DETAILED ACTION
Restriction/Election
Applicant’s election without traverse of the invention of Group I, claims 1-2 and 5-9, and of the species N-methyl-D-glucamine, in the reply filed on 08/03/2026 is acknowledged. No prior art having been found that anticipates or renders obvious the elected species, the provisional election of species has been modified to the extent of expanding the prior art search beyond the elected species to cover the compound “N-methyl pyrrolidine.” See MPEP 803.02 (III)(C)(2).
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/03/2026.
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 .
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 02/05/2024, 07/18/2024 and 09/03/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Objection – Claim(s)
Claims 1 and 5 are objected to because of the following informalities: insertion of –and—between the final two members of the Markush group of “following compounds:” recited in each claim is recommended.
Claim 7 is objected to because of the following informalities: recited term “10-300micrometers” should read –10-300 micrometers— (i.e., a space provided between the numerical range and the thickness unit). Appropriate correction is required.
Claim Rejections – 35 U.S.C. 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.
Claim 5 is 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.
Regarding Claim 5, the claim recites “the polymer comprises at least 1% of said vinylbenzyl-Rx1; and the polymer comprises at least 10% of said vinylbenzyl-Rx2” (see final two lines) but is silent as to the basis for calculating the percentage (i.e., weight percent, mole percent, or some other unit of measurement?). This leads to a lack of clarity, rendering the claim indefinite. For purposes of substantive examination, it is assumed the recited percentages are based on the weight of the polymer as in parent claim 1 (cf., lines 8-10); however, clarification and appropriate correction are required.
Claim Rejections – 35 U.S.C. 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.
Claims 1-2, 6, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Masel, et al (WO 2018/136798 A1) (‘Masel’) in view of CN 108570157A (‘CN ‘157’) (citing infra to machine-generated translation, furnished herewith).
Regarding Claims 1-2, reference to Masel discloses an anion-conducting membrane comprising a polymer (anion exchange membrane electrolyzer having an anion-conducting polymer electrolyte membrane; Abs.; para [0020]) comprising a reaction product of a vinylbenzyl-Rs, a vinylbenzyl-Rx and a styrene (preparing a polymer membrane comprising styrene, vinylbenzyl-Rs and vinylbenzyl-Rx; Abs.; para [0032]), wherein: said vinylbenzyl-Rs comprises a reaction product of tetramethylimidazolium and benzylchloride (vinylbenzyl-Rs is a positively charged cyclic amine group being associated with a negatively charged counterion, where the chloride counterions are formed in the reaction between the 1,2,4,5-tetramethylimidazole and benzyl chloride groups; para [0032]); the total weight of said vinylbenzyl-Rs is at least 20% of the weight of said polymer (the total weight of the vinylbenzyl-Rs group is between 15% and 90% of the total weight membrane; para [0006]; claim 5); the total weight of said vinylbenzyl-Rx is at least 10% of the weight of said polymer (the total weight of the vinylbenzyl-Rx group is greater than 0.3% and 25% of the total weight of the polymer electrolyte membrane;
paragraph [0032]; claim 7); and the total weight of said styrene is at least 20% of the weight of said polymer (the styrene being the remaining percentage of the polymer leaving between 0% and 70%; paras [0006], [0032]; claims 5 and 7). Each of the disclosed ranges substantially overlaps the respective ranges recited in claim 1 for total weight of vinylbenzyl-Rs, vinylbenzyl-Rx and styrene, and it has consistently been held that even a slight overlap in ranges establishes a prima facie case of obviousness. See MPEP 2144.05.
