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 .
Claims filed on 6/22/2023 are made of record. Claims 1-20 are currently pending in the application.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-18, drawn to method of forming a single ion conducting polymer, classified in C08F8/34.
II. Claims 19-20, drawn to single-ion conducting polymer, classified in C08G64/183.
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, polymer of group II can be prepared by polymerizing ethers in the presence of thiol functionalized compound.
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: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and (c) the prior art applicable to one invention would not likely be applicable to another invention.
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.
This application contains claims directed to the following patentably distinct species:
PEO-based polymer.
Butadiene-derived polymer
Unsaturated polyester resin
The species are independent or distinct because these polymers have functional groups that are distinct from one another (ether, diene and ester). In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claim 1 generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and (c) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve 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 election of species 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 on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Benjamin Koopferstock on 1/8/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I and species A (i.e., PEO-based polymer), claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
The disclosure is objected to because of the following informalities: The compound of formula I (¶ 0043), formula II (¶ 0052), formula IV (¶ 0057), P231 (¶ 00105), image (¶ 00121), image (¶ 00126) and image (¶ 00130) are grainy and lack clarity. Applicant is advised to include images that are clear and not grainy.
Appropriate correction is required.
Claim Objections
Claims 2, 6, and 9 are objected to because of the following informalities:
Claim 2 and 9 recite compounds of formula I and formula II, respectively, which are grainy and lack clarity. Applicant is advised to include images that are clear and not grainy.
Claim 2 recites “Rf is CF3 … electron-withdrawing group” (lines 5-9) and is a Markush listing. For clarity, applicant is advised to use different punctuation marks between the Markush elements and features with the Markush element.
Claim 6 recites “alkali metal cation is H+”. However, H+ is a monovalent cation and not considered an alkali metal cation. Applicant is advised to delete H+ from the listing of alkali metal cations.
Appropriate correction and/or clarification are 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.
Claims 2-8 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.
Claim 2 recites “L1 is a n-alkyl group, fluorinated alkyl group, a branched alkyl group” and “a cycloalkyl group, a fluorinated alkyl group, a phenyl group or a fluorinated phenyl group”; “L2 is absent or present and when present is a n-alkyl group, fluorinated alkyl group, a branched alkyl group” and “a cycloalkyl group, a fluorinated alkyl group, a phenyl group or a fluorinated phenyl group”; “L3 is absent or present and when present is a n-alkyl group, fluorinated alkyl group, a branched alkyl group” and “a cycloalkyl group, a fluorinated alkyl group, a phenyl group or a fluorinated phenyl group” (lines 11-19). Each of these when linked to other atoms in the structure would result in carbon atoms having 5 bonds, but carbon has a valency of 4. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art. However, for examination purposes, Examiner interprets for e.g., “n-alkyl group” as an “alkylene group” in light of the compounds in claim 9.
Claims 3-8 are subsumed by this rejection because of the dependence either directly or indirectly on claim 2.
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 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al (Chem. Commun.; Vol. 55, Pages 6715-6718, Year: 2019).
Zhang et al disclose a single-ion conducting hyperbranched polymer (title). A hyperbranched HPCPEG is prepared via click reaction between thiol and amine groups in DL-cysteine and epoxide groups at both ends of poly(ethylene glycol)diglycidyl ether (PEGDGE) through a simple one pot synthesis. See scheme 1, wherein the process is shown by the following:
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(bridging paragraph, col. 2, page 6715 to col. 1, page 6716) which reads on grafting a thiol functionalized conductor compound onto a polymer compound in present claim 1, polymer is a PEO-based polymer in present claim 10.
Claims 1, 10-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatakeyama-Sato et al, Macromol. Rapid Commun., Vol. 41, pp 1900399, Year: 2020 - hereafter Sato et al).
Sato et al teach synthesis of poly(glycidylether)s having trifluoromethanesulfonyl imide or imidazolium pendant groups by thiol-ene reactions (abstract). See scheme 1, wherein the polyether-based electrolytes are prepared by click reaction:
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(page 2 of 4, 1900399) which reads on grafting a thiol functionalized conductor compound onto a polymer compound in present claim 1, polymer is a PEO-based polymer in present claim 10, PAGE polymer in present claim 11, and PAGE homopolymer in present claim 13.
Relevant Prior Art
The cited art made of record and not relied upon is considered pertinent toapplicant's disclosure: Liu et al (Recent Developments … Lithium Batteries”; Adv. Sci., Vol. 10, pp 2206978; Year: 2023) teach solid polymer electrolytes for flexible lithium ion batteries (abstract).
Allowable Subject Matter
Claim 12 is 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.
Claims 2-9 would be allowable if rewritten to overcome the objections (in case of claims 2, 6 and 9) and rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph (in case of claims 2-8), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
It is noted that none of the cited prior art teach a process of grafting a thiol functionalized conductor compound of formula I onto a polymer compound.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764