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 .
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, 3, 4, 6-9 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soczka-Guth (U.S. Patent Publication 2004/0091762) in view of Parnian (“Comprehensive investigation of physiochemical and electrochemical properties of sulfonated poly(ether ether ketone) membranes with different degrees of sulfonation for proton exchange membrane fuel cell applications”).
Regarding claims 1, 3, 4 and 15, Soczka-Guth discloses a composition comprising 30 to 99.5% by weight of a sulfonated aromatic polyether ketone, such as sPEK or sPEEK, and from 0.5 to 70% by weight of a polybenzimidazole (Paragraphs 0015, 0017). Soczka-Guth also discloses in Example 1 that the IEC of the PEK is 2.12 meq/g membrane (Paragraph 0090). As to claim 14, Soczka-Guth teaches that the composition can be used in a membrane of a fuel cell, in capacitors or in dialysis equipment (Paragraph 0075). Regarding claims 9 and 12, Soczka-Guth states that the membrane can be produced by introducing the composition into an absorbent web, and removing the solvent (Paragraph 0087). It would have been obvious to one of ordinary skill in the art that the amount of absorption could easily be adjusted to fill the absorbent web to a desired amount. As to claim 13, Soczka-Guth discloses that the formed membrane used in a fuel cell has a thickness of 30-100 µm (Paragraph 0063). It would have been obvious to one of ordinary skill in the art that if the membrane is formed by filling an absorbent web with the composition, the filled web would have this thickness. Regarding claims 1 and 6-8, Soczka-Guth shows in the tables that the amount of PBI is no greater than 20% (Paragraphs 0092, 0099). It would have been obvious to one of ordinary skill in the art that the percentage of acidic or basic groups would be equivalent to the percentage of each of the polymers containing these groups. Therefore, based on the tables of Soczka-Guth, the percentage of the basic groups can be 20 wt% or less with the remainder the percentage of the acidic groups. When using the percentages as amounts in grams and dividing by molecular weight of the basic and acidic groups, this would result in the molar amount of the acidic group being much larger than the molar amount of the basic group, which would lead to a ratio of the two between 1/0.25 and 1/0.07.
Soczka-Guth fails to disclose that the sPEK has a degree of sulfonation of at least 30%.
Parnian discloses that the sulfonation degree of an sPEEK membrane is equivalent to (Mp x IEC)/(1000-(Mf x IEC)), where Mp is the molecular weight of the nonfunctional polymer repeat unit and Mf is the molecular weight of the functional group (-SO3Na) (Page 617, 2.4.9).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention that based on the equation provided by Parnian and using 196 as the molecular weight of PEK, 103 for -SO3Na or 80 for SO3, and 2.12 as the IEC, as taught in Soczka-Guth, the percent sulfonation would be at least 50%.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soczka-Guth (U.S. Patent Publication 2004/0091762) in view of Parnian (“Comprehensive investigation of physiochemical and electrochemical properties of sulfonated poly(ether ether ketone) membranes with different degrees of sulfonation for proton exchange membrane fuel cell applications”) as applied to claims 1, 3, 4, 6-9 and 12-15 above, and further in view of Henkensmeier (U.S. Patent Publication 2016/0308229).
The teachings of Soczka-Guth and Parnian have been discussed in paragraph 3 above.
Soczka-Guth and Parnian fail to disclose that the basic polymer is one of meta-polybenzimidazole or polybenzimidazole-OO.
Regarding claim 5, Henkensmeier discloses a polymer membrane used in a fuel cell comprising polymers, such as sPEEK, sulfonated polysulfone, and a polybenzimidazole derivative, such as PBI-OO or meta-PBI (Paragraphs 0075-0078).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention to have used meta-PBI or PBI-OO for the polybenzimidazole of Soczka-Guth because Henkensmeier teaches that these are common derivatives of PBI used in the making of membranes for fuel cells.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soczka-Guth (U.S. Patent Publication 2004/0091762) in view of Parnian (“Comprehensive investigation of physiochemical and electrochemical properties of sulfonated poly(ether ether ketone) membranes with different degrees of sulfonation for proton exchange membrane fuel cell applications”) as applied to claims 1, 3, 4, 6-9 and 12-15 above, and further in view of Cho (KR Publication 2019-0019503).
The teachings of Soczka-Guth and Parnian have been discussed in paragraph 3 above.
Soczka-Guth and Parnian fail to disclose the material of the absorbent web and the thickness of the absorbent web.
Regarding claim 10, Cho discloses a composite electrolyte membrane used in fuel cells or redox flow batteries that comprise a microporous substrate coated/impregnated with an ion-conducting polymer solution, wherein the polymer can be sPEEK, sPEK or PBI, and wherein the substrate can be a nonwoven fabric or woven material having a component, such as polyethylene, polypropylene, polyamide, polysulfone, etc. (Paragraphs 0072, 0075). As to claim 11, Cho teaches that the substrate can have a thickness of 1-500 µm (Paragraph 0069).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention that the absorbent web of Soczka-Guth could be made of a material listed in Cho because Cho teaches that these are common materials used for base substrates of a membrane used in a fuel cell that is later filled with polymers, such as the ones used in Soczka-Guth. It also would have been obvious to one of ordinary skill in the art that the non-impregnated substrate could have a thickness between 1 and 250 µm because Cho teaches that this thickness allows for proper coating of the polymer material and would result in a final thickness that would match that of Soczka-Guth.
Response to Arguments
The amendments made to the claims, filed on 1/28/2026, have overcome the 35 USC 112 rejections that were presented in the last Office Action. Therefore, the rejections have been withdrawn.
Applicant’s arguments, filed 1/28/2026, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, due to the amendments made to the claims, a new ground(s) of rejection is made in view of a newly found prior art reference.
Applicants argue that Soczka-Guth fails to disclose the use of polymers with a high degree of sulfonation. The reference, Parnian, has been combined with Soczka-Guth to show how degree of sulfonation increases with an increase in ion exchange capacity, which Soczka-Guth provides. Parnian also teaches an equation in which to calculate degree of sulfonation from ion exchange capacity. Using 196 as the molecular weight of PEK used in Soczka-Guth, either 80 for SO3 molecular weight or 103 for SO3Na molecular, and 2.12 for the IEC taught in example 1, this would result in a degree of sulfonation of at least 50%. Thus, Soczka-Guth does in fact teach a high degree of sulfonation. Additionally, Soczka-Guth teaches a range of IEC that can be higher than 2.12, which would result in an even higher degree of sulfonation.
Applicants also argue that neither Henkensmeier nor Cho cure the deficiencies of Soczka-Guth. As discussed above, using the teachings of Parnian, it is shown that Soczka-Guth does teach a high degree of sulfonation for the polymer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY L RAYMOND whose telephone number is (571)272-6545. The examiner can normally be reached Monday-Friday 9 am-6 pm.
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BRITTANY L. RAYMOND
Primary Examiner
Art Unit 1722
/BRITTANY L RAYMOND/ Primary Examiner, Art Unit 1722
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