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 Group I in the reply filed on 24 July 2026 is acknowledged. The traversal is on the ground(s) that the inventions are linked. This is not found persuasive because while the inventions are linked, the common technical feature amongst the inventions is known in the art, as detailed in the requirement for restriction of 3 June 2026, and as evidenced by the 35 USC 102 rejections below.
The requirement is still deemed proper and is therefore made FINAL.
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 4, 5, 6, 9, 10, 11 and 28 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.
As to claim 4, the claim recites “a cationically charged nitrogen atom”; however, this limitation is already introduced in claim 1, upon which claim 4 is dependent. Therefore, it is unclear as to if the limitation of claim 4 intends to refer back to that of claim 1 or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
As to claims 5, 9 and 11, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
As to claim 6, the claim recites “at least one cationically charged” compound from a list which all contain nitrogen; however, the limitation of “a cationically charged nitrogen atom” is introduced in claim 1, upon which claim 6 is dependent. Therefore, it is unclear as to if the limitation of claim 6 intends to refer back to that of claim 1 or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
As to claim 29, the claim recites the limitation "said porous support". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-6, 8, 9-14, 16-18, 25 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Preparation and characterization of crosslinked poly(vinylimidazolium) anion exchange membranes for artificial photosynthesis” to Carter at al. (Carter).
As to claims 1, 2, 3, 4, 5, 6, 9, 10, 12, 13, 25 and 27, Carter teaches a cationically charged anion exchange membrane obtainable from curing a composition, the composition comprising a first aromatic heterocyclic compound, compound 1/2 comprising difunctional vinylimidazolium monomers with alkyl spacers, i.e. two aromatic heterocyclic rings each comprising a cationically charged nitrogen atom and an uncharged nitrogen atom and two polymerizable groups, one and only one on each ring. Carter further teaches that the composition further comprises a second aromatic heterocyclic compound, compound 1a/2a comprising monofunctional vinylimidazolium with alkyl spacers, i.e. a cationically charged compound comprising only one polymerizable group (Section 1. Introduction; Scheme 1; Section 2.3 Membrane Preparation; Section 3. 1 Equilibrium water content of membranes).
As to claim 8, Carter teaches the membrane of claim 1. Carter further teaches that the membrane comprises an anionically charged counterion such as a chloride ion (Section 1. Introduction; Scheme 1).
As to claim 14, Carter teaches the membrane of claim 1. The compound 1, comprising tow cationically charged nitrogen atoms, would have a molecular weight of less than 1000 Dalton with the vinylimidazolium bromide groups each around 175 Dalton and a 10 carbon chain around 142 Dalton (Scheme 1).
As to claim 16, Carter teaches the membrane of claim 1. Carter further teaches that the ion exchange capacity is, for example, 3.87 meq/g (Section 3. 1 Equilibrium water content of membranes).
As to claim 17, Carter teaches the membrane of claim 1. Carter further teaches that the content of the first aromatic heterocyclic compound is for example 25%, thus more than 1 ppm (Section 3. 1 Equilibrium water content of membranes).
As to claim 18, Carter teaches the membrane of claim 1. Carter teaches a compound with the general A-Z-B structure of the present disclosure, with identical A-B options and longer chains, for example 10 or 18 carbon chains, for Z, thus, as evidenced by Applicant’s own disclosure, a compound with two cationically charged nitrogen atoms with a distance therebetween of at least 0.35 nm (Scheme 1).
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Carter as applied to claim 1 above, and further in view of “Stable covalently photo-cross-linked poly (ionic liquid) membrane with gradient pore size” to Dani et al. (Dani).
As to claim 7, Carter teaches the apparatus of claim 1. However, Carter further fails to teach that the cationically charged membrane is covalently bound to a methylene group, instead teaching halogens ionically bound. However, Dani also discusses imidazolium based membranes and teaches that ionic bonds are less stable than covalent bonds for certain membrane applications and teaches that a bromide ionically bound can be substituted for a methylene group (Section I. Introduction; Section 2. Results and Discussion, First Paragraph). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the membrane with a covalently bound methylene group to the cationically charged nitrogen in order to increase stability under certain membrane applications as taught by Dani.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Carter as applied to claim 9 above, and further in view of US 2012/0238648 A1 to Zhou et al. (Zhou).
As to claim 11, Carter teaches the apparatus of claim 9. As discussed above, Carter teaches an A-Z-B structure with A and B as claimed. However, Carter fails to specifically teach the claimed embodiment of Z. However, Zhou also discusses “Z”(analogous to A of Zhou) connecting nitrogen ring compounds for use in anion exchange membranes, and teaches that Z can effectively comprise all of alkyls (analogous to the C10 or C18 of Carter), alkylenes with C about 1 to about 20, or arylene with C about 5 to 10 (Paragraphs 0005-0007, 0047, 0050 and 0054). Therefore, it would have been obvious to one of ordinary skill in the art to utilize the known equivalent linking groups of alkylene with C about 1 to about 20, or arylene with C about 5 to 10 in place of the alkyls of Carter with the reasonable expectation of effectively forming the anion exchange membrane as taught by Zhou (MPEP 2144.06 I).
Claims 15 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Carter as applied to claim 1 above, and further in view of US 2022/0127396 A1 to Hartmann-Thompson et al. (Hartmann-Thompson).
As to claims 15 and 26, Carter teaches the apparatus of claim 1. However, Carter fails to teach that the anion exchange membrane comprises a support. However, Hartmann-Thompson also discusses anion exchange membrane with cationic nitrogen groups and teaches that the membrane should comprise a porous support such as a non-woven or woven synthetic fibers such as PTFE for reinforcement (Paragraph 0082). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the anion exchange membrane of Carter with the porous support of Hartmann-Thompson in order to provide reinforcement to the membrane as taught by Hartmann-Thompson.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Carter as applied to claim 9 above, in view of Hartmann-Thompson and further in view of Dani.
As to claim 28, Carter teaches the apparatus of claim 1. However, Carter fails to teach that the anion exchange membrane comprises a support. However, Hartmann-Thompson also discusses anion exchange membrane with cationic nitrogen groups and teaches that the membrane should comprise a porous support such as a non-woven or woven synthetic fibers such as PTFE for reinforcement (Paragraph 0082). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the anion exchange membrane of Carter with the porous support of Hartmann-Thompson in order to provide reinforcement to the membrane as taught by Hartmann-Thompson.
However, Carter further fails to teach that the cationically charged membrane is covalently bound to a methylene group, instead teaching halogens ionically bound. However, Dani also discusses imidazolium based membranes and teaches that ionic bonds are less stable than covalent bonds for certain membrane applications and teaches that a bromide ionically bound can be substituted for a methylene group (Section I. Introduction; Section 2. Results and Discussion, First Paragraph). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the membrane with a covalently bound methylene group to the cationically charged nitrogen in order to increase stability under certain membrane applications as taught by Dani.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
