CTNF 18/563,036 CTNF 94937 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-3, 5-6 and 9-10 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US20210210770A1 [Gubler] . Regarding claim 1, Gubler teaches an electrolyte membrane [abs], proton exchange polymer electrolyte membrane (PEM) [abs; amophoteric ion exchange membrane; which is similar to a PEM as both are ion conducting membranes], said membrane consisting of an irradiated vinylidene fluoride copolymer base film [0060; fluorinated polymer; pvdf] onto which are grafted a styrene monomer and-a nitrile monomer, said film bearing proton exchange sulfonate groups covalently bonded [0015] to the vinylidene fluoride copolymer, said copolymer having a heterogeneous structure of co-continuous type [0027; it is noted- vinylidene fluoride copolymers are heterogeneous in structure and have a co-continuous morphology; therefore this is taught by Gubler]. Regarding claim 2, Gubler teaches, wherein the vinylidene fluoride copolymer (with regards to the claimed: vinylidene fluoride co polymers are known to be a melt-convertible heterogeneous thermoplastic copolymer, therefore is inherently taught by Gubler) , and comprises two or more co-continuous phases, said co-continuous phases comprising: a) from 25% to 50% by weight of a first co-continuous phase comprising 90% to 100% by weight of vinylidene fluoride monomer [0028-0029; A comonomer ratio of AMS:MGN of 1:1 in the membrane is thus yielding a significant excess of anion exchange groups of 100%] units and 0% to 10% by weight of units of at least one other fluoromonomer, and b) from more than 50% by weight to 75% by weight of a second co-continuous phase comprising from 65% to 95% by weight of vinylidene fluoride monomer units and one or more comonomers chosen from the group consisting of hexafluoropropylene and perfluoro(vinyl ether); please refer to Example 1, para 0068- wherein the required compositions are ranges are taught. In regards to the claimed “ to bring about the phase separation of the second co-continuous phase from the first co- continuous phase;” this is considered a product by process limitation . The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Gubler teaches the product as claimed, thus meets the claimed limitations accordingly. Regarding claim 3, Gubler teaches wherein said first co- continuous phase contains at least 90% by weight [0055; monomer units in the grafts and vary between 10 and 90%; therefore meets the % as claimed], of vinylidene fluoride monomer units, and one or more other fluorinated monomers chosen from the group consisting of: hexafluoropropene, tetrafluoroethylene, trifluoroethylene, chlorotrifluoroethylene, vinyl fluoride, pentafluoropropene, perfluoro(methyl vinyl ether), and perfluoro(propyl vinyl ether) [0024; i.e. polymer can be a dense or porous fluoropolymer, such as fluorinated ethylene propylene (FEP), perfluoroalkoxy polymer (PFA), ethylene-tetrafluoroethylene (ETFE), polyvinylidene fluoride (PVDF), ethylene-chlorotrifluoroethylene (ECTFE), or copolymers comprising the monomers tetrafluoroethylene (TFE), vinylidene fluoride (VDF), hexafluoropropylene (HFP), chlorotrifluoroethylene (CTFE), trifluoroethylene (TrFE), or a polyolefin, such as polyethylene (PE) or polypropylene (PP), or a polymer from the polybenzimidazole (PBI) family]. Regarding claim 5, Gubler teaches wherein said film is grafted with a-methylstyrene and 2-methylene glutaronitrile and is functionalized with chlorosulfonic acid [0063]. Regarding claim 6, Gubler teaches wherein the styrene monomer/nitrile monomer molar ratio ranges from 0.7 to 1.3 [0065-0068; in a preferred embodiment, α-methylstyrene is co-grafted with 2-methyleneglutaronitrile at a molar ratio of 1.2:1, which yields a molar fraction of α-methylstyrene and 2-methyleneglutaronitrile in the grafts of around 0.5, respectively and in example 1: The grafting reaction mixture was composed as follows: 65% (v/v) monomer solution (α-methylstyrene/2-methyleneglutaronitrile at a monomer ratio of 1.2/1)+35% (v/v) dichloromethane - which falls within the range required by the instant claim]. Regarding claim 9, Gubler teaches a process for producing the proton exchange polymer electrolyte membrane as claimed in of claim 1, said process comprising irradiating a vinylidene fluoride copolymer film to produce an irradiated vinylidene fluoride copolymer film, grafting onto the irradiated vinylidene fluoride copolymer film a mixture of styrene and nitrile monomers, followed by a post-treatment of the film thus irradiated and grafted, by sulfonation [0062-0064; please also refer to the entire document that teaches the process of producing the PEM]. Regarding claim 10, Gubler teaches comprising the steps of: a)exposing said film to ionizing radiation chosen from electron beams, gamma rays, or X-rays [0062]; b)exposing the irradiated film to a mixture of monomers comprising a styrene monomer chosen from the group consisting of:a-methylstyrene, a-fluorostyrene, a-bromostyrene,fluorostyrene, and a nitrile monomer chosen from the group: acrylonitrile, 2-methyl-2-butenenitrile, 2-methylene glutaronitrile and methylacrylonitrile; [0028, 0063] c)subjecting the grafted film to a post-functionalization reaction with chlorosulfonic acid, followed by hydrolysis in water or an alkaline solution [0026, 0063, 0070] . