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 .
Response to Amendments
This is a final office action in response to applicant's arguments and remarks filed on
07/28/2026.
Status of Rejections
All previous rejections are maintained.
Claims 1-17 and 21 are pending and under consideration for this Office Action.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-6, 10-15, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faid et al (“Anion Exchange Membrane Water Electrolysis from Catalyst Design to the Membrane Electrode Assembly”, Energy Technology, Volume 10, Issue 9, July 2022, pages 2200506(25) in view of Lokesh et al (“Advanced Two-Dimensional Materials for Green Hydrogen Generation: Strategies toward Corrosion Resistance Seawater Electrolysis─Review and Future Perspectives”, Energy & Fuels, Vol 36, Issue 22, October 2022, pages 13417-13450), Rijnaarts et al (“Layer-by-Layer Self-Assembly of Composite Polyelectrolyte–Nafion Membranes for Direct Methanol Fuel Cell”, Advanced Materials, Volume 18, Issue 8, April, 2006, Pages 1068-1072), and Nelson et al (US 20080179188 A1)
Claim 1: Faid discloses a multilayer exchange membrane (AEM, see e.g. abstract) comprising:
an ion-exchange membrane layer; and a catalyst layer coated on a first surface of the ion-exchange membrane layer (see e.g. page 220506-17, col 2, paragraph starting with “In the CCM”), the catalyst being a hydrogen recombination catalyst (platinum, see e.g. page 200506-20, col 1: “state of art platinum catalysts”. [0044] of the instant specification states that Pt is a suitable material).
Faid does not explicitly teach the membranes further comprises a first polyelectrolyte multilayer coating coated on the hydrogen recombination catalyst layer. Faid teaches that the membrane is used for water electrolysis (see e.g. page 220506-1, col 2, paragraph starting with “The AEM water”).
Lokesh teaches that “Green hydrogen generation through seawater electrolysis has been an emergent technology that can play a prominent role in replacing conventional energy sources. Electrolysis of seawater using renewable sources such as solar, wind, and geothermal generates green hydrogen which has almost negligible harmful byproducts. Different ions present in seawater such as chlorides and sulfates impose serious corrosion problems during the electrolysis process as chloride ions penetrate the metal electrode surface and oxidize it and also liberate chlorine gas at the anode” (see e.g. abstract). Rijnaarts discloses a membrane having a first polyelectrolyte multilayer coating coated on a first surface of the ion-exchange membrane layer and a second polyelectrolyte multilayer coating coated on a second surface of the ion-exchange membrane layer (see e.g. Fig 5, “recipe 2”). These layers give the membranes valent-based selectivity (see e.g. page 516, col 1, paragraph starting with “In this study”) including blocking sulfates. Nelson teaches that these membranes (see e.g. abstract, Fig 4) have a broad application, including electrolysis (see e.g. [0163]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to include polyelectrolyte multilayer coatings on either side of the membrane as taught in Rijnaarts to block the movement of unwanted ions when using non-pure feedstocks, such as seawater. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that one of the first polyelectrolyte multilayers (arbitrarily referred to as the “first”) would be coated on the catalyst layer or a first polyelectrolyte multilayer coating coated on the catalyst layer based on the disclosure of Faid having the catalyst directly applied to the membrane.
Claim 2: Faid in view of Lokesh, Rijnaarts, and Nelson teaches that the first polyelectrolyte multilayer coating is thinner than the ion-exchange membrane layer (see e.g. Rijnaarts – Fig 5) and comprises alternating layers of a polycation polymer and a polyanion polymer (see e.g. Rijnaarts – Fig 5; Nelson – Fig 6).
Claim 3: Faid in view of Lokesh, Rijnaarts, and Nelson teaches that the first polyelectrolyte multilayer comprises alternating layers of a polycation polymer and a polyanion polymer (see e.g. Rijnaarts – Fig 5).
Claim 4: Faid in view of Lokesh, Rijnaarts, and Nelson discloses that the catalyst layer comprises a catalyst and an ionomer (see e.g. Faid - page 220506-17, col 2, paragraph starting with “In the CCM”).
Claim 5: Faid in view of Lokesh, Rijnaarts, and Nelson discloses the catalyst can include comprise Pt (see e.g. Faid - Table 6). KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select Pt as the catalyst.
Claim 6: Faid in view of Lokesh, Rijnaarts, and Nelson discloses that the ionomer comprises a hydroxide-conductive polymeric ionomer (Faid - see e.g. page 2200506-15, col 1, paragraph starting with “Anion exchange ionomers”).
