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 .
BENZIMIDAZOLE-BASED POLYMER ELECTROLYTE MEMBRANE HAVING HIGH IONIC CONDUCTIVITY UNDER HIGH TEMPERATURE AND NON-HUMIDIFIED CONDITIONS AND METHOD FOR PREPARING SAME
Examiner: Adam Arciero S.N. 18/235,024 Art Unit: 1727 September 29, 2026
DETAILED ACTION
Applicant’s Response to Restriction filed on May 10, 2026 has been received. Claims 1-20 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group II and Species Ia in the reply filed on May 10, 2026 is acknowledged. Accordingly, claims 1-9 are withdrawn from consideration.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 102
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 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) 10-17 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gronwald et al. (US 2009/0075141 A1).
As to Claims 10-17 and 20, Gronwald discloses a fuel cell, comprising: a membrane electrode unit (anode and cathode); and a polymer electrolyte membrane (Abstract, paragraphs [0051 and 0063] and claim 28). Gronwald discloses a polymer electrolyte membrane comprising a PBI membrane (poly(2,2’-(m-phenylene)-5,5’-dibenzimidazole) cross-linked with isocyanate groups (paragraph [0003]). In addition, the courts have held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP 2113, I. Gronwald discloses the claimed membrane as the claims do not structurally differentiate the final product from that of the prior art.
Claim(s) 10-17 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pu et al. (CN 108539235 A; using machine translation for citation purpose).
As to Claims 10-17 and 20, Pu discloses a fuel cell (intrinsically comprises an anode and cathode) and a polymer electrolyte membrane, formed from crosslinking PBI with a imidazole ring with an isocyanate (paragraphs [0019 and 0068]). The courts have held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP 2113, I. Pu discloses the claimed membrane as the claims do not structurally differentiate the final product from that of the prior art.
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.
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) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gronwald et al. (US 2009/0075141 A1) or Pu et al. (CN 108539235 A; using machine translation for citation purpose) in view of Zhang et al. (CN 111755725 A; using machine translation for citation purposes).
As to Claims 18-19, Zhang teaches of a polymer electrolyte membrane comprising a triethylamine catalyst (paragraph [0013]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the membrane of Gronwald and Pu to comprise a triethylamine catalyst because Zhang teaches that the reliability of the fuel cell is improved (paragraph [0028]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM A ARCIERO/ Primary Examiner, Art Unit 1727
