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DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: On page 1, line 19, please replace “the step b” with “step (b)”.
Claim 1 is objected to because of the following informalities: On page 1, lines 19 and 20, please replace “the step a” with “step (a)”.
Claim 1 is objected to because of the following informalities: On page 1, line 26, please replace “the n is” with “n is”.
Claim 1 is objected to because of the following informalities: On page 1, line 27, please replace “than the m” with “than m”.
Claim 2 is objected to because of the following informalities: In lines 1 and 2 of claim, please replace “the step a” with “step (a)”.
Claim 2 is objected to because of the following informalities: In line 3, please replace “fluorine-based polymers” with “a fluorine-based polymer”.
Claim 2 is objected to because of the following informalities: In line 4, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim 2 is objected to because of the following informalities: In line 5, please replace “polyphenylenes, polyetherketones, polyaryleneethers, polyimides” with “polyphenylene, polyetherketone, polyaryleneether, polyimide”.
Claim 2 is objected to because of the following informalities: In line 6, please replace “polystyrenes” with “polystyrene”.
Claim 2 is objected to because of the following informalities: In line 6, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim 3 is objected to because of the following informalities: In line 2, please replace “the step b” with “step (b)”.
Claim 4 is objected to because of the following informalities: In line 2, please replace “the step b” with “step (b)”.
Claim 5 is objected to because of the following informalities: In line 2, please replace “the step b” with “step (b)”.
Claim 5 is objected to because of the following informalities: In line 3, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim 5 is objected to because of the following informalities: In line 4, please replace “polyphenylenes, polyetherketones, polyaryleneethers, with “polyphenylene, polyetherketone, polyaryleneether”.
Claim 5 is objected to because of the following informalities: In line 5, please replace “polyimides, and polystyrenes” with “polyimide, and polystyrene”.
Claim 5 is objected to because of the following informalities: In line 5, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim 5 is objected to because of the following informalities: In line 7, please replace “fluorine-based polymers” with “a fluorine-based polymer”.
Claim 5 is objected to because of the following informalities: In line 9, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim 5 is objected to because of the following informalities: On page 3, lines 1 and 2, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim 6 is objected to because of the following informalities: In line 2, please replace “the step b” with “step (b)”.
Claim 6 is objected to because of the following informalities: In line 6, please replace “and polyethyleneimine” with “or polyethyleneimine”.
Claim 7 is objected to because of the following informalities: In line 3, please replace “and NMP” with “or NMP”.
Claim 8 is objected to because of the following informalities: In lines 1 and 2, please replace “the step d” with “step (d)”.
Claim 9 is objected to because of the following informalities: In line 1, please replace “the step c” with “step (c)”.
Claim 9 is objected to because of the following informalities: In line 3, please insert “round” prior to “bar”.
Claim 9 is objected to because of the following informalities: In line 5, please insert “round” prior to “bar”.
Claim 10 is objected to because of the following informalities: In line 1, please insert “round” prior to “bar”.
Claim 11 is objected to because of the following informalities: In line 1, please replace “the step d” with “step (d)”.
Claim 12 is objected to because of the following informalities: In line 2, please replace “the step a” with “step (a)”.
Claim 12 is objected to because of the following informalities: In line 3, please replace “and polyvinyl” with “or polyvinyl”.
Claim 13 is objected to because of the following informalities: In line 2, please replace “the step a” with “step (a)”.
Claim 13 is objected to because of the following informalities: In line 3, please replace “and glass” with “or glass”.
Claim 14 is objected to because of the following informalities: In line 2, please replace “the step a” with “step (a)”.
Claim 14 is objected to because of the following informalities: In line 4, please replace “and PET” with “or PET”.
Claim 15 is objected to because of the following informalities: In line 2, please replace “comprising” with “comprises”.
Claim 15 is objected to because of the following informalities: In line 7 and on page 5, line 1, please replace “the m is less than the m” with “m is than n”.
Claim 15 is objected to because of the following informalities: In line 7, a limiting phrase “and wherein m is less than n” is best placed at the end of the claim, i.e., after the phrase “when mixed with the ionomer”. See claim 1 for parallel claim construction.
Claim 16 is objected to because of the following informalities: In line 2, please replace “comprising” with “comprises”.
Claim 16 is objected to because of the following informalities: In line 2, please replace “fluorine-based polymers” with “a fluorine-based polymer”.
Claim 16 is objected to because of the following informalities: In line 4, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim 16 is objected to because of the following informalities: In lines 5 and 6, please replace “hydrocarbon-based polymers” with “a hydrocarbon-based polymer”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification is enabling for manufacturing a multilayered ion exchange membrane with rectifying properties comprising: (a) forming a base layer having n ion channels inside an ion exchange resin and (b) preparing a coating solution configured such that an ionomer and poly(vinylidene fluoride-co-trifluoroethylene (PVDF-TrFE) are uniformly dispersed in a solvent by blending the ionomer, PVDF-TrFE, and solvent in a predetermined ratio, wherein the ionomer comprises perfluorosulfonic acid (PFSA) type ionomer (fluorine-based polymer), and the mixture suppresses creation of ion channels in the ionomer when mixed with the ionomer, such that rectifying properties are imparted by causing m ion channels to be formed in the coating layer such than n is greater than m.