Claim 10: Faid discloses a membrane electrode assembly (see e.g. Fig 1) comprising:
an ion-exchange membrane layer; and a catalyst layer coated on a first surface on a first side of the ion-exchange membrane layer (see e.g. page 220506-17, col 2, paragraph starting with “In the CCM”); an anode electrode disposed on a surface of the ion-exchange membrane layer; a cathode electrode disposed on a second surface on a second side of the ion-exchange membrane layer (see e.g. Fig 1), the catalyst being a hydrogen recombination catalyst (platinum, see e.g. page 200506-20, col 1: “state of art platinum catalysts”. [0044] of the instant specification states that Pt is a suitable material).
Faid does not explicitly teach the membranes further comprises a first polyelectrolyte multilayer coating coated on a first surface of the ion-exchange membrane layer and a second polyelectrolyte multilayer coating coated on a second surface of the ion-exchange membrane layer. Faid teaches that the membrane is used for water electrolysis (see e.g. page 220506-1, col 2, paragraph starting with “The AEM water”).
Lokesh teaches that “Green hydrogen generation through seawater electrolysis has been an emergent technology that can play a prominent role in replacing conventional energy sources. Electrolysis of seawater using renewable sources such as solar, wind, and geothermal generates green hydrogen which has almost negligible harmful byproducts. Different ions present in seawater such as chlorides and sulfates impose serious corrosion problems during the electrolysis process as chloride ions penetrate the metal electrode surface and oxidize it and also liberate chlorine gas at the anode” (see e.g. abstract). Rijnaarts discloses a membrane having a first polyelectrolyte multilayer coating coated on a first surface of the ion-exchange membrane layer and a second polyelectrolyte multilayer coating coated on a second surface of the ion-exchange membrane layer (see e.g. Fig 5, “recipe 2”). These layers give the membranes valent-based selectivity (see e.g. page 516, col 1, paragraph starting with “In this study”) including blocking sulfates. Nelson teaches that these membranes (see e.g. abstract, Fig 4) have a broad application, including electrolysis (see e.g. [0163]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to include polyelectrolyte multilayer coatings on either side of the membrane as taught in Rijnaarts to block the movement of unwanted ions when using non-pure feedstocks, such as seawater. Furthermore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that one of the first polyelectrolyte multilayers (arbitrarily referred to as the “first”) would be coated on the catalyst layer or a first polyelectrolyte multilayer coating coated on the catalyst layer based on the disclosure of Faid having the catalyst directly applied to the membrane.
Claim 11: Faid in view of Lokesh, Rijnaarts, and Nelson teaches that the first polyelectrolyte multilayer coating is thinner than the ion-exchange membrane layer (see e.g. Rijnaarts – Fig 5) and comprises alternating layers of a polycation polymer and a polyanion polymer (see e.g. Rijnaarts – Fig 5; Nelson – Fig 6).
Claim 12: Faid in view of Lokesh, Rijnaarts, and Nelson teaches the second polyelectrolyte multilayer coating (see rejection of claim 1), and, wherein both the first polyelectrolyte multilayer coating and the second polyelectrolyte multilayer coating comprise alternating layers of a polycation polymer and a polyanion polymer (see e.g. Rijnaarts – Fig 5).
Claim 13: Faid in view of Lokesh, Rijnaarts, and Nelson discloses that the catalyst layer comprises a catalyst and an ionomer (see e.g. Faid - page 220506-17, col 2, paragraph starting with “In the CCM”).
Claim 14: Faid in view of Lokesh, Rijnaarts, and Nelson discloses the catalyst can include comprise Pt (see e.g. Faid - Table 6). KSR rationale E states that it is obvious to choose “from a finite number of identified, predictable solutions, with a reasonable expectation of success” and MPEP § 2144.07 states “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to select P as the catalyst.
Claim 15: Faid in view of Lokesh, Rijnaarts, and Nelson discloses that the ionomer comprises a hydroxide-conductive polymeric ionomer (Faid - see e.g. page 2200506-15, col 1, paragraph starting with “Anion exchange ionomers”).
Claim 21: Faid in view of Lokesh, Rijnaarts, and Nelson teaches a second polyelectrolyte multilayer coating coated on a second surface of the ion- exchange membrane layer (see e.g. Rijnaarts - Fig 5, “recipe 2”).
Claim(s) 7, 8, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faid in view of Lokesh, Rijnaarts, and Nelson as applied to claims 1 and 10 above, and in further view of Bruix et al (“A New Type of Strong Metal–Support Interaction and the Production of H2 through the Transformation of Water on Pt/CeO2(111) and Pt/CeOx/TiO2(110) Catalysts”, J. Am. Chem. Soc. 2012, 134, 21, 8968–8974).
Claim 7: Faid in view of Lokesh, Rijnaarts, and Nelson does not explicitly teach that the catalyst layer further comprises an additive. Bruix teaches a catalyst for the electrolysis of water, making it analogous art (see MPEP § 2141.01(a) I). Bruix teaches that adding CeO2 to a platinum catalyst (see e.g. abstract) “significantly enhance the ability of the admetal to adsorb water and dissociate the O−H bonds in the molecule” (see e.g. page 8973, col 2, paragraph starting with “The results”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Faid to include the CeO2 additive taught in Bruix to enhance the ability of the admetal to adsorb water and dissociate the O−H bonds in the molecule.