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim (s) 4, 7-8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20210210770A1 [Gubler] . Regarding claim 4, Gubler teaches wherein said copolymer comprises a vinylidene fluoride ("VDF")-rich [0024], however fails to explicitly teach the highly crystalline phase which may contain up to 10% of hexafluoropropene ("HFP") and an amorphous phase based on a VDF-HFP copolymer containing more than 5% of HFP and up to 35% of HFP, based on the total weight of the copolymer. 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 teachings of Gubler with regards to the ratios and percentages needed by the instant claim as this is considered to be optimizing ranges by routine experimentation to achieve desirable results. In addition, Gubler teaches [0064]- The ratio of the monomers, the cation exchange precursor monomer and anion exchange precursor co-monomer, in the reaction mixture is adapted to adjust the ratio of the grafted monomer units in the graft copolymer according to the specific copolymerization behavior or the two monomers, which is governed by the radical copolymerization kinetics of the two monomers chosen according to the theory of Mayo and Lewis. Therefore, the tuning of the fraction of ionogenic or precursor comonomer units in the grafts is sensitive to achieve the desired ratio of anion to cation exchange functions in the final ion exchange membrane. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). Regarding claim 7, Gubler teaches the membrane of claim 1. Gubler does not explicitly teach hydrogen permeability as claimed. With regards to the claimed: having a hydrogen permeability of less than 2x10-2 mL/min.cm2; hydrogen permeability is dependent on the material and interaction of hydrogen with specific materials’ structure and temperature. Therefore, it is the Examiner’s position, since Gubler teaches the components of the membrane as required by claim 1, Gubler inherently discloses the hydrogen permeability of less than 2x10-2 mL/min.cm2. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Regarding claim 8, Gubler does not explicitly teach ion exchange capacity, however with regards to the claimed: having an ion exchange capacity (IEC) of greater than 0.6 mmol/g as measured by titration with a 0.05M KOH solution- IEC is considered an intrinsic property which depends on the materials inherent chemical structure and composition and the number of ion conducting sites; which is a constant depending on the chemical structure and composition. Thereore, it is the Examiner’s position, since Gubler teaches the components of the membrane as required by claim 1, Gubler inherently discloses the IEC as required by the instant claim. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). Regarding claim 11, Gubler does not teach a fuel cell comprising a the proton exchange polymer electrolyte membrane of claim 1. Gubler teaches the said PEM for a redox flow battery. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the PEM taught by Gubler to be used in a fuel cell as all the components are taught and one would have a reasonable expectation of success. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARIKA GUPTA whose telephone number is (571)272-9907. The examiner can normally be reached 8:30AM-5:30PM. 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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. /S.G./Examiner, Art Unit 1729 /ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729 Application/Control Number: 18/563,036 Page 2 Art Unit: 1729 Application/Control Number: 18/563,036 Page 3 Art Unit: 1729 Application/Control Number: 18/563,036 Page 4 Art Unit: 1729 Application/Control Number: 18/563,036 Page 5 Art Unit: 1729 Application/Control Number: 18/563,036 Page 6 Art Unit: 1729 Application/Control Number: 18/563,036 Page 7 Art Unit: 1729 Application/Control Number: 18/563,036 Page 8 Art Unit: 1729 Application/Control Number: 18/563,036 Page 9 Art Unit: 1729 Application/Control Number: 18/563,036 Page 10 Art Unit: 1729
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