However, the specification does not reasonably provide enablement for manufacturing a multilayered ion exchange membrane with rectifying properties comprising (b) preparing a coating solution by blending an ionomer comprising hydrocarbon-based polymer or a hydrocarbon-based polymer partially substituted with fluorine with the set of all generic mixtures and solvent in a predetermined ratio, wherein the ionomer is a hydrocarbon-based polymer or a hydrocarbon-based polymer partially substituted with fluorine, and wherein rectifying properties are imparted by causing m ion channels to be formed in the coating layer such than n is greater than m. The specification does not enable the person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to the following: (1) the breadth of the claims, (2) the nature of the invention, (3) the state of the prior art, (4) the level of one of ordinary skill in the art, (5) the level of predictability of the art, (6) the amount of direction provided by the inventor, (7) the existence of working examples, and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8USPQ2d 1400, 1404 (Fed. Cir. 1988).
The nature of the invention and breadth of claims: The nature of the invention is manufacturing a multilayered ion exchange membrane comprising a step of preparing a coating solution by blending ionomer, a mixture, and solvent, forming a coating layer by applying the coating solution on a base layer, followed by removing solvent through dry heating to create ion channels in the coating layer. Apparently, the effect of the invention is that addition of the mixture suppresses formation of ion channels in the ionomer such that the coating layer contains fewer ion channels than that of a base layer. Clam states that the ionomer is at least one of a fluorine-based polymer, a hydrocarbon-based polymer, or a hydrocarbon-based polymer partially substituted with fluorine. Claim labels generically and cryptically this component as “a mixture” but does not identify the component(s) in the mixture.
The state of the prior art and level of predictability in the art: The state of the art with respect to manufacturing a multilayered ion exchange membrane is mature. The technique of applying a coating layer onto a base layer using a coating bar is also well established. However, the objective of imparting desired rectifying properties into a multilayer ion exchange membrane appears particularly unpredictable. This is because many factors influence ion channel formation (chemical identity of ionomer, ionomer (micro)structure, functional group content, chemical identity of the material inducing ion channel suppression, mixing ratio of ionomer and material, solvent effects, conditions for solvent removal, inter alia). Therefore, each embodiment of coating layer must be assessed individually, and each multilayered ion exchange membrane prepared therefrom, must be analyzed individually for determining rectifying properties including ion channel content. Furthermore, there is no apparent correlation between ratio of ionomer and material on the extent of ion channel suppression for each specific ionomer-material pair. If this effect is improbable to predict, then efficacy of imparting rectification property becomes impossible to predict.
The level of one of ordinary skill in the art: The level of one of ordinary skill in the art is reasonably high. The person of ordinary skill in this field of endeavor is generally a college graduate possessing a minimum of a bachelor’s degree or equivalent in chemistry or chemical engineering. At the time of instant invention, the person of ordinary skill may have had post-graduate education or several years of experience in a research laboratory.
The existence of working examples: The disclosure teaches a base layer prepared from Nafion NR211 and a coating layer prepared from a perfluorosulfonic acid (PFSA) type ionomer and poly(vinylidene fluoride-co-trifluoroethylene) (PVDF-TrFE) in DMF in varying ratios. Exact drying conditions are not disclosed. Ion rectification characteristics were evaluated by calculating a ratio of forward current intensity to reverse current intensity, and results show that rectifying properties effective for commercialization are realized at a PFSA:PVDF-TrFE weight ratio of 40:60 or higher. Thus, claimed behavior is not universal, but only observable for this ionomer-material pair at a threshold mixing ratio. It should also be noted that this effect appears observable only under the specific coating conditions shown in specification.
The amount of direction provided by the inventor: The amount of direction provided by inventor is limited to a single example utilizing a Nafion NR211 base layer and a coating layer prepared from perfluorosulfonic acid (PFSA) type ionomer and poly(vinylidene fluoride-co-trifluoroethylene) (PVDF-TrFE) in DMF.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Undue experimentation is needed to practice the full scope of the invention, especially in light of a sole example using one type of base layer and coating layer, such that a complete range of multilayered ion exchange membrane exhibiting claimed rectifying property may be obtained. There is a certain measure of unpredictability despite the high level of skill in the art. The person of ordinary skill in the art would need to prepare coating layers derived from an infinite number of ionomer selected from unspecified “hydrocarbon-based polymer” and generically labeled “hydrocarbon-based polymer partially substituted with fluorine” with an even broader selection of ill-defined “material”. The skilled artisan needs to prepare each of the proposed embodiments of multilayered ion exchange membrane and test each for presence of rectifying properties acceptable for commercialization. Even preparing a more limited set of coating compositions comprising ionomers derived from “fluorine-based polymer” of claim 2 or claim 5 and ill-defined “material” is unwieldy to one of ordinary skill in the art. It follows that making a series of coating composition containing all permutations of “hydrocarbon-based polymer”, such as those of claim 5, or “hydrocarbon-based polymer partially substituted with fluorine” with ill-defined “material” becomes a daunting task. Note that these considerations focus solely on the coating layer. It is apparent that the degree of experimentation required to assess all coating layers against a broad range of base layer (selected from fluorine-based polymer, hydrocarbon-based polymer, and hydrocarbon-based polymer partially substituted with fluorine) to determine which exhibit claimed rectifying properties would be prohibitive.
