DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 171-183 in the reply filed on May 15, 2026 is acknowledged. Claims 184-190 were canceled by Applicant.
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 172 and 183 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.
In claim 172, “ambient thermal energy” is indefinite because it is unclear what the source of the ambient thermal energy is.
Claim 183 contains the trademark/trade name NafionTM. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a sulfonated tetrafluoroethylene based copolymer and, accordingly, the identification/description is indefinite.
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.
Claims 171-183 are rejected under 35 U.S.C. 103 as being unpatentable over Jokinen et al. (“Jokinen”, Journal of Membrane Science 499 (2016) 234-244) in view of Liu (US 2011/0052466 A1).
Regarding claims 171-183, Jokinen discloses thermal potential of ion-exchange membranes and its application to thermoelectric power generation (title). Jokinen depicts in Fig. 1 different compartments (i.e. reservoirs) and electrode compartments. Jokinen teaches ions would tend to go towards positions of lower temperature (236, col. 2). Jokinen teaches the use of Nafion, which reads on claims 182 and 183.
Jokinen does not expressly teach a difference in concentration and a chemical potential gradient.
However, Liu discloses a membrane for separating CO2 (abstract) and teaches passing molecules or ions through a membrane by varying pressure, concentration, and temperature on either side of the membrane ([0055]).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to vary pressure, concentration, and temperature to control permeation through the membrane, as taught by Liu.
Jokinen does not expressly teach pore diameter or the specific chemical species.
However, Liu teaches permselectivity, which is the preferred permeation of one chemical species through a membrane with respect to another chemical species ([0052]). Liu teaches immobilized liquid (i.e. binding sites) ([0049],[0050],[0057]). Liu also teaches macro-, meso-, and micropores ([0056],[0057]).
In view of the above teachings and considering the level of ordinary skill in the art, determining the ratio of the thickness of a membrane to a pore diameter and the chemical species allowed to pass through are considered to be within the level of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL H. LEE whose telephone number is (571)272-2548. The examiner can normally be reached M-F 8:30-5:00.
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DANIEL H. LEE
Primary Examiner
Art Unit 1746
/DANIEL H LEE/Primary Examiner, Art Unit 1746
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