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 Claims 1-9 in the reply filed on 04/22/2026 is acknowledged. The traversal is on the ground(s) that Zheng does not teach the claimed aromatic 6-ring substitution at position 3 and 5 with the same or different alkyl groups having 1 to 4 carbon atoms. This is not found to be persuasive because Zheng discloses the required polymer repeat units and the claimed substitution would be readily envisaged by one skilled in the art to manage the crosslinked membrane permeability derived from the polymer. Thus, it is determined that the limitations set forth in claims fail to define a contribution over Zheng and fail to constitute a special technical feature and hence there is a lack of unity between the various groups.
Claims 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected-claims, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 7 is objected to because of the following informalities:
The claimed structures corresponding to compounds of formulas (Va) to (Vd) are not clear, applicant is requested to provide improved quality structures such as those present in the specification.
Appropriate correction is required.
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 1 and dependent claims 2-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 1-7 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. The claims are modified by the adverb “preferably” (and “most preferred”), which render the claims indefinite, because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of “1 to 12”, and the claim also recites “1 to 6” and “1 or 5” which are narrower statements of the range/limitation. Claims 2 and 6 recite the broad recitation of “1 to 1000”, and the claims also recite “5 to 500” which is the narrower statement of the range/limitation. Claim 4 recites the broad recitation of “more than 5%”, and the claim also recites “more that 50%” and “more than 90%” which are the narrower statement of the range/limitation. Claim 7 recites the broad recitation of “1 to 1000” and “0.01 to 0.5”, the claim also recites “5 to 500” and “0.01 to 0.25” respectively, which are narrower statements of the ranges/limitations.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng CN110294845A (provided on IDS, improved translated copy is attached).
Regarding claims 1, 3-5 and 9, Zheng teaches tertiary amine type polyarylether sulfone polymer resin (para [0017]) and discloses compound QPES (para [0091]) containing at least one unit repeat unit as shown below.
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The QPES compound as shown above is derived from N-methyl-4-piperidone and phenol to prepare a bisphenol monomer (para [0028]) which is further condensed with 4,4-dichlorodiphenyl sulfone to obtain tertiary amine-type polyarylene ether
sulfone repeat units. Final reaction with iodomethane generates the quaternary ammonium type polymer for further creation of a cross-linked anion exchange membrane (para [0028]), where 100% of the quaternary ammonium type structure corresponds to applicant’s formula IIa.
Zheng is silent on the methyl group substitution on the aromatic ring which is part of the bisphenol monomer, however notes that the substitutions and modifications would be obvious to those skilled in the art (para [0034] and para [0138]). Owing to the closeness of the disclosed polymer repeat unit and the same application of anion exchange membrane (para [0002]), to that of the instant specification (spec: page 1, lines 5-6), the substitution at the required position 3 and 5 with a methyl group would be readily envisaged by one of ordinary skill in the art in order to tailor the membrane permeability. See MPEP 2144.08 A 4. (d).
Regarding claims 2 and 6, as discussed when addressing claim 1, quaternized compound with the required methyl group substitution at positions 3 and 5 is rendered obvious by Zheng’s disclosure. Zheng teaches TPES with molecular weight Mn of 67000 g/mol (Entry 2, Table 1, original, para [0130]), which can be subjected to complete quaternization with iodomethane (para [0114]). The quaternized polymer of the same Mn of 67000 g/mol with the repeat unit molecular weight as shown above (which is ~543 g/mol), would lead to number of repeat units of (67000/543) ≈123, which satisfy the requirements of M (Ib) and Ma (IVb) of instant claim 2 and 6 respectively, where the half of the odd numbered of repeat units would be expected to possess the required phenol end groups.
Regarding claim 7, as discussed when addressing claim 1, quaternized compound with the required methyl group substitution at positions 3 and 5 is rendered obvious by Zheng’s disclosure. Zheng teaches TPES with molecular weight Mn of 67000 g/mol (Entry 2, Table 1, original, para [0130]), subjected to complete quaternization and crosslinking by the use of 0.1 molar eq of 1,6-diiodohexane (para [0118] and last reaction scheme of para [0091]), which would lead to structure Vb, where X=0.1 and m=5, and Ma of 123, where the half of the odd numbered of repeat units would be expected to possess the required phenol end groups.
Regarding claim 8, as discussed when addressing claim 1, the required methyl group substitution at positions 3 and 5 is rendered obvious by Zheng’s disclosure. Zheng teaches the same application of tertiary amine-type polyarylene ether
sulfone polymers to generate cross-linked anion exchange membrane (para [0028]), as that of instant specification (spec: page 1, lines 5-6). In order to further optimize the hydrophilicity and hydrophobicity of the permeable channels of the membrane, additional methyl substitution of the aromatic ring of the bisphenol monomer would be obvious to one of ordinary skill in the art, with the expectation of success in the absence of a showing of new or unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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