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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to an ionomer, fuel cells comprising an ionomer, and methods of forming a fuel cell comprising an ionomer, classified in H01M8/1004.
II. Claims 13-18, drawn to method of making an ionomer, classified in H01M4/881.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the ionomers included in invention I can be made by another process at least because the product material can use alternative starting materials that use different sulfonic acid protecting groups and/or electron withdrawing groups other than the chloromethyl group used in the starting materials of Invention II.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The two inventions are separately classified, and would require significantly different search terms.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Ava Chuang on December 5, 2024, a provisional election was made to prosecute the invention of Group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 1-3, 5-7, and 9-11 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. Independent claims 1 and 9 each recite “hydrophilic moieties” and “hydrophobic moiety”. These terms are generally descriptive terms regarding the interactions of a substance with water, there are no accepted quantitative means of determine where the cutoff for hydrophobic is, or where the cutoff for hydrophilic is, particular in the instance scenario where the terms are used to describe small portions of a longer polymer chain such that there does not appear anyway to isolate a specific measurement for the various components of a single polymer chain. If Applicant merely intends the terms to reference a relative degree of hydrophobicity/hydrophilicity of the two portions of the polymer, then Applicant should structure the claim in such a comparative manner. Such a structure (i.e., requiring moieties at both ends of the copolymer that are more hydrophilic than a moiety located between chain-end moieties) would overcome the issue because it would not need an objective determination for any of the moieties, just a relative one.
Claims 4, 8, and 12, are found to be definite despite their dependence from claims 1 and 10, because each of those claims provides a specific structure with specific styrene moieties at the chain ends, and specific ethylene and/or butylene-based moieties in between those chain-end moieties.
Claim Rejections - 35 USC § 102
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) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Control of Microdomain Orientation in Block Copolymer Thin Films by Electric Field for Proton Exchange Membrane” published in Advances in Chemical Engineering and Sciences, 2014, 4, 95-102, to Bae (“Bae”, a copy of which can be found in Applicant’s IDS filing of April 28, 2023). Regarding claims 1 and 3, Bae discloses styrene-ethylene-butylene-styrene block copolymer as a proton conducting membrane (i.e., an ionomer) for use in proton electrolyte membrane fuel cells. Bae at page 96, first and third full paragraphs. More particularly, Bae discloses such block copolymers where each styrene moiety at the end of the chain includes a sulfonic acid group. Id. at Figure 1. This block copolymer corresponds to the recited ionomer, with the two sulfonic-acid functionalized styrene groups corresponding to the recited hydrophilic moieties, and the ethylene and/or butylene groups corresponding to the recited hydrophobic moieties.
Further regarding claim 2, the Office finds that because the block copolymer of Bae has a substantially similar structure to those described by Applicant as forming self-assembled micelles with the hydrophobic moieties on the inside of the moiety and the hydrophilic moieties on the outside, the Office finds the block copolymer of Bae will necessarily form this structure.
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) 5-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bae in view of U.S. Patent Application Publication No. 2011/0033776 to Fuchs (“Fuchs”). Bae is applied as described above. Bae is directed to polyelectrolyte membranes that can be used in polymer electrolyte membrane fuel cells, but does not expressly disclose a polymer electrolyte membrane fuel cell containing the styrene-ethylene-butylene-styrene block copolymer as the polymer electrolyte membrane. Nonetheless, based on the taught use/applications for the materials of Bae, the person of ordinary skill in the art at the time of invention would have had reason to make a fuel cell from those materials, and found it obvious to make such fuel cells in the commonly known manner by providing an anode on one side of the electrolyte membrane and a cathode on the opposed side of the electrolyte membrane. See, e.g., Fuchs at Figure 1.
Allowable Subject Matter
Claims 4, 8, and 12, are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Fuchs at paragraph [0087]. Although the prior art discloses the general idea that sulfonated styrene-ethylene-butylene-styrene polymers may be used as the ionomer/polymer electrolyte in fuel cell applications, nothing in the prior art teaches or suggests the specific chemical structure recited in claims 4, 8, and 12.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT P MCCONNELL whose telephone number is (571)270-7531. The examiner can normally be reached 9am to 5pm M-F.
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/WYATT P MCCONNELL/ Examiner, Art Unit 1727