Regarding claim 12 and 13, the modified Amemiya et al. reference discloses the MEA is used for a PEM fuel cell (P74).
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 7,531,610 in view of in view of Yuan et al. (CN211530098).
The US Patent 7,531,610 discloses a membrane electrode assembly comprising an anode having a catalyst layer containing a proton-conducting polymer and a catalyst, a cathode having a catalyst layer containing a proton-conducting polymer and a catalyst (P31), and a solid polymer electrolyte membrane disposed between said anode and said cathode. The proton-conducting polymer in said catalyst layer of at least one of the anode and the cathode is a polymer (H) having units containing a cyclic ether structure and having an ion exchange group (Formula 1). The solid polymer electrolyte membrane contains a fluorinated polymer (S) having an ion exchange group. The content of said units containing a cyclic ether structure to all units contained in said polymer (H) is M1 [mol%] is calculated. The US Patent 7,531,610 does not explicitly disclose the thickness of the solid polymer electrolyte membrane. However, the US Patent 7,531,610 disclsoes it will be necessary to increase the number of coating operations in order to obtain a desired thickness in the preparation of the membrane or catalyst layers, or the time for removal of the solvent will be prolonged, thus it tends to be difficult to conduct the production operation efficiently. On the other hand, if it exceeds 50%, the viscosity of the liquid composition tends to be too high, and the handling efficiency tends to be poor. The Yuan et al. reference discloses that the thickness of 5 microns or 10 microns (Table) of the proton electrolyte membrane (is related to good conductivity. Therefore, it would have been obvious before the effective filing date of the invention to incorporate polymer electrolyte membrane that is 5 microns or 10 microns for the PEM as disclosed by the Yuan et al. reference for the polymer electrolyte of the US Patent 7,531,610 for improved conductivity in electrochemical devices.
As a result, the thickness of solid polymer electrolyte membrane is T1 [µm], the ratio of M1/T1 is 4.5 or more.
Furthermore, the US Patent 7,531,610 comprises the structure of U32 and g1 in a polymer electrolyte material for polymer electrolyte fuel cells, electrolyte material for polymer electrolyte fuel cells, which is made of a polymer containing repeating units based on a fluoromonomer having a radical polymerization reactivity and cyclic ethers, wherein the repeating units contain, in their side chains, a structure having ionic groups represented in the following formula (α) (provided that in the formula, each of Q1 and Q2 which are independent of each other, is a single bond or a perfluoroalkylene group that may have an etheric oxygen atom, provided that they are not single bonds at the same time, Rf1 is a perfluoroalkyl group which may have an etheric oxygen atom, and X is an oxygen atom, a nitrogen atom or a carbon atom, provided that when X is an oxygen atom, a=0, when X is a nitrogen atom, a=1, and when X is a carbon atom, a=2, and Y is a fluorine atom or a monovalent perfluoro organic group).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent 8,597,855, US Publication 2009/0110967
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 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, Nicholas Smith can be reached at 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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