Masel fails to disclose that said vinylbenzyl-Rx comprises a reaction product of benzylchloride and at least one of the following compounds: sodium-ethoxide, tripropyl amine, triethylamine, benzimidazole, 1-piperidineethanol, 4-dimethylaminopyridine, N-methyl pyrrolidine, 1-methylpiperidine, N-methyl-D-glucamine. Instead, Masel discloses wherein Rx (of vinylbenzyl-Rx) is at least one substituent selected from the group consisting of CI, OH, and O-Rz, wherein Rz is selected from linear alkyls, branched alkyls, cyclic alkyls, heteroalkyls, aryls, heteroaryls, alkylaryls, and heteroalkylaryls (para [0004]). However, in analogous art directed to preparing a polymer anion exchange membrane based on methylpyrrolidine (para [0002]), CN ‘157 teaches wherein said vinylbenzyl-Rx comprises a reaction product of benzylchloride and N-methyl pyrrolidine (i.e., a polymer composite method involving a nucleophilic substitution reaction between poly(vinylbenzyl chloride) and N-methylpyrrolidine to prepare a membrane material with high conductivity, high alkali resistance, and good mechanical properties; para [0007]). It would have been obvious to one of ordinary skill in the art at time of effective filing to have modified the anion-conducting polymer electrolyte membrane of Masel such that the vinylbenzyl-Rx group comprises the reaction product of benzylchloride and N-methyl pyrrolidine, as per CN ‘157. The motivation to do so and a reasonable expectation of success comes from the expectation of obtaining a membrane exhibiting high conductivity, high alkali-resistant stability and good mechanical properties, consistent with the teachings of CN ‘157 (paras [0007], [0030]).
Regarding Claim 6, Masel in view of CN ‘157 renders obvious the anion-conducting membrane of claim 1 as discussed above; and Masel further discloses wherein the polymer has a molecular weight between 1000 and 10,000,000 atomic units (A.U.) (the polymer will have a molecular weight between 1,000 and 10,000,000 atomic units; para [0010]).
Regarding Claim 7, Masel in view of CN ‘157 renders obvious the anion-conducting membrane of claim 1 as discussed above; and Masel further discloses wherein the thickness of said anion-conducting membrane is between 10-300 micrometers (the membrane has a preferred thickness of from 10 to 300 micrometers; para [0011]; claim 6).
Regarding Claim 9, Masel in view of CN ‘157 renders obvious the anion-conducting membrane of claim 1 as discussed above; and Masel further discloses a battery, a fuel cell, an electrolyzer, a water purification system or a CO2 capture system (anion exchange membrane electrolyzer;
para [0020]) comprising the anion-conducting membrane of claim 1.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Masel, et al (WO 2018/136798 A1) (‘Masel’) in view of CN 108570157A (‘CN ‘157’) as applied to claim 1 above, and further in view of Masel, et al (US 2019/0127863 A1).
Regarding Claim 8, Masel in view of CN ‘157 renders obvious the anion-conducting membrane of claim 1 as discussed above. Neither reference directly discloses wherein the anion-conducting membrane has an area specific resistance of 0.1 ohm-cm2 or less in 1 M KOH at 60oC, as claimed. However, in analogous art pertaining to water electrolyzers employing anion exchange membranes, Masel, et al teach wherein the anion-conducting membrane has an area specific resistance of 0.1 ohm-cm2 or less in 1 M KOH at 60 °C (an anion-conducting polymeric membrane with an area specific resistance at 60 °C in 1 M KOH below 0.037 ohm-cm2; Abs.; para [0018]). It would have been obvious to one of ordinary skill in the art at the time of effective filing to have further modified the anion-conducting membrane of Masel to provide an area specific resistance of 0.1 ohm-cm2 or less in 1 M KOH at 60 °C, as taught by Masel, et al, based on a reasonable expectation of realizing a reduction in energy that is expended when utilizing the membrane (paras [0013], [0068]).
Potentially Allowable Subject Matter
Claim 5 would be allowable if amended or rewritten to overcome the formality objection and rejection under 35 U.S.C. 112 set forth in this Office action and to include all the limitations of the base claim and any intervening claim.
The following is a statement of reasons for the indication of allowable subject matter:
Neither the closest prior art to Masel and CN ‘157, discussed above, nor any of the other references of record, describes the invention of claim 5, especially limitations to “where said vinylbenzyl-Rx comprises a vinylbenzyl-Rx1 and vinylbenzyl-Rx2 wherein: … said vinylbenzyl-Rx2 comprises a reaction product of benzylchloride and sodium-ethoxide; the polymer comprises at least 1 % of said vinylbenzyl-Ra1; and the polymer comprises at least 10% of said vinylbenzyl-Rx2.” Furthermore, neither the closest prior art nor any of the other references of record, considered individually or in any proper combination, is found to provide proper rationale for modifying the invention of Masel or CN ‘157 to arrive at the invention of claim 5.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/10-06-26