It is stated in Brenner, Comr. Pats. v. Manson, 148 USPQ 689 (U.S. Supreme Court, 1966) that “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion.” Furthermore, “patent protection is granted in return for an enabling disclosure if an invention, not for vague intimations of general ideas that may or may not be workable. Tossing out the mere germ of an idea does not constitute enabling disclosure.” Genentech, Inc. v. Novo Nordisk A/S, 42 USPQ2d 1001 (Fed. Cir. 1997).
With these guidelines in mind, and in view of the Wands analysis set forth above, to practice the claimed invention herein, one of ordinary skill in the art would be required to engage in undue experimentation to obtain the full scope of claimed polyolefin polymer composition exhibiting a particular melt strength property, with no assurance of predictability or success. Therefore, instant claims are deemed to contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Claims 15 and 16 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The test for enablement is whether a person skilled in the art can make and use the invention without undue experimentation (cf. MPEP § 2164.01). That cited portion of the MPEP references In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), in which a number of factors were set forth as requiring consideration “when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is undue.” Among the factors mentioned were the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The specification is enabling for a multilayered ion exchange membrane with rectifying properties comprising a base layer having n ion channels inside an ion exchange resin and a coating layer comprising perfluorosulfonic acid (PFSA) type ionomer and poly(vinylidene fluoride-co-trifluoroethylene (PVDF-TrFE) and having m ion channels, wherein m is less than n.
The specification does not reasonably provide enablement for manufacturing a multilayered ion exchange membrane with rectifying properties having a coating layer containing an ionomer comprising the set of all fluorine-based polymer, polystyrene-based polymer, or hydrocarbon-based polymer partially substituted with fluorine with an ill-defined “mixture”, as recited in claim 15, or with a mixture comprising the genera of fluorine-based polymer, hydrocarbon-based polymer, or hydrocarbon-based polymer partially substituted with fluorine as described in claim 16.
The analysis of claims from preceding paragraph 44 is incorporated here by reference. Based on the analysis, it is deemed that specification does not enable the person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
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.
Claims 1-4, 6-14, and 15 are under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1 and 15 describe a coating containing ionomer and a mixture. Claim does not elucidate the chemical identity of, or further define, this ambiguous “mixture”. The specification was consulted for guidance. The working example reveals that the term mixture, which implies a combination of at least two materials, actually refers to a single component - a poly(vinylidene fluoride-co-trifluoroethylene) copolymer. Thus, claimed term is used contrary to its ordinary and customary meaning. Furthermore, without elucidation of chemical identity, use of the ambiguous term “mixture” renders claim vague and indefinite. Dependent claims are subsumed under the rejection.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jung et al. (KR 10-2593274).
Jung et al. teaches a method for manufacturing a multilayered ion exchange membrane with rectifying properties containing a base layer prepared from Nafion NR211 and a coating layer prepared from a perfluorosulfonic acid (PFSA) type ionomer and poly(vinylidene fluoride-co-trifluoroethylene) (PVDF-TrFE) in DMF with PFSA:PVDF:TrFE ratios in a range of 40:60 to 10:90. The content of PFSA ionomer and PVDF-TrFE in DMF is 20 wt %. A ratio of channels formed in the base layer to channels formed in the coating layer lies in a range of 10:1 to 100:1. The base layer may further contain an inorganic additive and support film. In some embodiments, the coating layer may further contain a crosslinking agent. The coating layer is applied to the base layer using a coating bar and then the coating layer is heated to 15-300 ºC for up to 24 hours.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claims 1-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jung et al. (KR 10-2593282).
Jung et al. teaches a method for manufacturing a multilayered ion exchange membrane with rectifying properties containing a base layer prepared from Nafion NR211 and a coating layer prepared from a perfluorosulfonic acid (PFSA) type ionomer and poly(vinylidene fluoride-co-trifluoroethylene) (PVDF-TrFE) in DMF with PFSA:PVDF:TrFE ratios in a range of 40:60 to 10:90. The content of PFSA ionomer and PVDF-TrFE in DMF is 20 wt %. A ratio of channels formed in the base layer to channels formed in the coating layer lies in a range of 10:1 to 100:1. The base layer may further contain an inorganic additive and support film. In some embodiments, the coating layer may further contain a crosslinking agent. The coating layer is applied to the base layer using a coating bar and then the coating layer is heated to 15-300 ºC for up to 24 hours.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 July 6, 2026
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