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 Amendment
The amendment filed on July 30, 2026 is acknowledged. Claim 1 is currently amended. Claims 1 and 5 remain pending in the application. Claims 2-4 are canceled.
Applicant’s amendments to claim 1 and the specification have overcome each and every objection previously set forth in the Non-Final Office Action mailed on April 30, 2026.
The previous rejections under 35 U.S.C. 103 and nonstatutory double patenting are withdrawn due to Applicant’s amendment. New rejections follow.
Claim Rejections - 35 USC § 103
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 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Okuyama et al.
(US 2016/0293987 A1, hereinafter “Okuyama”) in view of Endoh et al. (US 2008/0118806 A1, hereinafter “Endoh”).
Regarding claim 1, Okuyama discloses a membrane electrode assembly ([0231] and Fig. 1, membrane/electrode assembly 10) comprising:
a solid polymer electrolyte membrane ([0231] and Fig. 1, polymer electrolyte membrane 15);
an anode catalyst layer disposed on one surface of the solid polymer electrolyte membrane ([0231] and Fig. 1, anode 13 with catalyst layer 11); and
a cathode catalyst layer disposed on the other surface of the solid polymer electrolyte membrane ([0231] and Fig. 1, cathode 14 with catalyst layer 11),
wherein the membrane electrode assembly comprises metal ions selected from cerium ions and manganese ions ([0257] and [0241], cerium ions),
wherein the cathode catalyst layer comprises at least an electrode catalyst and a sulfonyl group-containing polymer ([0232]-[0233], catalyst layer 11 contains a catalyst and an ion-exchange resin that may be fluoropolymer (H); [0042] and [0045], fluoropolymer (H) having sulfonic acid groups and ring structures),
wherein the sulfonyl group-containing polymer comprises a constituent unit (u1) having a sulfonyl group ([0055], structural unit (A) having a sulfonic acid group and having no ring structure), and a constituent unit (u2) having a ring structure ([0084], structural unit (B) having no sulfonic acid group and having a ring structure),
wherein the constituent unit (u1) having a sulfonyl group is expressed by Formula (u1); wherein RF1 is —(CF2CF(CF3)O)h—(CF2)i—, h is an integer of 0 or more and 3 or less, and i is an integer of 1 or more and 10 or less ([0057]-[0064], structural unit (A-1), in particular (A1-1) to (A1-3)).
wherein the constituent unit (u2) having a ring structure is at least one selected from a constituent unit expressed by Formula (u2-1), wherein R1 to R2 are each independently a fluorine atom or a perfluoroalkyl group having 1 to 6 carbon atoms ([0094]-[0098], structural unit (B2), in particular (B2-1) to (B2-6)); or a constituent unit expressed by Formula (u2-2) in Formula (u2-2), R5 to R10 are each independently a fluorine atom or a perfluoroalkyl group having 1 to 6 carbon atoms ([0087]-[0093], structural unit (B1), in particular (B1-1) and (B1-2)).
Okuyama does not disclose the membrane electrode assembly further comprising a host compound capable of forming an inclusion compound with the metal ions, wherein the host compound is 18-crown-6-ether.
Endoh discloses the membrane electrode assembly further comprising a host compound capable of forming an inclusion compound with the metal ions, wherein the host compound is 18-crown-6-ether ([0021]-[0022] and [0060], 18-crown-6 as an organic compound (X) capable of forming an inclusion compound with cerium ions).
Okuyama and Endoh are considered to be analogous to the claimed invention because they are in the same field of fuel cell polymer electrolyte membranes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the membrane electrode assembly of Okuyama with the teachings of Endoh, and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Doing so would form the inclusion compound (Y), which interacts with sulfonic acid groups to improve the membrane resistance to hydrogen peroxide or hydrogen radicals (Endoh [0033]).
Regarding claim 5, modified Okuyama discloses the limitations of claim 1. Modified Okuyama further discloses wherein the host compound and the metal ions are contained in both of the anode catalyst layer (Okuyama [0257], cerium ions in catalyst layer; and Endoh [0049], ion-exchange resin containing cerium ions and organic compound (X) applied to anodes) and the solid polymer electrolyte membrane (Okuyama [0241], polymer electrolyte membrane may contain cerium ions; and Endoh [0019], polymer electrolyte membrane contains both cerium ions and organic compound (X)).
Response to Arguments
Applicant's arguments filed on July 30, 2026 have been fully considered but they are not persuasive.
Applicant argues on page 8 that “Okuyama and Endoh do not teach or suggest use of all of the sulfonyl group-containing polymer, the metal ions, and the host compound required in instant claim 1. As set forth above, Endoh discloses the use of 18-crown-6 as an organic compound (X) capable of forming an inclusion compound with cerium ions ([0022]-[0023] and [0060]). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s reply fails to address the combined teachings of the applied references and instead only argues that each reference individually does not teach all of the claim limitations. The limitations of amended claim 1 are disclosed in the combination of Okuyama and Endoh, and it is the combination of the references that renders the claimed invention obvious.
In response to Applicant’s argument on page 8 that “Okuyama and Endoh do not teach or suggest the effects of the membrane electrode assembly comprising these three components demonstrated in the Examples of the present specification”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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.
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/J.L./Examiner, Art Unit 1726
/JEFFREY T BARTON/Supervisory Patent Examiner, Art Unit 1726 14 October 2026