Claim 8: Faid in view of Lokesh, Rijnaarts, Nelson, and Bruix teaches that the additive comprises CeO2 (see e.g. Bruix – abstract).
Claim 16: Faid in view of Lokesh, Rijnaarts, and Nelson does not explicitly teach that the catalyst layer further comprises an additive. Bruix teaches a catalyst for the electrolysis of water, making it analogous art (see MPEP § 2141.01(a) I). Bruix teaches that adding CeO2 to a platinum catalyst (see e.g. abstract) “significantly enhance the ability of the admetal to adsorb water and dissociate the O−H bonds in the molecule” (see e.g. page 8973, col 2, paragraph starting with “The results”). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the membrane of Faid to include the CeO2 additive taught in Bruix to enhance the ability of the admetal to adsorb water and dissociate the O−H bonds in the molecule.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Faid in view of Lokesh, Rijnaarts, and Nelson as applied to claim 1 above, and in further view of Small et al (US 20200078736 A1).
Claim 9: Faid in view of Lokesh, Rijnaarts, and Nelson does not explicitly teach that the catalyst layer is thinner than the ion-exchange membrane layer and thicker than the first polyelectrolyte multilayer coating. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the relative thicknesses of each layer would affect the properties of the membrane. For example, Small teaches “Increased polyelectrolyte thickness can increase the selectivity for ionic transport through the membranes, although adding polyelectrolyte films decreases the overall ionic conductivity compared to an uncoated membrane” (see e.g. [0005]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to adjust the relative thicknesses of each layer of the membrane of Faid in view of Lokesh, Rijnaarts, and Nelson to get the desired properties, such as selectivity and conductivity.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 and 10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 13 of copending Application No. 18/585,222 (reference application) (referred to as 222 herein). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1: Claim 10 of 222 claims a multilayer ion-exchange membrane (1: “A proton exchange membrane”) comprising: an ion-exchange membrane layer (1: “a reinforced membrane”); a hydrogen recombination catalyst layer coated on a first surface of the ion-exchange membrane layer (1: “a continuous nonporous hydrogen recombination catalyst coating layer…the first surface of the continuous hydrogen recombination catalyst coating layer on the first surface of the reinforced membrane”); and, a first polyelectrolyte multilayer coating coated on the catalyst layer or a first polyelectrolyte multilayer coating coated on the catalyst layer (1: “a continuous nonporous cross-linked polyelectrolyte multilayer coating on the second surface of the continuous nonporous hydrogen recombination catalyst coating layer”).
Claim 10: Claim 14 of 222 claims a membrane electrode assembly (“A catalyst-coated membrane”) comprising: an ion-exchange membrane layer (“a reinforced membrane”); a hydrogen recombination catalyst layer coated on a first surface on a first side of the ion-exchange membrane layer (“a continuous nonporous hydrogen recombination catalyst coating layer… the first surface of the continuous hydrogen recombination catalyst coating layer on the first surface of the reinforced membrane); a first polyelectrolyte multilayer coating coated on the catalyst layer (“a continuous nonporous cross-linked polyelectrolyte multilayer coating on the second surface of the continuous nonporous hydrogen recombination catalyst coating layer”); an anode electrode disposed on a surface of the first polyelectrolyte multilayer coating (“an anode on a second surface of the continuous nonporous cross-linked polyelectrolyte multilayer coatig”); a cathode electrode disposed on a second surface on a second side of the ion-exchange membrane layer or a second polyelectrolyte multilayer coating coated on a second surface on a second side of the ion-exchange membrane layer and a cathode electrode disposed on the second polyelectrolyte multilayer coating (“a cathode on the second surface of the reinforced membrane; or a cathode on a second surface of a second continuous nonporous polyelectrolyte multilayer coating on the second surface of the reinforced membrane”).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 07/28/2026 have been fully considered but they are not persuasive.
On page(s) 7-9, the Applicant argues that none of the prior art renders the limitation claiming the catalyst is a hydrogen recombination catalyst. This is not considered persuasive. Faid discloses that the catalyst can be made of platinum (see e.g. page 200506-20, col 1: “state of art platinum catalysts”) and [0044] of the instant specification states that Pt is a suitable material. The Applicant’s arguments about Faid’s membrane being used for water splitting is drawn to an intended use of the membrane. MPEP § 2114 II states ‘"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)’. Faid discloses the necessary structure to render the limitation obvious.
On page(s) 9, the Applicant argues that copending application 18585222 does not specify a hydrogen recombination catalyst layer. This is not considered persuasive. The application explicitly claims “a continuous nonporous hydrogen recombination catalyst coating layer”.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
Prosecution Insights