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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 31-38 in the reply filed on 7/9/26 is acknowledged.
Claims 18-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/9/26.
Claim Rejections - 35 USC § 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.
Claims 31-32 and 38 are 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.
As to claims 31-32, claim 31 states “phosphonated polymers and membranes comprising” and the scope of the claim is unclear. First, it is unclear whether 1) a polymer or membrane is being claimed, 2) a polymer and a membrane, 3) a membrane comprising a polymer. Further, the plurality of polymers and membranes leads to confusion on whether multiple membranes are claimed in some type of laminate structure.
As to claim 38, binders comprising membranes is claimed. However, a membrane and binder are typically mutually exclusive parts of electrode and batteries. Binders and membranes have different purposes: a binder glues together components of a composition that is part of an electrode, while a membrane is a thin film on an electrode. How can a membrane be part of a binder? Does the binder require more than one membrane (membranes)?
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)(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.
Claim(s) 31 and 33-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kumar, Avneesh “Cooperative proton conduction in sulfonated and phosphonated hybrid random copolymers” J. Mater. Chem. A, 2020, 8, 22632 (herein Kumar).
As to claim 31, Avneesh discloses a membranes (see right column of page 22633 and 22632) comprising a polymer containing both sulfonic groups and phosphonic acid groups. See specifically scheme 2 showing structure
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As to claim 33, the membranes are for fuel cells (electrochemical cells comprising the polymers and membranes). See page 22632.
As to claim 34-35, the fuel cells are designed to work in low temperatures (less than 100 oC, such as 45-50 oC. See pages 22632-22633, examples and figure 2.
Claim(s) 31 and 33-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2008/034399 (herein Haering).
In setting forth the instant rejection, a machine translation of Haering has been relied upon.
As to claim 31, Haering discloses “Blend membranes of sulfonated and phosphonated polymers”. See page 6. Disclosing that “Statistical copolymers: --> The polymer is either initially phosphonated or sulfonated, and then sulfonated or phosphonated. Sulfonation and phosphonation can also be carried out simultaneously. The methods described in the literature are used. The molar mixing ratio between phosphonic acid and sulfonic acid groups in the polymer blends can be varied steplessly from 99/1 to 1/99.” See page 4. Thus, membranes comprising polymers having both sulfonic and phosphonic acid groups.
As to claims 33-35, fuel cells (electrochemical cells) comprising the polymers and membranes are taught that operate between -20 and 160 oC. See pages 3-4 and 10.
Claim(s) 31, 33-38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/0214921 (herein Uensal).
As to claim 31, Uensal discloses membranes (see abstract and examples) comprising polymers having sulfonic and phosphonic acid groups. See paragraph 75.
As to claims 33-34, fuel cells (electrochemical cells, see paragraph 57, 73, and 107) comprising the membranes are taught with operating temperatures of 100 °C or more up to about 230 oC (see paragraph 5 and 73) , thus reading on 100 ° C.
As to claim 35-36, electrolysis systems (chemical synthesis reactors) are taught see (paragraph 107), and again the operating temperatures are taught as 100 °C or more up to about 230 oC (see paragraph 5 and 73) , thus reading on 100 ° C.
As to claim 37, membranes (separators) for battery systems (chemical synthesis reactors) are taught (see paragraph 107).
As to claim 38, the polymer is utilized in the membrane of electrodes. See paragraph 108-117.
Claim(s) 31-38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0155502 (herein Haring).
As to claims 31-32, Haring discloses a membrane (see paragraph 14-29 and examples) comprising a polymer such as PEKEKK (polyetherketoneetherketoneketone, see paragraph 12) having sulfonic and phosphonic acid groups (see paragraph 9).
As to claims 33-34, fuel cells (electrochemical cells, see paragraphs 55, 91 and 120) and operated at 80 oC or higher such as 120 oC (see paragraph 55).
As to claims 35-36, electrolysis cells (chemical synthesis reactors, see paragraph 91) comprising the membrane are taught, which are operated at 80 oC or higher such as 120 oC (see paragraph 55).
As to claim 37, membranes (seperators) for batteries are taught. See paragraph 91-92.
As to claim 38, the membranes are utilized for electrodes in form of paste (binder).
Claim Rejections - 35 USC § 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.
Claim(s) 31-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0155502 (herein Haring).
As to claims 31-38, it is the examiner’s position that the claims are also rendered obvious over Haring. To the extent that a single example of a polymer with both sulfonic and phosphonic groups is not exemplified, Haring discloses that the polymer is PEKEKK (polyetherketoneetherketoneketone, see paragraph 12) and also teaches that the polymers have both sulfonic and phosphonic acid groups (see paragraph 9). Therefore, both are taught as suitable. It is well within the skill of one of ordinary skill in the art to select an ingredient from a finite list. "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.). See MPEP 2144.07. Also see MPEP 2143. Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (B). In light of this discussion, it is apparent that the presently claimed invention is arrived at by simple substitution of one known element for another to obtain predictable results. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have the substituted both sulfonic and phosphonic groups of Haring into the polymers such as PEKEKK and thereby arriving at the presently claimed invention. Additionally, it would have been obvious at the time of the invention to have substituted both sulfonic and phosphonic groups of Haring into the polymers such as PEKEKK of Haring and because both are taught as suitable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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